S 610 ISCommentsClose CommentsPermalink

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

March 17, 2009CommentsClose CommentsPermalink

Mr. KYL introduced the following bill; which was read twice and referred to the Committee on the JudiciaryCommentsClose CommentsPermalink

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 2009’.CommentsClose CommentsPermalink





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





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





Sec. 2. Right of the first inventor to file.CommentsClose CommentsPermalink





Sec. 3. Inventor’s oath or declaration.CommentsClose CommentsPermalink





Sec. 4. Damages.CommentsClose CommentsPermalink





Sec. 5. Post-grant review proceedings.CommentsClose CommentsPermalink





Sec. 6. Definition; patent trial and appeal board.CommentsClose CommentsPermalink





Sec. 7. Submissions by third parties and other quality enhancements.CommentsClose CommentsPermalink





Sec. 8. Ven. Patent and trademark office regulatory authority.CommentsClose CommentsPermalink





Sec. 10. Applicant quality submissions.CommentsClose CommentsPermalink





Sec. 11. Inequitable conduct.CommentsClose CommentsPermalink





Sec. 12. Conversion of deadlines.CommentsClose CommentsPermalink





Sec. 13. Check imaging patents.CommentsClose CommentsPermalink





Sec. 14. Patent and trademark office funding.CommentsClose CommentsPermalink





Sec. 15. Technical amendments.CommentsClose CommentsPermalink





Sec. 16. Effective date; rule of construction.CommentsClose CommentsPermalink

SEC. 2. RIGHT OF THE FIRST INVENTOR TO FILE.

(a) Definitions- Section 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; orCommentsClose 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





(b) Conditions for Patentability-CommentsClose CommentsPermalink





(1) IN GENERAL- Section 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 otherwise made available to the public (other than through testing undertaken to reduce the invention to practice)--CommentsClose CommentsPermalink





‘(A) more than 1 year before the effective filing date of the claimed invention; orCommentsClose CommentsPermalink





‘(B) 1 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; orCommentsClose 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 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 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 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





‘(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); orCommentsClose 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 subject matter and the claimed invention were made by or on behalf of 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;CommentsClose CommentsPermalink





‘(ii) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; andCommentsClose 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 2 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; orCommentsClose 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 1 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; Nonobvious Subject Matter- Section 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 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 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) 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 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 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) 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 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 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) 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) 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) 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’; andCommentsClose CommentsPermalink





(ii) by striking ‘the statutory’ and inserting ‘that 1-year’; andCommentsClose 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 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) 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 1 year after the date of first publication of an application or of the issuance of a patent, whichever is earlier, 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) 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; andCommentsClose CommentsPermalink





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





‘(3) 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 whose application has the earlier effective filing date of the commonly claimed invention.CommentsClose CommentsPermalink





‘(4) 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’; andCommentsClose CommentsPermalink





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





(3) The section heading for section 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 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 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) 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- Section 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 2009), 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. 3. INVENTOR’S OATH OR DECLARATION.

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





(1) IN GENERAL- Section 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) or that commences the national stage under section 371 (including an application under section 111 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; andCommentsClose 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; orCommentsClose CommentsPermalink





‘(iii) cannot be found or reached after diligent effort; orCommentsClose 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); andCommentsClose 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; orCommentsClose 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 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) 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’; andCommentsClose 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 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 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’; andCommentsClose CommentsPermalink





(B) by striking ‘, and shall set forth’ and all that follows through ‘his invention’; andCommentsClose CommentsPermalink





(2) in the second paragraph--CommentsClose CommentsPermalink





(A) by striking ‘The specifications’ and inserting ‘(b) Conclusion- The specifications’; andCommentsClose 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’; andCommentsClose CommentsPermalink





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

SEC. 4. DAMAGES.

(a) Damages- Section 284 of title 35, United States Code, is amended to read as follows:CommentsClose CommentsPermalink

‘Sec. 284. Damages

‘(a) In General-CommentsClose CommentsPermalink





‘(1) COMPENSATORY DAMAGES- Upon finding for a 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 determined by the court.CommentsClose CommentsPermalink





‘(2) INCREASED DAMAGES- When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to 3 times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154(d) of this title.CommentsClose CommentsPermalink





‘(3) LIMITATION- Subsections (b) through (h) of this section apply only to the determination of the amount of reasonable royalty and shall not apply to the determination of other types of damages.CommentsClose CommentsPermalink





‘(b) Hypothetical Negotiation- For purposes of this section, the term ‘reasonable royalty’ means the amount that the infringer would have agreed to pay and the claimant would have agreed to accept if the infringer and claimant had voluntarily negotiated a license for use of the invention at the time just prior to when the infringement began. The court or the jury, as the case may be, shall assume that the infringer and claimant would have agreed that the patent is valid, enforceable, and infringed.CommentsClose CommentsPermalink





‘(c) Appropriate Factors- The court or the jury, as the case may be, may consider any factors that are relevant to the determination of the amount of a reasonable royalty.CommentsClose CommentsPermalink





‘(d) Comparable Patents-CommentsClose CommentsPermalink





‘(1) IN GENERAL- The amount of a reasonable royalty shall not be determined by comparison to royalties paid for patents other than the patent in suit unless--CommentsClose CommentsPermalink





‘(A) such other patents are used in the same or an analogous technological field;CommentsClose CommentsPermalink





‘(B) such other patents are found to be economically comparable to the patent in suit; andCommentsClose CommentsPermalink





‘(C) evidence of the value of such other patents is presented in conjunction with or as confirmation of other evidence for determining the amount of a reasonable royalty.CommentsClose CommentsPermalink





‘(2) FACTORS- Factors that may be considered to determine whether another patent is economically comparable to the patent in suit under paragraph (1)(A) include whether--CommentsClose CommentsPermalink





‘(A) the other patent is comparable to the patent in suit in terms of the overall significance of the other patent to the product or process licensed under such other patent; andCommentsClose CommentsPermalink





‘(B) the product or process that uses the other patent is comparable to the infringing product or process based upon its profitability or a like measure of value.CommentsClose CommentsPermalink





‘(e) Financial Condition- The financial condition of the infringer as of the time of the trial shall not be relevant to the determination of the amount of a reasonable royalty.CommentsClose CommentsPermalink





‘(f) Sequencing- Either party may request that a patent-infringement trial be sequenced so that the court or the jury, as the case may be, decides questions of the patent’s infringement and validity before the issue of the amount of a reasonable royalty is presented to the court or the jury, as the case may be. The court shall grant such a request absent good cause to reject the request, such as the absence of issues of significant damages or infringement and validity. The sequencing of a trial pursuant to this subsection shall not affect other matters, such as the timing of discovery.CommentsClose CommentsPermalink





‘(g) Experts- In addition to the expert disclosure requirements under rule 26(a)(2) of the Federal Rules of Civil Procedure, a party that intends to present the testimony of an expert relating to the amount of a reasonable royalty shall provide--CommentsClose CommentsPermalink





‘(1) to the other parties to that civil action, the expert report relating to damages, including all data and other information considered by the expert in forming the opinions of the expert; andCommentsClose CommentsPermalink





‘(2) to the court, at the same time as to the other parties, the complete statement of all opinions that the expert will express and the basis and reasons for those opinions.CommentsClose CommentsPermalink





