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S 1145 IS

110th CONGRESS1stRSCommentsClose CommentsPermalink

2d

Session S. 1145

To amend title 35, United States Code, to provide for patent reform.CommentsClose CommentsPermalink

IN THE SENATE OF THE UNITED STATES

April 18, 2007

Mr. LEAHY (for himself, Mr. HATCH, Mr. SCHUMER, Mr. CORNYN, and Mr. WHITEHOUSE, Mr. CRAIG, Mr. CRAPO, Mr. BENNETT, Mr. SALAZAR, and Mr. SMITH) introduced the following bill; which was read twice and referred to the Committee on the JudiciaryCommentsClose CommentsPermalink

A BILL

To amend title 35, United States Code, to provide for patent reform.CommentsClose CommentsPermalink

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, CommentsClose CommentsPermalink

SECTION 1. SHORT TITLE; TABLE OF CONTENTS.

(a) Short Title- This Act may be cited as the `Patent Reform Act of 2007'. CommentsClose CommentsPermalink





(b) Table of Contents- The table of contents offor this Act is as follows: CommentsClose CommentsPermalink





Sec. 1. Short title; table of contents. CommentsClose CommentsPermalink





Sec. 2. Reference to title 35, United States Code.Sec. 3. Right of the first inventor to file. CommentsClose CommentsPermalink





Sec. 43. Inventor's oath or declaration. CommentsClose CommentsPermalink





Sec. 54. Right of the inventor to obtain damages. CommentsClose CommentsPermalink





Sec. 65. Post-grant procedures and other quality enhancements. CommentsClose CommentsPermalink





Sec. 76. Definitions; patent trial and appeal board. CommentsClose CommentsPermalink





Sec. 8. Study and report on reexamination proceedings.Sec. 97. Submissions by third parties and other quality enhancements. CommentsClose CommentsPermalink





Sec. 108. Venue and jurisdiction. CommentsClose CommentsPermalink





Sec. 11. R9. Patent and trademark office regulatory authority. CommentsClose CommentsPermalink





Sec. 10. Residency of Federal Circuit judges. CommentsClose CommentsPermalink





Sec. 11. Applicant quality submissions. CommentsClose CommentsPermalink





Sec. 12. Inequitable conduct. CommentsClose CommentsPermalink





Sec. 13. Authority of the Director of the Patent and Trademark Office to accept late filings. CommentsClose CommentsPermalink





Sec. 14. Limitation on damages and other remedies with respect to patents for methods in compliance with check imaging methods. CommentsClose CommentsPermalink





Sec. 15. Patent and Trademark Office funding. CommentsClose CommentsPermalink





Sec. 16. Technical amendments. CommentsClose CommentsPermalink





Sec. 137. Effective date; rule of construction. CommentsClose CommentsPermalink

SEC. 2. REFERENCE TO TITLE 35, UNITED STATES CODE.Whenever in this Act a section or other provision is amended or repealed, that amendment or repeal shall be considered to be made to that section or other provision of title 35, United States Code.SEC. 3. RIGHT OF THE FIRST INVENTOR TO FILE.

(a) Definitions- Section 100Section 100 of title 35, United States Code, is amended by adding at the end the following: CommentsClose CommentsPermalink





`(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. CommentsClose CommentsPermalink





`(g) The terms `joint inventor' and `coinventor' mean any 1 of the individuals who invented or discovered the subject matter of a joint invention. CommentsClose CommentsPermalink





`(h) The `effective filing date of a claimed invention' is-- CommentsClose CommentsPermalink





`(1) the filing date of the patent or the application for patent containing the claim to the invention; or CommentsClose CommentsPermalink





`(2) if the patent or application for patent is entitled to a right of priority of any other application under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c), the filing date of the earliest such application in which the claimed invention is disclosed in the manner provided by the first paragraph of section 112. CommentsClose CommentsPermalink





`(i) The term `claimed invention' means the subject matter defined by a claim in a patent or an application for a patent. CommentsClose CommentsPermalink





`(j) The term `joint invention' means an invention resulting from the collaboration of inventive endeavors of 2 or more persons working toward the same end and producing an invention by their collective efforts.'. CommentsClose CommentsPermalink





(b) Conditions for Patentability- CommentsClose CommentsPermalink





(1) IN GENERAL- Section 102Section 102 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

`Sec. 102. Conditions for patentability; novelty

`(a) Novelty; Prior Art- A patent for a claimed invention may not be obtained if-- CommentsClose CommentsPermalink





`(1) the claimed invention was patented, described in a printed publication, or in public use or on sale, on sale, or otherwise available to the public-- CommentsClose CommentsPermalink





`(A) more than one year before the 1 year before the effective filing date of the claimed invention; or CommentsClose CommentsPermalink





`(B) one1 year or less before the effective filing date of the claimed invention, other than through disclosures made by the inventor or a joint inventor or by others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or CommentsClose CommentsPermalink





`(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. CommentsClose CommentsPermalink





`(b) Exceptions- CommentsClose CommentsPermalink





`(1) PRIOR INVENTOR DISCLOSURE EXCEPTION- Subject matter that would otherwise qualify as prior art under subparagraph (B) of subsection (a)(1) shall not be prior based upon a disclosure under subparagraph (B) of subsection (a)(1) shall not be prior art to a claimed invention under that subparagraph if the subject matter had, before the applicable date under such subparagraph (B)such disclosure, been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed directly or indirectly from the inventor, joint inventor, or applicant or a joint inventor. CommentsClose CommentsPermalink





`(2) DERIVATION, PRIOR DISCLOSURE, AND COMMON ASSIGNMENT EXCEPTIONS- Subject matter that would otherwise qualify as prior art only under subsection (a)(2), after taking into account the exception under paragraph (1), shall not be prior art to a claimed invention if-- CommentsClose CommentsPermalink





`(A) the subject matter was obtained directly or indirectly from the inventor or a joint inventor; CommentsClose CommentsPermalink





or`(B `(B) the subject matter had been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed, directly or indirectly, from the inventor or a joint inventor before the effective filing date of the application or patent set forth under subsection (a)(2); or CommentsClose CommentsPermalink





`(C) the subject matter 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. CommentsClose CommentsPermalink





`(3) JOINT RESEARCH AGREEMENT EXCEPTION- CommentsClose CommentsPermalink





`(A) IN GENERAL- Subject matter 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 paragraph (2) if-- CommentsClose CommentsPermalink





`(i) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention; CommentsClose CommentsPermalink





`(ii) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and CommentsClose CommentsPermalink





`(iii) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. CommentsClose CommentsPermalink





`(B) For purposes of subparagraph (A), the term `joint research agreement' means a written contract, grant, or cooperative agreement entered into by two2 or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. CommentsClose CommentsPermalink





`(4) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVELY FILED- A patent or application for patent is effectively filed under subsection (a)(2) with respect to any subject matter described in the patent or application-- CommentsClose CommentsPermalink





`(A) as of the filing date of the patent or the application for patent; or CommentsClose CommentsPermalink





`(B) 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 one1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.'. CommentsClose CommentsPermalink





(2) 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: CommentsClose CommentsPermalink





`102. Conditions for patentability; novelty.'. CommentsClose CommentsPermalink





(c) Conditions for Patentability; Non-Obvious Subject Matter- Section 103Section 103 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

`Sec. 103. Conditions for patentability; nonobvious subject matter

`A patent for a claimed invention may not be obtained though 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.'. CommentsClose CommentsPermalink





(d) Repeal of Requirements for Inventions Made Abroad- Section 104Section 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. CommentsClose CommentsPermalink





