109th CONGRESS
2d Session
H. R. 5096
To amend title 35, United States Code, to modify certain procedures
relating to patents.
IN THE HOUSE OF REPRESENTATIVES
April 5, 2006
Mr. BERMAN (for himself and Mr. BOUCHER) introduced the following bill;
which was referred to the Committee on the Judiciary
A BILL
To amend title 35, United States Code, to modify certain procedures
relating to patents.
Be it enacted by the Senate and House of Representatives of the United
States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the `Patents Depend on Quality Act of 2006' or
`PDQ Act'.
SEC. 2. OPPOSITION PROCEDURES.
(a) In General- Title 35, United States Code, is amended by inserting after
chapter 31 the following new chapter:
`CHAPTER 32--POST-GRANT OPPOSITION PROCEDURES
` 321. Right to oppose patent; opposition request.
` 322. Real party in interest.
` 323. Timing of opposition request.
` 324. Limits on scope of validity issues raised.
` 325. Institution of the opposition proceeding.
` 326. Patent owner response.
` 327. Amendment of claims.
` 328. Discovery and sanctions.
` 329. Supplemental submissions.
` 330. Hearing and briefs.
` 332. Burden of proof and evidence.
` 337. Duration of opposition.
` 339. Intervening rights.
` 340. Relationship with reexamination proceedings.
`Sec. 321. Right to oppose patent; opposition request
`(a) Filing of Opposition- A person may request that the grant or reissue
of a patent be reconsidered by the Patent and Trademark Office by filing
an opposition seeking to invalidate 1 or more claims in the patent. The
Director shall establish, by regulation, fees to be paid by the person filing
the opposition (in this chapter referred to as the `opposer'). Copies of
patents and printed publications to be relied upon in support of the request
must be filed with the request. If an opposer relies on other factual evidence
or on expert opinions in support of the opposition, such evidence and opinions
must be filed with the request through one or more accompanying affidavits
or declarations.
`(b) Copies Provided to Patent Owner- Copies of any documents filed under
subsection (a) must be provided to the patent owner or, if applicable, the
designated representative of the patent owner, at the time of filing under
subsection (a), except that if a request is made that the identity of a
real party in interest be kept separate pursuant to section 322(b), then
the identity of the real party in interest may be redacted from the copies
provided.
`(c) File Available to the Public- The file of any opposition proceeding
shall be made available to the public, except as provided in section 322.
`Sec. 322. Real party in interest
`(a) Identification- The person making a request under section 321 shall
identify in writing each real party in interest, and the opposition pursuant
to the request shall proceed in the name of the real party in interest.
`(b) Identity Kept Separate Upon Request-
`(1) IN GENERAL- Subject to paragraph (2), if requested by the opposer,
the identity of a real party in interest shall be kept separate from the
file of the opposition and made available only to Government agencies
upon written request, or to any person upon a showing of good cause. If
the identity of a real party in interest is kept separate from the file
under this paragraph, then the opposition shall proceed in the name of
the individual filing the request as the representative of the real party
in interest.
`(2) EXCEPTION- No request under paragraph (1) to keep the identity of
a real party in interest separate from the file of the opposition may
be made or maintained if the opposer relies upon factual evidence or expert
opinions in the form of affidavits or declarations during the opposition
proceeding or if the opposer exercises the right to appeal under section
141.
`Sec. 323. Timing of opposition request
`A person may not make an opposition request under section 321 later than
9 months after the grant of the patent or issuance of the reissue patent,
as the case may be, or later than 6 months after receiving notice from the
patent holder alleging infringement of the patent, except that, if the patent
owner consents in writing, an opposition request may be filed anytime during
the period of enforceability of the patent. A court having jurisdiction
over an issue of validity of a patent may not require the patent owner to
consent to such a request.
`Sec. 324. Limits on scope of validity issues raised
`An opposition request under section 321 must identify with particularity
the claims that are alleged to be invalid and, as to each claim, 1 or more
issues of invalidity on which the opposition is based. The issues of invalidity
that may be considered during the opposition proceeding are double patenting
and any of the requirements for patentability set forth in sections 101,
102, 103, and 112, and the fourth paragraph of section 251, except for--
`(1) any requirement contained in the first paragraph of section 112 relating
to disclosing the best mode; and
`(2) any issue arising under subsection (c), (f), or (g) of section 102.