‘(h) Jury Instructions- On the motion of any party and after allowing any other party to the civil action a reasonable opportunity to be heard, the court shall determine whether there is no legally sufficient evidence to support 1 or more of the contentions of a party relating to the amount of a reasonable royalty. The court shall identify for the record those factors that are supported by legally sufficient evidence, and shall instruct the jury to consider only those factors when determining the amount of a reasonable royalty. The jury may not consider any factor for which legally sufficient evidence has not been admitted at trial.’.CommentsClose CommentsPermalink





(b) Testimony by Experts- Chapter 29 of title 35, United States Code, is amended by adding at the end the following:CommentsClose CommentsPermalink

‘Sec. 298. Testimony by experts

‘(a) Federal Rule- In a patent case, the court shall ensure that the testimony of a witness qualified as an expert by knowledge, skill, experience, training, or education meets the requirements set forth in rule 702 of the Federal Rules of Evidence.CommentsClose CommentsPermalink





‘(b) Determination of Reliability- To determine whether an expert’s principles and methods are reliable, the court may consider, among other factors--CommentsClose CommentsPermalink





‘(1) whether the expert’s theory or technique can be or has been tested;CommentsClose CommentsPermalink





‘(2) whether the theory or technique has been subjected to peer review and publication;CommentsClose CommentsPermalink





‘(3) the known or potential error rate of the theory or technique, and the existence and maintenance of standards controlling the technique’s operation;CommentsClose CommentsPermalink





‘(4) the degree of acceptance of the theory or technique within the relevant scientific or specialized community;CommentsClose CommentsPermalink





‘(5) whether the theory or technique is employed independently of litigation; orCommentsClose CommentsPermalink





‘(6) whether the expert has adequately considered or accounted for readily available alternative theories or techniques.CommentsClose CommentsPermalink





‘(c) Required Explanation- The court shall explain its reasons for allowing or barring the introduction of an expert’s proposed testimony under this section.’.CommentsClose CommentsPermalink

SEC. 5. POST-GRANT REVIEW PROCEEDINGS.

(a) Reexamination- 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. 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) Repeal of Optional Inter Partes Reexamination Procedures-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, 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 effective date of subsection (c).CommentsClose CommentsPermalink





(c) Post-Grant Review Proceedings- Part III of title 35, United States Code, is amended by adding at the end the following:CommentsClose CommentsPermalink

‘CHAPTER 32--POST-GRANT REVIEW PROCEEDINGS

‘Sec.CommentsClose CommentsPermalink





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





‘322. Relation to other proceedings or actions.CommentsClose CommentsPermalink





‘323. Requirements of petition.CommentsClose CommentsPermalink





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





‘325. Consolidation or stay of proceedings.CommentsClose CommentsPermalink





‘326. Submission of additional information.CommentsClose CommentsPermalink





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





‘328. Determination not appealable.CommentsClose CommentsPermalink





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





‘330. Patent owner response.CommentsClose CommentsPermalink





‘331. Proof and evidentiary standards.CommentsClose CommentsPermalink





‘332. Amendment of the patent.CommentsClose CommentsPermalink





‘333. Settlement.CommentsClose CommentsPermalink





‘334. Decision of the board.CommentsClose CommentsPermalink





‘335. Effect of decision.CommentsClose CommentsPermalink





‘336. Appeal.CommentsClose CommentsPermalink

‘Sec. 321. Petition for post-grant review

‘(a) In General- Subject to the provisions of this chapter, a person who has a substantial economic interest adverse to a patent may file with the Office a petition to institute a post-grant review proceeding for that patent. If instituted, such a proceeding shall be deemed to be either a first-period proceeding or a second-period proceeding. 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





‘(b) First-Period Proceeding-CommentsClose CommentsPermalink





‘(1) SCOPE- A petitioner in a first-period proceeding may request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim).CommentsClose CommentsPermalink





‘(2) FILING DEADLINE- A petition for a first-period proceeding shall be filed not later than 9 months after the grant of the patent or issuance of a reissue patent.CommentsClose CommentsPermalink





‘(c) Second-Period Proceeding-CommentsClose CommentsPermalink





‘(1) SCOPE- A petitioner in a second-period proceeding may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.CommentsClose CommentsPermalink





‘(2) FILING DEADLINE- A petition for a second-period proceeding shall be filed after the later of either--CommentsClose CommentsPermalink





‘(A) 9 months after the grant of a patent or issuance of a reissue of a patent; orCommentsClose CommentsPermalink





‘(B) if a first-period proceeding is instituted under section 327, the date of the termination of such first-period proceeding.CommentsClose CommentsPermalink

‘Sec. 322. Relation to other proceedings or actions

‘(a) Early Actions- A first-period proceeding may not be instituted until after a civil action alleging infringement of the patent is finally concluded if--CommentsClose CommentsPermalink





‘(1) the infringement action is filed within 3 months after the grant of the patent;CommentsClose CommentsPermalink





‘(2) a stay of the proceeding is requested by the patent owner;CommentsClose CommentsPermalink





‘(3) the Director determines that the infringement action is likely to address the same or substantially the same questions of patentability that would be addressed in the proceeding; andCommentsClose CommentsPermalink





‘(4) the Director determines that a stay of the proceeding would not be contrary to the interests of justice.CommentsClose CommentsPermalink





‘(b) Pending Civil Actions-CommentsClose CommentsPermalink





‘(1) Infringer’S ACTION- A post-grant review proceeding may not be instituted or maintained if the petitioner or real party in interest has filed a civil action challenging the validity of a claim of the patent.CommentsClose CommentsPermalink





‘(2) PATENT OWNER’S ACTION- A second-period proceeding may not be instituted if the petition requesting the proceeding is filed more than 3 months after the date on which the petitioner, real party in interest, or his privy is required to respond to a civil action alleging infringement of the patent.CommentsClose CommentsPermalink





‘(3) STAY OR DISMISSAL- The Director may stay or dismiss a second-period proceeding if the petitioner or real party in interest challenges the validity of a claim of the patent in a civil action.CommentsClose CommentsPermalink





‘(c) Duplicative Proceedings-CommentsClose CommentsPermalink





‘(1) PROHIBITION ON POST-GRANT REVIEW AND REEXAMINATION PROCEEDINGS- A post-grant review or reexamination proceeding may not be instituted if the petition requesting the proceeding identifies the same petitioner or real party in interest and the same patent as a previous petition requesting a post-grant review proceeding.CommentsClose CommentsPermalink





‘(2) PROHIBITION ON FIRST-PERIOD PROCEEDINGS- A first-period proceeding may not be instituted if the petition requests cancellation of a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued, and the time limitations in section 321(b)(2) would bar filing a post-grant review petition for such original patent.CommentsClose CommentsPermalink





‘(d) Estoppel- The petitioner in any post-grant review proceeding under this chapter may not request or maintain a proceeding before the Office with respect to a claim, or assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission that a claim in a patent is invalid, on any ground that--CommentsClose CommentsPermalink





‘(1) the petitioner, real party in interest, or his privy raised during a post-grant review proceeding resulting in a final decision under section 334; orCommentsClose CommentsPermalink





‘(2) the petitioner, real party in interest, or his privy could have raised during a second-period proceeding resulting in a final decision under section 334.CommentsClose CommentsPermalink

‘Sec. 323. Requirements of petition

‘A 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 all 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 petitioner relies upon in support of the petition; andCommentsClose CommentsPermalink





‘(B) 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 other information as the Director may require by regulation; andCommentsClose CommentsPermalink





‘(5) the petitioner provides copies of any 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

‘(a) In General- As soon as practicable after the receipt of a petition under section 321, the Director shall--CommentsClose CommentsPermalink





‘(1) publish the petition in the Federal Register; andCommentsClose CommentsPermalink