(e) Repeal of Statutory Invention Registration- CommentsClose CommentsPermalink





(1) IN GENERAL- Section 157Section 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. CommentsClose CommentsPermalink





(2) REMOVAL OF CROSS REFERENCES- Section 111(b)(8)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'. CommentsClose CommentsPermalink





(f) Earlier Filing Date for Inventor and Joint Inventor- Section 120Section 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'. CommentsClose CommentsPermalink





(g) Conforming Amendments- CommentsClose CommentsPermalink





(1) RIGHT OF PRIORITY- Section 172Section 172 of title 35, United States Code, is amended by striking `and the time specified in section 102(d)'. CommentsClose CommentsPermalink





(2) LIMITATION ON REMEDIES- Section 287(c)(4)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'. CommentsClose CommentsPermalink





(3) INTERNATIONAL APPLICATION DESIGNATING THE UNITED STATES: EFFECT- Section 363Section 363 of title 35, United States Code, is amended by striking `except as otherwise provided in section 102(e) of this title'. CommentsClose CommentsPermalink





(4) PUBLICATION OF INTERNATIONAL APPLICATION: EFFECT- Section 374Section 374 of title 35, United States Code, is amended by striking `sections 102(e) and 154(d)' and inserting `section 154(d)'. CommentsClose CommentsPermalink





(5) PATENT ISSUED ON INTERNATIONAL APPLICATION: EFFECT- The second sentence of section 375(a)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'. CommentsClose CommentsPermalink





(6) LIMIT ON RIGHT OF PRIORITY- Section 119(a)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'. CommentsClose CommentsPermalink





(7) INVENTIONS MADE WITH FEDERAL ASSISTANCE- Section 202(c)Section 202(c) of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(A) in paragraph (2)-- CommentsClose CommentsPermalink





(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(a) would end before the end of that 2-year period'; and CommentsClose CommentsPermalink





(ii) by striking `the statutory' and inserting `that 1-year'; and CommentsClose CommentsPermalink





(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(a)'. CommentsClose CommentsPermalink





(h) Repeal of Interfering Patent Remedies- Section 291Section 291 of title 35, United States Code, and the item relating to that section in the table of sections for chapter 29 of title 35, United States Code, are repealed. CommentsClose CommentsPermalink





(i) Action for Claim to Patent on Derived Invention- Section 135(a)Section 135(a) of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink





`(a) Dispute Over Right to Patent- CommentsClose CommentsPermalink





`(1) INSTITUTION OF DERIVATION PROCEEDING- An applicant may request initiation of a derivation proceeding to determine the right of the applicant to a patent by filing a request which sets forth with particularity the basis for finding that an earlier applicant derived the claimed invention from the applicant requesting the proceeding and, without authorization, filed an application claiming such invention. Any such request may only be made within 12 months after the date of first publication of an application containing a claim that is the same or is substantially the same as the claimed invention, must be made under oath, and must be supported by substantial evidence. Whenever the Director determines that patents or applications for patent naming different individuals as the inventor interfere with one another because of a dispute over the right to patent under section 101, the Director shall institute a derivation proceeding for the purpose of determining which applicant is entitled to a patent. CommentsClose CommentsPermalink





`(2) REQUIREMENTS- A proceeding under this subsection may not be commenced unless the party requesting the proceeding has filed an application that was filed not later than 18 months after the effective filing date of the application or patent deemed to interfere with the subsequent application or patent.`(3) DETERMINATION BY PATENT TRIAL AND APPEAL BOARD- In any proceeding under this subsection, the Patent Trial and Appeal Board-- CommentsClose CommentsPermalink





`(A) shall determine the question of the right to patent; CommentsClose CommentsPermalink





`(B) in appropriate circumstances, may correct the naming of the inventor in any application or patent at issue; and CommentsClose CommentsPermalink





`(C) shall issue a final decision on the right to patent. CommentsClose CommentsPermalink





`(43) DERIVATION PROCEEDING- The Board may defer action on a request to initiate a derivation proceeding until 3 months after the date on which the Director issues a patent to the applicant that filed the earlier application. CommentsClose CommentsPermalink





`(54) EFFECT OF FINAL DECISION- The final decision of the Patent Trial and Appeal Board, if adverse to the claim of an applicant, shall constitute the final refusal by the United States Patent and Trademark Office on the claims involved. The Director may issue a patent to an applicant who is determined by the Patent Trial and Appeal Board to have the right to patent. The final decision of the Board, if adverse to a patentee, shall, if no appeal or other review of the decision has been or can be taken or had, constitute cancellation of the claims involved in the patent, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation by the United States Patent and Trademark Office.'. CommentsClose CommentsPermalink





(j) Elimination of References to Interferences- (1) Sections 6, 41, 134, 141, 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'. CommentsClose CommentsPermalink





(2) Sections 141, 146, and 154 of title 35, United States Code, are each amended-- CommentsClose CommentsPermalink





(A) by striking `an interference' each place it appears and inserting `a derivation proceeding'; and CommentsClose CommentsPermalink





(B) by striking `interference' each additional place it appears and inserting `derivation proceeding'. CommentsClose CommentsPermalink





(3) The section heading for section 134section 134 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

`Sec. 134. Appeal to the Patent Trial and Appeal Board'.

(4) The section heading for section 135section 135 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

`Sec. 135. Derivation proceedings'.

(5) The section heading for section 146section 146 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

`Sec. 146. Civil action in case of derivation proceeding'.

(6) Section 154(b)(1)(C)Section 154(b)(1)(C) of title 35, United States Code, is amended by striking `INTERFERENCES' and inserting `DERIVATION PROCEEDINGS'. CommentsClose CommentsPermalink





(7) 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: CommentsClose CommentsPermalink





`6. Patent Trial and Appeal Board.'. CommentsClose CommentsPermalink





(8) 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: CommentsClose CommentsPermalink





`134. Appeal to the Patent Trial and Appeal Board. CommentsClose CommentsPermalink





`135. Derivation proceedings.'. CommentsClose CommentsPermalink





(9) 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: CommentsClose CommentsPermalink





`146. Civil action in case of derivation proceeding.'. CommentsClose CommentsPermalink





(10) Certain Appeals-Subsection 1295(a)(4)(A) of title 28, United States Code, is amended to read as follows: CommentsClose CommentsPermalink





`(A) the Patent Trial and Appeal Board of the United States Patent and Trademark Office with respect to patent applications, derivation proceedings, and post-grant review proceedings, at the instance of an applicant for a patent or any party to a patent interference (commenced before the effective date of the Patent Reform Act of 2007), derivation proceeding, or post-grant review proceeding, and any such appeal shall waive any right of such applicant or party to proceed under section 145 or 146 of title 35;'. CommentsClose CommentsPermalink

SEC. 43. INVENTOR'S OATH OR DECLARATION.

