HR 1249
6-23-11,
House Passed Bill as Amended, 304-117
112th CONGRESS
1st Session
H. R.
1249
To amend title 35, United States Code,
to provide for patent reform.
IN THE HOUSE OF REPRESENTATIVES
March 30, 2011
Mr. SMITH
of Texas (for himself, Mr. GOODLATTE, and Mr. ISSA) introduced the following bill;
which was referred to the Committee on the Judiciary, and in addition to the Committee
on the Budget, for a period to be subsequently determined by the Speaker, in each
case for consideration of such provisions as fall within the jurisdiction of the
committee concerned
A BILL To
amend title 35, United States Code, to provide for patent reform.
Be it enacted by the Senate and House of Representatives of the United States
of America in Congress assembled,
SECTION 1. SHORT TITLE;
TABLE OF CONTENTS.
(a) Short Title- This Act may be cited as the
`America Invents Act'.
(b) Table of Contents- The table of contents
for this Act is as follows:
Sec. 1. Short title; table of
contents.
Sec. 2. First inventor to file.
Sec. 3. Inventor's oath or declaration.
Sec. 4.
Defense to infringement based on earlier inventor.
Sec. 5. Post-grant review proceedings.
Sec. 6. Patent
Trial and Appeal Board.
Sec. 7. Preissuance submissions
by third parties.
Sec. 9. Fee setting authority.
Sec. 10. Fees for
patent services.
Sec. 11. Supplemental examination.
Sec. 12. Funding agreements.
Sec. 13. Tax strategies deemed within the prior art.
Sec. 14. Best mode requirement.
Sec. 16. Advice of counsel.
Sec. 17. Ownership; assignment.
Sec. 18. Transitional
program for covered business method patents.
Sec. 19.
Clarification of jurisdiction.
Sec. 20. Technical amendments.
Sec. 21. Travel expenses and payment of administrative
judges.
Sec. 22. Patent and Trademark Office funding.
Sec. 23. Satellite offices.
Sec. 24. Patent Ombudsman Program for small business concerns.
Sec. 25. Priority examination for technologies important to American competitiveness.
Sec. 26. Designation of Detroit satellite office.
Sec. 28. Budgetary effects.
SEC. 2. FIRST INVENTOR TO FILE.
(a) Definitions-
Section 100 of title 35, United States Code, is amended by adding at the end the
following:
`(f) The term `inventor' means the individual or,
if a joint invention, the individuals collectively who invented or discovered
the subject matter of the invention.
`(g) The terms `joint inventor'
and `coinventor' mean any 1 of the individuals who invented or discovered the
subject matter of a joint invention.
`(h) The term `joint research
agreement' means a written contract, grant, or cooperative agreement entered into
by 2 or more persons or entities for the performance of experimental, developmental,
or research work in the field of the claimed invention.
`(i)(1)
The term `effective filing date' for a claimed invention in a patent or application
for patent means--
`(A) if subparagraph (B) does not apply,
the actual filing date of the patent or the application for the patent containing
a claim to the invention; or
`(B) the filing date of
the earliest application for which the patent or application is entitled, as to
such invention, to a right of priority under section 119, 365(a), or 365(b) or
to the benefit of an earlier filing date under section 120, 121, or 365(c).
`(2) The effective filing date for a claimed invention in an application for reissue
or reissued patent shall be determined by deeming the claim to the invention to
have been contained in the patent for which reissue was sought.
`(j) The term `claimed invention' means the subject matter defined by a claim
in a patent or an application for a patent.'.
(b) Conditions
for Patentability-
(1) IN GENERAL- Section 102 of title
35, United States Code, is amended to read as follows:
`Sec.
102. Conditions for patentability; novelty
`(a) Novelty; Prior
Art- A person shall be entitled to a patent unless--
`(1)
the claimed invention was patented, described in a printed publication, or in
public use, on sale, or otherwise available to the public before the effective
filing date of the claimed invention; or
`(2) the claimed
invention was described in a patent issued under section 151, or in an application
for patent published or deemed published under section 122(b), in which the patent
or application, as the case may be, names another inventor and was effectively
filed before the effective filing date of the claimed invention.
`(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE
THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or
less before the effective filing date of a claimed invention shall not be prior
art to the claimed invention under subsection (a)(1) if--
`(A) the disclosure was made by the inventor or joint inventor or by
another who obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor; or
`(B)
the subject matter disclosed had, before such disclosure, been publicly disclosed
by the inventor or a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor.
`(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall
not be prior art to a claimed invention under subsection (a)(2) if--
`(A) the subject matter disclosed was obtained directly or indirectly
from the inventor or a joint inventor;
`(B)
the subject matter disclosed had, before such subject matter was effectively filed
under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor
or another who obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor; or
`(C)
the subject matter disclosed and the claimed invention, not later than the effective
filing date of the claimed invention, were owned by the same person or subject
to an obligation of assignment to the same person.
`(c) Common Ownership Under Joint Research Agreements- Subject matter disclosed
and a claimed invention shall be deemed to have been owned by the same person
or subject to an obligation of assignment to the same person in applying the provisions
of subsection (b)(2)(C) if--
`(1) the subject matter disclosed
was developed and the claimed invention was made by, or on behalf of, 1 or more
parties to a joint research agreement that was in effect on or before the effective
filing date of the claimed invention;
`(2) the claimed
invention was made as a result of activities undertaken within the scope of the
joint research agreement; and
`(3) the application
for patent for the claimed invention discloses or is amended to disclose the names
of the parties to the joint research agreement.
`(d) Patents
and Published Applications Effective as Prior Art- For purposes of determining
whether a patent or application for patent is prior art to a claimed invention
under subsection (a)(2), such patent or application shall be considered to have
been effectively filed, with respect to any subject matter described in the patent
or application--
`(1) if paragraph (2) does not apply, as
of the actual filing date of the patent or the application for patent; or
`(2) if the patent or application for patent is entitled to claim a right
of priority under section 119, 365(a), or 365(b), or to claim the benefit of an
earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior
filed applications for patent, as of the filing date of the earliest such application
that describes the subject matter.'.
(2) CONTINUITY
OF INTENT UNDER THE CREATE ACT- The enactment of section 102(c) of title 35, United
States Code, under paragraph (1) of this subsection is done with the same intent
to promote joint research activities that was expressed, including in the legislative
history, through the enactment of the Cooperative Research and Technology Enhancement
Act of 2004 (Public Law 108-453; the `CREATE Act'), the amendments of which are
stricken by subsection (c) of this section. The United States Patent and Trademark
Office shall administer section 102(c) of title 35, United States Code, in a manner
consistent with the legislative history of the CREATE Act that was relevant to
its administration by the United States Patent and Trademark Office.
(3) CONFORMING AMENDMENT- The item relating to section 102 in the table of
sections for chapter 10 of title 35, United States Code, is amended to read as
follows:
`102. Conditions for patentability; novelty.'.
(c) Conditions for Patentability; Nonobvious Subject Matter-
Section 103 of title 35, United States Code, is amended to read as follows:
`Sec.
103. Conditions for patentability; nonobvious subject matter
`A
patent for a claimed invention may not be obtained, notwithstanding that the claimed
invention is not identically disclosed as set forth in section 102, if the differences
between the claimed invention and the prior art are such that the claimed invention
as a whole would have been obvious before the effective filing date of the claimed
invention to a person having ordinary skill in the art to which the claimed invention
pertains. Patentability shall not be negated by the manner in which the invention
was made.'.
(d) Repeal of Requirements for Inventions Made Abroad-
Section 104 of title 35, United States Code, and the item relating to that section
in the table of sections for chapter 10 of title 35, United States Code, are repealed.
(e) Repeal of Statutory Invention Registration-
(1) IN GENERAL- Section 157 of title 35, United States Code, and the item
relating to that section in the table of sections for chapter 14 of title 35,
United States Code, are repealed.
(2) REMOVAL OF CROSS
REFERENCES- Section 111(b)(8) of title 35, United States Code, is amended by striking
`sections 115, 131, 135, and 157' and inserting `sections 131 and 135'.
(3) EFFECTIVE DATE- The amendments made by this subsection shall take effect
upon the expiration of the 18-month period beginning on the date of the enactment
of this Act, and shall apply to any request for a statutory invention registration
filed on or after that effective date.
(f) Earlier Filing
Date for Inventor and Joint Inventor- Section 120 of title 35, United States Code,
is amended by striking `which is filed by an inventor or inventors named' and
inserting `which names an inventor or joint inventor'.
(g) Conforming
Amendments-
(1) RIGHT OF PRIORITY- Section 172 of title
35, United States Code, is amended by striking `and the time specified in section
102(d)'.
(2) LIMITATION ON REMEDIES- Section 287(c)(4)
of title 35, United States Code, is amended by striking `the earliest effective
filing date of which is prior to' and inserting `which has an effective filing
date before'.
(3) INTERNATIONAL APPLICATION DESIGNATING
THE UNITED STATES: EFFECT- Section 363 of title 35, United States Code, is amended
by striking `except as otherwise provided in section 102(e) of this title'.
(4) PUBLICATION OF INTERNATIONAL APPLICATION: EFFECT- Section 374 of title
35, United States Code, is amended by striking `sections 102(e) and 154(d)' and
inserting `section 154(d)'.
(5) PATENT ISSUED ON INTERNATIONAL
APPLICATION: EFFECT- The second sentence of section 375(a) of title 35, United
States Code, is amended by striking `Subject to section 102(e) of this title,
such' and inserting `Such'.
(6) LIMIT ON RIGHT OF PRIORITY-
Section 119(a) of title 35, United States Code, is amended by striking `; but
no patent shall be granted' and all that follows through `one year prior to such
filing'.
(7) INVENTIONS MADE WITH FEDERAL ASSISTANCE-
Section 202(c) of title 35, United States Code, is amended--
(i)
by striking `publication, on sale, or public use,' and all that follows through
`obtained in the United States' and inserting `the 1-year period referred to in
section 102(b) would end before the end of that 2-year period'; and
(ii) by striking `prior to the end of the statutory' and inserting
`before the end of that 1-year'; and
(B) in paragraph (3), by striking `any statutory bar date that may occur under
this title due to publication, on sale, or public use' and inserting `the expiration
of the 1-year period referred to in section 102(b)'.
(1) IN GENERAL- Section 291 of title
35, United States Code, is amended to read as follows:
`Sec.
291. Derived Patents
`(a) In General- The owner of a patent may
have relief by civil action against the owner of another patent that claims the
same invention and has an earlier effective filing date if the invention claimed
in such other patent was derived from the inventor of the invention claimed in
the patent owned by the person seeking relief under this section.
`(b) Filing Limitation- An action under this section may be filed only before
the end of the 1-year period beginning on the date of the issuance of the first
patent containing a claim to the allegedly derived invention and naming an individual
alleged to have derived such invention as the inventor or joint inventor.'.
(2) CONFORMING AMENDMENT- The item relating to section 291 in the table of
sections for chapter 29 of title 35, United States Code, is amended to read as
follows:
(i) Derivation Proceedings- Section 135 of title 35, United States Code, is amended
to read as follows:
`Sec. 135. Derivation proceedings
`(a) Institution of Proceeding- An applicant for patent may file a petition to
institute a derivation proceeding in the Office. The petition shall set forth
with particularity the basis for finding that an inventor named in an earlier
application derived the claimed invention from an inventor named in the petitioner's
application and, without authorization, the earlier application claiming such
invention was filed. Any such petition may be filed only within the 1-year period
beginning the date of the first publication of a claim to an invention that is
the same or substantially the same as the earlier application's claim to the invention,
shall be made under oath, and shall be supported by substantial evidence. Whenever
the Director determines that a petition filed under this subsection demonstrates
that the standards for instituting a derivation proceeding are met, the Director
may institute a derivation proceeding. The determination by the Director whether
to institute a derivation proceeding shall be final and nonappealable.
`(b) Determination by Patent Trial and Appeal Board- In a derivation proceeding
instituted under subsection (a), the Patent Trial and Appeal Board shall determine
whether an inventor named in the earlier application derived the claimed invention
from an inventor named in the petitioner's application and, without authorization,
the earlier application claiming such invention was filed. The Director shall
prescribe regulations setting forth standards for the conduct of derivation proceedings.
`(c) Deferral of Decision- The Patent Trial and Appeal Board
may defer action on a petition for a derivation proceeding until the expiration
of the 3-month period beginning on the date on which the Director issues a patent
that includes the claimed invention that is the subject of the petition. The Patent
Trial and Appeal Board also may defer action on a petition for a derivation proceeding,
or stay the proceeding after it has been instituted, until the termination of
a proceeding under chapter 30, 31, or 32 involving the patent of the earlier applicant.
`(d) Effect of Final Decision- The final decision of the Patent
Trial and Appeal Board, if adverse to claims in an application for patent, shall
constitute the final refusal by the Office on those claims. The final decision
of the Patent Trial and Appeal Board, if adverse to claims in a patent, shall,
if no appeal or other review of the decision has been or can be taken or had,
constitute cancellation of those claims, and notice of such cancellation shall
be endorsed on copies of the patent distributed after such cancellation.
`(e) Settlement- Parties to a proceeding instituted under subsection (a) may terminate
the proceeding by filing a written statement reflecting the agreement of the parties
as to the correct inventors of the claimed invention in dispute. Unless the Patent
Trial and Appeal Board finds the agreement to be inconsistent with the evidence
of record, if any, it shall take action consistent with the agreement. Any written
settlement or understanding of the parties shall be filed with the Director. At
the request of a party to the proceeding, the agreement or understanding shall
be treated as business confidential information, shall be kept separate from the
file of the involved patents or applications, and shall be made available only
to Government agencies on written request, or to any person on a showing of good
cause.
`(f) Arbitration- Parties to a proceeding instituted under
subsection (a) may, within such time as may be specified by the Director by regulation,
determine such contest or any aspect thereof by arbitration. Such arbitration
shall be governed by the provisions of title 9, to the extent such title is not
inconsistent with this section. The parties shall give notice of any arbitration
award to the Director, and such award shall, as between the parties to the arbitration,
be dispositive of the issues to which it relates. The arbitration award shall
be unenforceable until such notice is given. Nothing in this subsection shall
preclude the Director from determining the patentability of the claimed inventions
involved in the proceeding.'.
(j) Elimination of References to
Interferences- (1) Sections 134, 145, 146, 154, 305, and 314 of title 35, United
States Code, are each amended by striking `Board of Patent Appeals and Interferences'
each place it appears and inserting `Patent Trial and Appeal Board'.
(2)(A) Sections 146 and 157(a) of title 35, United States Code, are each amended--
(i) by striking `an interference' each place it appears
and inserting `a derivation proceeding'; and
(ii) by striking `interference' each additional place it appears and inserting
`derivation proceeding'.