‘(2) make that petition available on the website of the United States Patent and Trademark Office.CommentsClose CommentsPermalink





‘(b) Public Availability- The file of any proceeding under this chapter shall be made available to the public except that any petition or document filed with the intent that it be sealed shall be accompanied by a motion to seal. Such petition or document shall be treated as sealed, pending the outcome of the ruling on the motion. Failure to file a motion to seal will result in the pleadings being placed in the public record.CommentsClose CommentsPermalink

‘Sec. 325. Consolidation or stay of proceedings

‘(a) First-Period Proceedings- If more than 1 petition for a first-period proceeding is properly filed against the same patent and the Director determines that more than 1 of these petitions warrants the instituting of a first-period proceeding under section 327, the Director shall consolidate such proceedings into a single first-period proceeding.CommentsClose CommentsPermalink





‘(b) Second-Period Proceedings- If the Director institutes a second-period proceeding, the Director, in his discretion, may join as a party to that second-period proceeding any person who properly files a petition under section 321 that the Director, after receiving a preliminary response under section 330 or the expiration of the time for filing such a response, determines warrants the instituting of a second-period proceeding under section 327.CommentsClose CommentsPermalink





‘(c) Other Proceedings- Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of any post-grant review proceeding the Director may determine the manner in which any proceeding or matter involving the patent that is before the Office may proceed, including providing for stay, transfer, consolidation, or termination of any such proceeding or matter.CommentsClose CommentsPermalink

‘Sec. 326. Submission of additional information

‘A petitioner under this chapter shall file such additional information with respect to the petition as the Director may require by regulation.CommentsClose CommentsPermalink

‘Sec. 327. Institution of post-grant review proceedings

‘(a) Threshold- The Director may not authorize a post-grant review proceeding to commence unless the Director determines that the information presented in the petition, if such information is not rebutted, would provide a sufficient basis to conclude that at least 1 of the claims challenged in the petition is unpatentable.CommentsClose CommentsPermalink





‘(b) Additional Grounds- In the case of a petition for a first-period proceeding, the determination required under subsection (a) may be satisfied by a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.CommentsClose CommentsPermalink





‘(c) Successive Petitions- The Director may not institute an additional second-period proceeding if a prior second-period proceeding has been instituted and the time period established under section 329(b)(2) for requesting joinder under section 325(b) has expired, unless the Director determines that--CommentsClose CommentsPermalink





‘(1) the additional petition satisfies the requirements under subsection (a); andCommentsClose CommentsPermalink





‘(2) either--CommentsClose CommentsPermalink





‘(A) the additional petition presents exceptional circumstances; orCommentsClose CommentsPermalink





‘(B) such an additional proceeding is reasonably required in the interests of justice.CommentsClose CommentsPermalink





‘(d) Timing- The Director shall determine whether to institute a post-grant review proceeding under this chapter within 3 months after receiving a preliminary response under section 330 or the expiration of the time for filing such a response.CommentsClose CommentsPermalink





‘(e) Notice- 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

‘Sec. 328. Determination not appealable

‘The determination by the Director regarding whether to institute a post-grant review proceeding under section 327 shall not be appealable.CommentsClose CommentsPermalink

‘Sec. 329. Conduct of post-grant review proceedings

‘(a) In General- The Director shall 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) for setting forth the standards for showings of sufficient grounds to institute a proceeding under section 321(a) and subsections (a), (b), and (c) of section 327;CommentsClose CommentsPermalink





‘(3) providing 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 is filed; andCommentsClose CommentsPermalink





‘(5) 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.CommentsClose CommentsPermalink





‘(b) Post-Grant Review Regulations- The regulations required under subsection (a)(1) shall--CommentsClose CommentsPermalink





‘(1) require that the final determination in any post-grant review proceeding be issued not later than 1 year after the date on which the Director notices the institution of a post-grant proceeding under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 325(b);CommentsClose CommentsPermalink





‘(2) set a time period for requesting joinder under section 325(b);CommentsClose CommentsPermalink





‘(3) allow for discovery upon order of the Director, provided that in a second-period proceeding discovery shall be limited to--CommentsClose CommentsPermalink





‘(A) the deposition of witnesses submitting affidavits or declarations; andCommentsClose CommentsPermalink





‘(B) what is otherwise necessary in the interest of justice;CommentsClose CommentsPermalink





‘(4) 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





‘(5) provide for protective orders governing the exchange and submission of confidential information;CommentsClose CommentsPermalink





‘(6) ensure that any information submitted by the patent owner in support of any amendment entered under section 332 is made available to the public as part of the prosecution history of the patent; andCommentsClose CommentsPermalink





‘(7) provide either party with the right to an oral hearing as part of the proceeding.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 proceeding authorized by the Director.CommentsClose CommentsPermalink

‘Sec. 330. Patent owner response

‘(a) Preliminary Response- If a post-grant review petition is filed under section 321, the patent owner shall have the right to file a preliminary response--CommentsClose CommentsPermalink





‘(1) in the case of a first-period proceeding, within 2 months of the expiration of the time for filing a petition for a first-period proceeding; andCommentsClose CommentsPermalink





‘(2) in the case of a second-period proceeding, within a time period set by the Director.CommentsClose CommentsPermalink





‘(b) Content of Response- A preliminary response to a petition for a post-grant review proceeding shall set forth reasons why no post-grant review proceeding should be instituted based upon the failure of the petition to meet any requirement of this chapter.CommentsClose CommentsPermalink





‘(c) Additional 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 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. 331. Proof and evidentiary standards

‘(a) In General- The presumption of validity set forth in section 282 of this title shall apply in post-grant review proceedings instituted under this chapter.CommentsClose CommentsPermalink





‘(b) Burden of Proof- The petitioner shall have the burden of proving a proposition of invalidity by a preponderance of the evidence in a first-period proceeding and by clear and convincing evidence in a second-period proceeding.CommentsClose CommentsPermalink

‘Sec. 332. Amendment of the patent

‘(a) In General- During a post-grant review proceeding instituted under this chapter, 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 reasonable number of substitute claims.CommentsClose CommentsPermalink





‘(b) Additional Motions- Additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 333, or upon the request of the patent owner 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. 333. Settlement

‘(a) In General- A post-grant review proceeding instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the matter before the request for termination is filed. If the post-grant review proceeding is terminated with respect to a petitioner under this section, no estoppel under this chapter shall apply to that petitioner. If no petitioner remains in the post-grant review proceeding, the Office may terminate the post-grant review proceeding or proceed to a final written decision under section 334.CommentsClose CommentsPermalink





‘(b) Agreements in Writing- Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of a post-grant review proceeding under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the United States Patent and Trademark Office before the termination of the post-grant review proceeding as between the parties to the agreement or understanding. If any party filing such agreement or understanding so requests, the copy shall be kept separate from the file of the post-grant review proceeding, and shall be made available only to Federal Government agencies upon written request, or to any other person on a showing of good cause.CommentsClose CommentsPermalink

‘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 332.CommentsClose CommentsPermalink

‘Sec. 335. Effect of decision

‘If the Patent Trial and Appeal Board issues a final decision under section 334 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. 336. Appeal

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





(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





‘32. Post-Grant Review Proceedings...........................................321.’.CommentsClose CommentsPermalink





(e) 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 (c) of this section.CommentsClose CommentsPermalink





(2) APPLICABILITY- The amendments made by subsection (c) shall take effect on the date that is 1 year after the date of the enactment of this Act and shall apply only to patents issued on or after that date, except that, in the case of a patent issued before the effective date of subsection (c) on an application filed between September 15, 1999, and the effective date of subsection (c), a petition for second-period review may be filed.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 petition 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. 6. DEFINITION; PATENT TRIAL AND APPEAL BOARD.

