[Congressional Bills 109th Congress]
[From the U.S. Government Publishing Office]
[H.R. 2795 Introduced in House (IH)]
109th CONGRESS
1st Session
H. R. 2795
To amend title 35, United States Code, relating to the procurement,
enforcement, and validity of patents.
_______________________________________________________________________
IN THE HOUSE OF REPRESENTATIVES
June 8, 2005
Mr. Smith of Texas (for himself, Mr. Berman, Mr. Goodlatte, Mr.
Boucher, Ms. Zoe Lofgren of California, Mr. Cannon, Mr. Schiff, Mr.
Issa, Mr. Conyers, and Mr. Coble) introduced the following bill; which
was referred to the Committee on the Judiciary
_______________________________________________________________________
A BILL
To amend title 35, United States Code, relating to the procurement,
enforcement, and validity of patents.
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,
SECTION 1. SHORT TITLE; TABLE OF CONTENTS.
(a) Short Title.--This Act may be cited as the ``Patent Reform Act
of 2005''.
(b) Table of Contents.--The table of contents of this Act is as
follows:
Sec. 1. Short title; table of contents.
Sec. 2. Reference to title 35, United States Code.
Sec. 3. Right of the first inventor to file.
Sec. 4. Right to a patent.
Sec. 5. Duty of candor.
Sec. 6. Right of the inventor to obtain damages.
Sec. 7. Injunctions.
Sec. 8. Continuation applications.
Sec. 9. Post-grant procedures and other quality enhancements.
Sec. 10. Submissions by third parties.
Sec. 11. Applicability; transitional provisions.
SEC. 2. REFERENCE TO TITLE 35, UNITED STATES CODE.
Whenever in this Act a section or other provision is amended or
repealed, that amendment or repeal shall be considered to be made to
that section or other provision of title 35, United States Code.
SEC. 3. RIGHT OF THE FIRST INVENTOR TO FILE.
(a) Definitions.--Section 100 is amended by adding at the end the
following:
``(f) The term `inventor' means the individual or, if a joint
invention, the individuals collectively who invented or discovered the
subject matter of the invention.
``(g) The terms `joint inventor' and `coinventor' mean any one of
the individuals who invented or discovered the subject matter of a
joint invention.
``(h) The `effective filing date' of a claimed invention is--
``(1) the filing date of the patent or the application for
patent containing the claim to the invention; or
``(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 of this title.
``(i) The term `claimed invention' means the subject matter defined
by a claim in a patent or an application for a patent.''.
(b) Conditions for Patentability.--
(1) In general.--Section 102 is amended to read as follows:
``Sec. 102. Conditions for patentability; novelty
``(a) Novelty; Prior Art.--A patent for a claimed invention may not
be obtained if--
``(1) the claimed invention was patented, described in a
printed publication, or otherwise publicly known--
``(A) more than one year before the effective
filing date of the claimed invention; or
``(B) before the effective filing date of the
claimed invention, other than through disclosures made
by the inventor or a joint inventor or by others who
obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor; or
``(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.
``(b) Limitation on Prior Art.--
``(1) Commonly assigned invention exception.--Subject
matter that would otherwise qualify as prior art only under
subsection (a)(2) shall not be prior art to a claimed invention
if the subject matter and the claimed invention were, not later
than the effective filing date of the claimed invention, owned
by the same person or subject to an obligation of assignment to
the same person.
``(2) Joint research agreement exception.--
``(A) Exception.--Subject matter that would
otherwise qualify as prior art only under subsection
(a)(2) shall not be prior art for purposes of section
103 to a claimed invention if--
``(i) the claimed invention was made by or
on behalf of parties to a joint research
agreement that was in effect on or before the
effective filing date of the claimed invention;
``(ii) the subject matter was developed and
the claimed invention was made as a result of
activities undertaken within the scope of the
joint research agreement; and
``(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.
``(B) Definition.--For purposes of subparagraph
(A), the term `joint research agreement' means a
written contract, grant, or cooperative agreement
entered into by two or more persons or entities for the
performance of experimental, developmental, or research
work in the field of the claimed invention.