(B) The subparagraph
heading for section 154(b)(1)(C) of title 35, United States Code, is amended to
read as follows:
`(C) GUARANTEE OF ADJUSTMENTS
FOR DELAYS DUE TO DERIVATION PROCEEDINGS, SECRECY ORDERS, AND APPEALS- '.
(3) The section heading for section 134 of title 35, United States Code, is amended
to read as follows:
`Sec. 134. Appeal to the Patent Trial and
Appeal Board'.
(4) The section heading for section 146 of title
35, United States Code, is amended to read as follows:
`Sec. 146.
Civil action in case of derivation proceeding'.
(5) The items
relating to sections 134 and 135 in the table of sections for chapter 12 of title
35, United States Code, are amended to read as follows:
`134. Appeal to the Patent Trial and Appeal Board.
`135. Derivation proceedings.'.
(6) The item relating to
section 146 in the table of sections for chapter 13 of title 35, United States
Code, is amended to read as follows:
`146. Civil action
in case of derivation proceeding.'.
(k) Statute of Limitations-
(1) IN GENERAL- Section 32 of title 35, United States Code,
is amended by inserting between the third and fourth sentences the following:
`A proceeding under this section shall be commenced not later than the earlier
of either the date that is 10 years after the date on which the misconduct forming
the basis for the proceeding occurred, or 1 year after the date on which the misconduct
forming the basis for the proceeding is made known to an officer or employee of
the Office as prescribed in the regulations established under section 2(b)(2)(D).'.
(2) REPORT TO CONGRESS- The Director shall provide
on a biennial basis to the Judiciary Committees of the Senate and House of Representatives
a report providing a short description of incidents made known to an officer or
employee of the Office as prescribed in the regulations established under section
2(b)(2)(D) of title 35, United States Code, that reflect substantial evidence
of misconduct before the Office but for which the Office was barred from commencing
a proceeding under section 32 of title 35, United States Code, by the time limitation
established by the fourth sentence of that section.
(3) EFFECTIVE DATE- The amendment made by paragraph (1) shall apply in any case
in which the time period for instituting a proceeding under section 32 of title
35, United State Code, had not lapsed before the date of the enactment of this
Act.
(l) Small Business Study-
(1)
DEFINITIONS- In this subsection--
(A) the term
`Chief Counsel' means the Chief Counsel for Advocacy of the Small Business Administration;
(B) the term `General Counsel' means the
General Counsel of the United States Patent and Trademark Office; and
(C) the term `small business concern' has the meaning given that term
under section 3 of the Small Business Act (15 U.S.C. 632).
(A) IN GENERAL- The Chief Counsel,
in consultation with the General Counsel, shall conduct a study of the effects
of eliminating the use of dates of invention in determining whether an applicant
is entitled to a patent under title 35, United States Code.
(B) AREAS OF STUDY- The study conducted under subparagraph (A) shall
include examination of the effects of eliminating the use of invention dates,
including examining--
(i) how the change
would affect the ability of small business concerns to obtain patents and their
costs of obtaining patents;
(ii)
whether the change would create, mitigate, or exacerbate any disadvantages for
applicants for patents that are small business concerns relative to applicants
for patents that are not small business concerns, and whether the change would
create any advantages for applicants for patents that are small business concerns
relative to applicants for patents that are not small business concerns;
(iii) the cost savings and other potential benefits to small business
concerns of the change; and
(iv)
the feasibility and costs and benefits to small business concerns of alternative
means of determining whether an applicant is entitled to a patent under title
35, United States Code.
(3) REPORT- Not later
than the date that is 1 year after the date of the enactment of this Act, the
Chief Counsel shall submit to the Committee on Small Business and Entrepreneurship
and the Committee on the Judiciary of the Senate and the Committee on Small Business
and the Committee on the Judiciary of the House of Representatives a report regarding
the results of the study under paragraph (2).
(m) Report
on Prior User Rights-
(1) IN GENERAL- Not later than the
end of the 4-month period beginning on the date of the enactment of this Act,
the Director shall report, to the Committee on the Judiciary of the Senate and
the Committee on the Judiciary of the House of Representatives, the findings and
recommendations of the Director on the operation of prior user rights in selected
countries in the industrialized world. The report shall include the following:
(A) A comparison between patent laws of the United
States and the laws of other industrialized countries, including members of the
European Union and Japan, Canada, and Australia.
(B) An analysis of the effect of prior user rights on innovation rates in
the selected countries.
(C) An analysis of
the correlation, if any, between prior user rights and start-up enterprises and
the ability to attract venture capital to start new companies.
(D) An analysis of the effect of prior user rights, if any, on small
businesses, universities, and individual inventors.
(E) An analysis of legal and constitutional issues, if any, that arise
from placing trade secret law in patent law.
(F) An analysis of whether the change to a first-to-file patent system creates
a particular need for prior user rights.
(2) CONSULTATION
WITH OTHER AGENCIES- In preparing the report required under paragraph (1), the
Director shall consult with the United States Trade Representative, the Secretary
of State, and the Attorney General.
(1) IN GENERAL- Except as otherwise provided in this section,
the amendments made by this section shall take effect upon the expiration of the
18-month period beginning on the date of the enactment of this Act, and shall
apply to any application for patent, and to any patent issuing thereon, that contains
or contained at any time--
(A) a claim to a claimed
invention that has an effective filing date as defined in section 100(i) of title
35, United States Code, that is on or after the effective date described in this
paragraph; or
(B) a specific reference under
section 120, 121, or 365(c) of title 35, United States Code, to any patent or
application that contains or contained at any time such a claim.
(2) INTERFERING PATENTS- The provisions of sections 102(g), 135, and 291
of title 35, United States Code, as in effect on the day before the date of the
enactment of this Act, shall apply to each claim of an application for patent,
and any patent issued thereon, for which the amendments made by this section also
apply, if such application or patent contains or contained at any time--
(A) a claim to an invention having an effective filing date as defined
in section 100(i) of title 35, United States Code, that occurs before the effective
date set forth in paragraph (1) of this subsection; or
(B) a specific reference under section 120, 121, or 365(c) of title
35, United States Code, to any patent or application that contains or contained
at any time such a claim.
SEC. 3. INVENTOR'S OATH OR
DECLARATION.
(a) Inventor's Oath or Declaration-
(1) IN GENERAL- Section 115 of title 35, United States Code, is amended to
read as follows:
`Sec. 115. Inventor's oath or declaration
`(a) Naming the Inventor; Inventor's Oath or Declaration- An application for patent
that is filed under section 111(a) or commences the national stage under section
371 shall include, or be amended to include, the name of the inventor for any
invention claimed in the application. Except as otherwise provided in this section,
each individual who is the inventor or a joint inventor of a claimed invention
in an application for patent shall execute an oath or declaration in connection
with the application.
`(b) Required Statements- An oath or declaration
under subsection (a) shall contain statements that--
`(1)
the application was made or was authorized to be made by the affiant or declarant;
and
`(2) such individual believes himself or herself
to be the original inventor or an original joint inventor of a claimed invention
in the application.
`(c) Additional Requirements- The Director
may specify additional information relating to the inventor and the invention
that is required to be included in an oath or declaration under subsection (a).
`(d) Substitute Statement-
`(1) IN GENERAL-
In lieu of executing an oath or declaration under subsection (a), the applicant
for patent may provide a substitute statement under the circumstances described
in paragraph (2) and such additional circumstances that the Director may specify
by regulation.
`(2) PERMITTED CIRCUMSTANCES- A substitute
statement under paragraph (1) is permitted with respect to any individual who--
`(A) is unable to file the oath or declaration
under subsection (a) because the individual--
`(ii)
is under legal incapacity; or
`(iii)
cannot be found or reached after diligent effort; or
`(B) is under an obligation to assign the invention but has refused
to make the oath or declaration required under subsection (a).
`(3) CONTENTS- A substitute statement under this subsection shall--
`(A) identify the individual with respect to whom the statement applies;
`(B) set forth the circumstances representing
the permitted basis for the filing of the substitute statement in lieu of the
oath or declaration under subsection (a); and
`(C) contain any additional information, including any showing, required
by the Director.
`(e) Making Required Statements in
Assignment of Record- An individual who is under an obligation of assignment of
an application for patent may include the required statements under subsections
(b) and (c) in the assignment executed by the individual, in lieu of filing such
statements separately.
`(f) Time for Filing- A notice of allowance
under section 151 may be provided to an applicant for patent only if the applicant
for patent has filed each required oath or declaration under subsection (a) or
has filed a substitute statement under subsection (d) or recorded an assignment
meeting the requirements of subsection (e).
`(g) Earlier-Filed
Application Containing Required Statements or Substitute Statement-
`(1) EXCEPTION- The requirements under this section shall not apply to an
individual with respect to an application for patent in which the individual is
named as the inventor or a joint inventor and who claims the benefit under section
120, 121, or 365(c) of the filing of an earlier-filed application, if--
`(A) an oath or declaration meeting the requirements of subsection (a)
was executed by the individual and was filed in connection with the earlier-filed
application;
`(B) a substitute statement
meeting the requirements of subsection (d) was filed in the earlier filed application
with respect to the individual; or
`(C) an
assignment meeting the requirements of subsection (e) was executed with respect
to the earlier-filed application by the individual and was recorded in connection
with the earlier-filed application.
`(2) COPIES
OF OATHS, DECLARATIONS, STATEMENTS, OR ASSIGNMENTS- Notwithstanding paragraph
(1), the Director may require that a copy of the executed oath or declaration,
the substitute statement, or the assignment filed in the earlier-filed application
be included in the later-filed application.
`(h) Supplemental
and Corrected Statements; Filing Additional Statements-
`(1) IN GENERAL- Any person making a statement required under this section may
withdraw, replace, or otherwise correct the statement at any time. If a change
is made in the naming of the inventor requiring the filing of 1 or more additional
statements under this section, the Director shall establish regulations under
which such additional statements may be filed.
`(2)
SUPPLEMENTAL STATEMENTS NOT REQUIRED- If an individual has executed an oath or
declaration meeting the requirements of subsection (a) or an assignment meeting
the requirements of subsection (e) with respect to an application for patent,
the Director may not thereafter require that individual to make any additional
oath, declaration, or other statement equivalent to those required by this section
in connection with the application for patent or any patent issuing thereon.
`(3) SAVINGS CLAUSE- A patent shall not be invalid or unenforceable based
upon the failure to comply with a requirement under this section if the failure
is remedied as provided under paragraph (1).
`(i) Acknowledgment
of Penalties- Any declaration or statement filed pursuant to this section shall
contain an acknowledgment that any willful false statement made in such declaration
or statement is punishable under section 1001 of title 18 by fine or imprisonment
of not more than 5 years, or both.'.
(2) RELATIONSHIP TO
DIVISIONAL APPLICATIONS- Section 121 of title 35, United States Code, is amended
by striking `If a divisional application' and all that follows through `inventor.'.
(3) REQUIREMENTS FOR NONPROVISIONAL APPLICATIONS- Section
111(a) of title 35, United States Code, is amended--
(A) in paragraph (2)(C), by striking `by the applicant' and inserting `or
declaration';
(B) in the heading for paragraph
(3), by inserting `OR DECLARATION' after `AND OATH'; and
(C) by inserting `or declaration' after `and oath' each place it appears.
(4) CONFORMING AMENDMENT- The item relating to
section 115 in the table of sections for chapter 11 of title 35, United States
Code, is amended to read as follows:
`115. Inventor's
oath or declaration.'.
(b) Filing by Other Than Inventor-
(1) IN GENERAL- Section 118 of title 35, United States Code,
is amended to read as follows:
`Sec. 118. Filing by other
than inventor
`A person to whom the inventor has assigned or is
under an obligation to assign the invention may make an application for patent.
A person who otherwise shows sufficient proprietary interest in the matter may
make an application for patent on behalf of and as agent for the inventor on proof
of the pertinent facts and a showing that such action is appropriate to preserve
the rights of the parties. If the Director grants a patent on an application filed
under this section by a person other than the inventor, the patent shall be granted
to the real party in interest and upon such notice to the inventor as the Director
considers to be sufficient.'.
(2) CONFORMING AMENDMENT-
Section 251 of title 35, United States Code, is amended in the third undesignated
paragraph by inserting `or the application for the original patent was filed by
the assignee of the entire interest' after `claims of the original patent'.
(c) Specification- Section 112 of title 35, United States Code, is amended--
(1) in the first undesignated paragraph--
(A) by striking `The specification' and inserting `(a) In General- The specification';
and
(B) by striking `of carrying out his
invention' and inserting `or joint inventor of carrying out the invention';
(2) in the second undesignated paragraph--
(A) by striking `The specification' and inserting `(b) Conclusion- The specification';
and
(B) by striking `applicant regards as
his invention' and inserting `inventor or a joint inventor regards as the invention';
(3) in the third undesignated paragraph, by striking
`A claim' and inserting `(c) Form- A claim';
(4) in
the fourth undesignated paragraph, by striking `Subject to the following paragraph,'
and inserting `(d) Reference in Dependent Forms- Subject to subsection (e),';
(5) in the fifth undesignated paragraph, by striking
`A claim' and inserting `(e) Reference in Multiple Dependent Form- A claim'; and
(6) in the last undesignated paragraph, by striking
`An element' and inserting `(f) Element in Claim for a Combination- An element'.
(d) Conforming Amendments-
(1) Sections
111(b)(1)(A) is amended by striking `the first paragraph of section 112 of this
title' and inserting `section 112(a)'.
(2) Section
111(b)(2) is amended by striking `the second through fifth paragraphs of section
112,' and inserting `subsections (b) through (e) of section 112,'.
(e) Effective Date- The amendments made by this section 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 any patent application that is filed on or after that
effective date.
SEC. 4. DEFENSE TO INFRINGEMENT BASED ON EARLIER
INVENTOR.
Section 273 of title 35, United States Code, is amended
as follows:
(1) Subsection (a) is amended--
(A) in paragraph (1), by striking `use of a method in' and inserting
`use of the subject matter of a patent in or outside' ;
(B) by striking paragraph (3); and
(C) by redesignating paragraph (4) as paragraph (3).
(2) Subsection (b) is amended--
(A) in paragraph
(1), by striking `for a method';
(B) in paragraph
(2), by striking `patented method' and inserting `patented process';
(i)
by striking subparagraph (A);
(ii)
by redesignating subparagraphs (B) and (C) as subparagraph (A) and (C), respectively;
and
(iii) by adding at the end
the following:
`(i) DEFENSE NOT AVAILABLE IN CERTAIN CASES- A person may not assert
the defense under this section if the subject matter of the patent on which the
defense is based was developed pursuant to a funding agreement under chapter 18
of this title or by a nonprofit institution of higher education, or a technology
transfer organization affiliated with such an institution, that did not receive
funding from a private business enterprise in support of that development.
`(ii) DEFINITIONS- In this subparagraph--
`(I) the term `institution of higher education' has the meaning
given that term in section 101(a) of the Higher Education Act of 1965 (20 U.S.C.