(a) Definition- Section 100 of title 35, United States Code, as amended by section 2 of this Act, is further amended in subsection (e), by striking ‘or inter partes reexamination under section 311’.CommentsClose CommentsPermalink





(b) Patent Trial and Appeal Board- Section 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 Secretary. 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





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





‘(4) conduct post-grant review proceedings under chapter 32.CommentsClose CommentsPermalink





Each appeal, derivation, and post-grant review 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.’.CommentsClose CommentsPermalink

SEC. 7. SUBMISSIONS BY THIRD PARTIES AND OTHER QUALITY ENHANCEMENTS.

Section 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; orCommentsClose CommentsPermalink





‘(B) either--CommentsClose CommentsPermalink





‘(i) 6 months after the date on which the application for patent is published under section 122, orCommentsClose 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; andCommentsClose CommentsPermalink





‘(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.’.CommentsClose CommentsPermalink

SEC. 8. VENUE.

(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) Notwithstanding subsections (b) and (c) of section 1391 of this title, any civil action for patent infringement or any action for declaratory judgment arising under any Act of Congress relating to patents may be brought only in a judicial district--CommentsClose CommentsPermalink





‘(1) where the defendant has its principal place of business or is incorporated;CommentsClose CommentsPermalink





‘(2) where the defendant has committed acts of infringement and has a regular and established physical facility;CommentsClose CommentsPermalink





‘(3) where the defendant has agreed or consented to be sued;CommentsClose CommentsPermalink





‘(4) where the invention claimed in a patent in suit was conceived or actually reduced to practice;CommentsClose CommentsPermalink





‘(5) where significant research and development of an invention claimed in a patent in suit occurred at a regular and established physical facility;CommentsClose CommentsPermalink





‘(6) where a party has a regular and established physical facility that such party controls and operates and has--CommentsClose CommentsPermalink





‘(A) engaged in management of significant research and development of an invention claimed in a patent in suit;CommentsClose CommentsPermalink





‘(B) manufactured a product that embodies an invention claimed in a patent in suit; orCommentsClose CommentsPermalink





‘(C) implemented a manufacturing process that embodies an invention claimed in a patent in suit;CommentsClose CommentsPermalink





‘(7) where a nonprofit organization whose function is the management of inventions on behalf of an institution of higher education (as that term is defined under section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a))), including the patent in suit, has its principal place of business; orCommentsClose CommentsPermalink





‘(8) for foreign defendants that do not meet the requirements of paragraphs (1) or (2), according to section 1391(d) of this title.’.CommentsClose CommentsPermalink





(b) 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 entitled ‘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 (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. 9. PATENT AND TRADEMARK OFFICE REGULATORY AUTHORITY.

(a) Fee Setting-CommentsClose CommentsPermalink





(1) IN GENERAL- The Director shall have authority to set or adjust by rule any fee established or charged by the Office under sections 41 and 376 of title 35, United States Code or under section 31 of the Trademark Act of 1946 (15 U.S.C. 1113) for the filing or processing of any submission to, and for all other services performed by or materials furnished by, the Office, provided that such fee amounts are set to reasonably compensate the Office for the services performed.CommentsClose CommentsPermalink





(2) REDUCTION OF FEES IN CERTAIN FISCAL YEARS- In any fiscal year, the Director--CommentsClose CommentsPermalink





(A) shall consult with the Patent Public Advisory Committee and the Trademark Public Advisory Committee on the advisability of reducing any fees described in paragraph (1); andCommentsClose CommentsPermalink





(B) after that consultation may reduce such fees.CommentsClose CommentsPermalink





(3) ROLE OF THE PUBLIC ADVISORY COMMITTEE- The Director shall--CommentsClose CommentsPermalink





(A) submit to the Patent or Trademark Public Advisory Committee, or both, as appropriate, any proposed fee under paragraph (1) not less than 45 days before publishing any proposed fee in the Federal Register;CommentsClose CommentsPermalink





(B) provide the relevant advisory committee described in subparagraph (A) a 30-day period following the submission of any proposed fee, on which to deliberate, consider, and comment on such proposal, and require that--CommentsClose CommentsPermalink





(i) during such 30-day period, the relevant advisory committee hold a public hearing related to such proposal; andCommentsClose CommentsPermalink





(ii) the Director shall assist the relevant advisory committee in carrying out such public hearing, including by offering the use of Office resources to notify and promote the hearing to the public and interested stakeholders;CommentsClose CommentsPermalink





(C) require the relevant advisory committee to make available to the public a written report detailing the comments, advice, and recommendations of the committee regarding any proposed fee;CommentsClose CommentsPermalink





(D) consider and analyze any comments, advice, or recommendations received from the relevant advisory committee before setting or adjusting any fee; andCommentsClose CommentsPermalink





(E) notify, through the Chair and Ranking Member of the Senate and House Judiciary Committees, the Congress of any final decision regarding proposed fees.CommentsClose CommentsPermalink





(4) PUBLICATION IN THE FEDERAL REGISTER-CommentsClose CommentsPermalink





(A) IN GENERAL- Any rules prescribed under this subsection shall be published in the Federal Register.CommentsClose CommentsPermalink





(B) RATIONALE- Any proposal for a change in fees under this section shall--CommentsClose CommentsPermalink





(i) be published in the Federal Register; andCommentsClose CommentsPermalink





(ii) include, in such publication, the specific rationale and purpose for the proposal, including the possible expectations or benefits resulting from the proposed change.CommentsClose CommentsPermalink





(C) PUBLIC COMMENT PERIOD- Following the publication of any proposed fee in the Federal Register pursuant to subparagraph (A), the Director shall seek public comment for a period of not less than 45 days.CommentsClose CommentsPermalink





(5) CONGRESSIONAL COMMENT PERIOD- Following the notification described in paragraph (3)(E), Congress shall have not more than 45 days to consider and comment on any proposed fee under paragraph (1). No proposed fee shall be effective prior to the end of such 45-day comment period.CommentsClose CommentsPermalink





(6) RULE OF CONSTRUCTION- No rules prescribed under this subsection may diminish--CommentsClose CommentsPermalink





(A) an applicant’s rights under this title or the Trademark Act of 1946; orCommentsClose CommentsPermalink





(B) any rights under a ratified treaty.CommentsClose CommentsPermalink





(b) Fees for Patent Services- Division B of Public Law 108-447 is amended in title VIII of the Departments of Commerce, Justice and State, the Judiciary, and Related Agencies Appropriations Act, 2005, in section 801(a) by striking ‘During fiscal years 2005, 2006, and 2007,’, and inserting ‘Until such time as the Director sets or adjusts the fees otherwise,’.CommentsClose CommentsPermalink





(c) Adjustment of Trademark Fees- Division B of Public Law 108-447 is amended in title VIII of the Departments of Commerce, Justice and State, the Judiciary and Related Agencies Appropriations Act, 2005, in section 802(a) by striking ‘During fiscal years 2005, 2006, and 2007,’, and inserting ‘Until such time as the Director sets or adjusts the fees otherwise,’.CommentsClose CommentsPermalink





(d) Effective Date, Applicability, and Transitional Provision- Division B of Public Law 108-447 is amended in title VIII of the Departments of Commerce, Justice and State, the Judiciary and Related Agencies Appropriations Act, 2005, in section 803(a) by striking ‘and shall apply only with respect to the remaining portion of fiscal year 2005 and fiscal year 2006.’.CommentsClose CommentsPermalink





(e) Rule of Construction- Nothing in this section shall be construed to affect any other provision of Division B of Public Law 108-447, including section 801(c) of title VII of the Departments of Commerce, Justice and State, the Judiciary and Related Agencies Appropriations Act, 2005.CommentsClose CommentsPermalink





(f) Definitions- In this section:CommentsClose CommentsPermalink





(1) DIRECTOR- The term ‘Director’ means the Director of the United States Patent and Trademark Office.CommentsClose CommentsPermalink





(2) OFFICE- The term ‘Office’ means the United States Patent and Trademark Office.CommentsClose CommentsPermalink





(3) TRADEMARK ACT OF 1946- The term ‘Trademark Act of 1946’ means an Act entitled ‘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).CommentsClose CommentsPermalink

SEC. 10. APPLICANT QUALITY SUBMISSIONS.