(a) Inventor's Oath or Declaration- CommentsClose CommentsPermalink





(1) IN GENERAL- Section 115Section 115 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

`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), that commences the national stage under section 363, or that is filed by an inventor for an invention for which an application has previously been filed under this title by that inventor shall include, or be amended to include, the name of the inventor of any claimed invention in the application. Except as otherwise provided in this section, an 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. CommentsClose CommentsPermalink





`(b) Required Statements- An oath or declaration under subsection (a) shall contain statements that-- CommentsClose CommentsPermalink





`(1) the application was made or was authorized to be made by the affiant or declarant; and CommentsClose CommentsPermalink





`(2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application. CommentsClose CommentsPermalink





`(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). CommentsClose CommentsPermalink





`(d) Substitute Statement- CommentsClose CommentsPermalink





`(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. CommentsClose CommentsPermalink





`(2) PERMITTED CIRCUMSTANCES- A substitute statement under paragraph (1) is permitted with respect to any individual who-- CommentsClose CommentsPermalink





`(A) is unable to file the oath or declaration under subsection (a) because the individual-- CommentsClose CommentsPermalink





`(i) is deceased; CommentsClose CommentsPermalink





`(ii) is under legal incapacity; or CommentsClose CommentsPermalink





`(iii) cannot be found or reached after diligent effort; or CommentsClose CommentsPermalink





`(B) is under an obligation to assign the invention but has refused to make the oath or declaration required under subsection (a). CommentsClose CommentsPermalink





`(3) CONTENTS- A substitute statement under this subsection shall-- CommentsClose CommentsPermalink





`(A) identify the individual with respect to whom the statement applies; CommentsClose CommentsPermalink





`(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 CommentsClose CommentsPermalink





`(C) contain any additional information, including any showing, required by the Director. CommentsClose CommentsPermalink





`(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. CommentsClose CommentsPermalink





`(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). CommentsClose CommentsPermalink





`(g) Earlier-Filed Application Containing Required Statements or Substitute Statement- 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 that claims the benefit under section 120 or 365(c) of the filing of an earlier-filed application, if-- CommentsClose CommentsPermalink





`(1) 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; CommentsClose CommentsPermalink





`(2) a substitute statement meeting the requirements of subsection (d) was filed in the earlier filed application with respect to the individual; or CommentsClose CommentsPermalink





`(3) 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. CommentsClose CommentsPermalink





`(h) Supplemental and Corrected Statements; Filing Additional Statements- CommentsClose CommentsPermalink





`(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. CommentsClose CommentsPermalink





`(2) SUPPLEMENTAL STATEMENTS NOT REQUIRED- If an individual has executed an oath or declaration under 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. CommentsClose CommentsPermalink





`(3) SAVINGS CLAUSE- No patent shall 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). CommentsClose CommentsPermalink





`(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.'. CommentsClose CommentsPermalink





(2) RELATIONSHIP TO DIVISIONAL APPLICATIONS- Section 121Section 121 of title 35, United States Code, is amended by striking `If a divisional application' and all that follows through `inventor.'. CommentsClose CommentsPermalink





(3) REQUIREMENTS FOR NONPROVISIONAL APPLICATIONS- Section 111(a)Section 111(a) of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(A) in paragraph (2)(C), by striking `by the applicant' and inserting `or declaration'; CommentsClose CommentsPermalink





(B) in the heading for paragraph (3), by striking `AND OATH'; and CommentsClose CommentsPermalink





(C) by striking `and oath' each place it appears. CommentsClose CommentsPermalink





(4) CONFORMING AMENDMENT- The item relating to section 115 in the table of sections for chapter 10 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink





`115. Inventor's oath or declaration.'. CommentsClose CommentsPermalink





(b) Filing by Other Than Inventor- Section 118Section 118 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

`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.'. CommentsClose CommentsPermalink





(c) Specification- Section 112Section 112 of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(1) in the first paragraph-- CommentsClose CommentsPermalink





--(A) by striking `The specification' and inserting `(a) In General- The specification'; and CommentsClose CommentsPermalink





(B) by striking `of carrying out his invention' and inserting `or joint inventor of carrying out the invention'; and CommentsClose CommentsPermalink





(2) in the second paragraph-- CommentsClose CommentsPermalink





(A) by striking `The specifications' and inserting `(b) Conclusion- The specifications'; and CommentsClose CommentsPermalink





(B) by striking `applicant regards as his invention' and inserting `inventor or a joint inventor regards as the invention'; CommentsClose CommentsPermalink





(3) in the third paragraph, by striking `A claim' and inserting `(c) Form- A claim'; CommentsClose CommentsPermalink





(4) in the fourth paragraph, by striking `Subject to the following paragraph,' and inserting `(d) Reference in Dependent Forms- Subject to subsection (e),'; CommentsClose CommentsPermalink





(5) in the fifth paragraph, by striking `A claim' and inserting `(e) Reference in Multiple Dependent Form- A claim'; and CommentsClose CommentsPermalink





(6) in the last paragraph, by striking `An element' and inserting `(f) Element in Claim for a Combination- An element'. CommentsClose CommentsPermalink

SEC. 54. RIGHT OF THE INVENTOR TO OBTAIN DAMAGES.

(a) Damages- Section 284 is amended--(1) in the first paragraph--(A) by striking `Upon' and inserting `(a) Award of DamagesSection 284 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

`(a) In General- Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court, subject to the provisions of this section. CommentsClose CommentsPermalink





`(b) Determination of Damages; Evidence Considered; Procedure- The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances. The admissibility of such testimony shall be governed by the rules of evidence governing expert testimony. When the damages are not found by a jury, the court shall assess them. CommentsClose CommentsPermalink





`(c) Standard for Calculating Reasonable Royalty- CommentsClose CommentsPermalink





`(1) IN GENERAL- Upon';(B) by aligning the remaining text accordingly; and(C) by adding at the end the following:`(2) RELATIONSHIP OF DAMAGES TO CONTRIBUTIONS OVER PRIOR ART- The court shall conduct an analysis to ensure that a reasonable royalty under paragraph (1) is applied only to that economic value properly attributable to the patent's specific contribution over the prior art. InThe court shall determine, based on the facts of the case and after adducing any further evidence the court deems necessary, which of the following methods shall be used by the court or the jury in calculating a reasonable royalty analysis, the court shall identify all factorspursuant to subsection (a). The court shall also identify the factors that are relevant to the determination of a reasonable royalty under this subsection, and the court or the , and the court or jury, as the case may be, shall consider only those factors in making the determination. The court shall exclude from the analysis the economic value properly attributable to the prior art, and other features or improvements, whether or not themselves patented, that contribute economic value to the infringing product or process.`(3such determination. CommentsClose CommentsPermalink





`(A) ENTIRE MARKET VALUE- Unless the claimant shows that the patentpon a showing to the satisfaction of the court that the claimed invention's specific contribution over the prior art is the predominant basis for market demand for an infringing product or process, damages may not be based upon the entire market value of that infringing product or process. CommentsClose CommentsPermalink





`(4) OTHERB) ESTABLISHED ROYALTY BASED ON MARKETPLACE LICENSING- Upon a showing to the satisfaction of the court that the claimed invention has been the subject of a nonexclusive license for the use made of the invention by the infringer, to a number of persons sufficient to indicate a general marketplace recognition of the reasonableness of the licensing terms, if the license was secured prior to the filing of the case before the court, and the court determines that the infringer's use is of substantially the same scope, volume, and benefit of the rights granted under such license, damages may be determined on the basis of the terms of such license. Upon a showing to the satisfaction of the court that the claimed invention has sufficiently similar noninfringing substitutes in the relevant market, which have themselves been the subject of such nonexclusive licenses, and the court determines that the infringer's use is of substantially the same scope, volume, and benefit of the rights granted under such licenses, damages may be determined on the basis of the terms of such licenses. CommentsClose CommentsPermalink





`(C) VALUATION CALCULATION- Upon a determination by the court that the showings required under subparagraphs (A) and (B) have not been made, the court shall conduct an analysis to ensure that a reasonable royalty is applied only to the portion of the economic value of the infringing product or process properly attributable to the claimed invention's specific contribution over the prior art. In the case of a combination invention whose elements are present individually in the prior art, the contribution over the prior art may include the value of the additional function resulting from the combination, as well as the enhanced value, if any, of some or all of the prior art elements as part of the combination, if the patentee demonstrates that value. CommentsClose CommentsPermalink