1001(a)); and
`(II) the
term `technology transfer organization' means an organization the primary purpose
of which is to facilitate the commercialization of technologies developed by one
or more institutions of higher education.'; and
(D) by amending paragraph (6) to read as follows:
`(A) IN GENERAL- The
defense under this section may be asserted only by the person who performed or
caused the performance of the acts necessary to establish the defense, as well
as any other entity that controls, is controlled by, or is under common control
with such person, and, except for any transfer to the patent owner, the right
to assert the defense shall not be licensed or assigned or transferred to another
person except as an ancillary and subordinate part of a good faith assignment
or transfer for other reasons of the entire enterprise or line of business to
which the defense relates.
`(B) EXCEPTION-
Notwithstanding subparagraph (A), any person may, on the person's own behalf,
assert a defense based on the exhaustion of rights provided under paragraph (2),
including any necessary elements thereof.'.
SEC. 5.
POST-GRANT REVIEW PROCEEDINGS.
(a) Inter Partes Review- Chapter
31 of title 35, United States Code, is amended to read as follows:
`CHAPTER
31--INTER PARTES REVIEW
`311. Inter partes review.
`313. Preliminary response to petition.
`314.
Institution of inter partes review.
`315. Relation
to other proceedings or actions.
`316. Conduct of inter
partes review.
`318. Decision of the Board.
`320. Request for stay of certain proceedings.
`Sec.
311. Inter partes review
`(a) In General- Subject to the provisions
of this chapter, a person who is not the owner of a patent may file with the Office
a petition to institute an inter partes review of the patent. The Director shall
establish, by regulation, fees to be paid by the person requesting the review,
in such amounts as the Director determines to be reasonable, considering the aggregate
costs of the review.
`(b) Scope- A petitioner in an inter partes
review may request to cancel as unpatentable 1 or more claims of a patent only
on a ground that could be raised under section 102 or 103 and only on the basis
of prior art consisting of patents or printed publications.
`(c)
Filing Deadline- A petition for inter partes review shall be filed after the later
of either--
`(1) the date that is 12 months after the grant
of a patent or issuance of a reissue of a patent; or
`(2) if a post-grant review is instituted under chapter 32, the date of the termination
of such post-grant review.
`Sec. 312. Petitions
`(a) Requirements of Petition- A petition filed under section 311 may be considered
only if--
`(1) the petition is accompanied by payment of
the fee established by the Director under section 311;
`(2) the petition identifies all real parties in interest;
`(3) the petition identifies, in writing and with particularity, each claim
challenged, the grounds on which the challenge to each claim is based, and the
evidence that supports the grounds for the challenge to each claim, including--
`(A) copies of patents and printed publications
that the petitioner relies upon in support of the petition; and
`(B) affidavits or declarations of supporting evidence and opinions,
if the petitioner relies on expert opinions;
`(4)
the petition provides such other information as the Director may require by regulation;
and
`(5) the petitioner provides copies of any of the
documents required under paragraphs (2), (3), and (4) to the patent owner or,
if applicable, the designated representative of the patent owner.
`(b) Public Availability- As soon as practicable after the receipt of a petition
under section 311, the Director shall make the petition available to the public.
`Sec. 313. Preliminary response to petition
`(a)
Preliminary Response- If an inter partes review petition is filed under section
311, the patent owner shall have the right to file a preliminary response within
a time period set by the Director.
`(b) Content of Response-
A preliminary response to a petition for inter partes review shall set forth reasons
why no inter partes review should be instituted based upon the failure of the
petition to meet any requirement of this chapter.
`Sec. 314. Institution
of inter partes review
`(a) Threshold- The Director may not authorize
an inter partes review to commence unless the Director determines that the information
presented in the petition filed under section 311 and any response filed under
section 313 shows that a substantial new question of patentability exists.
`(b) Timing- The Director shall determine whether to institute an inter partes
review under this chapter pursuant to a petition filed under section 311 within
3 months after--
`(1) receiving a preliminary response to
the petition under section 313; or
`(2) if no such
preliminary response is filed, the last date on which such response may be filed.
`(c) Notice- The Director shall notify the petitioner and
patent owner, in writing, of the Director's determination under subsection (a),
and shall make such notice available to the public as soon as is practicable.
Such notice shall include the date on which the review shall commence.
`(d) No Appeal- The determination by the Director whether to institute an inter
partes review under this section shall be final and nonappealable.
`Sec.
315. Relation to other proceedings or actions
`(a) Infringer's
Civil Action-
`(1) INTER PARTES REVIEW BARRED BY CIVIL ACTION-
An inter partes review may not be instituted if, before the date on which the
petition for such a review is filed, the petitioner, real party in interest, or
privy of the petitioner filed a civil action challenging the validity of a claim
of the patent.
`(2) STAY OF CIVIL ACTION- If the petitioner,
real party in interest, or privy of the petitioner files a civil action challenging
the validity of a claim of the patent on or after the date on which the petitioner
files a petition for inter partes review of the patent, that civil action shall
be automatically stayed until either--
`(A) the
patent owner requests to lift the stay;
`(B)
the patent owner files a civil action or counterclaim alleging that the petitioner,
real party in interest, or privy of the petitioner has infringed the patent; or
`(C) the petitioner, real party in interest,
or privy of the petitioner requests to dismiss the civil action.
`(3) TREATMENT OF COUNTERCLAIM- A counterclaim challenging the validity of
a claim of a patent does not constitute a civil action challenging the validity
of a claim of a patent for purposes of this subsection.
`(b) Patent Owner's Action- An inter partes review may not be instituted if the
petition requesting the proceeding is filed more than 9 months after the date
on which the petitioner, real party in interest, or privy of the petitioner is
served with a complaint alleging infringement of the patent. The time limitation
set forth in the preceding sentence shall not apply to a request for joinder under
subsection (c).
`(c) Joinder- If the Director institutes an inter
partes review, the Director, in his or her discretion, may join as a party to
that inter partes review any person who properly files a petition under section
311 that the Director, after receiving a preliminary response under section 313
or the expiration of the time for filing such a response, determines warrants
the institution of an inter partes review under section 314.
`(d) Multiple Proceedings- Notwithstanding sections 135(a), 251, and 252, and
chapter 30, during the pendency of an inter partes review, if another proceeding
or matter involving the patent is before the Office, the Director may determine
the manner in which the inter partes review or other proceeding or matter may
proceed, including providing for stay, transfer, consolidation, or termination
of any such matter or proceeding.
`(1) PROCEEDINGS BEFORE THE OFFICE- The petitioner in an inter partes review
under this chapter, or the real party in interest or privy of the petitioner,
may not request or maintain a proceeding before the Office with respect to a claim
on any ground that the petitioner raised or reasonably could have raised during
an inter partes review of the claim that resulted in a final written decision
under section 318(a).
`(2) CIVIL ACTIONS AND OTHER
PROCEEDINGS- The petitioner in an inter partes review under this chapter, or the
real party in interest or privy of the petitioner, may not assert either in a
civil action arising in whole or in part under section 1338 of title 28 or in
a proceeding before the International Trade Commission under section 337 of the
Tariff Act of 1930 that a claim in a patent is invalid on any ground that the
petitioner raised or reasonably could have raised during an inter partes review
of the claim that resulted in a final written decision under section 318(a).
`Sec.
316. Conduct of inter partes review
`(a) Regulations- The Director
shall prescribe regulations--
`(1) providing that the file
of any proceeding under this chapter shall be made available to the public, except
that any petition or document filed with the intent that it be sealed shall, if
accompanied by a motion to seal, be treated as sealed pending the outcome of the
ruling on the motion;
`(2) setting forth the standards
for the showing of sufficient grounds to institute a review under section 314(a);
`(3) establishing procedures for the submission of
supplemental information after the petition is filed;
`(4) in accordance with section 2(b)(2), establishing and governing inter partes
review under this chapter and the relationship of such review to other proceedings
under this title;
`(5) setting a time period for requesting
joinder under section 315(c);
`(6) setting forth standards
and procedures for discovery of relevant evidence, including that such discovery
shall be limited to--
`(A) the deposition of witnesses
submitting affidavits or declarations; and
`(B) what is otherwise necessary in the interest of justice;
`(7) prescribing sanctions for abuse of discovery, abuse of process, or any
other improper use of the proceeding, such as to harass or to cause unnecessary
delay or an unnecessary increase in the cost of the proceeding;
`(8) providing for protective orders governing the exchange and submission
of confidential information;
`(9) providing for the
filing by the patent owner of a response to the petition under section 313 after
an inter partes review has been instituted, and requiring that the patent owner
file with such response, through affidavits or declarations, any additional factual
evidence and expert opinions on which the patent owner relies in support of the
response;
`(10) setting forth standards and procedures
for allowing the patent owner to move to amend the patent under subsection (d)
to cancel a challenged claim or propose a reasonable number of substitute claims,
and ensuring that any information submitted by the patent owner in support of
any amendment entered under subsection (d) is made available to the public as
part of the prosecution history of the patent;
`(11)
providing either party with the right to an oral hearing as part of the proceeding;
and
`(12) requiring that the final determination in
an inter partes review be issued not later than 1 year after the date on which
the Director notices the institution of a review under this chapter, except that
the Director may, for good cause shown, extend the 1-year period by not more than
6 months, and may adjust the time periods in this paragraph in the case of joinder
under section 315(c).
`(b) Considerations- In prescribing
regulations under this section, the Director shall consider the effect of any
such regulation on the economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to timely complete
proceedings instituted under this chapter.
`(c) Patent Trial
and Appeal Board- The Patent Trial and Appeal Board shall, in accordance with
section 6, conduct each proceeding authorized by the Director.
`(d) Amendment of the Patent-
`(1) IN GENERAL- During an
inter partes review instituted under this chapter, the patent owner may file 1
motion to amend the patent in 1 or more of the following ways:
`(A) Cancel any challenged patent claim.
`(B) For each challenged claim, propose a reasonable number of substitute
claims.
`(2) ADDITIONAL MOTIONS- Additional motions
to amend may be permitted upon the joint request of the petitioner and the patent
owner to materially advance the settlement of a proceeding under section 317,
or as permitted by regulations prescribed by the Director.
`(3) SCOPE OF CLAIMS- An amendment under this subsection may not enlarge
the scope of the claims of the patent or introduce new matter.
`(e) Evidentiary Standards- In an inter partes review instituted under this chapter,
the petitioner shall have the burden of proving a proposition of unpatentability
by a preponderance of the evidence.
`Sec. 317. Settlement
`(a) In General- An inter partes review instituted under this chapter shall be
terminated with respect to any petitioner upon the joint request of the petitioner
and the patent owner, unless the Office has decided the merits of the proceeding
before the request for termination is filed. If the inter partes review is terminated
with respect to a petitioner under this section, no estoppel under section 315(e)
shall apply to that petitioner. If no petitioner remains in the inter partes review,
the Office may terminate the review or proceed to a final written decision under
section 318(a).
`(b) Agreements in Writing- Any agreement or
understanding between the patent owner and a petitioner, including any collateral
agreements referred to in such agreement or understanding, made in connection
with, or in contemplation of, the termination of an inter partes review under
this section shall be in writing and a true copy of such agreement or understanding
shall be filed in the Office before the termination of the inter partes review
as between the parties. If any party filing such agreement or understanding so
requests, the copy shall be kept separate from the file of the inter partes review,
and shall be made available only to Federal Government agencies upon written request,
or to any other person on a showing of good cause.
`Sec. 318.
Decision of the Board
`(a) Final Written Decision- If an inter
partes review is instituted and not dismissed under this chapter, the Patent Trial
and Appeal Board shall issue a final written decision with respect to the patentability
of any patent claim challenged by the petitioner and any new claim added under
section 316(d).
`(b) Certificate- If the Patent Trial and Appeal
Board issues a final written decision under subsection (a) and the time for appeal
has expired or any appeal has terminated, the Director shall issue and publish
a certificate canceling any claim of the patent finally determined to be unpatentable,
confirming any claim of the patent determined to be patentable, and incorporating
in the patent by operation of the certificate any new or amended claim determined
to be patentable.
`(c) Data on Length of Review- The Office shall
make available to the public data describing the length of time between the institution
of, and the issuance of a final written decision under subsection (a) for, each
inter partes review.
`Sec. 319. Appeal
`A party
dissatisfied with the final written decision of the Patent Trial and Appeal Board
under section 318(a) may appeal the decision pursuant to sections 141 through
144. Any party to the inter partes review shall have the right to be a party to
the appeal.
`Sec. 320. Request for stay of certain proceedings
`If a party seeks a stay of a civil action alleging infringement of a patent under
section 281, or a proceeding before the International Trade Commission under section
337 of the Tariff Act of 1930, relating to an inter partes review under this chapter,
the court shall decide whether to enter a stay based on--
`(1) whether a stay, or the denial thereof, will simplify the issues in question
and streamline the trial;
`(2) whether discovery is
complete and whether a trial date has been set;
`(3)
whether a stay, or the denial thereof, would unduly prejudice the nonmoving party
or present a clear tactical advantage for the moving party; and
`(4) whether a stay, or the denial thereof, will reduce the burden of litigation
on the parties and on the court.'.
(b) Conforming Amendment-
The table of chapters for part III of title 35, United States Code, is amended
by striking the item relating to chapter 31 and inserting the following:
-------------------------------
-------------------------------
`31.
Inter Partes Review 311.'
-------------------------------
(c) Regulations and Effective Date-
(1) REGULATIONS- The
Director shall, not later than the date that is 1 year after the date of the enactment
of this Act, issue regulations to carry out chapter 31 of title 35, United States
Code, as amended by subsection (a) of this section.
(A) IN GENERAL- The amendments
made by subsection (a) 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 any patent
issued before, on, or after that effective date.
(B) GRADUATED IMPLEMENTATION- The Director may impose a limit on the number
of inter partes reviews that may be instituted under chapter 31 of title 35, United
States Code, during each of the first 4 1-year periods in which the amendments
made by subsection (a) are in effect, if such number in each year equals or exceeds
the number of such inter partes reexaminations that are ordered in the last fiscal
year ending before the effective date of the amendments made by subsection (a).
(d) Post-Grant Review- Part III of title 35, United
States Code, is amended by adding at the end the following:
`CHAPTER
32--POST-GRANT REVIEW
`323. Preliminary response to petition.
`324.
Institution of post-grant review.
`325. Relation to
other proceedings or actions.
`326. Conduct of post-grant
review.
`328. Decision of the Board.
`330. Request for stay of certain proceedings.
`Sec.
321. Post-grant review
`(a) In General- Subject to the provisions
of this chapter, a person who is not the patent owner may file with the Office
a petition to institute a post-grant review of a patent. The Director shall establish,
by regulation, fees to be paid by the person requesting the review, in such amounts
as the Director determines to be reasonable, considering the aggregate costs of
the post-grant review.