(a) In General- Chapter 11 of title 35, United States Code, is amended by adding at the end the following new section:CommentsClose CommentsPermalink

‘Sec. 123. Additional information

‘(a) Incentives- The Director may, by regulation, offer incentives to applicants who submit a search report, a patentability analysis, or other information relevant to patentability. Such incentives may include prosecution flexibility, modifications to requirements for adjustment of a patent term pursuant to section 154(b) of this title, or modifications to fees imposed pursuant to section 9 of the Patent Reform Act of 2009.CommentsClose CommentsPermalink





‘(b) Admissibility of Record- If the Director certifies that an applicant has satisfied the requirements of the regulations issued pursuant to this section with regard to a patent, the record made in a matter or proceeding before the Office involving that patent or efforts to obtain the patent shall not be admissible to construe the patent in a civil action or in a proceeding before the International Trade Commission, except that such record may be introduced to demonstrate that the patent owner is estopped from asserting that the patent is infringed under the doctrine of equivalents. The Director may, by regulation, identify any material submitted in an attempt to satisfy the requirements of any regulations issued pursuant to this section that also shall not be admissible to construe the patent in a civil action or in a proceeding before the International Trade Commission.’.CommentsClose CommentsPermalink





(b) Rule of Construction- Nothing in this section shall be construed to imply that, prior to the date of enactment of this section, the Director either lacked or possessed the authority to offer incentives to applicants who submit a search report, a patentability analysis, or other information relevant to patentability.CommentsClose CommentsPermalink

SEC. 11. INEQUITABLE CONDUCT.

(a) In General- Chapter 29 of title 35, United States Code, as amended by section 4(b), is further amended by adding at the end the following:CommentsClose CommentsPermalink

‘Sec. 299. Civil sanctions for misconduct before the Office

‘(a) In General- Except as provided under this section, a patent shall not be held invalid or unenforceable on the basis of misconduct before the Office. Nothing in this section shall be construed to preclude the imposition of sanctions based upon criminal or antitrust laws (including section 1001(a) of title 18, the first section of the Clayton Act, and section 5 of the Federal Trade Commission Act to the extent that section relates to unfair methods of competition).CommentsClose CommentsPermalink





‘(b) Information Relating to Possible Misconduct- The Director shall provide by regulation procedures for receiving and reviewing information indicating that parties to a matter or proceeding before the Office may have engaged in misconduct in connection with such matter or proceeding.CommentsClose CommentsPermalink





‘(c) Administrative Proceeding-CommentsClose CommentsPermalink





‘(1) PROBABLE CAUSE- The Director shall determine, based on information received and reviewed under subsection (b), if there is probable cause to believe that 1 or more individuals or parties engaged in misconduct consisting of intentionally deceptive conduct of a material nature in connection with a matter or proceeding before the Office. A determination of probable cause by the Director under this paragraph shall be final and shall not be reviewable on appeal or otherwise.CommentsClose CommentsPermalink





‘(2) DETERMINATION- If the Director finds probable cause under paragraph (1), the Director shall, after notice and an opportunity for a hearing, and not later than 1 year after the date of such finding, determine whether misconduct consisting of intentionally deceptive conduct of a material nature in connection with the applicable matter or proceeding before the Office has occurred. The proceeding to determine whether such misconduct occurred shall be before an individual designated by the Director.CommentsClose CommentsPermalink





‘(3) CIVIL SANCTIONS-CommentsClose CommentsPermalink





‘(A) IN GENERAL- If the Director determines under paragraph (2) that misconduct has occurred, the Director may levy a civil penalty against the party that committed such misconduct.CommentsClose CommentsPermalink





‘(B) FACTORS- In establishing the amount of any civil penalty to be levied under subparagraph (A), the Director shall consider--CommentsClose CommentsPermalink





‘(i) the materiality of the misconduct;CommentsClose CommentsPermalink





‘(ii) the impact of the misconduct on a decision of the Director regarding a patent, proceeding, or application; andCommentsClose CommentsPermalink





‘(iii) the impact of the misconduct on the integrity of matters or proceedings before the Office.CommentsClose CommentsPermalink





‘(C) SANCTIONS- A civil penalty levied under subparagraph (A) may consist of--CommentsClose CommentsPermalink





‘(i) a penalty of up to $150,000 for each act of misconduct;CommentsClose CommentsPermalink





‘(ii) in the case of a finding of a pattern of misconduct, a penalty of up to $1,000,000; orCommentsClose CommentsPermalink





‘(iii) in the case of a finding of exceptional misconduct establishing that an application for a patent amounted to a fraud practiced by or at the behest of a real party in interest of the application--CommentsClose CommentsPermalink





‘(I) a determination that 1 or more claims of the patent is unenforceable; orCommentsClose CommentsPermalink





‘(II) a penalty of up to $10,000,000.CommentsClose CommentsPermalink





‘(D) JOINT AND SEVERAL LIABILITY- Any party found to have been responsible for misconduct in connection with any matter or proceeding before the Office under this section may be jointly and severally liable for any civil penalty levied under subparagraph (A).CommentsClose CommentsPermalink





‘(E) DEPOSIT WITH THE TREASURY- Any civil penalty levied under subparagraph (A) shall--CommentsClose CommentsPermalink





‘(i) accrue to the benefit of the United States Government; andCommentsClose CommentsPermalink





‘(ii) be deposited under ‘Miscellaneous Receipts’ in the United States Treasury.CommentsClose CommentsPermalink





‘(F) AUTHORITY TO BRING ACTION FOR RECOVERY OF PENALTIES-CommentsClose CommentsPermalink





‘(i) IN GENERAL- If any party refuses to pay or remit to the United States Government a civil penalty levied under this paragraph, the United States may recover such amounts in a civil action brought by the United States Attorney General on behalf of the Director in the United States District Court for the Eastern District of Virginia.CommentsClose CommentsPermalink





‘(ii) INJUNCTIONS- In any action brought under clause (i), the United States District Court for the Eastern District of Virginia may, as the court determines appropriate, issue a mandatory injunction incorporating the relief sought by the Director.CommentsClose CommentsPermalink





‘(4) COMBINED PROCEEDINGS- If the misconduct that is the subject of a proceeding under this subsection is attributed to a practitioner who practices before the Office, the Director may combine such proceeding with any other disciplinary proceeding under section 32 of this title.CommentsClose CommentsPermalink