`(2) ADDITIONAL FACTORS- In determining damagesWhere the court determines it to be appropriate in determining a reasonable royalty under paragraph (1), the court may also consider, or direct the jury to consider, the terms of any nonexclusive marketplace licensing of the invention, where appropriate, as well as any other relevant factors under applicable law. CommentsClose CommentsPermalink





';(2) by amending the second undesignated paragraph to read as follows:`(b `(d) Inapplicability to Other Damages Analysis- The methods for calculating a reasonable royalty described in subsection (c) shall have no application to the calculation of an award of damages that does not necessitate the determination of a reasonable royalty as a basis for monetary relief sought by the claimant CommentsClose CommentsPermalink





`(e) Willful Infringement - CommentsClose CommentsPermalink





`(1) INCREASED DAMAGES- A court that has determined that thean infringer has willfully infringed a patent or patents may increase the damages up to three3 times the amount of the damages found or assessed under subsection (a), except that increased damages under this paragraph shall not apply to provisional rights under section 154(d). CommentsClose CommentsPermalink





`(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-- CommentsClose CommentsPermalink





`(A) after receiving written notice from the patentee-- CommentsClose CommentsPermalink





`(i) alleging acts of infringement in a manner sufficient to give the infringer an objectively reasonable apprehension of suit on such patent, and CommentsClose CommentsPermalink





`(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, CommentsClose CommentsPermalink





the infringer, after a reasonable opportunity to investigate, thereafter performed one1 or more of the alleged acts of infringement; CommentsClose CommentsPermalink





`(B) the infringer intentionally copied the patented invention with knowledge that it was patented; or CommentsClose CommentsPermalink





`(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. CommentsClose CommentsPermalink





`(3) LIMITATIONS ON WILLFULNESS- CommentsClose CommentsPermalink





(A)`(A) IN GENERAL- A court may 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. CommentsClose CommentsPermalink





`(B) GOOD FAITH ESTABLISHED- An informed good faith belief within the meaning of subparagraph (A) may be established by-- CommentsClose CommentsPermalink





`(i) reasonable reliance on advice of counsel; CommentsClose CommentsPermalink





`(ii) evidence that the infringer sought to modify its conduct to avoid infringement once it had discovered the patent; or CommentsClose CommentsPermalink





`(iii) other evidence a court may find sufficient to establish such good faith belief. CommentsClose CommentsPermalink





`(C) RELEVANCE OF NOT PRESENTING CERTAIN EVIDENCE- The decision of the infringer not to present evidence of advice of counsel is not relevant to a determination of willful infringement under paragraph (2). CommentsClose CommentsPermalink





`(4) LIMITATION ON PLEADING- Before the date on which a court determines that the patent in suit is not invalid, is enforceable, and has been infringed by the infringer, a patentee may not plead and a court may not determine that an infringer has willfully infringed a patent. The court's determination of an infringer's willfulness shall be made without a jury.'; and(3) in the third undesignated paragraph, by striking `The court' and inserting `(c) Expert Testimony- The court'. CommentsClose CommentsPermalink





(b) Report to Congressional Committees- CommentsClose CommentsPermalink





(1) IN GENERAL- Not later than 2 years after the date of 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: CommentsClose CommentsPermalink





(A) A comparison between patent laws of the United States and the laws of other industrialized countries, including the European Union, Japan, Canada, and Australia. CommentsClose CommentsPermalink





(B) An analysis of the effect of prior user rights on innovation rates in the selected countries. CommentsClose CommentsPermalink





(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. CommentsClose CommentsPermalink





(D) An analysis of the effect of prior user rights, if any, on small businesses, universities, and individual inventors. CommentsClose CommentsPermalink





(E) An analysis of legal and constitutional issues, if any, that arise from placing trade secret law in patent law. CommentsClose CommentsPermalink





(2) CONSULTATION WITH OTHER AGENCIES- In preparing the report required under paragraph (1), the Director shall consult with the Secretary of State and the Attorney General. CommentsClose CommentsPermalink





(c) Limitation on Damages and Other Remedies; Marking and Notice-Section 287(a) of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink





`(a)(1) Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word `patent' or the abbreviation `pat.', together with the number of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein 1 or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice. CommentsClose CommentsPermalink





`(2) In the case of a patented invention not covered under paragraph (1), no recovery shall be had for any infringement committed more than 2 years prior to the filing of the complaint or counterclaim for infringement in the action, except upon proof that the infringer was notified of the infringement by the patentee. Upon such proof, the patentee may recover damages for infringement for up to 2 years prior to such notice, as well as for infringement after such notice. In no event may damages be recovered for more than 6 years prior to the filing of the complaint or counterclaim for infringement in the action.'. CommentsClose CommentsPermalink





(d) Defense to Infringement Based on Earlier Inventor- Section 273 of title 35, United States Code, is amended--(1) in subsection (a)--(A) in paragraph (1)--(i) by striking `of a method'; and(ii) by striking `review period;' and inserting `review period; and';(B) in paragraph (2)(B), by striking the semicolon at the end and inserting a period; and(C) by striking paragraphs (3) and (4);(2) in subsection (b)--(A) in paragraph (1)--(i) by striking `for a method'; and(ii) by striking `at least 1 year before the effective filing date of such patent, and' and all that follows through the period and inserting `and commercially used, or made substantial preparations for commercial use of, the subject matter before the effective filing date of the claimed invention.';(B) in paragraph (2)--(i) by striking `The sale or other disposition of a useful end result produced by a patented method' and inserting `The sale or other disposition of subject matter that qualifies for the defense set forth in this section'; and(ii) by striking `a defense under this section with respect to that useful end result' and inserting `such defense'; and(C) in paragraph (3)--(i) by striking subparagraph (A); and(ii) by redesignating subparagraphs (B) and (C) as subparagraphs (A) and (B), respectively;(3) in paragraph (7), by striking `of the patent' and inserting `of the claimed invention'; and(4) by amending the heading to read as follows:`Sec. 273. Special defenses to and exemptions from infringement'.(c) Table of Sections- The item relating to section 273 in the table of sections for chapter 28Section 273(b)(6) of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink





`273. Special defenses to and exemptions from infringement.'.(d(6) PERSONAL DEFENSE- 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. Notwithstanding the preceding sentence, any person may, on its own behalf, assert a defense based on the exhaustion of rights provided under paragraph (3), including any necessary elements thereof.'. CommentsClose CommentsPermalink





(e) Effective Date- The amendments made by this section shall apply to any civil action commenced on or after the date of enactment of this Act. CommentsClose CommentsPermalink

SEC. 65. POST-GRANT PROCEDURES AND OTHER QUALITY ENHANCEMENTS.

