I 108th CONGRESS 2d Session H. R. 5299 IN THE HOUSE OF REPRESENTATIVES October 8, 2004 Mr. Berman (for himself and Mr. Boucher) introduced the following bill; which was referred to the Committee on the Judiciary A BILL To amend title 35, United States Code, to modify certain procedures relating to patents.

1.

Short title

This Act may be cited as the Patent Quality Assistance Act of 2004.

2.

Opposition procedures

(a)

In general

Title 35, United States Code, is amended by inserting after chapter 31 the following new chapter: 32

Post-grant opposition procedures

Sec 321. Right to oppose patent; opposition request 322. Real party in interest 323. Timing of opposition request 324. Limits on scope of validity issues raised 325. Institution of the opposition proceeding 326. Patent owner response 327. Amendment of claims 328. Discovery and sanctions 329. Supplemental submissions 330. Hearing and briefs 331. Written decision 332. Burden of proof and evidence 333. Reconsideration 334. Appeal 335. Certificate 336. Estoppel 337. Duration of opposition 338. Settlement 339. Intervening rights 340. Relationship with reexamination proceedings

321.

Right to oppose patent; opposition request

(a)

Filing of opposition

A person may request that the grant or reissue of a patent be reconsidered by the Patent and Trademark Office by filing an opposition seeking to invalidate 1 or more claims in the patent. The Director shall establish, by regulation, fees to be paid by the person filing the opposition (in this chapter referred to as the opposer). Copies of patents and printed publications to be relied upon in support of the request must be filed with the request. If an opposer relies on other factual evidence or on expert opinions in support of the opposition, such evidence and opinions must be filed with the request through one or more accompanying affidavits or declarations. (b)

Copies provided to patent owner

Copies of any documents filed under subsection (a) must be provided to the patent owner or, if applicable, the designated representative of the patent owner, at the time of filing under subsection (a), except that if a request is made that the identity of a real party in interest be kept separate pursuant to section 322(b), then the identity of the real party in interest may be redacted from the copies provided. (c)

File available to the public

The file of any opposition proceeding shall be made available to the public, except as provided in section 322.

322.

Real party in interest

(a)

Identification

The person making a request under section 321 shall identify in writing each real party in interest, and the opposition pursuant to the request shall proceed in the name of the real party in interest. (b)

Identity kept separate upon request

(1)

In general

Subject to paragraph (2), if requested by the opposer, the identity of a real party in interest shall be kept separate from the file of the opposition and made available only to Government agencies upon written request, or to any person upon a showing of good cause. If the identity of a real party in interest is kept separate from the file under this paragraph, then the opposition shall proceed in the name of the individual filing the request as the representative of the real party in interest. (2)

Exception

No request under paragraph (1) to keep the identity of a real party in interest separate from the file of the opposition may be made or maintained if the opposer relies upon factual evidence or expert opinions in the form of affidavits or declarations during the opposition proceeding or if the opposer exercises the right to appeal under section 141.

323.

Timing of opposition request

A person may not make an opposition request under section 321 later than 9 months after the grant of the patent or issuance of the reissue patent, as the case may be, or later than 6 months after receiving notice from the patent holder alleging infringement of the patent, except that, if the patent owner consents in writing, an opposition request may be filed anytime during the period of enforceability of the patent. A court having jurisdiction over an issue of validity of a patent may not require the patent owner to consent to such a request.

324.

Limits on scope of validity issues raised

An opposition request under section 321 must identify with particularity the claims that are alleged to be invalid and, as to each claim, 1 or more issues of invalidity on which the opposition is based. The issues of invalidity that may be considered during the opposition proceeding are double patenting and any of the requirements for patentability set forth in sections 101, 102, 103, and 112, and the fourth paragraph of section 251, except for— (1)any requirement contained in the first paragraph of section 112 relating to disclosing the best mode; and (2)any issue arising under subsection (c), (f), or (g) of section 102.

325.