`Sec. 325. Institution of the opposition proceeding
`(a) Dismissal; Institution-
`(1) DISMISSAL- The Director may dismiss an opposition request that the
Director determines lacks substantial merit. The determination by the
Director to dismiss an opposition request shall not be appealable. The
dismissal of an opposition request shall not be admissible in any civil
action related to the patent against which a dismissed request was filed.
`(2) INSTITUTION- If the Director receives 1 or more requests that meet
the requirements of section 321 regarding the same patent by the Director
and are not dismissed under paragraph (1), an opposition proceeding shall
be promptly instituted pursuant to the request or requests, but not before
a period of 9 months has elapsed since the date on which the patent was
granted.
`(3) CONSOLIDATED PROCEEDING- If an opposition proceeding is instituted
based upon more than 1 opposition request, the opposition shall proceed
as a single consolidated proceeding, unless later divided under subsection
(c).
`(b) Parties- The parties to an opposition proceeding under this section
shall be the patent owner and each opposer whose request meets the requirements
of section 321 and has not been dismissed under subsection (a)(1).
`(c) Decision by Panel- The Director shall assign the opposition proceeding
to a panel of three administrative patent judges (in this chapter referred
to as the `panel'). The panel shall decide the questions of patentability
raised in each opposition request for which an opposition proceeding has
been instituted. The decision shall be based upon the prosecution record
that was the basis for the grant of the patent and the additional submissions
by the parties to the opposition proceeding authorized under this chapter.
The panel may, in appropriate cases, divide the opposition into separate
proceedings if the opposition involves multiple opposition requests by different
parties.
`Sec. 326. Patent owner response
`After the Director has instituted an opposition proceeding under section
325, the patent owner shall have the right to file, within the time period
set by the panel, a response to each opposition request that is the subject
of the proceeding. The patent owner, in responding to an opposition request,
shall file with the response, through affidavits or declarations, any additional
factual evidence and expert opinions on which the patent owner relies in
support of the response.
`Sec. 327. Amendment of claims
`The patent owner is entitled to request amendment of any claims that are
the subject of an opposition proceeding under this chapter, including by
the addition of new claims. The patent owner shall file any such request
for amendment with the patent owner's response to an opposition request
under section 326. The panel may permit further requests for amendment of
the claims only upon good cause shown by the patent owner. No amendment
enlarging the scope of the claims of the patent shall be permitted in the
opposition proceeding.
`Sec. 328. Discovery and sanctions
`(a) Discovery- After an opposition proceeding is instituted under this
chapter, the patent owner shall have the right to depose each person submitting
an affidavit or declaration on behalf of any opposer, and each opposer shall
have the right to depose each person submitting an affidavit or declaration
on behalf of the patent owner. Such depositions shall be limited to cross-examination
on matters relevant to the affidavit or declaration. No other discovery
shall be permitted unless the panel determines that additional discovery
is required in the interest of justice. The panel shall determine the schedule
for the taking of discovery under this subsection.
`(b) Sanctions- If any party to an opposition proceeding fails to properly
respond to any discovery under subsection (a), the panel may draw appropriate
adverse inferences and take other action permitted by statute, rule, or
regulation.
`Sec. 329. Supplemental submissions
`The panel may permit one or more supplemental submissions to be made by
any party to an opposition proceeding under this chapter, subject to the
rights and limitations on discovery under section 328.
`Sec. 330. Hearing and briefs
`Any party to an opposition proceeding under this chapter may request an
oral hearing within the time set by the panel. If a hearing is requested
or the panel determines sua sponte that a hearing is needed, the panel shall
set a time for the hearing. The panel may permit the partied to file briefs
for the hearing, and shall permit cross-examination of all affiants and
declarants in the hearing, either before the panel or by deposition taken
under section 328.