``(3) Reasonable and effective accessibility requirement.--
``(A) In general.--Subject matter is publicly known
for the purposes of subsection (a)(1) only when--
``(i) it becomes reasonably and effectively
accessible through its use, sale, or disclosure
by other means; or
``(ii) it is embodied in or otherwise
inherent in subject matter that has become
reasonably and effectively accessible.
``(B) Reasonable and effective accessibility.--For
purposes of subparagraph (A)--
``(i) subject matter is reasonably
accessible if persons of ordinary skill in the
art to which the subject matter pertains are
able to gain access to the subject matter by
without resort to undue efforts; and
``(ii) subject matter is effectively
accessible if persons of ordinary skill in the
art to which the subject matter pertains are
able to comprehend the content of the subject
matter without resort to undue efforts.
``(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--
``(A) as of the filing date of the patent or the
application for patent; or
``(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 one or more prior filed applications for
patent, as of the filing date of the earliest such
application that describes the subject matter.''.
(2) Conforming amendment.--The item relating to section 102
in the table of sections for chapter 10 is amended to read as
follows:
``102. Conditions for patentability; novelty.''.
(c) Conditions for Patentability; Non-Obvious Subject Matter.--
Section 103 is amended--
(1) by striking subsections (b) and (c); and
(2) in subsection (a)--
(A) by striking ``(a) A patent may not be obtained
through the invention'' and inserting ``A patent for a
claimed invention may not be obtained through the
claimed invention''; and
(B) by striking ``at the time the invention was
made'' and inserting ``before the effective filing date
of the claimed invention''.
(d) Repeal of Requirements for Inventions Made Abroad.--Section
104, and the item relating to that section in the table of sections for
chapter 10, are repealed.
(e) Repeal of Statutory Invention Registration.--Section 157, and
the item relating to that section in the table of sections for chapter
14, are repealed.
(f) Earlier Filing Date for Inventor and Joint Inventor.--Section
120 is amended by striking ``which is filed by an inventor or inventors
named'' and inserting ``which names an inventor or joint inventor''.
(g) Conforming Amendments.--
(1) Right of priority.--Section 172 is amended by striking
``and the time specified in section 102(d)''.
(2) Limitation on remedies.--Section 287(c)(4) is amended
by striking ``the earliest effective filing date of which is
prior to'' and inserting ``which has an effective filing date
before''.
(3) International application designating the united
states: effect.--Section 363 is amended by striking ``except as
otherwise provided in section 102(e) of this title''.
(4) Publication of international application: effect.--
Section 374 is amended by striking ``sections 102(e) and
154(d)'' and inserting ``section 154(d)''.
(5) Patent issued on international application: effect.--
The second sentence of section 375(a) is amended by striking
``Subject to section 102(e) of this title, such'' and inserting
``Such''.
(6) Limit on right of priority.--Section 119(a) is amended
by striking ``; but no patent shall be granted'' and all that
follows through ``one year prior to such filing''.
(7) Inventions made with federal assistance.--Section
202(c) is amended--
(A) in paragraph (2)--
(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 such 2-year
period''; and
(ii) by striking ``the statutory'' and
inserting ``the 1-year''; and
(B) in paragraph (3), by striking ``any statutory
bar date that may occur under this title due to
publication, on sale, or public use'' and inserting
``the expiration of the 1-year period referred to in
section 102(a)''.
(h) Repeal of Interfering Patent Remedies.--Section 291, and the
item relating to that section in the table of sections for chapter 29,
are repealed.
(i) Inventor's Rights Contests.--Section 135(a) is amended to read
as follows:
``(a) Dispute Over Right to Patent.--
``(1) Institution of inventor's rights contest.--Whenever
patents or applications for patent naming different individuals
as the inventor are deemed by the Director to interfere because
of a dispute over the right to patent under section 101, the
Director shall institute an inventor's rights contest for the
purpose of determining the right to patent.
``(2) Determination by board of patent appeals.--The Board
of Patent Appeals--
``(A) shall determine the question of the right to
patent;
``(B) in appropriate circumstances, may correct the
naming of the inventor in any application or patent at
issue; and
``(C) shall issue a final decision on the right to
patent.
``(3) Effect of final decision.--The final decision of the
Board of Patent Appeals under paragraph (2), if adverse to the
claim of an applicant, shall constitute the final refusal by
the Patent and Trademark Office on the claims involved. The
Director may issue a patent to an applicant who is adjudged 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 Patent and Trademark
Office.''.