`(b) Scope- A petitioner in a post-grant
review may request to cancel as unpatentable 1 or more claims of a patent on any
ground that could be raised under paragraph (2) or (3) of section 282(b) (relating
to invalidity of the patent or any claim).
`(c) Filing Deadline-
A petition for a post-grant review may only be filed not later than the date that
is 12 months after the date of the grant of the patent or of the issuance of a
reissue patent (as the case may be).
`Sec. 322. Petitions
`(a) Requirements of Petition- A petition filed under section 321 may be considered
only if--
`(1) the petition is accompanied by payment of
the fee established by the Director under section 321;
`(2) the petition identifies all real parties in interest;
`(3) the petition identifies, in writing and with particularity, each claim
challenged, the grounds on which the challenge to each claim is based, and the
evidence that supports the grounds for the challenge to each claim, including--
`(A) copies of patents and printed publications
that the petitioner relies upon in support of the petition; and
`(B) affidavits or declarations of supporting evidence and opinions,
if the petitioner relies on other factual evidence or on expert opinions;
`(4) the petition provides such other information as the Director may require
by regulation; and
`(5) the petitioner provides copies
of any of the documents required under paragraphs (2), (3), and (4) to the patent
owner or, if applicable, the designated representative of the patent owner.
`(b) Public Availability- As soon as practicable after the receipt of a petition
under section 321, the Director shall make the petition available to the public.
`Sec. 323. Preliminary response to petition
`(a)
Preliminary Response- If a post-grant review petition is filed under section 321,
the patent owner shall have the right to file a preliminary response to the petition
within 2 months after the date on which the petition is filed.
`(b) Content of Response- A preliminary response to a petition for post-grant
review shall set forth reasons why no post-grant review should be instituted based
upon the failure of the petition to meet any requirement of this chapter.
`Sec.
324. Institution of post-grant review
`(a) Threshold- The Director
may not authorize a post-grant review to commence unless the Director determines
that the information presented in the petition filed under section 321, if such
information is not rebutted, would demonstrate that it is more likely than not
that at least 1 of the claims challenged in the petition is unpatentable.
`(b) Additional Grounds- The determination required under subsection (a) may also
be satisfied by a showing that the petition raises a novel or unsettled legal
question that is important to other patents or patent applications.
`(c) Timing- The Director shall determine whether to institute a post-grant review
under this chapter pursuant to a petition filed under section 321 within 3 months
after--
`(1) receiving a preliminary response to the petition
under section 323; or
`(2) if no such preliminary response
is filed, the last date on which such response may be filed.
`(d) Notice- The Director shall notify the petitioner and patent owner, in writing,
of the Director's determination under subsection (a) or (b), and shall make such
notice available to the public as soon as is practicable. The Director shall make
each notice of the institution of a post-grant review available to the public.
Such notice shall include the date on which the review shall commence.
`(e) No Appeal- The determination by the Director whether to institute a post-grant
review under this section shall be final and nonappealable.
`Sec.
325. Relation to other proceedings or actions
`(a) Infringer's
Civil Action-
`(1) POST-GRANT REVIEW BARRED BY CIVIL ACTION-
A post-grant review may not be instituted under this chapter if, before the date
on which the petition for such a review is filed, the petitioner, real party in
interest, or privy of the petitioner filed a civil action challenging the validity
of a claim of the patent.
`(2) STAY OF CIVIL ACTION-
If the petitioner, real party in interest, or privy of the petitioner files a
civil action challenging the validity of a claim of the patent on or after the
date on which the petitioner files a petition for post-grant review of the patent,
that civil action shall be automatically stayed until either--
`(A) the patent owner requests to lift the stay;
`(B) the patent owner files a civil action or counterclaim alleging
that the petitioner, real party in interest, or privy of the petitioner has infringed
the patent; or
`(C) the petitioner, real
party in interest, or privy of the petitioner requests to dismiss his civil action.
`(3) TREATMENT OF COUNTERCLAIM- A counterclaim
challenging the validity of a claim of a patent does not constitute a civil action
challenging the validity of a claim of a patent for purposes of this subsection.
`(b) Preliminary Injunctions- If a civil action alleging
infringement of a patent is filed within 3 months after the date on which the
patent is granted, the court may not stay its consideration of the patent owner's
motion for a preliminary injunction against infringement of the patent on the
basis that a petition for post-grant review has been filed under this chapter
or that such a post-grant review has been instituted under this chapter.
`(c) Joinder- If more than 1 petition for a post-grant review under this chapter
is properly filed against the same patent and the Director determines that more
than 1 of these petitions warrants the institution of a post-grant review under
section 324, the Director may consolidate such reviews into a single post-grant
review.
`(d) Multiple Proceedings- Notwithstanding sections 135(a),
251, and 252, and chapter 30, during the pendency of any post-grant review under
this chapter, if another proceeding or matter involving the patent is before the
Office, the Director may determine the manner in which the post-grant review or
other proceeding or matter may proceed, including providing for the stay, transfer,
consolidation, or termination of any such matter or proceeding. In determining
whether to institute or order a proceeding under this chapter, chapter 30, or
chapter 31, the Director may take into account whether, and reject the petition
or request because, the same or substantially the same prior art or arguments
previously were presented to the Office.
`(1) PROCEEDINGS BEFORE THE OFFICE- The petitioner in a post-grant review
under this chapter, or the real party in interest or privy of the petitioner,
may not request or maintain a proceeding before the Office with respect to a claim
on any ground that the petitioner raised or reasonably could have raised during
a post-grant review of the claim that resulted in a final written decision under
section 328(a).
`(2) CIVIL ACTIONS AND OTHER PROCEEDINGS-
The petitioner in a post-grant review under this chapter, or the real party in
interest or privy of the petitioner, may not assert either in a civil action arising
in whole or in part under section 1338 of title 28 or in a proceeding before the
International Trade Commission under section 337 of the Tariff Act of 1930 that
a claim in a patent is invalid on any ground that the petitioner raised during
a post-grant review of the claim that resulted in a final written decision under
section 328(a).
`(f) Reissue Patents- A post-grant review
may not be instituted under this chapter if the petition requests cancellation
of a claim in a reissue patent that is identical to or narrower than a claim in
the original patent from which the reissue patent was issued, and the time limitations
in section 321(c) would bar filing a petition for a post-grant review for such
original patent.
`Sec. 326. Conduct of post-grant review
`(a) Regulations- The Director shall prescribe regulations--
`(1) providing that the file of any proceeding under this chapter shall be
made available to the public, except that any petition or document filed with
the intent that it be sealed shall, if accompanied by a motion to seal, be treated
as sealed pending the outcome of the ruling on the motion;
`(2) setting forth the standards for the showing of sufficient grounds to
institute a review under subsections (a) and (b) of section 324;
`(3) establishing procedures for the submission of supplemental information
after the petition is filed;
`(4) in accordance with
section 2(b)(2), establishing and governing a post-grant review under this chapter
and the relationship of such review to other proceedings under this title;
`(5) setting forth standards and procedures for discovery of relevant evidence,
including that such discovery shall be limited to evidence directly related to
factual assertions advanced by either party in the proceeding;
`(6) prescribing sanctions for abuse of discovery, abuse of process, or any
other improper use of the proceeding, such as to harass or to cause unnecessary
delay or an unnecessary increase in the cost of the proceeding;
`(7) providing for protective orders governing the exchange and submission
of confidential information;
`(8) allowing the patent
owner to file a response to the petition after a post-grant review has been instituted,
and requiring that the patent owner file with such response, through affidavits
or declarations, any additional factual evidence and expert opinions on which
the patent owner relies in support of the response;
`(9) setting forth standards and procedures for allowing the patent owner to move
to amend the patent under subsection (d) to cancel a challenged claim or propose
a reasonable number of substitute claims, and ensuring that any information submitted
by the patent owner in support of any amendment entered under subsection (d) is
made available to the public as part of the prosecution history of the patent;
`(10) providing either party with the right to an oral
hearing as part of the proceeding; and
`(11) requiring
that the final determination in any post-grant review be issued not later than
1 year after the date on which the Director notices the institution of a proceeding
under this chapter, except that the Director may, for good cause shown, extend
the 1-year period by not more than 6 months, and may adjust the time periods in
this paragraph in the case of joinder under section 325(c).
`(b) Considerations- In prescribing regulations under this section, the Director
shall consider the effect of any such regulation on the economy, the integrity
of the patent system, the efficient administration of the Office, and the ability
of the Office to timely complete proceedings instituted under this chapter.
`(c) Patent Trial and Appeal Board- The Patent Trial and Appeal Board shall, in
accordance with section 6, conduct each proceeding authorized by the Director.
`(d) Amendment of the Patent-
`(1) IN GENERAL-
During a post-grant review instituted under this chapter, the patent owner may
file 1 motion to amend the patent in 1 or more of the following ways:
`(A) Cancel any challenged patent claim.
`(B) For each challenged claim, propose a reasonable number of substitute
claims.
`(2) ADDITIONAL MOTIONS- Additional motions
to amend may be permitted upon the joint request of the petitioner and the patent
owner to materially advance the settlement of a proceeding under section 327,
or upon the request of the patent owner for good cause shown.
`(3) SCOPE OF CLAIMS- An amendment under this subsection may not enlarge
the scope of the claims of the patent or introduce new matter.
`(e) Evidentiary Standards- In a post-grant review instituted under this chapter,
the petitioner shall have the burden of proving a proposition of unpatentability
by a preponderance of the evidence.
`Sec. 327. Settlement
`(a) In General- A post-grant review instituted under this chapter shall be terminated
with respect to any petitioner upon the joint request of the petitioner and the
patent owner, unless the Office has decided the merits of the proceeding before
the request for termination is filed. If the post-grant review is terminated with
respect to a petitioner under this section, no estoppel under section 325(e) shall
apply to that petitioner. If no petitioner remains in the post-grant review, the
Office may terminate the post-grant review or proceed to a final written decision
under section 328(a).
`(b) Agreements in Writing- Any agreement
or understanding between the patent owner and a petitioner, including any collateral
agreements referred to in such agreement or understanding, made in connection
with, or in contemplation of, the termination of a post-grant review under this
section shall be in writing, and a true copy of such agreement or understanding
shall be filed in the Office before the termination of the post-grant review as
between the parties. If any party filing such agreement or understanding so requests,
the copy shall be kept separate from the file of the post-grant review, and shall
be made available only to Federal Government agencies upon written request, or
to any other person on a showing of good cause.
`Sec. 328. Decision
of the Board
`(a) Final Written Decision- If a post-grant review
is instituted and not dismissed under this chapter, the Patent Trial and Appeal
Board shall issue a final written decision with respect to the patentability of
any patent claim challenged by the petitioner and any new claim added under section
326(d).
`(b) Certificate- If the Patent Trial and Appeal Board
issues a final written decision under subsection (a) and the time for appeal has
expired or any appeal has terminated, the Director shall issue and publish a certificate
canceling any claim of the patent finally determined to be unpatentable, confirming
any claim of the patent determined to be patentable, and incorporating in the
patent by operation of the certificate any new or amended claim determined to
be patentable.
`(c) Data on Length of Review- The Office shall
make available to the public data describing the length of time between the institution
of, and the issuance of a final written decision under subsection (a) for, each
post-grant review.
`Sec. 329. Appeal
`A party
dissatisfied with the final written decision of the Patent Trial and Appeal Board
under section 328(a) may appeal the decision pursuant to sections 141 through
144. Any party to the post-grant review shall have the right to be a party to
the appeal.
`Sec. 330. Request for stay of certain proceedings
`If a party seeks a stay of a civil action alleging infringement of a patent under
section 281, or a proceeding before the International Trade Commission under section
337 of the Tariff Act of 1930, relating to a post-grant review under this chapter,
the court shall decide whether to enter a stay based on--
`(1) whether a stay, or the denial thereof, will simplify the issues in question
and streamline the trial;
`(2) whether discovery is
complete and whether a trial date has been set;
`(3)
whether a stay, or the denial thereof, would unduly prejudice the nonmoving party
or present a clear tactical advantage for the moving party; and
`(4) whether a stay, or the denial thereof, will reduce the burden of litigation
on the parties and on the court.'.
(e) Conforming Amendment-
The table of chapters for part III of title 35, United States Code, is amended
by adding at the end the following:
-----------------------------
-----------------------------
`32.
Post-Grant Review 321.'
-----------------------------
(f) Regulations and Effective Date-
(1) REGULATIONS- The
Director shall, not later than the date that is 1 year after the date of the enactment
of this Act, issue regulations to carry out chapter 32 of title 35, United States
Code, as added by subsection (d) of this section.
(A) IN GENERAL- The amendments
made by subsection (d) shall take effect upon the expiration of the 1-year period
beginning on the date of the enactment of this Act and, except as provided in
section 18 and in paragraph (3), shall apply to any patent that is described in
section 2(n)(1).
(B) LIMITATION- The Director
may impose a limit on the number of post-grant reviews that may be instituted
under chapter 32 of title 35, United States Code, during each of the 4 years following
the effective date set forth in subparagraph (A).
(3) PENDING INTERFERENCES-
(A) PROCEDURES IN GENERAL-
The Director shall determine, and include in the regulations issued under paragraph
(1), the procedures under which an interference commenced before the effective
date set forth in paragraph (2) is to proceed, including whether such interference--
(i) is to be dismissed without prejudice
to the filing of a petition for a post-grant review under chapter 32 of title
35, United States Code; or
(ii)
is to proceed as if this Act had not been enacted.
(B) PROCEEDINGS BY PATENT TRIAL AND APPEAL BOARD- For purposes of an
interference that is commenced before the effective date set forth in paragraph
(2), the Director may deem the Patent Trial and Appeal Board to be the Board of
Patent Appeals and Interferences, and may allow the Patent Trial and Appeal Board
to conduct any further proceedings in that interference.
(C) APPEALS- The authorization to appeal or have remedy from derivation
proceedings in sections 141(d) and 146 of title 35, United States Code, and the
jurisdiction to entertain appeals from derivation proceedings in section 1295(a)(4)(A)
of title 28, United States Code, shall be deemed to extend to any final decision
in an interference that is commenced before the effective date set forth in paragraph
(2) of this subsection and that is not dismissed pursuant to this paragraph.
(g) Citation of Prior Art and Written Statements-
(1) IN
GENERAL- Section 301 of title 35, United States Code, is amended to read as follows:
`Sec. 301. Citation of prior art and written statements
`(a) In General- Any person at any time may cite to the Office in writing--
`(1) prior art consisting of patents or printed publications which that person
believes to have a bearing on the patentability of any claim of a particular patent;
or
`(2) statements of the patent owner filed in a proceeding
before a Federal court or the Office in which the patent owner took a position
on the scope of any claim of a particular patent.