Institution of the opposition proceeding

(a)

Dismissal; institution

(1)

Dismissal

The Director may dismiss an opposition request that the Director determines lacks substantial merit. The determination by the Director to dismiss an opposition request shall not be appealable. The dismissal of an opposition request shall not be admissible in any civil action related to the patent against which a dismissed request was filed. (2)

Institution

If the Director receives 1 or more requests that meet the requirements of section 321 regarding the same patent by the Director and are not dismissed under paragraph (1), an opposition proceeding shall be promptly instituted pursuant to the request or requests, but not before a period of 9 months has elapsed since the date on which the patent was granted. (3)

Consolidated proceeding

If an opposition proceeding is instituted based upon more than 1 opposition request, the opposition shall proceed as a single consolidated proceeding, unless later divided under subsection (c). (b)

Parties

The parties to an opposition proceeding under this section shall be the patent owner and each opposer whose request meets the requirements of section 321 and has not been dismissed under subsection (a)(1). (c)

Decision by panel

The Director shall assign the opposition proceeding to a panel of three administrative patent judges (in this chapter referred to as the panel). The panel shall decide the questions of patentability raised in each opposition request for which an opposition proceeding has been instituted. The decision shall be based upon the prosecution record that was the basis for the grant of the patent and the additional submissions by the parties to the opposition proceeding authorized under this chapter. The panel may, in appropriate cases, divide the opposition into separate proceedings if the opposition involves multiple opposition requests by different parties.

326.

Patent owner response

After the Director has instituted an opposition proceeding under section 325, the patent owner shall have the right to file, within the time period set by the panel, a response to each opposition request that is the subject of the proceeding. The patent owner, in responding to an opposition request, shall file with the response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response.

327.

Amendment of claims

The patent owner is entitled to request amendment of any claims that are the subject of an opposition proceeding under this chapter, including by the addition of new claims. The patent owner shall file any such request for amendment with the patent owner’s response to an opposition request under section 326. The panel may permit further requests for amendment of the claims only upon good cause shown by the patent owner. No amendment enlarging the scope of the claims of the patent shall be permitted in the opposition proceeding.

328.

Discovery and sanctions

(a)

Discovery

After an opposition proceeding is instituted under this chapter, the patent owner shall have the right to depose each person submitting an affidavit or declaration on behalf of any opposer, and each opposer shall have the right to depose each person submitting an affidavit or declaration on behalf of the patent owner. Such depositions shall be limited to cross-examination on matters relevant to the affidavit or declaration. No other discovery shall be permitted unless the panel determines that additional discovery is required in the interest of justice. The panel shall determine the schedule for the taking of discovery under this subsection. (b)

Sanctions

If any party to an opposition proceeding fails to properly respond to any discovery under subsection (a), the panel may draw appropriate adverse inferences and take other action permitted by statute, rule, or regulation.

329.

Supplemental submissions

The panel may permit one or more supplemental submissions to be made by any party to an opposition proceeding under this chapter, subject to the rights and limitations on discovery under section 328.

330.

Hearing and briefs

Any party to an opposition proceeding under this chapter may request an oral hearing within the time set by the panel. If a hearing is requested or the panel determines sua sponte that a hearing is needed, the panel shall set a time for the hearing. The panel may permit the partied to file briefs for the hearing, and shall permit cross-examination of all affiants and declarants in the hearing, either before the panel or by deposition taken under section 328.

331.

Written decision

The panel shall issue a written decision on each issue of patentability with respect to each claim that is the subject of an opposition proceeding under this chapter. The written decision shall consist of findings of fact and conclusions of law. The written decision shall become a final determination of the Office on the issues raised in the opposition unless a party to the opposition files a request for reconsideration and modification of the written decision within a period set by the panel, which shall not be less than two weeks from the date of the written decision.

332.

Burden of proof and evidence

(a)

Burden of proof

The opposer in an opposition proceeding under this chapter shall have the burden to prove the invalidity of a claim by a preponderance of the evidence. The determination of invalidity shall be based upon the broadest reasonable construction of the claim. (b)

Evidence

The Federal Rules of Evidence shall apply to the opposition proceeding, except to the extent inconsistent with any provision of this chapter.

333.

Reconsideration

If a request is filed for reconsideration of the written decision in an opposition proceeding under this chapter, the panel may authorize a party to the proceeding who did not file such a request to file a response to the request for reconsideration. Following any reconsideration, the panel shall either deny the request for modification of the written decision or grant the request and issue a modified written decision, which shall constitute the final determination of the Office on the issues raised in the opposition proceeding.