‘(d) Obtaining Evidence-CommentsClose CommentsPermalink





‘(1) IN GENERAL- During the period in which an investigation for a finding of probable cause or for a determination of whether misconduct occurred in connection with any matter or proceeding before the Office is being conducted, the Director may require, by subpoena issued by the Director, persons to produce any relevant information, documents, reports, answers, records, accounts, papers, and other documentary or testimonial evidence.CommentsClose CommentsPermalink





‘(2) ADDITIONAL AUTHORITY- For the purposes of carrying out this section, the Director--CommentsClose CommentsPermalink





‘(A) shall have access to, and the right to copy, any document, paper, or record, the Director determines pertinent to any investigation or determination under this section, in the possession of any person;CommentsClose CommentsPermalink





‘(B) may summon witnesses, take testimony, and administer oaths;CommentsClose CommentsPermalink





‘(C) may require any person to produce books or papers relating to any matter pertaining to such investigation or determination; andCommentsClose CommentsPermalink





‘(D) may require any person to furnish in writing, in such detail and in such form as the Director may prescribe, information in their possession pertaining to such investigation or determination.CommentsClose CommentsPermalink





‘(3) WITNESSES AND EVIDENCE-CommentsClose CommentsPermalink





‘(A) IN GENERAL- The Director may require the attendance of any witness and the production of any documentary evidence from any place in the United States at any designated place of hearing.CommentsClose CommentsPermalink





‘(B) CONTUMACY-CommentsClose CommentsPermalink





‘(i) ORDERS OF THE COURT- In the case of contumacy or failure to obey a subpoena issued under this subsection, any appropriate United States district court or territorial court of the United States may issue an order requiring such person--CommentsClose CommentsPermalink





‘(I) to appear before the Director;CommentsClose CommentsPermalink





‘(II) to appear at any other designated place to testify; andCommentsClose CommentsPermalink





‘(III) to produce documentary or other evidence.CommentsClose CommentsPermalink





‘(ii) FAILURE TO OBEY- Any failure to obey an order issued under this subparagraph court may be punished by the court as a contempt of that court.CommentsClose CommentsPermalink





‘(4) DEPOSITIONS-CommentsClose CommentsPermalink





‘(A) IN GENERAL- In any proceeding or investigation under this section, the Director may order a person to give testimony by deposition.CommentsClose CommentsPermalink





‘(B) REQUIREMENTS OF DEPOSITION-CommentsClose CommentsPermalink





‘(i) OATH- A deposition may be taken before an individual designated by the Director and having the power to administer oaths.CommentsClose CommentsPermalink





‘(ii) NOTICE- Before taking a deposition, the Director shall give reasonable notice in writing to the person ordered to give testimony by deposition under this paragraph. The notice shall state the name of the witness and the time and place of taking the deposition.CommentsClose CommentsPermalink





‘(iii) WRITTEN TRANSCRIPT- The testimony of a person deposed under this paragraph shall be under oath. The person taking the deposition shall prepare, or cause to be prepared, a written transcript of the testimony taken. The transcript shall be subscribed by the deponent. Each deposition shall be filed promptly with the Director.CommentsClose CommentsPermalink





‘(e) Appeal-CommentsClose CommentsPermalink





‘(1) IN GENERAL- A party may appeal a determination under subsection (c)(2) that misconduct occurred in connection with any matter or proceeding before the Office to the United States Court of Appeals for the Federal Circuit.CommentsClose CommentsPermalink





‘(2) NOTICE TO USPTO- A party appealing under this subsection shall file in the Office a written notice of appeal directed to the Director, within such time after the date of the determination from which the appeal is taken as the Director prescribes, but in no case less than 60 days after such date.CommentsClose CommentsPermalink





‘(3) REQUIRED ACTIONS OF THE DIRECTOR- In any appeal under this subsection, the Director shall transmit to the United States Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the determination proceeding. The court may request that the Director forward the original or certified copies of such documents during the pendency of the appeal. The court shall, before hearing the appeal, give notice of the time and place of the hearing to the Director and the parties in the appeal.CommentsClose CommentsPermalink





‘(4) AUTHORITY OF THE COURT- The United States Court of Appeals for the Federal Circuit shall have power to enter, upon the pleadings and evidence of record at the time the determination was made, a judgment affirming, modifying, or setting aside, in whole or in part, the determination, with or without remanding the case for a rehearing. The court shall not set aside or remand the determination made under subsection (c)(2) unless there is not substantial evidence on the record to support the findings or the determination is not in accordance with law. Any sanction levied under subsection (c)(3) shall not be set aside or remanded by the court, unless the court determines that such sanction constitutes an abuse of discretion of the Director.CommentsClose CommentsPermalink





‘(f) Definition- For purposes of this section, the term ‘person’ means any individual, partnership, corporation, company, association, firm, partnership, society, trust, estate, cooperative, association, or any other entity capable of suing and being sued in a court of law.’.CommentsClose CommentsPermalink





(b) Suspension or Exclusion From Practice- Section 32 of title 35, United States Code, is amended--CommentsClose CommentsPermalink





(1) by striking ‘The Director may’ and inserting the following:CommentsClose CommentsPermalink





‘(a) In General- The Director may’; andCommentsClose CommentsPermalink





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





‘(b) Tolling of Time Period- The time period for instituting a proceeding under subsection (a), as provided in section 2462 of title 28, shall not begin to run where fraud, concealment, or misconduct is involved until the information regarding fraud, concealment, or misconduct is made known in the manner set forth by regulation under section 2(b)(2)(D) to an officer or employee of the United States Patent and Trademark Office designated by the Director to receive such information.’.CommentsClose CommentsPermalink





(c) Effective Date-CommentsClose CommentsPermalink





(1) IN GENERAL- Except as otherwise provided under paragraph (2), the amendments made by this section shall take effect on the date of enactment of this Act.CommentsClose CommentsPermalink





(2) INAPPLICABILITY TO PENDING LITIGATION- Subsections (a) and (b) of section 298 of title 35, United States Code (as added by the amendment made by subsection (a) of this section), shall apply to any civil action filed on or after the date of the enactment of this Act.CommentsClose CommentsPermalink

SEC. 12. CONVERSION OF DEADLINES.

(a) Sections 141, 156(d)(2)(A), 156(d)(2)(B)(ii), 156(d)(5)(C), and 282 of title 35, United States Code, are each amended by striking ‘30 days’ or ‘thirty days’ each place that term appears and inserting ‘1 month’.CommentsClose CommentsPermalink





(b) Sections 135(c), 142, 145, 146, 156(d)(2)(B)(ii), 156(d)(5)(C), and the matter preceding clause (i) of section 156(d)(2)(A) of title 35, United States Code, are each amended by striking ‘60 days’ or ‘sixty days’ each place that term appears and inserting ‘2 months’.CommentsClose CommentsPermalink





(c) The matter preceding subparagraph (A) of section 156(d)(1) and sections 156(d)(2)(B)(ii) and 156(d)(5)(E) of title 35, United States Code, are each amended by striking ‘60-day’ or ‘sixty-day’ each place that term appears and inserting ‘2-month’.CommentsClose CommentsPermalink





(d) Sections 155 and 156(d)(2)(B)(i) of title 35, United States Code, are each amended by striking ‘90 days’ or ‘ninety days’ each place that term appears and inserting ‘3 months’.CommentsClose CommentsPermalink





(e) Sections 154(b)(4)(A) and 156(d)(2)(B)(i) of title 35, United States Code, are each amended by striking ‘180 days’ each place that term appears and inserting ‘6 months’.CommentsClose CommentsPermalink

SEC. 13. CHECK IMAGING PATENTS.