`(b) Official
File- If the person citing prior art or written statements pursuant to subsection
(a) explains in writing the pertinence and manner of applying the prior art or
written statements to at least 1 claim of the patent, the citation of the prior
art or written statements and the explanation thereof shall become a part of the
official file of the patent.
`(c) Additional Information- A party
that submits a written statement pursuant to subsection (a)(2) shall include any
other documents, pleadings, or evidence from the proceeding in which the statement
was filed that addresses the written statement.
`(d) Limitations-
A written statement submitted pursuant to subsection (a)(2), and additional information
submitted pursuant to subsection (c), shall not be considered by the Office for
any purpose other than to determine the proper meaning of a patent claim in a
proceeding that is ordered or instituted pursuant to section 304, 314, or 324.
If any such written statement or additional information is subject to an applicable
protective order, it shall be redacted to exclude information that is subject
to that order.
`(e) Confidentiality- Upon the written request
of the person citing prior art or written statements pursuant to subsection (a),
that person's identity shall be excluded from the patent file and kept confidential.'.
(2) CONFORMING AMENDMENT- The item relating to section 301
in the table of sections for chapter 30 of title 35, United States Code, is amended
to read as follows:
`301. Citation of prior art and
written statements.'.
(3) 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 any patent
issued before, on, or after that effective date.
(1) DETERMINATION BY DIRECTOR-
(A) IN GENERAL- Section 303(a) of title 35, United States Code, is amended
by striking `section 301 of this title' and inserting `section 301 or 302'.
(B) EFFECTIVE DATE- The amendment made by this paragraph 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 any patent issued before, on, or after that effective
date.
(A) IN GENERAL- Section 306 of title 35, United States Code, is amended by striking
`145' and inserting `144'.
(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 appeal of a reexamination that is
pending before the Board of Patent Appeals and Interferences or the Patent Trial
and Appeal Board on or after the date of the enactment of this Act.
SEC.
6. PATENT TRIAL AND APPEAL BOARD.
(a) Composition and Duties-
(1) IN GENERAL- Section 6 of title 35, United States Code,
is amended to read as follows:
`Sec. 6. Patent Trial and
Appeal Board
`(a) In General- There shall be in the Office a Patent
Trial and Appeal Board. The Director, the Deputy Director, the Commissioner for
Patents, the Commissioner for Trademarks, and the administrative patent judges
shall constitute the Patent Trial and Appeal Board. The administrative patent
judges shall be persons of competent legal knowledge and scientific ability who
are appointed by the Secretary, in consultation with the Director. Any reference
in any Federal law, Executive order, rule, regulation, or delegation of authority,
or any document of or pertaining to the Board of Patent Appeals and Interferences
is deemed to refer to the Patent Trial and Appeal Board.
`(b)
Duties- The Patent Trial and Appeal Board shall--
`(1) on
written appeal of an applicant, review adverse decisions of examiners upon applications
for patents pursuant to section 134(a);
`(2) review
appeals of reexaminations pursuant to section 134(b);
`(3) conduct derivation proceedings pursuant to section 135; and
`(4) conduct inter partes reviews and post-grant reviews pursuant to chapters
31 and 32.
`(c) 3-Member Panels- Each appeal, derivation
proceeding, post-grant review, and inter partes review shall be heard by at least
3 members of the Patent Trial and Appeal Board, who shall be designated by the
Director. Only the Patent Trial and Appeal Board may grant rehearings.
`(d) Treatment of Prior Appointments- The Secretary of Commerce may, in the Secretary's
discretion, deem the appointment of an administrative patent judge who, before
the date of the enactment of this subsection, held office pursuant to an appointment
by the Director to take effect on the date on which the Director initially appointed
the administrative patent judge. It shall be a defense to a challenge to the appointment
of an administrative patent judge on the basis of the judge's having been originally
appointed by the Director that the administrative patent judge so appointed was
acting as a de facto officer.'.
(2) CONFORMING AMENDMENT-
The item relating to section 6 in the table of sections for chapter 1 of title
35, United States Code, is amended to read as follows:
`6. Patent Trial and Appeal Board.'.
(b) Administrative
Appeals- Section 134 of title 35, United States Code, is amended--
(1) in subsection (b), by striking `any reexamination proceeding' and inserting
`a reexamination'; and
(2) by striking subsection (c).
(1) IN GENERAL-
Section 141 of title 35, United States Code, is amended to read as follows:
`Sec.
141. Appeal to the Court of Appeals for the Federal Circuit
`(a)
Examinations- An applicant who is dissatisfied with the final decision in an appeal
to the Patent Trial and Appeal Board under section 134(a) may appeal the Board's
decision to the United States Court of Appeals for the Federal Circuit. By filing
such an appeal, the applicant waives his or her right to proceed under section
145.
`(b) Reexaminations- A patent owner who is dissatisfied
with the final decision in an appeal of a reexamination to the Patent Trial and
Appeal Board under section 134(b) may appeal the Board's decision only to the
United States Court of Appeals for the Federal Circuit.
`(c)
Post-Grant and Inter Partes Reviews- A party to a post-grant or inter partes review
who is dissatisfied with the final written decision of the Patent Trial and Appeal
Board under section 318(a) or 328(a) may appeal the Board's decision only to the
United States Court of Appeals for the Federal Circuit.
`(d)
Derivation Proceedings- A party to a derivation proceeding who is dissatisfied
with the final decision of the Patent Trial and Appeal Board in the proceeding
may appeal the decision to the United States Court of Appeals for the Federal
Circuit, but such appeal shall be dismissed if any adverse party to such derivation
proceeding, within 20 days after the appellant has filed notice of appeal in accordance
with section 142, files notice with the Director that the party elects to have
all further proceedings conducted as provided in section 146. If the appellant
does not, within 30 days after the filing of such notice by the adverse party,
file a civil action under section 146, the Board's decision shall govern the further
proceedings in the case.'.
(2) JURISDICTION- Section 1295(a)(4)(A)
of title 28, United States Code, is amended to read as follows:
`(A) the Patent Trial and Appeal Board of the United States Patent and
Trademark Office with respect to a patent application, derivation proceeding,
reexamination, post-grant review, or inter partes review at the instance of a
party who exercised that party's right to participate in the applicable proceeding
before or appeal to the Board, except that an applicant or a party to a derivation
proceeding may also have remedy by civil action pursuant to section 145 or 146
of title 35; an appeal under this subparagraph of a decision of the Board with
respect to an application or derivation proceeding shall waive the right of such
applicant or party to proceed under section 145 or 146 of title 35;'.
(3) PROCEEDINGS ON APPEAL- Section 143 of title 35, United States Code, is
amended--
(A) by striking the third sentence and
inserting the following: `In an ex parte case, the Director shall submit to the
court in writing the grounds for the decision of the Patent and Trademark Office,
addressing all of the issues raised in the appeal. The Director shall have the
right to intervene in an appeal from a decision entered by the Patent Trial and
Appeal Board in a derivation proceeding under section 135 or in an inter partes
or post-grant review under chapter 31 or 32.'; and
(B) by striking the last sentence.
(d) Effective
Date- The amendments made by this section 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 proceedings commenced on or after that effective date, except that--
(1) the extension of jurisdiction to the United States Court
of Appeals for the Federal Circuit to entertain appeals of decisions of the Patent
Trial and Appeal Board in reexaminations under the amendment made by subsection
(c)(2) shall be deemed to take effect on the date of enactment of this Act and
shall extend to any decision of the Board of Patent Appeals and Interferences
with respect to a reexamination that is entered before, on, or after the date
of the enactment of this Act;
(2) the provisions of
sections 6, 134, and 141 of title 35, United States Code, as in effect on the
day before the date of the enactment of this Act shall continue to apply to inter
partes reexaminations that are requested under section 311 of such title before
the effective date of the amendments made by this section;
(3) the Patent Trial and Appeal Board may be deemed to be the Board of Patent
Appeals and Interferences for purposes of appeals of inter partes reexaminations
that are requested under section 311 of title 35, United States Code, before the
effective date of the amendments made by this section; and
(4) the Director's right under the fourth sentence of section 143 of title
35, United States Code, as amended by subsection (c)(3) of this section, to intervene
in an appeal from a decision entered by the Patent Trial and Appeal Board shall
be deemed to extend to inter partes reexaminations that are requested under section
311 of such title before the effective date of the amendments made by this section.
SEC. 7. PREISSUANCE SUBMISSIONS BY THIRD PARTIES.
(a) In General- Section 122 of title 35, United States Code, is amended by adding
at the end the following:
`(e) Preissuance Submissions by Third
Parties-
`(1) IN GENERAL- Any third party may submit for
consideration and inclusion in the record of a patent application, any patent,
published patent application, or other printed publication of potential relevance
to the examination of the application, if such submission is made in writing before
the earlier of--
`(A) the date a notice of allowance
under section 151 is given or mailed in the application for patent; or
`(i) 6
months after the date on which the application for patent is first published under
section 122 by the Office, or
`(ii)
the date of the first rejection under section 132 of any claim by the examiner
during the examination of the application for patent.
`(2) OTHER REQUIREMENTS- Any submission under paragraph (1) shall--
`(A) set forth a concise description of the asserted relevance of each
submitted document;
`(B) be accompanied by
such fee as the Director may prescribe; and
`(C) include a statement by the person making such submission affirming that the
submission was made in compliance with this section.'.
(b) Effective Date- The amendments made by this section 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 any patent application filed before, on, or after
that effective date.
SEC. 8. VENUE.
(a) Technical
Amendments Relating to Venue- Sections 32, 145, 146, 154(b)(4)(A), and 293 of
title 35, United States Code, and section 21(b)(4) of the Trademark Act of 1946
(15 U.S.C. 1071(b)(4)), are each amended by striking `United States District Court
for the District of Columbia' each place that term appears and inserting `United
States District Court for the Eastern District of Virginia'.
(b) 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 civil action commenced
on or after that date.
SEC. 9. FEE SETTING AUTHORITY.
(1) IN GENERAL- The Director may set or
adjust by rule any fee established, authorized, or charged under title 35, United
States Code, or the Trademark Act of 1946 (15 U.S.C. 1051 et seq.), for any services
performed by or materials furnished by, the Office, subject to paragraph (2).
(2) FEES TO RECOVER COSTS- Fees may be set or adjusted
under paragraph (1) only to recover the aggregate estimated costs to the Office
for processing, activities, services, and materials relating to patents (in the
case of patent fees) and trademarks (in the case of trademark fees), including
administrative costs of the Office with respect to such patent or trademark fees
(as the case may be).
(b) Small and Micro Entities- The
fees set or adjusted under subsection (a) for filing, searching, examining, issuing,
appealing, and maintaining patent applications and patents shall be reduced by
50 percent with respect to the application of such fees to any small entity that
qualifies for reduced fees under section 41(h)(1) of title 35, United States Code,
and shall be reduced by 75 percent with respect to the application of such fees
to any micro entity as defined in section 123 of that title (as added by subsection
(f) of this section).
(c) Reduction of Fees in Certain Fiscal
Years- In each fiscal year, the Director--
(1) shall consult
with the Patent Public Advisory Committee and the Trademark Public Advisory Committee
on the advisability of reducing any fees described in subsection (a); and
(2) after the consultation required under paragraph (1), may reduce such
fees.
(d) Role of the Public Advisory Committee- The Director
shall--
(1) not less than 45 days before publishing any
proposed fee under subsection (a) in the Federal Register, submit the proposed
fee to the Patent Public Advisory Committee or the Trademark Public Advisory Committee,
or both, as appropriate;
(2)(A) provide the relevant
advisory committee described in paragraph (1) a 30-day period following the submission
of any proposed fee, in which to deliberate, consider, and comment on such proposal;
(B) require that, during that 30-day period, the relevant
advisory committee hold a public hearing relating to such proposal; and
(C) assist the relevant advisory committee in carrying out that public hearing,
including by offering the use of the resources of the Office to notify and promote
the hearing to the public and interested stakeholders;
(3) require the relevant advisory committee to make available to the public a
written report setting forth in detail the comments, advice, and recommendations
of the committee regarding the proposed fee; and
(4)
consider and analyze any comments, advice, or recommendations received from the
relevant advisory committee before setting or adjusting (as the case may be) the
fee.
(e) Publication in the Federal Register-
(1) PUBLICATION AND RATIONALE- The Director shall--
(A) publish any proposed fee change under this section in the Federal
Register;
(B) include, in such publication,
the specific rationale and purpose for the proposal, including the possible expectations
or benefits resulting from the proposed change; and
(C) notify, through the Chair and Ranking Member of the Committees on
the Judiciary of the Senate and the House of Representatives, the Congress of
the proposed change not later than the date on which the proposed change is published
under subparagraph (A).
(2) PUBLIC COMMENT PERIOD-
The Director shall, in the publication under paragraph (1), provide the public
a period of not less than 45 days in which to submit comments on the proposed
change in fees.
(3) PUBLICATION OF FINAL RULE- The
final rule setting or adjusting a fee under this section shall be published in
the Federal Register and in the Official Gazette of the Patent and Trademark Office.
(4) CONGRESSIONAL COMMENT PERIOD- A fee set or adjusted
under subsection (a) may not become effective--
(A) before the end of the 45-day period beginning on the day after the date on
which the Director publishes the final rule adjusting or setting the fee under
paragraph (3); or
(B) if a law is enacted
disapproving such fee.
(5) RULE OF CONSTRUCTION-
Rules prescribed under this section shall not diminish--
(A) the rights of an applicant for a patent under title 35, United States
Code, or for a trademark under the Trademark Act of 1946; or
(B) any rights under a ratified treaty.
(f)
Retention of Authority- The Director retains the authority under subsection (a)
to set or adjust fees only during such period as the Patent and Trademark Office
remains an agency within the Department of Commerce.
(g) Micro
Entity Defined-
(1) IN GENERAL- Chapter 11 of title 35,
United States Code, is amended by adding at the end the following new section:
`Sec. 123. Micro entity defined.
`(a) In
General- For purposes of this title, the term `micro entity' means an applicant
who makes a certification that the applicant--
`(1) qualifies
as a small entity, as defined in regulations issued by the Director;
`(2) has not been named as an inventor on more than 4 previously filed patent
applications, other than applications filed in another country, provisional applications
under section 111(b), or international applications filed under the treaty defined
in section 351(a) for which the basic national fee under section 41(a) was not
paid;
`(3) did not, in the calendar year preceding
the calendar year in which the examination fee for the application is being paid,
have a gross income, as defined in section 61(a) of the Internal Revenue Code
of 1986, exceeding 3 times the median household income for that preceding calendar
year, as reported by the Bureau of the Census; and
`(4) has not assigned, granted, or conveyed, and is not under an obligation by
contract or law to assign, grant, or convey, a license or other ownership interest
in the application concerned to an entity that, in the calendar year preceding
the calendar year in which the examination fee for the application is being paid,
had a gross income, as defined in section 61(a) of the Internal Revenue Code of
1986, exceeding 3 times the median household income for that preceding calendar
year, as most recently reported by the Bureau of the Census.