(a) Reexamination- Section 303(a)Section 303(a) of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink





`(a) Within 3 months after the owner of a patent files a request for reexamination under section 302, the Director shall determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. On the Director's own initiative, and at any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by the Director, is cited under section 301, or is cited by any person other than the owner of the patent under section 302 or section 311. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.'. CommentsClose CommentsPermalink





(b) Reexamination- Section 315(c) is amended by striking `or could have raised'.(c)peal of Optional Inter Partes Reexamination Prohibited After District Court Decision- Section 317(b) is amended--(1) in the subsection heading, by striking `Final Decision' and inserting `District Court Decision'; and(2) by striking `Once a final decision has been entered' and inserting `Once the judgment of the district court has been entered'.(d) Effective Dates- Notwithstanding any other provision of law,cedures- CommentsClose CommentsPermalink





(1) IN GENERAL- Sections 311, 312, 313, 314, 315, 316, 317, and 318 of title 35, United States Code, and the items relating to those sections in the table of sections, are repealed. CommentsClose CommentsPermalink





(2) EFFECTIVE DATE- Notwithstanding paragraph (1), the provisions of sections 311 through 318 of title 35, United States Code, as amended by this Act, shall apply to any patent that issues before, on, or after the date of enactment of this Act from an original application filed on any date.(e, 312, 313, 314, 315, 316, 317, and 318 of title 35, United States Code, shall continue to apply to any inter partes reexamination determination request filed on or before the date of enactment of this Act. CommentsClose CommentsPermalink





(c) Post-Grant Opposition Procedures- CommentsClose CommentsPermalink





(1) IN GENERAL- Part III of title 35, United States Code, is amended by adding at the end the following new chapter: CommentsClose CommentsPermalink

`CHAPTER 32--POST-GRANT REVIEW PROCEDURES

`Sec. CommentsClose CommentsPermalink





`321. Petition for post-grant review. CommentsClose CommentsPermalink





`322. Timing and bases of petition. CommentsClose CommentsPermalink





`323. Requirements of petition. CommentsClose CommentsPermalink





`324. Publication and public availability of petition. CommentsClose CommentsPermalink





`325. Prohibited filings. CommentsClose CommentsPermalink





`3256. Submission of additional information; showing of sufficient grounds.`326. CommentsClose CommentsPermalink





`327. Institution of post-grant review proceedings. CommentsClose CommentsPermalink





`328. Consolidation of proceedings and joinder. CommentsClose CommentsPermalink





`329. Conduct of post-grant review proceedings. CommentsClose CommentsPermalink





`32730. Patent owner response. CommentsClose CommentsPermalink





`32831. Proof and evidentiary standards. CommentsClose CommentsPermalink





`32932. Amendment of the patent. CommentsClose CommentsPermalink





`330. Decision of the Board.`3313. Settlement. CommentsClose CommentsPermalink





`334. Decision of the board. CommentsClose CommentsPermalink





`335. Effect of decision. CommentsClose CommentsPermalink





`3326. Relationship to other pending proceedings. CommentsClose CommentsPermalink





`3337. Effect of decisions rendered in civil action on future post-grant review proceedings. CommentsClose CommentsPermalink





`3348. Effect of final decision on future proceedings. CommentsClose CommentsPermalink





`3359. Appeal. CommentsClose CommentsPermalink

`Sec. 321. Petition for post-grant review

`Subject to sections 322, 324, 332, and 333 of this chapter, a person who is not the patent owner may file with the Office a petition for cancellation seeking to institute a post-grant review proceeding to cancel as unpatentable any claim of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim). The Director shall establish, by regulation, fees to be paid by the person requesting the proceeding, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the post-grant review proceeding and the status of the petitioner. CommentsClose CommentsPermalink

`Sec. 322. Timing and bases of petition

`A post-grant proceeding may be instituted under this chapter pursuant to a cancellation petition filed under sectionpetition filed under section 321 only if-- CommentsClose CommentsPermalink





`(1) the petition is filed not later than 12 months after the grant of the patent or issuance of a reissue patent, as the case may be; CommentsClose CommentsPermalink





`(2)(A) the petitioner establishes in the petition a substantial reason to believe that the continued existence of the challenged claim in the petition causes or is likely to cause the petitioner significant economic harm; or`(B) the petitioner has received notice from the patent and CommentsClose CommentsPermalink





`(B) the petitioner files a petition not later than 12 months after receiving notice, explicitly or implicitly, that the patent holder alleging infringement by the petitioner of the pates infringement; or CommentsClose CommentsPermalink





`(3) the patent owner consents in writing to the proceeding. CommentsClose CommentsPermalink

`Sec. 323. Requirements of petition

`A cancellation petition filed under section 321 may be considered only if-- CommentsClose CommentsPermalink





`(1) the petition is accompanied by payment of the fee established by the Director under section 321; CommentsClose CommentsPermalink





`(2) the petition identifies the cancellation petitioner; and`(3) the petition sets forth in writing the basis for the cancellation, identifying each claim challenged and providing such information as the Director may require by regulation, and includesany real parties in interest; CommentsClose CommentsPermalink





`(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 each challenged claim, including-- CommentsClose CommentsPermalink





`(A) copies of patents and printed publications that the cancellation petitioner petitioner relies upon in support of the petition; and CommentsClose CommentsPermalink





`(4B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on other factual evidence or on expert opinions; CommentsClose CommentsPermalink





`(4) the petition provides such information as the Director may require by regulation; and CommentsClose CommentsPermalink





`(5) the petitioner provides copies of those documentsany of the documents required under paragraphs (3) and (4) to the patent owner or, if applicable, the designated representative of the patent owner. CommentsClose CommentsPermalink

`Sec. 324. Publication and public availability of petition

`Sec. 325. Prohibited filings

`(a) In General- A post-grant review proceeding may not be instituted under paragraph (1), (2), or (3) of section 322 if the petition for cancellation requesting the proceeding identifies the same cancellation petitionerpetitioner or real party in interest and the same patent as a previous petition for cancellation filed under the same paragraph of section 322iled under any paragraph of section 322. CommentsClose CommentsPermalink





`(b) Previously Filed Civil Actions- A post-grant review proceeding may not be instituted or maintained under paragraph (1) or (2) of section 322 if the petitioner or real party in interest has instituted a civil action challenging the validity of a claim of the patent. CommentsClose CommentsPermalink

`Sec. 3256. Submission of additional information

; showing of sufficient grounds`The cancellation petition`A petitioner under this chapter shall file such additional information with respect to the petition as the Director may require. by regulation. CommentsClose CommentsPermalink

`(a) In General- The Director may not authorize a post-grant review proceeding to commence unless the Director determines that the information presented provides sufficient grounds to proceein the petition raises a substantial new question of patentability for at least 1 of the challenged claims. The Director shall determine whether to authorize a post-grant proceeding within 90 days after receiving a petition. CommentsClose CommentsPermalink





`(b) Notification- The Director shall notify the petitioner and patent owner, in writing, of the Director's determination under subsection (a). The Director shall publish each notice of institution of a post-grant review proceeding in the Federal Register and make such notice available on the website of the United States Patent and Trademark Office. Such notice shall list the date on which the proceeding shall commence. CommentsClose CommentsPermalink





`(c) Determination Not Appealable- The determination by the Director regarding whether to authorize a post-grant review proceeding under subsection (a) shall not be appealable. CommentsClose CommentsPermalink





`(d) Assignment of the Proceeding to a Panel- Upon a determination of the Director to commence a post-grant review proceeding, the Director shall assign the proceeding to a panel of 3 administrative patent judges from the Patent Trial and Appeal Board. CommentsClose CommentsPermalink

`Sec. 326. Conduct of post-grant review proceedings8. Consolidation of proceedings and joinder

`(a) Consolidation of Post-Grant Proceedings- If more than 1 petition is submitted under section 322(1) against the same patent and the Director determines that each raises a substantial new question of patentability warranting the commencement of a post-grant review proceeding under section 327, the Director may consolidate such proceedings into a single post-grant review proceeding. CommentsClose CommentsPermalink





`(b) Joinder- If the Director commences a post-grant review proceeding on the basis of a petition filed under section 322(2), any person who files in compliance with section 322(2)(A) a petition that the Director finds sufficient to proceed under section 327 may be joined at the discretion of the Director, and such person shall participate in such post-grant review proceeding. CommentsClose CommentsPermalink

`(a) In General- The Director shall--`(1) prescribe regulations,-- CommentsClose CommentsPermalink





`(1) in accordance with section 2(b)(2), establishing and governing post-grant review proceedings under this chapter and their relationship to other proceedings under this title; CommentsClose CommentsPermalink