(a) Limitation- Section 287 of title 35, United States Code, is amended by adding at the end the following:CommentsClose CommentsPermalink





‘(d)(1) With respect to the use by a financial institution of a check collection system that constitutes an infringement under subsection (a) or (b) of section 271, the provisions of sections 281, 283, 284, and 285 shall not apply against the financial institution with respect to such a check collection system.CommentsClose CommentsPermalink





‘(2) For the purposes of this subsection--CommentsClose CommentsPermalink





‘(A) the term ‘check’ has the meaning given under section 3(6) of the Check Clearing for the 21st Century Act (12 U.S.C. 5002(6));CommentsClose CommentsPermalink





‘(B) the term ‘check collection system’ means the use, creation, transmission, receipt, storing, settling, or archiving of truncated checks, substitute checks, check images, or electronic check data associated with or related to any method, system, or process that furthers or effectuates, in whole or in part, any of the purposes of the Check Clearing for the 21st Century Act (12 U.S.C. 5001 et seq.);CommentsClose CommentsPermalink





‘(C) the term ‘financial institution’ has the meaning given under section 509 of the Gramm-Leach-Bliley Act (15 U.S.C. 6809);CommentsClose CommentsPermalink





‘(D) the term ‘substitute check’ has the meaning given under section 3(16) of the Check Clearing for the 21st Century Act (12 U.S.C. 5002(16)); andCommentsClose CommentsPermalink





‘(E) the term ‘truncate’ has the meaning given under section 3(18) of the Check Clearing for the 21st Century Act (12 U.S.C. 5002(18)).CommentsClose CommentsPermalink





‘(3) This subsection shall not limit or affect the enforcement rights of the original owner of a patent where such original owner--CommentsClose CommentsPermalink





‘(A) is directly engaged in the commercial manufacture and distribution of machinery or the commercial development of software; andCommentsClose CommentsPermalink





‘(B) has operated as a subsidiary of a bank holding company, as such term is defined under section 2(a) of the Bank Holding Company Act of 1956 (12 U.S.C. 1841(a)), prior to July 19, 2007.CommentsClose CommentsPermalink





‘(4) A party shall not manipulate its activities, or conspire with others to manipulate its activities, for purposes of establishing compliance with the requirements of this subsection, including, without limitation, by granting or conveying any rights in the patent, enforcement of the patent, or the result of any such enforcement.’.CommentsClose CommentsPermalink





(b) Takings- If this section is found to establish a taking of private property for public use without just compensation, this section shall be null and void. The exclusive remedy for such a finding shall be invalidation of this section. In the event of such invalidation, for purposes of application of the time limitation on damages in section 286 of title 35, United States Code, any action for patent infringement or counterclaim for infringement that could have been filed or continued but for this section, shall be considered to have been filed on the date of enactment of this Act or continued from such date of enactment.CommentsClose CommentsPermalink





(c) Effective Date- The amendment made by subsection (a) shall apply to any civil action for patent infringement pending or filed on or after the date of enactment of this Act.CommentsClose CommentsPermalink

SEC. 14. PATENT AND TRADEMARK OFFICE FUNDING.

(a) Definitions- In this section, the following definitions shall apply:CommentsClose CommentsPermalink





(1) DIRECTOR- The term ‘Director’ means the Director of the United States Patent and Trademark Office.CommentsClose CommentsPermalink





(2) FUND- The term ‘Fund’ means the public enterprise revolving fund established under subsection (c).CommentsClose CommentsPermalink





(3) OFFICE- The term ‘Office’ means the United States Patent and Trademark Office.CommentsClose CommentsPermalink





(4) TRADEMARK ACT OF 1946- The term ‘Trademark Act of 1946’ means an Act entitled ‘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’).CommentsClose CommentsPermalink





(5) UNDERSECRETARY- The term ‘Undersecretary’ means the Under Secretary of Commerce for Intellectual Property.CommentsClose CommentsPermalink





(b) Funding-CommentsClose CommentsPermalink





(1) IN GENERAL- Section 42 of title 35, United States Code, is amended--CommentsClose CommentsPermalink





(A) in subsection (b), by striking ‘Patent and Trademark Office Appropriation Account’ and inserting ‘United States Patent and Trademark Office Public Enterprise Fund’; andCommentsClose CommentsPermalink





(B) by amending subsection (c) to read as follows:CommentsClose CommentsPermalink





‘(c)(1) Subject to paragraphs (2) and (3), fees authorized in this title or any other Act to be charged or established by the Director shall be collected by and shall be available to the Director to carry out the activities of the Patent and Trademark Office.CommentsClose CommentsPermalink





‘(2) All fees available to the Director under section 31 of the Trademark Act of 1946 shall be used only for the processing of trademark registrations and for other activities, services, and materials relating to trademarks and to cover a proportionate share of the administrative costs of the Patent and Trademark Office.CommentsClose CommentsPermalink





‘(3) All fees available to the Director under paragraphs (1), (2), and (3) of section 41(a) and section 41(d)(1) of this title, and those fees available to the Director which are derived from filing fees, Request for Continued Examination fees, and Information Disclosure Statement submission fees established by regulation pursuant to section 41(d)(2) of this title, shall be used only for funding the portion of the salary of patent examiners attributable to examining patent applications and shall not be applied to fund non-examining activities or supervisory activities.’.CommentsClose CommentsPermalink





(2) EFFECTIVE DATE; TERMINATION- The amendments made by paragraph (1) shall take effect on the later of--CommentsClose CommentsPermalink





(A) October 1, 2009; orCommentsClose CommentsPermalink





(B) the date of enactment of this Act.CommentsClose CommentsPermalink





(c) USPTO Revolving Fund-CommentsClose CommentsPermalink





(1) ESTABLISHMENT- There is established in the Treasury of the United States a revolving fund to be known as the ‘United States Patent and Trademark Office Public Enterprise Fund’. Any amounts in the Fund shall be available for use by the Director without fiscal year limitation.CommentsClose CommentsPermalink





(2) DERIVATION OF RESOURCES- There shall be deposited into the Fund--CommentsClose CommentsPermalink





(A) any fees collected under sections 41, 42, and 376 of title 35, United States Code, provided that notwithstanding any other provision of law, if such fees are collected by, and payable to, the Director, the Director shall transfer such amounts to the Fund; andCommentsClose CommentsPermalink





(B) any fees collected under section 31 of the Trademark Act of 1946 (15 U.S.C. 1113).CommentsClose CommentsPermalink





(3) EXPENSES- Amounts deposited into the Fund under paragraph (2) shall be available, without fiscal year limitation, to cover--CommentsClose CommentsPermalink





(A) all expenses to the extent consistent with the limitation on the use of fees set forth in section 42(c) of title 35, United States Code, including all administrative and operating expenses, determined in the discretion of the Under Secretary to be ordinary and reasonable, incurred by the Under Secretary and the Director for the continued operation of all services, programs, activities, and duties of the Office, as such services, programs, activities, and duties are described under--CommentsClose CommentsPermalink





(i) title 35, United States Code; andCommentsClose CommentsPermalink





(ii) the Trademark Act of 1946; andCommentsClose CommentsPermalink





(B) all expenses incurred pursuant to any obligation, representation, or other commitment of the Office.CommentsClose CommentsPermalink





(4) CUSTODIANS OF MONEY- Notwithstanding section 3302 of title 31, United States Code, any funds received by the Director and transferred to Fund, or any amounts directly deposited into the Fund, may be used--CommentsClose CommentsPermalink