`Sec. 331. Written decision
`The panel shall issue a written decision on each issue of patentability
with respect to each claim that is the subject of an opposition proceeding
under this chapter. The written decision shall consist of findings of fact
and conclusions of law. The written decision shall become a final determination
of the Office on the issues raised in the opposition unless a party to the
opposition files a request for reconsideration and modification of the written
decision within a period set by the panel, which shall not be less than
two weeks from the date of the written decision.
`Sec. 332. Burden of proof and evidence
`(a) Burden of Proof- The opposer in an opposition proceeding under this
chapter shall have the burden to prove the invalidity of a claim by a preponderance
of the evidence. The determination of invalidity shall be based upon the
broadest reasonable construction of the claim.
`(b) Evidence- The Federal Rules of Evidence shall apply to the opposition
proceeding, except to the extent inconsistent with any provision of this
chapter.
`Sec. 333. Reconsideration
`If a request is filed for reconsideration of the written decision in an
opposition proceeding under this chapter, the panel may authorize a party
to the proceeding who did not file such a request to file a response to
the request for reconsideration. Following any reconsideration, the panel
shall either deny the request for modification of the written decision or
grant the request and issue a modified written decision, which shall constitute
the final determination of the Office on the issues raised in the opposition
proceeding.
`Sec. 334. Appeal
`A party dissatisfied with the final determination of the panel in an opposition
proceeding under this chapter may appeal the determination under sections
141 through 144. Any party to the opposition proceeding shall have the right
to be a party to the appeal.
`Sec. 335. Certificate
`When a decision of a panel in an opposition proceeding under the chapter
has become final under section 331, 333, or 334, as the case may be, the
Director shall issue and publish a certificate in accordance with the decision,
canceling any claim of the patent determined to be unpatentable, and shall
incorporate into the patent any new or amended claims determined to be patentable.
The issuance of the certificate shall terminate the opposition proceeding.
`Sec. 336. Estoppel
`(1) IN GENERAL- Subject to paragraph (2), after a certificate has been
issued under section 335 in accordance with the decision of the panel
in an opposition proceeding, the determination with respect to an issue
of invalidity raised by an opposer shall bar that opposer from raising,
in any subsequent proceeding involving that opposer under this title,
any issue of fact or law actually decided and necessary to the determination
of that issue.
`(2) EXCEPTION- If an opposer in an opposition proceeding demonstrates,
in a subsequent proceeding referred to in paragraph (1), that there is
additional factual evidence that is material to an issue of fact actually
decided in the opposition proceeding, and necessary to the final determination
in the opposition proceeding, that could not reasonably have been discovered
or presented in the opposition proceeding by that opposer, the opposer
may raise, in that subsequent proceeding, that issue of fact and any determined
issue of law for which the issue of fact was necessary.
`(b) Expanded Definition of Opposer- For purposes of this section, the term
`opposer' includes the person making the request under section 321, any
real party in interest, and their successors in interest.
`(c) New Party-in-Interest- If a proceeding arising by reason of additional
factual evidence raised under subsection (a)(2) involves a real party in
interest not identified to the patent owner under section 322, the real
party in interest shall notify the Director and the patent owner of that
fact and of the proceeding, within 30 days after receiving notice that the
proceeding has been filed.
`Sec. 337. Duration of opposition
`The determination of a panel in an opposition proceeding under this chapter,
including any determinations pursuant to a request for reconsideration under
section 133, shall be issued not later than 1 year after the date on which
the opposition proceeding is instituted under section 325. Upon good cause
shown, the Director may extend the 1-year period by not more than 6 months.
`Sec. 338. Settlement
`(a) In General- An opposition proceeding under this chapter shall be terminated
with respect to any opposer upon the joint request of the opposer and the
patent owner, unless the panel has issued a written decision under section
331 before the request for termination is filed. If the opposition is terminated
with respect to an opposer under this section, no estoppel under section
336 shall apply to that opposer with respect to an issue of invalidity raised
in the opposition proceeding. The written decision under section 331 shall
thereafter be issued only with respect to issues of invalidity raised by
opposers that remain in the opposition proceeding.