(j) Board of Patent Appeals.--
(1) Elimination of references to interferences.--(A)
Sections 6, 41, 134, 141, 145, 146, 154, 305, and 314 are each
amended by striking ``Board of Patent Appeals and
Interferences'' each place it appears and inserting ``Board of
Patent Appeals''.
(B) Sections 135, 141, 146, and 154 are each amended by
striking ``interference'' each place it appears and inserting
``inventor's rights contest''.
(C) The section heading for section 6 is amended to read as
follows:
``Sec. 6. Board of Patent Appeals''.
(D) The section heading for section 134 is amended to read
as follows:
``Sec. 134. Appeal to the Board of Patent Appeals''.
(E) The section heading for section 135 is amended to read
as follows:
``Sec. 135. Inventor's rights contests''.
(F) The section heading for section 146 is amended to read
as follows:
``Sec. 146. Civil action in case of inventor's rights contest''.
(G) Section 154(b)(1)(C) is amended by striking
``interferences'' and inserting ``inventor's rights contests''.
(H) The item relating to section 6 in the table of sections
for chapter 1 is amended to read as follows:
``6. Board of Patent Appeals.''.
(I) The items relating to sections 134 and 135 in the table
of sections for chapter 12 are amended to read as follows:
``134. Appeal to the Board of Patent Appeals.
``135. Inventor's rights contests.''.
(J) The item relating to section 146 in the table of
sections for chapter 13 is amended to read as follows:
``146. Civil action in case of inventor's rights contest.''.
(2) Technical and conforming amendments.--Section 135(c) is
amended--
(A) by striking ``(c) Any'' and inserting ``(c)(1)
Any'';
(B) in the second paragraph, by striking ``The
Director'' and inserting ``(2) The Director''; and
(C) in the third paragraph, by striking ``Any
discretionary'' and inserting ``(3) Any
discretionary''.
SEC. 4. RIGHT TO A PATENT.
(a) Right to Patent.--
(1) In general.--Section 101 is amended to read as follows:
``Sec. 101. Right to patent; subject matter eligible for patenting
``The inventor of any new and useful process, machine, manufacture,
or composition of matter, or any new and useful improvement thereof,
has the right to apply for and to obtain a patent therefor, subject to
the conditions and requirements of this title.''.
(2) Conforming amendment.--The item relating to section 101
in the table of sections for chapter 10 is amended to read as
follows:
``101. Right to patent; subject matter eligible for patenting.''.
(b) Oath of Applicant.--Section 115 is amended to read as follows:
``Sec. 115. Oath of applicant
``The Director may require the applicant to make an oath setting
forth particulars relating to the inventor and the invention.''.
(c) Filing by Other Than Inventor.--Section 118 is amended to read
as follows:
``Sec. 118. Filing by other than inventor
``A person to whom the inventor has assigned or is under an
obligation to assign the invention may make an application for patent.
A person who otherwise shows sufficient proprietary interest in the
matter may make an application for patent on behalf of and as agent for
the inventor on proof of the pertinent facts and a showing that such
action is appropriate to preserve the rights of the parties. If the
Director grants a patent on an application filed under this section by
a person other than the inventor, the patent shall be granted to the
real party in interest and upon such notice to the inventor as the
Director considers to be sufficient.''.
(d) Specification.--Section 112 is amended--
(1) in the first paragraph--
(A) by striking ``The specification'' and inserting
``(a) In General.--The specification''; and
(B) by striking ``, and shall set forth the best
mode contemplated by the inventor of carrying out his
invention'';
(2) in the second paragraph--
(A) by striking ``The specifications'' and
inserting ``(b) Conclusion.--The specification''; and
(B) by striking ``applicant regards as his
invention'' and inserting ``inventor or a joint
inventor regards as the invention'';
(3) in the third paragraph, by striking ``A claim'' and
inserting ``(c) Form.--A claim'';
(4) in the fourth paragraph, by striking ``Subject to the
following paragraph,'' and inserting ``(d) Reference in
Dependent Forms.--Subject to subsection (e),'';
(5) in the fifth paragraph, by striking ``A claim'' and
inserting ``(e) Reference in Multiple Dependent Form.--A
claim''; and
(6) in the last paragraph, by striking ``An element'' and
inserting ``(f) Element in Claim for a Combination.--An
element''.