(A) to cover the expenses described in paragraph (3); andCommentsClose CommentsPermalink





(B) to purchase obligations of the United States, or any obligations guaranteed by the United States.CommentsClose CommentsPermalink





(d) Annual Report- Not later than 60 days after the end of each fiscal year, the Under Secretary and the Director shall submit a report to Congress which shall--CommentsClose CommentsPermalink





(1) summarize the operations of the Office for the preceding fiscal year, including financial details and staff levels broken down by each major activity of the Office;CommentsClose CommentsPermalink





(2) detail the operating plan of the Office, including specific expense and staff needs for the upcoming fiscal year;CommentsClose CommentsPermalink





(3) describe the long-term modernization plans of the Office;CommentsClose CommentsPermalink





(4) set forth details of any progress towards such modernization plans made in the previous fiscal year; andCommentsClose CommentsPermalink





(5) include the results of the most recent audit carried out under subsection (e).CommentsClose CommentsPermalink





(e) Annual Spending Plan-CommentsClose CommentsPermalink





(1) IN GENERAL- Not later than 30 days after the beginning of each fiscal year, the Director shall notify the Committees on Appropriations of both Houses of Congress of the plan for the obligation and expenditure of the total amount of the funds for that fiscal year in accordance with section 605 of the Science, State, Justice, Commerce, and Related Agencies Appropriations Act, 2006 (Public Law 109-108; 119 Stat. 2334).CommentsClose CommentsPermalink





(2) CONTENTS- Each plan under paragraph (1) shall--CommentsClose CommentsPermalink





(A) summarize the operations of the Office for the current fiscal year, including financial details and staff levels with respect to major activities; andCommentsClose CommentsPermalink





(B) detail the operating plan of the Office, including specific expense and staff needs, for the current fiscal year.CommentsClose CommentsPermalink





(f) Audit- The Under Secretary shall, on an annual basis, provide for an independent audit of the financial statements of the Office. Such audit shall be conducted in accordance with generally acceptable accounting procedures.CommentsClose CommentsPermalink





(g) Budget- In accordance with section 9301 of title 31, United States Code, the Fund shall prepare and submit each year to the President a business-type budget in a way, and before a date, the President prescribes by regulation for the budget program.CommentsClose CommentsPermalink

SEC. 15. TECHNICAL AMENDMENTS.

(a) Joint Inventions- Section 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’; andCommentsClose CommentsPermalink





(3) in the third paragraph--CommentsClose CommentsPermalink





(A) by striking ‘Whenever’ and inserting ‘(c) Correction of Errors in Application- Whenever’; andCommentsClose CommentsPermalink





(B) by striking ‘and such error arose without any deceptive intent on his part,’.CommentsClose CommentsPermalink





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





(1) in the first paragraph--CommentsClose CommentsPermalink





(A) by striking ‘Except when’ and inserting ‘(a) Filing in Foreign Country- Except when’; andCommentsClose CommentsPermalink





(B) by striking ‘and without deceptive intent’;CommentsClose CommentsPermalink





(2) in the second paragraph, by striking ‘The term’ and inserting ‘(b) Application- The term’; andCommentsClose CommentsPermalink





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





(c) Filing Without a License- Section 185 of title 35, United States Code, is amended by striking ‘and without deceptive intent’.CommentsClose CommentsPermalink





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





(1) in the first paragraph--CommentsClose CommentsPermalink





(A) by striking ‘Whenever’ and inserting ‘(a) In General- Whenever reissue of any patent is authorized under section 298 or’; andCommentsClose CommentsPermalink





(B) by striking ‘without deceptive intention’;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’; andCommentsClose 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





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





(1) in the first paragraph, by striking ‘Whenever, without deceptive intention’ and inserting ‘(a) In General- Whenever’; andCommentsClose 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





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





(1) in the first paragraph, by striking ‘Whenever’ and inserting ‘(a) Correction- Whenever’; andCommentsClose CommentsPermalink





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





(g) Presumption of Validity- Section 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’; andCommentsClose 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





(h) Action for Infringement- Section 288 of title 35, United States Code, is amended by striking ‘, without any deceptive intention,’.CommentsClose CommentsPermalink





(i) Government-Owned Facilities- Section 202(c)(7)(E)(i) of title 35, United States Code, is amended by--CommentsClose CommentsPermalink





(1) striking ‘up to an amount equal to 5 percent of the annual budget of the facility,’; andCommentsClose CommentsPermalink





(2) striking ‘provided that’ and all that follows through ‘in this clause (D);’.CommentsClose CommentsPermalink

SEC. 16. 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) Special Provisions Relating to Determinations of Validity and Patentability-CommentsClose CommentsPermalink





(1) IN GENERAL- The amendments made by section 2 shall apply to any application for a patent and any patent issued pursuant to such an application that at any time--CommentsClose CommentsPermalink





(A) contained a claim to a claimed invention that has an effective filing date, as such date is defined under section 100(h) of title 35, United States Code, 1 year or more after the date of the enactment of this Act;CommentsClose CommentsPermalink





(B) asserted a claim to a right of priority under section 119, 365(a), or 365(b) of title 35, United States Code, to any application that was filed 1 year or more after the date of the enactment of this Act; orCommentsClose CommentsPermalink





(C) made a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any application to which the amendments made by section 2 otherwise apply under this subsection.CommentsClose CommentsPermalink





(2) PATENTABILITY- For any application for patent and any patent issued pursuant to such an application to which the amendments made by section 2 apply, no claim asserted in such application shall be patentable or valid unless such claim meets the conditions of patentability specified in section 102(g) of title 35, United States Code, as such conditions were in effect on the day prior to the date of enactment of this Act, if the application at any time--CommentsClose CommentsPermalink





(A) contained a claim to a claimed invention that has an effective filing date as defined in section 100(h) of title 35, United States Code, earlier than 1 year after the date of the enactment of this Act;CommentsClose CommentsPermalink





(B) asserted a claim to a right of priority under section 119, 365(a), or 365(b) of title 35, United States Code, to any application that was filed earlier than 1 year after the date of the enactment of this Act; orCommentsClose CommentsPermalink





(C) made a specific reference under section 120, 121, or 365(c) of title 35, United States Code, with respect to which the requirements of section 102(g) applied.CommentsClose CommentsPermalink





(3) VALIDITY OF PATENTS- For the purpose of determining the validity of a claim in any patent or the patentability of any claim in a nonprovisional application for patent that is made before the effective date of the amendments made by sections 2 and 3, other than in an action brought in a court before the date of the enactment of this Act--CommentsClose CommentsPermalink





(A) the provisions of subsections (c), (d), and (f) of section 102 of title 35, United States Code, that were in effect on the day prior to the date of enactment of this Act shall be deemed to be repealed;CommentsClose CommentsPermalink





(B) the amendments made by section 3 of this Act shall apply, except that a claim in a patent that is otherwise valid under the provisions of section 102(f) of title 35, United States Code, as such provision was in effect on the day prior to the date of enactment of this Act, shall not be invalidated by reason of this paragraph; andCommentsClose CommentsPermalink





(C) the term ‘in public use or on sale’ as used in section 102(b) of title 35, United States Code, as such section was in effect on the day prior to the date of enactment of this Act shall be deemed to exclude the use, sale, or offer for sale of any subject matter that had not become available to the public.CommentsClose CommentsPermalink





(4) CONTINUITY OF INTENT UNDER THE CREATE ACT- The enactment of section 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 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 United States Patent and Trademark Office.CommentsClose CommentsPermalink