`(b) Agreements in Writing- Any agreement or understanding between the patent
owner and an opposer, including any collateral agreements referred to therein,
that is made in connection with or in contemplation of the termination of
an opposition proceeding under subsection (a) shall be in writing. The opposition
with respect to the parties to the agreement or understanding shall not
be terminated until a true copy of the agreement or understanding, including
any such collateral agreements, has been filed in the Patent and Trademark
Office. If any party filing such an agreement or understanding requests,
the agreement or understanding shall be kept separate from the file of the
opposition, and shall be made available only to Government agencies on written
request, or to any person on a showing of good cause.
`(c) Discretionary Actions Reviewable- Any discretionary action of the Director
under subsection (b) shall be reviewable under chapter 7 of title 5.
`Sec. 339. Intervening rights
`Any proposed amended or new claim determined to be patentable and incorporated
into a patent following an opposition proceeding under this chapter shall
have the same effect as that specified in section 252 of this title for
reissued patents on the right of any person who made, purchased, or used
within the United States, or imported into the United States, anything patented
by such proposed amended or new claim, or who made substantial preparation
therefor, before the certificate issued under section 335 with respect to
that amended or new claim.
`Sec. 340. Relationship with reexamination proceedings
`(a) Estoppel- A patent for which an opposition proceeding has been instituted
under this chapter may not thereafter be made the subject of a request under
section 302 or 311 for reexamination, by the same opposer or on behalf of
the same real party in interest, on the same claim and on the same issue
that was the basis of the opposition proceeding.
`(b) Staying of Other Proceedings- [If, after an opposition proceeding has
been instituted under this chapter, a request for reexamination under section
302 or section 311 is made by or on behalf of a person other than the opposer
or the same real party in interest, such reexamination shall be stayed during
the pendency of any opposition proceeding under this chapter.]'.
(b) Clerical Amendment- The table of chapters for part III of title 35,
United States Code, is amended by adding at the end the following:
321.'.
SEC. 3. PUBLICATION OF PATENT APPLICATIONS.
Section 122 of title 35, United States Code, is amended--
(1) in subsection (b)(2)--
(A) by striking subparagraph (B); and
(B) in subparagraph (A)--
(i) by striking `(A) An application' and inserting `An application';
and
(ii) by redesignating clauses (i) through (iv) as subparagraphs (A)
through (D), respectively; and
(2) by striking subsection (c) and redesignating subsection (d) as subsection
(c).
SEC. 4. SUBMISSIONS BY THIRD PARTIES.
Section 131 of title 35, United States Code, is amended--
(1) by striking `The Director' and inserting `(a) In General- The Director';
and
(2) by adding at the end the following:
`(b) Third Party Submissions- Any party shall have the opportunity to submit
for consideration and for inclusion in the record, prior art (including,
but not limited to, evidence of knowledge or use, or public use or sale,
under section 102), to determine whether the invention was known or used,
or was in public use, or on sale, under section 102 or would have been obvious
under section 103. The Director shall consider such submissions if the request--
`(1) is made in writing not later than--
`(A) 6 months after the date on which the patent application is published
under section 122, or
`(B) before the date on which a notice of allowance is mailed under
section 151 for a patent on the invention,
`(2) is accompanied by the payment of a fee established by the Director
under section 41 for third party submissions;
`(3) sets forth the teaching and applicability of each reference and the
basis on which the submission is offered; and
`(4) includes a sworn declaration attesting to the relevance and accuracy
of the submissions.
Information submitted under this subsection shall be considered during the
examination of the patent application.'.
SEC. 5. INTER PARTES REEXAMINATION.
(a) Estoppel Provision- Section 315(c) of title 35, United States Code,
is amended by striking `or could have raised'.
(b) Final Decision- Section 317(b) of title 35, United States Code, is amended--
(1) in the heading, by striking `Final Decision' and inserting `District
Court Decision'; and
(2) in the first sentence, by striking `final decision' and inserting
`decision of a district court'.
(c) Applicability- Notwithstanding section 4608(a) of the Intellectual Property
and Communications Reform Act of 1999, as enacted by section 1000(a)(9)
of Public Law 106-113 (41 U.S.C. note), sections 311 through 318 of title
35, United States Code, as amended by this section, shall apply to any patent
that issues from an original application filed before, on, or after November
29, 1999.