`(2) prescribe regulationsfor setting forth the standards for showings of substantial reason to believe and significant economic harm under section 322(2) and sufficient grounds under section 325bstantial new question of patentability under section 327(a); CommentsClose CommentsPermalink





`(3) prescribe regulationsoviding for the publication in the Federal Register all requests for the institution of post-grant proceedings; CommentsClose CommentsPermalink





`(4) establishing procedures for the submission of supplemental information after the petition for cancellation is filed; and CommentsClose CommentsPermalink





`(4) prescribe regulations5) setting forth 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, and the procedures for obtaining such evidence shall be consistent with the purpose and nature of the proceeding.`(b) . CommentsClose CommentsPermalink





`(b) Post-Grant Review Regulations- Regulations under subsection (a)(1)--`(1) shall shall-- CommentsClose CommentsPermalink





`(1) require that the final determination in a post-grant review proceeding issue not later than one year after the date on which the post-grant review proceeding is instituted under this 1 year after the date on which the Director notices the institution of a post-grant proceeding under this chapter, except that, for good cause shown, the Director may extend the 1-year period by not more than six6 months; CommentsClose CommentsPermalink





`(2) shall provide for discovery upon order of the Director;`(3) shall, as required in the interests of justice; CommentsClose CommentsPermalink





`(3) prescribe 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 unnecessary increase in the cost of the proceeding; CommentsClose CommentsPermalink





`(4) may provide for protective orders governing the exchange and submission of confidential information; and CommentsClose CommentsPermalink





`(5) shall ensure that any information submitted by the patent owner in support of any amendment entered under section 32832 is made available to the public as part of the prosecution history of the patent. CommentsClose CommentsPermalink





`(c) Considerations- In prescribing regulations under this section, the Director shall consider the effect on the economy, the integrity of the patent system, and the efficient administration of the Office. CommentsClose CommentsPermalink





`(d) Conduct of Proceeding- The Patent Trial and Appeal Board shall, in accordance with section 6(b), conduct each post-grant review proceeding authorized by the Director. CommentsClose CommentsPermalink

`Sec. 32730. Patent owner response

`After a post-grant review proceeding under this chapter has been instituted with respect to a patent, the patent owner shall have the right to file, within a time period set by the Director, a response to the cancellation petition. The patent owner shall file with the response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response. CommentsClose CommentsPermalink

`Sec. 32831. Proof and evidentiary standards

`(a) In General- The presumption of validity set forth in section 282 shall notof this title shall not apply to challenges brought under section 322(1) but shall apply in a challenge brought under paragraph (2) or (3) of section 322 to any patent claim under this chapter. CommentsClose CommentsPermalink





`(b) Burden of Proof- The party advancing a proposition under this chapteretitioner under section 322(1) shall have the burden of proving that propositiona proposition of invalidity by a preponderance of the evidence. For petitions filed under paragraphs (2) or (3) of section 322, the existence, authentication, availability, and scope of any evidence offered to establish invalidity shall be established by clear and convincing evidence. If such predicate facts are so established, invalidity shall be proven only if the persuasive force of such facts demonstrates invalidity by a preponderance of the evidence. CommentsClose CommentsPermalink

`Sec. 32932. Amendment of the patent

`(a) In General- In response to a challenge in a petition for cancellationDuring a post-grant review proceeding, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways: CommentsClose CommentsPermalink





`(1) Cancel any challenged patent claim. CommentsClose CommentsPermalink





`(2) For each challenged claim, propose a substitute claim. CommentsClose CommentsPermalink





`(3) Amend the patent drawings or otherwise amend the patent other than the claims. CommentsClose CommentsPermalink





`(b) Additional Motions- Additional motions to amend may be permitted only for good cause shown. CommentsClose CommentsPermalink





`(c) Scope of Claims- An amendment under this section may not enlarge the scope of the claims of the patent or introduce new matter. CommentsClose CommentsPermalink

`Sec. 330. Decision of the B3. Settlement

`Sec. 334. Decision of the board

`If the post-grant review proceeding 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 and any new claim added under section 32932. CommentsClose CommentsPermalink

`Sec. 3315. Effect of decision

`(a) In General- If the Patent Trial and Appeal Board issues a final decision under section 3304 and the time for appeal has expired or any appeal proceeding has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable and incorporating in the patent by operation of the certificate any new claim determined to be patentable. CommentsClose CommentsPermalink

`Sec. 3326. Relationship to other pending proceedings

`Notwithstanding subsectionection 135(a), sections 251251, and 252, and chapter 30, the Director may determine the manner in which any ex parte reexamination proceeding, reissue proceeding, interference proceeding (commenced before the effective date of the Patent Reform Act of 2007), derivation proceeding, or post-grant review proceeding, that is pending during a post-grant review proceeding, may proceed, including providing for stay, transfer, consolidation, or termination of any such proceeding. CommentsClose CommentsPermalink

`Sec. 3337. Effect of decisions rendered in civil action on future post-grant review proceedings

`If a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28 establishing that the party has not sustained its burden of proving the invalidity of any patent claim-- CommentsClose CommentsPermalink





`(1) that party to the civil action and the privies of that party may not thereafter request a post-grant review proceeding on that patent claim on the basis of any grounds, under the provisions of section 311, which that party or the privies of that party raised or had actual knowledge of under section 322; and CommentsClose CommentsPermalink





`(2) the Director may not thereafter maintain a post-grant review proceeding previously requested by that party or the privies of that party on the basis of such groundsreal parties in interest of that party. CommentsClose CommentsPermalink

`Sec. 3348. Effect of final decision on future proceedings

`(a) In General- If a final decision under section 3304 is favorable to the patentability of any original or new claim of the patent challenged by the cancellation petitioner, the cancellationpetitioner, the petitioner may not thereafter, based on any ground which the cancellation petitioner petitioner raised during the post-grant review proceeding-- CommentsClose CommentsPermalink





`(1) request or pursue a reexamination of such claim under chapter 31;`(2) request or pursue a derivation proceeding with respect to such claim;`(3) request or pursue a post-grant review proceeding under this chapter with respect to such claim; or CommentsClose CommentsPermalink





`(42) assert the invalidity of any such claim, in any civil action arising in whole or in part under section 1338 of title 28. CommentsClose CommentsPermalink





`(b) Extension of Prohibition- If the final decision is the result of a petition for cancellation filed on the basis of paragraph (2) of section 322iled on the basis of section 322(2), the prohibition under this section shall extend to any ground which the cancellation petitioner petitioner raised during the post-grant review proceeding. CommentsClose CommentsPermalink

`Sec. 3359. Appeal

`A party dissatisfied with the final determination of the Patent Trial and Appeal Board in a post-grant proceeding under this chapter may appeal the determination under sections 141 through 144. Any party to the post-grant proceeding shall have the right to be a party to the appeal.'. CommentsClose CommentsPermalink





(f)d) Technical and Conforming Amendment- The table of chapters for part III of title 35, United States Code, is amended by adding at the end the following: CommentsClose CommentsPermalink

321'. CommentsClose CommentsPermalink

(ge) Regulations and Effective Date- CommentsClose CommentsPermalink





(1) REGULATIONS- The Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office (in this subsection referred to as 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 (e) of this sectionc) of this section. CommentsClose CommentsPermalink





(2) APPLICABILITY- The amendments made by subsection (ec) shall take effect on the date that is 1 year after the date of the enactment of this Act and shall apply to patents issued before, on,on or after that date, except that, in the case of a patent issued before that date, a petition for cancellation under section 321 of title 35, United States Code, may be filed only if a circumstance described in paragraph (2), (3), or (4) of section 322 of title 35, United States Code, applies to the petitione effective date of this Act on an application filed between November 29, 1999 and the effective date of this Act, a petition for post-grant review undersection 321 of title 35, United States Code, may only be filed under paragraph (2) or (3) of section 322 of title 35, United States Code. CommentsClose CommentsPermalink





(3) PENDING INTERFERENCES- The Director shall determine the procedures under which interferences commenced before the effective date under paragraph (2) are to proceed, including whether any such interference is to be dismissed without prejudice to the filing of a cancellation petition for a post-grant oppositionpetition for a post-grant review proceeding under chapter 32 of title 35, United States Code, or is to proceed as if this Act had not been enacted. The Director shall include such procedures in regulations issued under paragraph (1). CommentsClose CommentsPermalink

SEC. 76. DEFINITIONS; PATENT TRIAL AND APPEAL BOARD.