`(b) Applications Resulting From Prior Employment- An applicant is not considered
to be named on a previously filed application for purposes of subsection (a)(2)
if the applicant has assigned, or is under an obligation by contract or law to
assign, all ownership rights in the application as the result of the applicant's
previous employment.
`(c) Foreign Currency Exchange Rate- If
an applicant's or entity's gross income in the preceding year is not in United
States dollars, the average currency exchange rate, as reported by the Internal
Revenue Service, during the preceding year shall be used to determine whether
the applicant's or entity's gross income exceeds the threshold specified in paragraphs
(3) or (4) of subsection (a).
`(d) Public Institutions of Higher
Education-
`(1) IN GENERAL- For purposes of this section,
a micro entity shall include an applicant who certifies that--
`(A) the applicant's employer, from which the applicant obtains the
majority of the applicant's income, is an institution of higher education, as
defined in section 101 of the Higher Education Act of 1965 (20 U.S.C. 1001), that
is a public institution; or
`(B) the applicant
has assigned, granted, conveyed, or is under an obligation by contract or law
to assign, grant, or convey, a license or other ownership interest in the particular
application to such State public institution.
`(2) Director's AUTHORITY- The Director may, in the Director's discretion, impose
income limits, annual filing limits, or other limits on who may qualify as a micro
entity pursuant to this subsection if the Director determines that such additional
limits are reasonably necessary to avoid an undue impact on other patent applicants
or owners or are otherwise reasonably necessary and appropriate. At least 3 months
before any limits proposed to be imposed pursuant to this paragraph shall take
effect, the Director shall inform the Committee on the Judiciary of the House
of Representatives and the Committee on the Judiciary of the Senate of any such
proposed limits.'.
(2) CONFORMING AMENDMENT- Chapter
11 of title 35, United States Code, is amended by adding at the end the following
new item:
`123. Micro entity defined.'.
(h) Electronic Filing Incentive-
(1) IN GENERAL- Notwithstanding
any other provision of this section, a fee of $400 shall be established for each
application for an original patent, except for a design, plant, or provisional
application, that is not filed by electronic means as prescribed by the Director.
The fee established by this subsection shall be reduced by 50 percent for small
entities that qualify for reduced fees under section 41(h)(1) of title 35, United
States Code. All fees paid under this subsection shall be deposited in the Treasury
as an offsetting receipt that shall not be available for obligation or expenditure.
(2) EFFECTIVE DATE- This subsection shall take effect
upon the expiration of the 60-day period beginning on the date of the enactment
of this Act.
(i) Effective Date- This section and the amendments
made by this section shall take effect on the date of the enactment of this Act.
SEC. 10. FEES FOR PATENT SERVICES.
(a) General
Patent Services- Subsections (a) and (b) of section 41 of title 35, United States
Code, are amended to read as follows:
`(a) General Fees- The
Director shall charge the following fees:
`(1) FILING AND
BASIC NATIONAL FEES-
`(A) On filing each application
for an original patent, except for design, plant, or provisional applications,
$330.
`(B) On filing each application for
an original design patent, $220.
`(C) On
filing each application for an original plant patent, $220.
`(D) On filing each provisional application for an original patent,
$220.
`(E) On filing each application for
the reissue of a patent, $330.
`(F) The basic
national fee for each international application filed under the treaty defined
in section 351(a) entering the national stage under section 371, $330.
`(G) In addition, excluding any sequence listing or computer program
listing filed in an electronic medium as prescribed by the Director, for any application
the specification and drawings of which exceed 100 sheets of paper (or equivalent
as prescribed by the Director if filed in an electronic medium), $270 for each
additional 50 sheets of paper (or equivalent as prescribed by the Director if
filed in an electronic medium) or fraction thereof.
`(A) IN GENERAL-
In addition to the fee specified in paragraph (1)--
`(i) on filing or on presentation at any other time, $220 for each
claim in independent form in excess of 3;
`(ii) on filing or on presentation at any other time, $52 for each claim
(whether dependent or independent) in excess of 20; and
`(iii) for each application containing a multiple dependent claim,
$390.
`(B) MULTIPLE DEPENDENT CLAIMS-
For the purpose of computing fees under subparagraph (A), a multiple dependent
claim referred to in section 112 or any claim depending therefrom shall be considered
as separate dependent claims in accordance with the number of claims to which
reference is made.
`(C) REFUNDS; ERRORS IN
PAYMENT- The Director may by regulation provide for a refund of any part of the
fee specified in subparagraph (A) for any claim that is canceled before an examination
on the merits, as prescribed by the Director, has been made of the application
under section 131. Errors in payment of the additional fees under this paragraph
may be rectified in accordance with regulations prescribed by the Director.
`(i) For examination of each application for an original patent,
except for design, plant, provisional, or international applications, $220.
`(ii) For examination of each application for an original design
patent, $140.
`(iii) For examination
of each application for an original plant patent, $170.
`(iv) For examination of the national stage of each international
application, $220.
`(v) For examination
of each application for the reissue of a patent, $650.
`(B) APPLICABILITY OF OTHER FEE PROVISIONS- The provisions of paragraphs
(3) and (4) of section 111(a) relating to the payment of the fee for filing the
application shall apply to the payment of the fee specified in subparagraph (A)
with respect to an application filed under section 111(a). The provisions of section
371(d) relating to the payment of the national fee shall apply to the payment
of the fee specified in subparagraph (A) with respect to an international application.
`(A) For issuing each original patent, except for design or plant patents, $1,510.
`(B) For issuing each original design patent,
$860.
`(C) For issuing each original plant
patent, $1,190.
`(D) For issuing each reissue
patent, $1,510.
`(5) DISCLAIMER FEE- On filing
each disclaimer, $140.
`(A) On filing an appeal from the examiner to the Patent Trial and Appeal
Board, $540.
`(B) In addition, on filing
a brief in support of the appeal, $540, and on requesting an oral hearing in the
appeal before the Patent Trial and Appeal Board, $1,080.
`(7) REVIVAL FEES- On filing each petition for the revival of an unintentionally
abandoned application for a patent, for the unintentionally delayed payment of
the fee for issuing each patent, or for an unintentionally delayed response by
the patent owner in any reexamination proceeding, $1,620, unless the petition
is filed under section 133 or 151, in which case the fee shall be $540.
`(8) EXTENSION FEES- For petitions for 1-month extensions of time to take
actions required by the Director in an application--
`(A) on filing a first petition, $130;
`(B) on filing a second petition, $360; and
`(C) on filing a third or subsequent petition, $620.
`(1) IN GENERAL- The Director shall
charge the following fees for maintaining in force all patents based on applications
filed on or after December 12, 1980:
`(A) Three
years and 6 months after grant, $980.
`(B)
Seven years and 6 months after grant, $2,480.
`(C) Eleven years and 6 months after grant, $4,110.
`(2) GRACE PERIOD; SURCHARGE- Unless payment of the applicable maintenance
fee under paragraph (1) is received in the Office on or before the date the fee
is due or within a grace period of 6 months thereafter, the patent shall expire
as of the end of such grace period. The Director may require the payment of a
surcharge as a condition of accepting within such 6-month grace period the payment
of an applicable maintenance fee.
`(3) NO MAINTENANCE
FEE FOR DESIGN OR PLANT PATENT- No fee may be established for maintaining a design
or plant patent in force.'.
(b) Delays in Payment- Subsection
(c) of section 41 of title 35, United States Code, is amended--
(1) by striking `(c)(1) The Director' and inserting:
`(c) Delays in Payment of Maintenance Fees-
`(1) ACCEPTANCE-
The Director'; and
(2) by striking `(2) A patent' and
inserting `(2) EFFECT ON RIGHTS OF OTHERS- A patent'.
(c)
Patent Search Fees- Subsection (d) of section 41 of title 35, United States Code,
is amended to read as follows:
`(d) Patent Search and Other Fees-
`(A) IN GENERAL- The Director shall charge the fees specified under subparagraph
(B) for the search of each application for a patent, except for provisional applications.
The Director shall adjust the fees charged under this paragraph to ensure that
the fees recover an amount not to exceed the estimated average cost to the Office
of searching applications for patent either by acquiring a search report from
a qualified search authority, or by causing a search by Office personnel to be
made, of each application for patent.
`(B)
SPECIFIC FEES- The fees referred to in subparagraph (A) are--
`(i) $540 for each application for an original patent, except for
design, plant, provisional, or international applications;
`(ii) $100 for each application for an original design patent;
`(iii) $330 for each application
for an original plant patent;
`(iv)
$540 for the national stage of each international application; and
`(v) $540 for each application for the reissue of a patent.
`(C) APPLICABILITY OF OTHER PROVISIONS- The provisions of paragraphs
(3) and (4) of section 111(a) relating to the payment of the fee for filing the
application shall apply to the payment of the fee specified in this paragraph
with respect to an application filed under section 111(a). The provisions of section
371(d) relating to the payment of the national fee shall apply to the payment
of the fee specified in this paragraph with respect to an international application.
`(D) REFUNDS- The Director may by regulation
provide for a refund of any part of the fee specified in this paragraph for any
applicant who files a written declaration of express abandonment as prescribed
by the Director before an examination has been made of the application under section
131.
`(E) APPLICATIONS SUBJECT TO SECRECY
ORDER- A search of an application that is the subject of a secrecy order under
section 181 or otherwise involves classified information may be conducted only
by Office personnel.
`(F) CONFLICTS OF INTEREST-
A qualified search authority that is a commercial entity may not conduct a search
of a patent application if the entity has any direct or indirect financial interest
in any patent or in any pending or imminent application for patent filed or to
be filed in the Office.
`(A) IN GENERAL- The Director shall establish fees for all other processing,
services, or materials relating to patents not specified in this section to recover
the estimated average cost to the Office of such processing, services, or materials,
except that the Director shall charge the following fees for the following services:
`(i) For recording a document affecting
title, $40 per property.
`(ii)
For each photocopy, $.25 per page.
`(iii) For each black and white copy of a patent, $3.
`(B) COPIES FOR LIBRARIES- The yearly fee for providing a library specified
in section 12 with uncertified printed copies of the specifications and drawings
for all patents in that year shall be $50.'.
(d) Fees
for Small Entities- Subsection (h) of section 41 of title 35, United States Code,
is amended to read as follows:
`(h) Fees for Small Entities-
`(1) REDUCTIONS IN FEES- Subject to paragraph (3), fees
charged under subsections (a), (b), and (d)(1) shall be reduced by 50 percent
with respect to their application to any small business concern as defined under
section 3 of the Small Business Act, and to any independent inventor or nonprofit
organization as defined in regulations issued by the Director.
`(2) SURCHARGES AND OTHER FEES- With respect to its application to any entity
described in paragraph (1), any surcharge or fee charged under subsection (c)
or (d) shall not be higher than the surcharge or fee required of any other entity
under the same or substantially similar circumstances.
`(3) REDUCTION FOR ELECTRONIC FILING- The fee charged under subsection (a)(1)(A)
shall be reduced by 75 percent with respect to its application to any entity to
which paragraph (1) applies, if the application is filed by electronic means as
prescribed by the Director.'.
(e) Technical Amendments-
Section 41 of title 35, United States Code, is amended--
(1) in subsection (e), in the first sentence, by striking `The Director' and inserting
`Waiver of Fees; Copies Regarding Notice- The Director';
(2) in subsection (f), by striking `The fees' and inserting `Adjustment of
Fees- The fees';
(3) by repealing subsection (g); and
(A) by striking `(i)(1) The Director' and inserting the following:
`(i) Electronic Patent and Trademark Data-
`(1) MAINTENANCE
OF COLLECTIONS- The Director';
(B) by striking
`(2) The Director' and inserting the following:
`(2) AVAILABILITY OF AUTOMATED SEARCH SYSTEMS- The Director';
(C) by striking `(3) The Director' and inserting the following:
`(3) ACCESS FEES- The Director'; and
(D)
by striking `(4) The Director' and inserting the following:
`(4) ANNUAL REPORT TO CONGRESS- The Director'.
(f)
Adjustment of Trademark Fees- Section 802(a) of division B of the Consolidated
Appropriations Act, 2005 (Public Law 108-447) is amended--
(1) in the first sentence, by striking `During fiscal years 2005, 2006 and 2007,',
and inserting `Until such time as the Director sets or adjusts the fees otherwise,';
and
(2) in the second sentence, by striking `During
fiscal years 2005, 2006, and 2007, the' and inserting `The'.
(g) Effective Date, Applicability, and Transition Provisions- Section 803(a) of
division B of the Consolidated Appropriations Act, 2005 (Public Law 108-447) Division
B of Public Law 108-447 is amended by striking `and shall apply only with respect
to the remaining portion of fiscal year 2005 and fiscal year 2006'.
(h) Electronic Filing Incentive-
(1) IN GENERAL- Notwithstanding
any other provision of this section, a fee of $400 shall be established for each
application for an original patent, except for a design, plant, or provisional
application, that is not filed by electronic means as prescribed by the Director.
The fee established by this subsection shall be reduced by 50 percent for small
entities that qualify for reduced fees under section 41(h)(1) of title 35, United
States Code. All fees paid under this subsection shall be deposited in the Treasury
as an offsetting receipt that shall not be available for obligation or expenditure.
(2) EFFECTIVE DATE- This subsection shall take effect
upon the expiration of the 60-day period beginning on the date of the enactment
of this Act.
(i) Reduction in Fees for Small Entity Patents-
The Director shall reduce fees for providing prioritized examination of utility
and plant patent applications by 50 percent for small entities that qualify for
reduced fees under section 41(h)(1) of title 35, United States Code, so long as
the fees of the prioritized examination program are set to recover the estimated
cost of the program.
(j) Effective Date- Except as provided in
subsection (h), this section and the amendments made by this section shall take
effect on the date of the enactment of this Act.
SEC. 11. SUPPLEMENTAL
EXAMINATION.
(a) In General- Chapter 25 of title 35, United States
Code, is amended by adding at the end the following:
`Sec. 257.
Supplemental examinations to consider, reconsider, or correct information
`(a) Request for Supplemental Examination- A patent owner may request supplemental
examination of a patent in the Office to consider, reconsider, or correct information
believed to be relevant to the patent, in accordance with such requirements as
the Director may establish. Within 3 months after the date a request for supplemental
examination meeting the requirements of this section is received, the Director
shall conduct the supplemental examination and shall conclude such examination
by issuing a certificate indicating whether the information presented in the request
raises a substantial new question of patentability.