334.

Appeal

A party dissatisfied with the final determination of the panel in an opposition proceeding under this chapter may appeal the determination under sections 141 through 144. Any party to the opposition proceeding shall have the right to be a party to the appeal.

335.

Certificate

When a decision of a panel in an opposition proceeding under the chapter has become final under section 331, 333, or 334, as the case may be, the Director shall issue and publish a certificate in accordance with the decision, canceling any claim of the patent determined to be unpatentable, and shall incorporate into the patent any new or amended claims determined to be patentable. The issuance of the certificate shall terminate the opposition proceeding.

336.

Estoppel

(a)

Estoppel

(1)

In general

Subject to paragraph (2), after a certificate has been issued under section 335 in accordance with the decision of the panel in an opposition proceeding, the determination with respect to an issue of invalidity raised by an opposer shall bar that opposer from raising, in any subsequent proceeding involving that opposer under this title, any issue of fact or law actually decided and necessary to the determination of that issue. (2)

Exception

If an opposer in an opposition proceeding demonstrates, in a subsequent proceeding referred to in paragraph (1), that there is additional factual evidence that is material to an issue of fact actually decided in the opposition proceeding, and necessary to the final determination in the opposition proceeding, that could not reasonably have been discovered or presented in the opposition proceeding by that opposer, the opposer may raise, in that subsequent proceeding, that issue of fact and any determined issue of law for which the issue of fact was necessary. (b)

Expanded definition of opposer

For purposes of this section, the term opposer includes the person making the request under section 321, any real party in interest, and their successors in interest. (c)

New party-in-Interest

If a proceeding arising by reason of additional factual evidence raised under subsection (a)(2) involves a real party in interest not identified to the patent owner under section 322, the real party in interest shall notify the Director and the patent owner of that fact and of the proceeding, within 30 days after receiving notice that the proceeding has been filed.

337.

Duration of opposition

The determination of a panel in an opposition proceeding under this chapter, including any determinations pursuant to a request for reconsideration under section 133, shall be issued not later than 1 year after the date on which the opposition proceeding is instituted under section 325. Upon good cause shown, the Director may extend the 1-year period by not more than 6 months.

338.

Settlement

(a)

In general

An opposition proceeding under this chapter shall be terminated with respect to any opposer upon the joint request of the opposer and the patent owner, unless the panel has issued a written decision under section 331 before the request for termination is filed. If the opposition is terminated with respect to an opposer under this section, no estoppel under section 336 shall apply to that opposer with respect to an issue of invalidity raised in the opposition proceeding. The written decision under section 331 shall thereafter be issued only with respect to issues of invalidity raised by opposers that remain in the opposition proceeding. (b)

Agreements in writing

Any agreement or understanding between the patent owner and an opposer, including any collateral agreements referred to therein, that is made in connection with or in contemplation of the termination of an opposition proceeding under subsection (a) shall be in writing. The opposition with respect to the parties to the agreement or understanding shall not be terminated until a true copy of the agreement or understanding, including any such collateral agreements, has been filed in the Patent and Trademark Office. If any party filing such an agreement or understanding requests, the agreement or understanding shall be kept separate from the file of the opposition, and shall be made available only to Government agencies on written request, or to any person on a showing of good cause. (c)

Discretionary actions reviewable

Any discretionary action of the Director under subsection (b) shall be reviewable under chapter 7 of title 5.

339.

Intervening rights

Any proposed amended or new claim determined to be patentable and incorporated into a patent following an opposition proceeding under this chapter shall have the same effect as that specified in section 252 of this title for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation therefor, before the certificate issued under section 335 with respect to that amended or new claim.

340.

Relationship with reexamination proceedings

(a)

Estoppel

A patent for which an opposition proceeding has been instituted under this chapter may not thereafter be made the subject of a request under section 302 or 311 for reexamination, by the same opposer or on behalf of the same real party in interest, on the same claim and on the same issue that was the basis of the opposition proceeding. (b)

Staying of other proceedings

[If, after an opposition proceeding has been instituted under this chapter, a request for reexamination under section 302 or section 311 is made by or on behalf of a person other than the opposer or the same real party in interest, such reexamination shall be stayed during the pendency of any opposition proceeding under this chapter.]