SEC. 6. WILLFUL INFRINGEMENT.
Section 284 of title 35, United States Code, is amended--
(1) in the first paragraph, by striking `Upon' and inserting `(a) Award
of Damages- Upon'; and
(2) by amending the second paragraph to read as follows:
`(b) Willful Infringement-
`(1) INCREASED DAMAGES- A court that has determined that the infringer
has willfully infringed a patent or patents may increase the damages up
to three times the amount of damages found or assessed under subsection
(a), except that increased damages under this paragraph shall not apply
to provisional rights under section 154(d) of this title.
`(2) PERMITTED GROUNDS FOR WILLFULNESS- A court may find that an infringer
has willfully infringed a patent only if the patent owner presents clear
and convincing evidence that--
`(A) after receiving written notice from the patentee--
`(i) alleging acts of infringement in a manner sufficient to give
the infringer an objectively reasonable apprehension of suit on such
patent, and
`(ii) identifying with particularity each claim of the patent, each
product or process that the patent owner alleges infringes the patent,
and the relationship of such product or process to such claim,
the infringer, after a reasonable opportunity to investigate, thereafter
performed one or more of the alleged acts of infringement;
`(B) the infringer intentionally copied the patented invention with
knowledge that it was patented; or
`(C) after having been found by a court to have infringed that patent,
the infringer engaged in conduct that was not colorably different from
the conduct previously found to have infringed the patent, and which
resulted in a separate finding of infringement of the same patent.
`(3) LIMITATIONS ON WILLFULNESS- (A) A court shall not find that an infringer
has willfully infringed a patent under paragraph (2) for any period of
time during which the infringer had an informed good faith belief that
the patent was invalid or unenforceable, or would not be infringed by
the conduct later shown to constitute infringement of the patent.
`(B) An informed good faith belief within the meaning of subparagraph
(A) may be established by reasonable reliance on advice of counsel.
`(C) The decision of the infringer not to present evidence of advice of
counsel shall have no relevance to a determination of willful infringement
under paragraph (2).
`(4) LIMITATION ON PLEADING- Before the date on which a determination
has been made that the patent in suit is not invalid, is enforceable,
and has been infringed by the infringer, a patentee may not plead, and
a court may not determine, that an infringer has willfully infringed the
patent. The court's determination of an infringer's willfulness shall
be made without a jury.'; and
(3) in the third paragraph, by striking `The court' and inserting `(c)
Expert Testimony- The court'.
SEC. 7. VENUE.
Section 1400 of title 28, United States Code, is amended by adding at the
end the following new subsection:
`(c) A court shall grant a motion to transfer an action to a judicial district
or division in which the action could have been brought if--
`(1) such judicial district or division is a more appropriate forum for
the action, including any judicial district or division where a party
to the action has substantial evidence or witnesses;
`(2) the action was not brought in a district or division--
`(A) in which the patentee resides or maintains its principal place
of business;
`(B) in which an accused infringer maintains its principal place of
business; or
`(C) in the State in which an accused infringer, if a domestic corporation,
is incorporated;
`(3) at the time the action was brought, neither the patentee nor an accused
infringer had substantial evidence or witnesses in the judicial district
in which the action was brought; and
`(4) the action has not been previously transferred under this subsection.
`(d) For purposes of subsection (c), the use or sale of allegedly infringing
subject matter in a judicial district shall not, by itself, establish the
existence of substantial evidence or witnesses in such a judicial district.'.
SEC. 8. INJUNCTION.
Section 283 of title 35, United States Code, is amended by adding at the
end the following: `In determining equity, the court shall consider the
fairness of the remedy in light of all the facts and the relevant interest
of the parties associated with the invention. Unless an injunction is entered
pursuant to a nonappealable judgment of infringement, a court shall stay
the injunction pending an appeal upon an affirmative showing that the stay
would not result in irreparable harm to the owner of the patent and that
the balance of hardships from the stay does not favor the owner of the patent.'.
END