SEC. 5. DUTY OF CANDOR.
(a) In General.--Chapter 12 of title 35, United States Code, is
amended by adding at the end the following:
``Sec. 136. Duty of candor: patents and applications for patent
``(a) Duty.--The Director shall by regulation impose a duty of
candor and good faith on individuals associated with the filing and
prosecution of an application for patent and on individuals assisting a
patent owner in proceedings before the Office involving a patent. The
duty shall require each such individual to timely disclose information
known to that individual to be material to any issue before the Office
in connection with the application or patent, and to not materially
misrepresent information. The duty may further address the types of
information for which disclosure is required and the standards upon
which a finding of misrepresentation or concealment on the part of such
individuals could be based. Any allegation of any type of violation of
the duty of candor and good faith under this subsection shall be
governed exclusively by this chapter.
``(b) Violation.--Any individual who is subject to the duty of
candor and good faith under subsection (a) and who, with the intent to
deceive or mislead, knowingly fails to disclose material information or
knowingly and materially misrepresents information has engaged in
misconduct under this section, if the Director or a court under
subsection (d), as the case may be, finds, by clear and convincing
evidence, that--
``(1) the individual failed to disclose information or
misrepresented information;
``(2) the information not disclosed was material or, in the
case of a misrepresentation, the misrepresentation was
material;
``(3) the individual had knowledge of the materiality of
the information not disclosed or, in the case of a
misrepresentation, of the misrepresentation and materiality of
the misrepresentation; and
``(4) the individual had the intent to deceive or mislead.
``(c) Adjudication by the Office.--
``(1) Other fora precluded.--No court or Federal department
or agency other than the Office, and no other Federal or State
governmental entity, may investigate or make a determination or
an adjudication with respect to an alleged violation of the
duty of candor and good faith under subsection (a) or with
respect to an alleged fraud, inequitable conduct, or other
misconduct in any proceeding before the Office involving a
patent or in connection with the filing or examination of an
application for patent, except as expressly permitted in this
section.
``(2) Exception regarding pending applications.--Nothing in
this subsection shall limit the authority of the Director to
enforce regulations concerning pending applications for patent,
including regulations relating to misconduct.
``(3) Limitation on defenses to enforcement of patent.-- No
defense of invalidity of a patent or other defense to the
enforcement of a patent may be based in whole or in part upon a
violation of the duty of candor and good faith under subsection
(a) or on any fraud, inequitable conduct, or other misconduct,
except as expressly permitted in this section.
``(4) Referral by court.--In any matter before a court
involving an issue of validity or infringement of a patent, if
the court determines that an issue of possible misconduct under
subsection (b) exists, the court shall refer the matter to the
Office for investigation and sanctions under this section. If
such referral is made, the matter shall be resolved as provided
in this section.
``(d) Unenforceability Action.--
``(1) In general.--A patent may be held unenforceable if a
court determines, pursuant to a pleading permitted under
paragraph (2), that--
``(A) misconduct under subsection (b) has occurred
and constitutes fraud by reason of reliance by the
Office on the misconduct which has resulted in the
issuance of, or a certificate affirming patentability
of, one or more invalid claims in a patent; and
``(B) the fraud is attributable to the patent
owner.
``(2) Required motion to plead unenforceability.--The
defense of unenforceability described in paragraph (1) may be
pled in an action before a court only upon a motion to amend
the pleadings in the action. The court shall not grant the
motion unless--
``(A) the validity of one or more claims in the
patent is at issue in the action;
``(B) the court has previously entered a judgment
in the action that a claim in the patent is invalid;
``(C) the motion to amend the pleadings is brought
by a party to the action adverse to the patent owner
within 3 months after a judgment is entered by the
court invalidating the claim; and
``(D) the motion sets out with particularity a
substantial basis for findings that--
``(i) because of the reliance of the Office
on the misconduct, fraud took place in a
proceeding before the Office involving the
patent or in connection with the filing or
examination of the application for patent, and
as a result at least 1 claim in the patent
invalidated in the action was issued as a
result of the reliance on the misconduct; and
``(ii) the alleged fraud is attributable to
the patent owner.