(a) Definitions- Section 100 (as amended bySection 100 of title 35, United States Code, (as amended by section 2 of this Act) is further amended-- CommentsClose CommentsPermalink





(1) in subsection (e), by striking `or inter partes reexamination under section 311'; and CommentsClose CommentsPermalink





(2) by adding at the end the following: CommentsClose CommentsPermalink





`(k) The term `cancellation petitioner' means the real party in interest requesting cancellation of any claim of a patent under chapter 31 of this title and the privies of the real party in interest.'. CommentsClose CommentsPermalink





(b) Patent Trial and Appeal Board- Section 6Section 6 of title 35, United States Code, is amended to read as follows: CommentsClose CommentsPermalink

`Sec. 6. Patent Trial and Appeal Board

`(a) Establishment and Composition- 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 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. CommentsClose CommentsPermalink





`(b) Duties- The Patent Trial and Appeal Board shall-- CommentsClose CommentsPermalink





`(1) on written appeal of an applicant, review adverse decisions of examiners upon application for patents; CommentsClose CommentsPermalink





`(2) on written appeal of a patent owner, review adverse decisions of examiners upon patents in reexamination proceedings under chapter 30; CommentsClose CommentsPermalink





and`(3) determine priority and patentability of invention in derivation proceedings under subsection 135(a); and CommentsClose CommentsPermalink





`(4) conduct post-grant opposition proceedings under chapter 32. CommentsClose CommentsPermalink





Each appeal and derivation proceeding shall be heard by at least 3 members of the Patent Trial and Appeal Board, who shall be designated by the Director. Only the Patent Trial and Appeal Board may grant rehearings. The Director shall assign each post-grant review proceeding to a panel of 3 administrative patent judges. Once assigned, each such panel of administrative patent judges shall have the responsibilities under chapter 32 in connection with post-grant review proceedings.'. CommentsClose CommentsPermalink

SEC. 97. SUBMISSIONS BY THIRD PARTIES AND OTHER QUALITY ENHANCEMENTS.

(a) Publication- Section 122(b)(2)Section 122(b)(2) of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(1) by striking subparagraph (B); and CommentsClose CommentsPermalink





(2) in subparagraph (A)-- CommentsClose CommentsPermalink





(A) by striking `(A) An application' and inserting `An application'; and CommentsClose CommentsPermalink





(B) by redesignating clauses (i) through (iv) as subparagraphs (A) through (D), respectively. CommentsClose CommentsPermalink





(b) Preissuance Submissions by Third Parties- Section 122Section 122 of title 35, United States Code, is amended by adding at the end the following: CommentsClose CommentsPermalink





`(e) Preissuance Submissions by Third Parties- CommentsClose CommentsPermalink





`(1) IN GENERAL- Any person may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of-- CommentsClose CommentsPermalink





`(A) the date a notice of allowance under section 151 is mailed in the application for patent; or CommentsClose CommentsPermalink





`(B) either-- CommentsClose CommentsPermalink





`(i) 6 months after the date on which the application for patent is published under section 122, or CommentsClose CommentsPermalink





`(ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent, CommentsClose CommentsPermalink





whichever occurs later. CommentsClose CommentsPermalink





`(2) OTHER REQUIREMENTS- Any submission under paragraph (1) shall-- CommentsClose CommentsPermalink





`(A) set forth a concise description of the asserted relevance of each submitted document; CommentsClose CommentsPermalink





`(B) be accompanied by such fee as the Director may prescribe; and CommentsClose CommentsPermalink





`(C) include a statement by the submitterperson making such submission affirming that the submission was made in compliance with this section.'. CommentsClose CommentsPermalink

SEC. 108. VENUE AND JURISDICTION.

(a) Venue for Patent Cases-Section 1400 of title 28, United States Code, is amended by striking subsection (b) and inserting the following: CommentsClose CommentsPermalink





`(b) ANotwithstanding section 1391 of this title, in any civil action arising under any Act of Congress relating to patents, other than ana party shall not manufacture venue by assignment, incorporation, or otherwise to invoke the venue of a specific district court. CommentsClose CommentsPermalink





`(c) Notwithstanding section 1391 of this title, any civil action for patent infringement or any action for declaratory judgment or an action seeking review of a decision of the Patent Trial and Appeal Board under chapter 13 of title 35, may be brought only--`(1) in the judicial district where either party resides; or`(2) in the in a judicial district-- CommentsClose CommentsPermalink





`(1) where the defendant has committed acts of infringement and has a regular and established place of business.`(c) Notwithstanding section 1391(c) of this title, for purposes of venue under subsection (b), a corporation shall be deemed to reside in the judicial district in which the corporation has its principal place of business or in the State in which the corporation is incorporated.'.(b)location or place in which the defendant is incorporated or formed, or, for foreign corporations with a United States subsidiary, where the defendant's primary United States subsidiary has its principal place of business or is incorporated or formed; CommentsClose CommentsPermalink





`(2) where the defendant has committed substantial acts of infringement and has a regular and established physical facility that the defendant controls and that constitutes a substantial portion of the operations of the defendant; CommentsClose CommentsPermalink





`(3) where the primary plaintiff resides, if the primary plaintiff in the action is-- CommentsClose CommentsPermalink





`(A) an institution of higher education as defined under section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or CommentsClose CommentsPermalink





`(B) a nonprofit organization that-- CommentsClose CommentsPermalink





`(i) qualifies for treatment under section 501(c)(3) of the Internal Revenue Code (26 U.S.C. 501(c)(3)); CommentsClose CommentsPermalink





`(ii) is exempt from taxation under section 501(a) of such Code; and CommentsClose CommentsPermalink





`(iii) serves as the patent and licensing organization for an institution of higher education as defined under section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or CommentsClose CommentsPermalink





`(4) where the plaintiff resides, if the sole plaintiff in the action is an individual inventor who is a natural person and who qualifies at the time such action is filed as a micro-entity pursuant to section 123 of title 35. CommentsClose CommentsPermalink





`(d) If a plaintiff brings a civil action for patent infringement or declaratory judgment relief under subsection (c), then the defendant may request the district court to transfer that action to another district or division where, in the court's determination-- CommentsClose CommentsPermalink





`(1) any of the parties has substantial evidence or witnesses that otherwise would present considerable evidentiary burdens to the defendant if such transfer were not granted; CommentsClose CommentsPermalink





`(2) such transfer would not cause undue hardship to the plaintiff; and CommentsClose CommentsPermalink





`(3) venue would be otherwise appropriate under section 1391 of this title.'. CommentsClose CommentsPermalink





(b) Interlocutory Appeals- Subsection (c)(2) ofsection 1292 of title 28, United States Code, is amended by adding at the end the following: CommentsClose CommentsPermalink





`(3) of an appeal from an interlocutory order or decree determining construction of claims in a civil action for patent infringement under section 271 of title 35. CommentsClose CommentsPermalink





Application for an appeal under paragraph (3) shall be made to the court within 10 days after entry of the order or decree, and proceedings in the district court under such paragraph shall be stayed during pendency of the appeal.. The district court shall have discretion whether to approve the application and, if so, whether to stay proceedings in the district court during the pendency of such appeal.'. CommentsClose CommentsPermalink





(c) Technical Amendments Relating to Venue- Sections 32, 145, 146, 154(b)(4)(A), and 293 of title 35, United States Code, and section 1071(b)(4) of an Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes, approved July 5, 1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the Trademark Act of 1946 or the Lanham Act) 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'. CommentsClose CommentsPermalink

SEC. 11.9. PATENT AND TRADEMARK OFFICE REGULATORY AUTHORITY.