`(b) Reexamination
Ordered- If the certificate issued under subsection (a) indicates that a substantial
new question of patentability is raised by 1 or more items of information in the
request, the Director shall order reexamination of the patent. The reexamination
shall be conducted according to procedures established by chapter 30, except that
the patent owner shall not have the right to file a statement pursuant to section
304. During the reexamination, the Director shall address each substantial new
question of patentability identified during the supplemental examination, notwithstanding
the limitations in chapter 30 relating to patents and printed publication or any
other provision of such chapter.
`(1) IN GENERAL- A patent shall not be held unenforceable on the basis of
conduct relating to information that had not been considered, was inadequately
considered, or was incorrect in a prior examination of the patent if the information
was considered, reconsidered, or corrected during a supplemental examination of
the patent. The making of a request under subsection (a), or the absence thereof,
shall not be relevant to enforceability of the patent under section 282.
`(A) PRIOR ALLEGATIONS-
Paragraph (1) shall not apply to an allegation pled with particularity, or set
forth with particularity in a notice received by the patent owner under section
505(j)(2)(B)(iv)(II) of the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 355(j)(2)(B)(iv)(II)),
before the date of a supplemental examination request under subsection (a) to
consider, reconsider, or correct information forming the basis for the allegation.
`(B) PATENT ENFORCEMENT ACTIONS- In an action
brought under section 337(a) of the Tariff Act of 1930 (19 U.S.C. 1337(a)), or
section 281 of this title, paragraph (1) shall not apply to any defense raised
in the action that is based upon information that was considered, reconsidered,
or corrected pursuant to a supplemental examination request under subsection (a),
unless the supplemental examination, and any reexamination ordered pursuant to
the request, are concluded before the date on which the action is brought.
`(d) Fees and Regulations-
`(1) FEES- The Director shall,
by regulation, establish fees for the submission of a request for supplemental
examination of a patent, and to consider each item of information submitted in
the request. If reexamination is ordered under subsection (b), fees established
and applicable to ex parte reexamination proceedings under chapter 30 shall be
paid, in addition to fees applicable to supplemental examination.
`(2) REGULATIONS- The Director shall issue regulations governing the form,
content, and other requirements of requests for supplemental examination, and
establishing procedures for reviewing information submitted in such requests.
`(e) Rule of Construction- Nothing in this section shall
be construed--
`(1) to preclude the imposition of sanctions
based upon criminal or antitrust laws (including section 1001(a) of title 18,
the first section of the Clayton Act, and section 5 of the Federal Trade Commission
Act to the extent that section relates to unfair methods of competition);
`(2) to limit the authority of the Director to investigate issues of possible
misconduct and impose sanctions for misconduct in connection with matters or proceedings
before the Office; or
`(3) to limit the authority of
the Director to issue regulations under chapter 3 relating to sanctions for misconduct
by representatives practicing before the Office.'.
(b) Conforming
Amendment- The table of sections for chapter 25 of title 35, United States Code,
is amended by adding at the end the following new item:
`257. Supplemental examinations to consider, reconsider, or correct information.'.
(c) Effective Date- The amendments made by this section
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 any patent issued before, on,
or after that effective date.
SEC. 12. FUNDING AGREEMENTS.
(a) In General- Section 202(c)(7)(E)(i) of title 35, United States Code, is amended--
(1) by striking `75 percent' and inserting `15 percent';
and
(2) by striking `25 percent' and inserting `85
percent'.
(b) Effective Date- The amendments made by this
section shall take effect on the date of enactment of this Act and shall apply
to any patent issued before, on, or after that date.
SEC. 13.
TAX STRATEGIES DEEMED WITHIN THE PRIOR ART.
(a) In General- For
purposes of evaluating an invention under section 102 or 103 of title 35, United
States Code, any strategy for reducing, avoiding, or deferring tax liability,
whether known or unknown at the time of the invention or application for patent,
shall be deemed insufficient to differentiate a claimed invention from the prior
art.
(b) Definition- For purposes of this section, the term `tax
liability' refers to any liability for a tax under any Federal, State, or local
law, or the law of any foreign jurisdiction, including any statute, rule, regulation,
or ordinance that levies, imposes, or assesses such tax liability.
(c) Exclusions- This section does not apply to that part of an invention that--
(1) is a method, apparatus, technology, computer program
product, or system, that is used solely for preparing a tax or information return
or other tax filing, including one that records, transmits, transfers, or organizes
data related to such filing; or
(2) is a method, apparatus,
technology, computer program product, or system used solely for financial management,
to the extent that it is severable from any tax strategy or does not limit the
use of any tax strategy by any taxpayer or tax advisor.
(d) Rule of Construction- Nothing in this section shall be construed to imply
that other business methods are patentable or that other business-method patents
are valid.
(e) Effective Date; Applicability- This section shall
take effect on the date of enactment of this Act and shall apply to any patent
application pending, and any patent issued, on or after that date.
SEC.
14. BEST MODE REQUIREMENT.
(a) In General- Section 282 of title
35, United State Code, is amended in its second undesignated paragraph by striking
paragraph (3) and inserting the following:
`(3) Invalidity
of the patent or any claim in suit for failure to comply with--
`(A) any requirement of section 112, except that the failure to disclose
the best mode shall not be a basis on which any claim of a patent may be canceled
or held invalid or otherwise unenforceable; or
`(B) any requirement of section 251.'.
(b) Conforming
Amendment- Sections 119(e)(1) and 120 of title 35, United States Code, are each
amended by striking `the first paragraph of section 112 of this title' and inserting
`section 112(a) (other than the requirement to disclose the best mode)'.
(c) Effective Date- The amendments made by this section shall take effect upon
the date of the enactment of this Act and shall apply to proceedings commenced
on or after that date.
SEC. 15. MARKING.
(1) IN GENERAL- Section 287(a) of title 35, United
States Code, is amended by striking `or when,' and inserting `or by fixing thereon
the word `patent' or the abbreviation `pat.' together with an address of a posting
on the Internet, accessible to the public without charge for accessing the address,
that associates the patented article with the number of the patent, or when,'.
(2) EFFECTIVE DATE- The amendment made by this subsection
shall apply to any case that is pending on, or commenced on or after, the date
of the enactment of this Act.
(1) CIVIL PENALTY- Section 292(a) of title 35, United States, Code, is amended
by adding at the end the following: `Only the United States may sue for the penalty
authorized by this subsection.'.
(2) CIVIL ACTION FOR
DAMAGES- Subsection (b) of section 292 of title 35, United States Code, is amended
to read as follows:
`(b) A person who has suffered a competitive
injury as a result of a violation of this section may file a civil action in a
district court of the United States for recovery of damages adequate to compensate
for the injury.'.
(3) EFFECTIVE DATE- The amendments made
by this subsection shall apply to any case that is pending on, or commenced on
or after, the date of the enactment of this Act.
SEC. 16.
ADVICE OF COUNSEL.
(a) In General- Chapter 29 of title 35, United
States Code, is amended by adding at the end the following:
`Sec.
298. Advice of counsel
`The failure of an infringer to obtain
the advice of counsel with respect to any allegedly infringed patent, or the failure
of the infringer to present such advice to the court or jury, may not be used
to prove that the accused infringer willfully infringed the patent or that the
infringer intended to induce infringement of the patent.'.
(b)
Conforming Amendment- The table of sections for chapter 29 of title 35, United
States Code, is amended by adding at the end the following:
`298. Advice of counsel.'.
SEC. 17. OWNERSHIP; ASSIGNMENT.
The fourth undesignated paragraph of section 261 of title 35, United States Code,
is amended by inserting before the period the following: `and identifies all real
parties in interest and those entities that control, directly or indirectly, such
real parties in interest'.
SEC. 18. TRANSITIONAL PROGRAM FOR COVERED
BUSINESS METHOD PATENTS.
(a) References- Except as otherwise expressly
provided, wherever in this section language is expressed in terms of a section
or chapter, the reference shall be considered to be made to that section or chapter
in title 35, United States Code.
(b) Transitional Program-
(1) ESTABLISHMENT- Not later than the date that is 1 year after the date
of the enactment of this Act, the Director shall issue regulations establishing
and implementing a transitional post-grant review proceeding for review of the
validity of covered business method patents. The transitional proceeding implemented
pursuant to this subsection shall be regarded as, and shall employ the standards
and procedures of, a post-grant review under chapter 32, subject to the following:
(A) Section 321(c) and subsections (b), (e)(2),
and (f) of section 325 shall not apply to a transitional proceeding.
(B) A person may not file a petition for a transitional proceeding with
respect to a covered business method patent unless the person or the person's
real party in interest has been sued for infringement of the patent or has been
charged with infringement under that patent.
(C) A petitioner in a transitional proceeding who challenges the validity of 1
or more claims in a covered business method patent on a ground raised under section
102 or 103, as in effect on the day before the date of the enactment of this Act,
may support such ground only on the basis of--
(i) prior art that is described by section 102(a) (as in effect on the
day before the date of the enactment of this Act); or
(I) discloses the invention more than 1 year before the date of the
application for patent in the United States; and
(II) would be described by section 102(a) (as in effect on
the day before the date of the enactment of this Act) if the disclosure had been
made by another before the invention thereof by the applicant for patent.
(D) The petitioner in a transitional proceeding, or the petitioner's
real party in interest, may not assert, either in a civil action arising in whole
or in part under section 1338 of title 28, United States Code, or in a proceeding
before the International Trade Commission, that a claim in a patent is invalid
on any ground that the petitioner raised during a transitional proceeding that
resulted in a final written decision.
(E)
The Director may institute a transitional proceeding only for a patent that is
a covered business method patent.
(2) EFFECTIVE
DATE- The regulations issued under paragraph (1) 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 any covered business method patent issued before, on, or after such effective
date, except that the regulations shall not apply to a patent described in the
first sentence of section 5(f)(2) of this Act during the period that a petition
for post-grant review of that patent would satisfy the requirements of section
321(c).
(A) IN GENERAL- This subsection, and the regulations issued under this subsection,
are repealed effective upon the expiration of the 4-year period beginning on the
date that the regulations issued under to paragraph (1) take effect.
(B) APPLICABILITY- Notwithstanding subparagraph (A), this subsection
and the regulations issued under this subsection shall continue to apply, after
the date of the repeal under subparagraph (A), to any petition for a transitional
proceeding that is filed before the date of such repeal.
(1) IN GENERAL- If a party seeks a
stay of a civil action alleging infringement of a patent under section 281 relating
to a transitional proceeding for that patent, the court shall decide whether to
enter a stay based on--
(A) whether a stay, or
the denial thereof, will simplify the issues in question and streamline the trial;
(B) whether discovery is complete and whether
a trial date has been set;
(C) whether a
stay, or the denial thereof, would unduly prejudice the nonmoving party or present
a clear tactical advantage for the moving party; and
(D) whether a stay, or the denial thereof, will reduce the burden of
litigation on the parties and on the court.
(2)
REVIEW- A party may take an immediate interlocutory appeal from a district court's
decision under paragraph (1). The United States Court of Appeals for the Federal
Circuit shall review de novo the district court's decision to ensure consistent
application of established precedent.
(d) Venue of Infringement
Actions- Notwithstanding section 1400(b) of title 28, United States Code, an action
for infringement under section 281 of title 35, United States Code, of a covered
business method patent may be brought only in a judicial district--
(1) where the defendant has its principal place of business or is incorporated;
(2) where the defendant has committed acts of infringement
and has a regular and established place of business;
(3) where the defendant has agreed or consented to be sued; or
(4) for foreign defendants that do not meet the requirements of paragraphs
(1) or (2), in accordance with section 1391(d) of title 28, United States Code.
(e) Attorney's Fees and Costs- In an action for infringement
under section 281 of title 35, United States Code, of a covered business method
patent, the prevailing party shall be entitled to reasonable attorney's fees and
costs.
(f) ATM Exemption for Venue Purposes- In an action for
infringement under section 281 of title 35, United States Code, of a covered business
method patent, an automated teller machine shall not be deemed to be a physical
facility for purposes of section 1400(b)(2) of title 28, United States Code.
(1) IN GENERAL- For purposes of this section,
the term `covered business method patent' means a patent that claims a method
or corresponding apparatus for performing data processing or other operations
used in the practice, administration, or management of a financial product or
service, except that the term does not include patents for technological inventions.
(2) REGULATIONS- To assist in implementing the transitional
proceeding authorized by this subsection, the Director shall issue regulations
for determining whether a patent is for a technological invention.
(h) Rule of Construction- Nothing in this section shall be construed as amending
or interpreting categories of patent-eligible subject matter set forth under section
101.
SEC. 19. CLARIFICATION OF JURISDICTION.
(a)
State Court Jurisdiction- Section 1338(a) of title 28, United States Code, is
amended by striking the second sentence and inserting the following: `No State
court shall have jurisdiction over any claim for relief arising under any Act
of Congress relating to patents, plant variety protection, or copyrights.'.
(b) Court of Appeals for the Federal Circuit- Section 1295(a)(1) of title 28,
United States Code, is amended to read as follows:
`(1)
of an appeal from a final decision of a district court of the United States, the
District Court of Guam, the District Court of the Virgin Islands, or the District
Court of the Northern Mariana Islands, in any civil action arising under, or in
any civil action in which a party has asserted a compulsory counterclaim arising
under, any Act of Congress relating to patents or plant variety protection;'.
(1) IN GENERAL- Chapter
89 of title 28, United States Code, is amended by adding at the end the following
new section:
`Sec. 1454. Patent, plant variety protection,
and copyright cases
`(a) In General- A civil action in which any
party asserts a claim for relief arising under any Act of Congress relating to
patents, plant variety protection, or copyrights may be removed to the district
court of the United States for the district and division embracing the place where
the action is pending.
`(b) Special Rules- The removal of an
action under this section shall be made in accordance with section 1446 of this
chapter, except that if the removal is based solely on this section--
`(1) the action may be removed by any party; and
`(2) the time limitations contained in section 1446(b) may be extended at any
time for cause shown.
`(c) Clarification of Jurisdiction
in Certain Cases- The court to which a civil action is removed under this section
is not precluded from hearing and determining any claim in the civil action because
the State court from which the civil action is removed did not have jurisdiction
over that claim.
`(d) Remand- If a civil action is removed solely
under this section, the district court--
`(1) shall remand
all claims that are neither a basis for removal under subsection (a) nor within
the original or supplemental jurisdiction of the district court under any Act
of Congress; and
`(2) may, under the circumstances
specified in section 1367(c), remand any claims within the supplemental jurisdiction
of the district court under section 1367.'.
(2) CONFORMING
AMENDMENT- The table of sections for chapter 89 of title 28, United States Code,
is amended by adding at the end the following new item:
`1454. Patent, plant variety protection, and copyright cases.'.
(d) Transfer by Court of Appeals for the Federal Circuit-
(1) IN GENERAL- Chapter 99 of title 28, United States Code, is amended by adding
at the end the following new section:
`Sec. 1632. Transfer
by the Court of Appeals for the Federal Circuit
`When a case is
appealed to the Court of Appeals for the Federal Circuit under section 1295(a)(1),
and no claim for relief arising under any Act of Congress relating to patents
or plant variety protection is the subject of the appeal by any party, the Court
of Appeals for the Federal Circuit shall transfer the appeal to the court of appeals
for the regional circuit embracing the district from which the appeal has been
taken.'.