. (b)

Clerical amendment

The table of chapters for part III of title 35, United States Code, is amended by adding at the end the following: 32.Opposition Procedures321..

3.

Publication of patent applications

Section 122 of title 35, United States Code, is amended by striking subsection (c) and redesignating subsection (d) as subsection (c).

4.

Submissions by third parties

Section 131 of title 35, United States Code, is amended— (1)by striking The Director and inserting (a) In general.—The Director; and (2)by adding at the end the following: (b)

Third party submissions

Any party shall have the opportunity to submit for consideration and for inclusion in the record, prior art (including, but not limited to, evidence of knowledge or use, or public use or sale, under section 102), to determine whether the invention was known or used, or was in public use, or on sale, under section 102 or would have been obvious under section 103. The Director shall consider such submissions if the request— (1)is made in writing not later than— (A)6 months after the date on which the patent application is published under section 122, or (B)before the date on which a notice of allowance is mailed under section 151 for a patent on the invention,whichever occurs first; (2)is accompanied by the payment of a fee established by the Director under section 41 for third party submissions; (3)sets forth the teaching and applicability of each reference and the basis on which the submission is offered; and (4)includes a sworn declaration attesting to the relevance and accuracy of the submissions.Information submitted under this subsection shall be considered during the examination of the patent application..

5.

Effect of notices of infringement

A notice by a patent holder alleging infringement of the patent shall not be deemed sufficient to subject a recipient of the notice to liability for willful infringement of the patent unless the notice would cause the recipient to have standing in a proceeding pursuant to a motion for declaratory judgment with respect to the subject matter of the notice.

6.

Injunctions

Section 283 of title 35, United States Code, is amended— (1)by striking The several and inserting (a) In General.—The several; and (2)by adding at the end the following: (b)

Grounds for granting injunction

A court shall not grant an injunction under this section unless it finds that the patentee is likely to suffer irreparable harm that cannot be remedied by payment of money damages. In making or rejecting such a finding, the court shall not presume the existence of irreparable harm, but rather the court shall consider and weigh evidence, if any, tending to establish or negate any equitable factor relevant to a determination of the existence of irreparable harm, including, but not limited to, the extent to which the patentee makes use of the technology claimed by the patent..

7.

Inter partes reexamination

(a)

Estoppel provision

Section 315(c) of title 35, United States Code, is amended by striking or could have raised. (b)

Applicability

Notwithstanding section 4608(a) of the Intellectual Property and Communications Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law 106–113 (41 U.S.C. note), sections 311 through 318 of title 35, United States Code, as amended by this section, shall apply to any patent that issues from an original application filed before, on, or after November 29, 1999.

8.

Nonobviousness

Section 103 of title 35, United States Code, is amended by adding at the end the following: (d) (1)A business method invention shall be presumed obvious under this section if the only significant difference between the combined teachings of the prior art and the claimed invention is that the claimed invention is appropriate for use with a computer technology, unless— (A)the application of the computer technology is novel; or (B)the computer technology is novel and not the subject of another patent or patent application. (2) (A)An applicant or patentee may rebut the presumption under paragraph (1) upon a showing by a preponderance of the evidence that the invention is not obvious to persons of ordinary skill in all relevant arts. (B)Those areas of art which are relevant for purposes of subparagraph (A) include the field of the business method and the field of the computer implementation..

9.

Conforming amendments

(a)

Definitions

Section 100(e) of title 35, United States Code, is amended by striking or inter partes reexamination under section 311 and inserting inter partes reexamination under section 311, or an opposition under section 321,. (b)

Appeal to court of appeals

(1)Section 141 of title 35, United States Code, is amended in the first sentence, by inserting or a final determination of a panel of administrative patent judges under chapter 32 of this title after 134 of this title. (2)Section 143 of title 35, United States Code, is amended by inserting after the third sentence the following: In any opposition proceeding, the panel of administrative patent judges making the determination in the proceeding shall submit to the court in writing the grounds for the decision of the panel, addressing all the issues involved in the appeal.

10.

Effective date

Except as provided in section 7(b), the amendments made by this Act shall apply to patents issued, and applications for patent that are made, on and after the date of the enactment of this Act.