(a) Authority-Section 3(a)2 of title 35, United States Code, is amended by adding at the end the following: CommentsClose CommentsPermalink





`(5) REGULATORY AUTHORITY- In addition to the authority conferred by other provisions of this title, the Director may promulgate such rules, regulations, and orders that the Director determines appropriatee) Discretion To Accept Late Filings in Certain Cases of Unintentional Delay- CommentsClose CommentsPermalink





`(1) IN GENERAL- The Director may accept any application or other filing made by-- CommentsClose CommentsPermalink





`(A) an applicant for, or owner of, a patent after the applicable deadline set forth in this title with respect to the application or patent; or CommentsClose CommentsPermalink





`(B) an applicant for, or owner of, a mark after the applicable deadline under the Trademark Act of 1946 with respect to the registration or other filing of the mark, CommentsClose CommentsPermalink





to the extent that the Director considers appropriate, if the applicant or owner files a petition within 30 days after such deadline showing, to the satisfaction of the Director, that the delay was unintentional. CommentsClose CommentsPermalink





`(2) TREATMENT OF DIRECTOR'S ACTIONS ON PETITION- If the Director has not made a determination on a petition filed under paragraph (1) within 60 days after the date on which the petition is filed, the petition shall be deemed to be denied. A decision by the Director not to exercise, or a failure to exercise, the discretion provided by this subsection shall not be subject to judicial review. CommentsClose CommentsPermalink





`(3) OTHER PROVISIONS NOT AFFECTED- This subsection shall not apply to any other provision of this title, or to any provision of the Trademark Act of 1946, that authorizes the Director to accept, under certain circumstances, applications or other filings made after a statutory deadline or to statutory deadlines that are required by reason of the obligations of the United States under any treaty. CommentsClose CommentsPermalink





`(4) DEFINITION- In this subsection, the term `Trademark Act of 1946' means the Act entitled `An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of this title or any other law applicable to the United States Patent and Trademark Office or that the Director determines necessary to govern the operation and organization of the Office.'certain international conventions, and for other purposes', approved July 5, 1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the Trademark Act of 1946 or the Lanham Act).'. CommentsClose CommentsPermalink





(b) Applicability- CommentsClose CommentsPermalink





(1) IN GENERAL- The amendment made by subsection (a) shall apply to any application or other filing that-- CommentsClose CommentsPermalink





(A) is filed on or after the date of the enactment of this Act; or CommentsClose CommentsPermalink





(B) on such date of enactment, is pending before the Director or is subject to judicial review. CommentsClose CommentsPermalink





(2) TREATMENT OF PENDING APPLICATIONS AND FILINGS- In the case of any application or filing described in paragraph (1)(B), the 30-day period prescribed insection 2(e)(1) of title 35, United States Code, as added by subsection (a) of this section, shall be deemed to be the 30-day period beginning on the date of the enactment of this Act. CommentsClose CommentsPermalink

SEC. 124. LIMITATION ON DAMAGES AND OTHER REMEDIES WITH RESPECT TO PATENTS FOR METHODS IN COMPLIANCE WITH CHECK IMAGING METHODS.

SEC. 16. TECHNICAL AMENDMENTS.

(a) Joint Inventions- Section 116Section 116 of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(1) in the first paragraph, by striking `When' and inserting `(a) Joint Inventions- When'; CommentsClose CommentsPermalink





(2) in the second paragraph, by striking `If a joint inventor' and inserting `(b) Omitted Inventor- If a joint inventor'; and CommentsClose CommentsPermalink





(3) in the third paragraph, by striking `Whenever' and inserting `(c) Correction of Errors in Application- Whenever'. CommentsClose CommentsPermalink





(b) Filing of Application in Foreign Country- Section 184Section 184 of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(1) in the first paragraph, by striking `Except when' and inserting `(a) Filing in Foreign Country- Except when'; CommentsClose CommentsPermalink





(2) in the second paragraph, by striking `The term' and inserting `(b) Application- The term'; and CommentsClose CommentsPermalink





(3) in the third paragraph, by striking `The scope' and inserting `(c) Subsequent Modifications, Amendments, and Supplements- The scope'. CommentsClose CommentsPermalink





(c) Reissue of Defective Patents- Section 251Section 251 of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(1) in the first paragraph, by striking `Whenever' and inserting `(a) In General- Whenever'; CommentsClose CommentsPermalink





(2) in the second paragraph, by striking `The Director' and inserting `(b) Multiple Reissued Patents- The Director'; CommentsClose CommentsPermalink





(3) in the third paragraph, by striking `The provision' and inserting `(c) Applicability of This Title- The provisions'; and CommentsClose CommentsPermalink





(4) in the last paragraph, by striking `No reissued patent' and inserting `(d) Reissue Patent Enlarging Scope of Claims- No reissued patent'. CommentsClose CommentsPermalink





(d) Effect of Reissue- Section 253Section 253 of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(1) in the first paragraph, by striking `Whenever' and inserting `(a) In General- Whenever'; and CommentsClose CommentsPermalink





(2) in the second paragraph, by striking `in like manner' and inserting `(b) Additional Disclaimer or Dedication- In the manner set forth in subsection (a),'. CommentsClose CommentsPermalink





(e) Correction of Named Inventor- Section 256Section 256 of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(1) in the first paragraph, by striking `Whenever' and inserting `(a) Correction- Whenever'; and CommentsClose CommentsPermalink





(2) in the second paragraph, by striking `The error' and inserting `(b) Patent Valid if Error Corrected- The error'. CommentsClose CommentsPermalink





(f) Presumption of Validity- Section 282Section 282 of title 35, United States Code, is amended-- CommentsClose CommentsPermalink





(1) in the first undesignated paragraph, by striking `A patent' and inserting `(a) In General- A patent'; CommentsClose CommentsPermalink





(2) in the second undesignated paragraph, by striking `The following' and inserting `(b) Defenses- The following'; and CommentsClose CommentsPermalink





(3) in the third undesignated paragraph, by striking `In actions' and inserting `(c) Notice of Actions; Actions During Extension of Patent Term- In actions'. CommentsClose CommentsPermalink

SEC. 137. EFFECTIVE DATE; RULE OF CONSTRUCTION.

(a) Effective Date- Except as otherwise provided in this Act, the provisions of this Act shall take effect 12 months after the date of the enactment of this Act and shall apply to any patent issued on or after that effective date. CommentsClose CommentsPermalink





(b) Continuity of Intent Under the Create Act- The enactment of section 102(b)(3) of title 35, United States Code, under section (3section 102(b)(3) of title 35, United States Code, under section (2)(b) of this Act 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 section 3(c) of this Act. The United States Patent and Trademark 2(c) of this Act. The United States Patent and Trademark Office shall administer section 102(b)(3) 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 Patent and Trademark United States Patent and Trademark Office. CommentsClose CommentsPermalink