(2) CONFORMING AMENDMENT- The table of sections
for chapter 99 of title 28, United States Code, is amended by adding at the end
the following new item:
`1632. Transfer by the Court
of Appeals for the Federal Circuit.'.
(e) Effective Date-
The amendments made by this section shall apply to any civil action commenced
on or after the date of the enactment of this Act.
SEC. 20. TECHNICAL
AMENDMENTS.
(a) Joint Inventions- Section 116 of title 35, United
States Code, is amended--
(1) in the first undesignated
paragraph, by striking `When' and inserting `(a) Joint Inventions- When';
(2) in the second undesignated paragraph, by striking `If a joint inventor'
and inserting `(b) Omitted Inventor- If a joint inventor'; and
(3) in the third undesignated paragraph--
(A) by striking `Whenever' and inserting `(c) Correction of Errors
in Application- Whenever'; and
(B) by striking `and such error arose without any deceptive intent on his part,'.
(b) Filing of Application in Foreign Country-
Section 184 of title 35, United States Code, is amended--
(1) in the first undesignated paragraph--
(A)
by striking `Except when' and inserting `(a) Filing in Foreign Country- Except
when'; and
(B) by striking `and without deceptive
intent';
(2) in the second undesignated paragraph,
by striking `The term' and inserting `(b) Application- The term'; and
(3) in the third undesignated paragraph, by striking `The scope' and inserting
`(c) Subsequent Modifications, Amendments, and Supplements- The scope'.
(c) Filing Without a License- Section 185 of title 35, United States Code, is
amended by striking `and without deceptive intent'.
(d) Reissue
of Defective Patents- Section 251 of title 35, United States Code, is amended--
(1) in the first undesignated paragraph--
(A) by striking `Whenever' and inserting `(a) In General- Whenever';
and
(B) by striking `without any deceptive
intention';
(2) in the second undesignated paragraph,
by striking `The Director' and inserting `(b) Multiple Reissued Patents- The Director';
(3) in the third undesignated paragraph, by striking
`The provisions' and inserting `(c) Applicability of This Title- The provisions';
and
(4) in the last undesignated paragraph, by striking
`No reissued patent' and inserting `(d) Reissue Patent Enlarging Scope of Claims-
No reissued patent'.
(e) Effect of Reissue- Section 253
of title 35, United States Code, is amended--
(1) in the
first undesignated paragraph, by striking `Whenever, without any deceptive intention,'
and inserting `(a) In General- Whenever'; and
(2) in
the second undesignated paragraph, by striking `In like manner' and inserting
`(b) Additional Disclaimer or Dedication- In the manner set forth in subsection
(a),'.
(f) Correction of Named Inventor- Section 256 of
title 35, United States Code, is amended--
(1) in the first
undesignated paragraph--
(A) by striking `Whenever'
and inserting `(a) Correction- Whenever'; and
(B) by striking `and such error arose without any deceptive intention on
his part'; and
(2) in the second undesignated
paragraph, by striking `The error' and inserting `(b) Patent Valid if Error Corrected-
The error'.
(g) Ownership; Assignment- The fourth undesignated
paragraph of section 261 of title 35, United States Code, is amended by inserting
before the period the following: `and identifies all real parties in interest'.
(h) Presumption of Validity- Section 282 of title 35, United
States Code, is amended--
(1) in the first undesignated
paragraph--
(A) by striking `A patent' and inserting
`(a) In General- A patent'; and
(B) by striking
the third sentence;
(2) in the second undesignated
paragraph, by striking `The following' and inserting `(b) Defenses- The following';
and
(3) in the third undesignated paragraph--
(A) by striking `In actions involving the validity or infringement of
a patent' and inserting `(c) Notice of Actions; Actions During Extension of Patent
Term- In an action involving the validity or infringement of patent, the party
asserting infringement shall identify, in the pleadings or otherwise in writing
to the adverse party, all of its real parties in interest, and'; and
(B) by striking `Claims Court' and inserting `Court of Federal Claims'.
(i) Action for Infringement- Section 288 of title 35,
United States Code, is amended by striking `, without deceptive intention,'.
(1) Section 3(e)(2) of title 35, United
States Code, is amended by striking `this Act,' and inserting `that Act,'.
(2) Section 202 of title 35, United States Code, is amended--
(A) in subsection (b)(3), by striking `the section 203(b)' and inserting
`section 203(b)'; and
(B) in subsection (c)(7)--
(i) in subparagraph (D), by striking
`except where it proves' and all that follows through `small business firms; and'
and inserting: `except where it is determined to be infeasible following a reasonable
inquiry, a preference in the licensing of subject inventions shall be given to
small business firms; and'; and
(ii) in subparagraph (E)(i), by striking `as described above in this clause (D);'
and inserting `described above in this clause;'.
(3) Section 209(d)(1) of title 35, United States Code, is amended by striking
`nontransferrable' and inserting `nontransferable'.
(4) Section 287(c)(2)(G) of title 35, United States Code, is amended by striking
`any state' and inserting `any State'.
(5) Section
371(b) of title 35, United States Code, is amended by striking `of the treaty'
and inserting `of the treaty.'.
(k) Unnecessary References-
(1) IN GENERAL- Title 35, United States Code, is amended
by striking `of this title' each place that term appears.
(2) EXCEPTION- The amendment made by paragraph (1) shall not apply to the
use of such term in the following sections of title 35, United States Code:
(D) Subsections (a) and (b) of section 105.
(E) The first instance of the use of such term in section 111(b)(8).
(F) Section 157(a), in the matter preceding
paragraph (1).
(J) Section 251(c), as so designated by this
section.
(L) Subsections (a), (g), and (h) of section 271.
(O) The first instance of the use of
such term in section 375(a).
(l) Effective Date- The
amendments made by this section 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 proceedings
commenced on or after that effective date.
SEC. 21. TRAVEL EXPENSES
AND PAYMENT OF ADMINISTRATIVE JUDGES.
(a) Authority To Cover Certain
Travel Related Expenses- Section 2(b)(11) of title 35, United States Code, is
amended by inserting `, and the Office is authorized to expend funds to cover
the subsistence expenses and travel-related expenses, including per diem, lodging
costs, and transportation costs, of non-federal employees attending such programs'
after `world'.
(b) Payment of Administrative Judges- Section
3(b) of title 35, United States Code, is amended by adding at the end the following:
`(6) ADMINISTRATIVE PATENT JUDGES AND ADMINISTRATIVE TRADEMARK
JUDGES- The Director has the authority to fix the rate of basic pay for the administrative
patent judges appointed pursuant to section 6 of this title and the administrative
trademark judges appointed pursuant to section 17 of the Trademark Act of 1946
(15 U.S.C. 1067) at not greater than the rate of basic pay payable for Level III
of the Executive Schedule. The payment of a rate of basic pay under this paragraph
shall not be subject to the pay limitation of section 5306(e) or 5373 of title
5.'.
SEC. 22. PATENT AND TRADEMARK OFFICE FUNDING.
(a) Definition- In this section, the term `Fund' means the United States Patent
and Trademark Office Public Enterprise Fund established under subsection (c).
(1) IN GENERAL- Section 42
of title 35, United States Code, is amended--
(A) in subsection (b), by striking `Patent and Trademark Office Appropriation
Account' and inserting `United States Patent and Trademark Office Public Enterprise
Fund'; and
(B) in subsection (c), in the
first sentence--
(i) by striking `To
the extent' and all that follows through `fees' and inserting `Fees'; and
(ii) by striking `shall be collected by and shall be available
to the Director' and inserting `shall be collected by the Director and shall be
available until expended'.
(2) EFFECTIVE
DATE- The amendments made by paragraph (1) shall take effect on the later of--
(B) the first day of the first fiscal year that begins after the date
of the enactment of this Act.
(c) USPTO Revolving Fund-
(1) ESTABLISHMENT- There is established in the Treasury
of the United States a revolving fund to be known as the `United States Patent
and Trademark Office Public Enterprise Fund'. Amounts shall be deposited in the
Fund as an offsetting receipt and shall be available for use by the Director without
fiscal year limitation.
(2) DERIVATION OF RESOURCES-
There shall be deposited into the Fund, on and after the effective date set forth
in subsection (b)(2)--
(A) any fees collected
under sections 41, 42, and 376 of title 35, United States Code, except that--
(i) notwithstanding any other provision
of law, if such fees are collected by, and payable to, the Director, the Director
shall transfer such amounts to the Fund; and
(ii) no funds collected pursuant to section 9(h) of this Act or section
1(a)(2) of Public Law 111-45 shall be deposited in the Fund; and
(B) any fees collected under section 31 of the Trademark Act of 1946
(15 U.S.C. 1113).
(3) EXPENSES- Amounts deposited
into the Fund under paragraph (2) shall be available, without fiscal year limitation,
to cover--
(A) all expenses to the extent consistent
with the limitation on the use of fees set forth in section 42(c) of title 35,
United States Code, including all administrative and operating expenses, determined
in the discretion of the Director to be ordinary and reasonable, incurred by the
Director for the continued operation of all services, programs, activities, and
duties of the Office relating to patents and trademarks, as such services, programs,
activities, and duties are described under--
(i) title 35, United States Code; and
(ii) the Trademark Act of 1946; and
(B) all expenses incurred pursuant to any obligation, representation,
or other commitment of the Office.
(d) Annual Report-
Not later than 60 days after the end of each fiscal year, the Director shall submit
a report to Congress which shall--
(1) summarize the operations
of the Office for the preceding fiscal year, including financial details and staff
levels broken down by each major activity of the Office;
(2) detail the operating plan of the Office, including specific expense and
staff needs for the upcoming fiscal year;
(3) describe
the long-term modernization plans of the Office;
(4)
set forth details of any progress towards such modernization plans made in the
previous fiscal year; and
(5) include the results of
the most recent audit carried out under subsection (f).
(e) Annual Spending Plan-
(1) IN GENERAL- Not later than
30 days after the beginning of each fiscal year, the Director shall notify the
Committees on Appropriations of both Houses of Congress of the plan for the obligation
and expenditure of the total amount of the funds for that fiscal year in accordance
with section 605 of the Science, State, Justice, Commerce, and Related Agencies
Appropriations Act, 2006 (Public Law 109-108; 119 Stat. 2334).
(2) CONTENTS- Each plan under paragraph (1) shall--
(A) summarize the operations of the Office for the current fiscal year,
including financial details and staff levels with respect to major activities;
and
(B) detail the operating plan of the
Office, including specific expense and staff needs, for the current fiscal year.
(f) Audit- The Director shall, on an annual basis,
provide for an independent audit of the financial statements of the Office. Such
audit shall be conducted in accordance with generally acceptable accounting procedures.
(g) Budget- The Fund shall prepare and submit each year to the
President a business-type budget in a manner, and before a date, as the President
prescribes by regulation for the budget program.
SEC. 23. SATELLITE
OFFICES.
(a) Establishment- Subject to available resources, the
Director shall, by not later than the date that is 3 years after the date of the
enactment of this Act establish 3 or more satellite offices in the United States
to carry out the responsibilities of the Patent and Trademark Office.
(b) Purpose- The purpose of the satellite offices established under subsection
(a) are to--
(1) increase outreach activities to better
connect patent filers and innovators with the Patent and Trademark Office;
(2) enhance patent examiner retention;
(3) improve
recruitment of patent examiners; and
(4) decrease the
number of patent applications waiting for examination and improve the quality
of patent examination.
(c) Required Considerations-
(1) IN GENERAL- In selecting the location of each satellite office to be
established under subsection (a), the Director--
(A) shall ensure geographic diversity among the offices, including by ensuring
that such offices are established in different States and regions throughout the
Nation;
(B) may rely upon any previous evaluations
by the Patent and Trademark Office of potential locales for satellite offices,
including any evaluations prepared as part of the Office's Nationwide Workforce
Program that resulted in the 2010 selection of Detroit, Michigan, as the first
ever satellite office of the Office.
(2) OPEN
SELECTION PROCESS- Nothing in paragraph (1) shall constrain the Patent and Trademark
Office to only consider its evaluations in selecting the Detroit, Michigan, satellite
office.
(d) Report to Congress- Not later than the end of
the first 3 fiscal years that begin after the date of the enactment of this Act,
the Director shall submit a report to Congress on--
(1)
the rationale of the Director in selecting the location of any satellite office
required under subsection (a);
(2) the progress of
the Director in establishing all such satellite offices; and
(3) whether the operation of existing satellite offices is achieving the
purposes required under subsection (b).
SEC. 24. PATENT OMBUDSMAN
PROGRAM FOR SMALL BUSINESS CONCERNS.
Subject to available resources,
the Director may establish in the Office a Patent Ombudsman Program. The duties
of the Program's staff shall include providing support and services relating to
patent filings to small business concerns.
SEC. 25. PRIORITY EXAMINATION
FOR TECHNOLOGIES IMPORTANT TO AMERICAN COMPETITIVENESS.
Section
2(b)(2) of title 35, United States Code, is amended--
(1)
in subparagraph (E), by striking `and' after the semicolon;
(2) in subparagraph (F), by inserting `and' after the semicolon; and
(3) by adding at the end the following:
`(G)
may, subject to any conditions prescribed by the Director and at the request of
the patent applicant, provide for prioritization of examination of applications
for products, processes, or technologies that are important to the national economy
or national competitiveness without recovering the aggregate extra cost of providing
such prioritization, notwithstanding section 41 or any other provision of law;'.
SEC. 26. DESIGNATION OF DETROIT SATELLITE OFFICE.
(a) Designation- The satellite office of the United States Patent and Trademark
Office to be located in Detroit, Michigan, shall be known and designated as the
`Elijah J. McCoy United States Patent and Trademark Office'.
(b) References- Any reference in a law, map, regulation, document, paper, or other
record of the United States to the satellite office of the United States Patent
and Trademark Office to be located in Detroit, Michigan, referred to in subsection
(a) shall be deemed to be a reference to the `Elijah J. McCoy United States Patent
and Trademark Office'.
SEC. 27. EFFECTIVE DATE.
Except as otherwise provided in this Act, the provisions of this Act shall take
effect 1 year after the date of the enactment of this Act and shall apply to any
patent issued on or after that effective date.
SEC. 28. BUDGETARY
EFFECTS.
The budgetary effects of this Act, for the purpose of
complying with the Statutory Pay-As-You-Go Act of 2010, shall be determined by
reference to the latest statement titled `Budgetary Effects of PAYGO Legislation'
for this Act, submitted for printing in the Congressional Record by the Chairman
of the House Budget Committee, provided that such statement has been submitted
prior to the vote on passage.
END