``(3) Required findings for unenforceability.--
``(A) Liability of patent owner.--In determining
the unenforceability of a patent, no misconduct under
subsection (b) by an individual registered to practice
before the Office and acting in a representative
capacity before the Office in a proceeding before the
Office involving the patent or in connection with the
filing or examination of the application for patent
shall be attributable to the patent owner unless the
patent owner, or another individual who--
``(i) is subject to the duty of candor and
good faith with respect to the patent,
``(ii) is not registered to practice before
the Office, and
``(iii) was acting on the patent owner's
behalf,
is determined to have violated the duty of candor and
good faith.
``(B) Reliance of the patent examiner.--No
misconduct may be determined to constitute fraud
sufficient to support a finding that a patent is
unenforceable without clear and convincing evidence of
reliance of the Office on the alleged misconduct,
resulting in the issuance of a claim invalidated by the
court because a competent patent examiner either--
``(i) would not have issued the invalidated
claim, acting reasonably, in the absence of the
misconduct; or
``(ii) based upon the prosecution history
as a whole objectively considered, would have
done so based upon in whole or in part on
account of the misconduct.
``(e) Investigation of Misconduct.--
``(1) In general.--The Director shall establish a special
office with authority to investigate possible violations of the
duty of candor and good faith, including possible misconduct,
in a proceeding before the Office involving a patent or in
connection with the filing or examination of an application for
patent, in cases in which such matters are referred to the
Office for investigation under subsection (c)(4). The special
office shall, following such referral, commence an
investigation into possible violations of the duty . After such
an investigation is begun, any subsequent decision to maintain
the investigation or abandon the investigation may be made only
by the Director, and such decision may not be appealed or
reviewed.
``(2) Procedures.--
``(A) Subpoenas.--During the period in which a
misconduct investigation is conducted under paragraph
(1), the matter shall be a contested case in the Office
and the Director may seek evidence or other information
through subpoenas under section 24.
``(B) Notice; subject parties.--The Director shall
provide written notice to the patent owner of the
commencement of the investigation and may provide such
written notice to persons who were owners of the patent
or application for patent (or persons to whom the
patent or application for patent was subject to an
obligation of assignment) at the time the conduct that
is the subject of the investigation occurred. Any
person receiving written notice under this subparagraph
shall be designated as a `subject party.' The Director
shall provide written notice under this subparagraph of
an investigation before seeking any evidence under
section 24, but otherwise at such time as the Director
shall determine. Upon providing such written notice to
the subject parties, the Director shall publish a
notice of the commencement of the investigation in the
Federal Register.
``(C) Obtaining evidence.--Upon request of a
subject party, the Director shall determine the manner
in which to allow a subject party to obtain evidence of
potential relevance, including by authorizing the
subject party to seek subpoenas under section 24.
``(D) Preliminary determination.--The Director, at
the earliest practicable time after the date on which
notice of the investigation is published under
subparagraph (B), shall conclude the investigation and
make a preliminary determination on the issues under
investigation. The Director shall, within 45 days after
an investigation is begun, establish a target date for
rendering a preliminary determination.
``(E) Consultation with other departments and
agencies.--During the course of each investigation
under this section and section 137, the Director may
consult with, seek advice and information from, and
otherwise obtain assistance from the Attorney General,
the Federal Trade Commission, the International Trade
Commission, the Securities and Exchange Commission, and
the heads of such other departments and agencies as the
Director considers appropriate.
``(3) Notice of determination.--
``(A) If no misconduct found.--If the Director
determines in an investigation under paragraph (2) that
there is no basis for concluding that misconduct under
subsection (b) has occurred, the Director shall provide
written notice of such determination to each of the
subject parties not later than 1 month after the
conclusion of the investigation. A determination of the
Director under this subparagraph is final and may not
be appealed.
``(B) If misconduct may have occurred.--If the
Director makes a preliminary determination in an
investigation under paragraph (2) that misconduct under
subsection (b) may have occurred, the Director shall
provide written notice of the preliminary determination
to each of the subject parties not later than 1 month
after the conclusion of the investigation. Such written
notice shall provide a description with particularity
of the separate acts alleged to constitute such
possible misconduct. The Director shall afford the
subject parties an opportunity to respond to the
preliminary determination and a period of time within
which to reach a settlement of the issue before taking
any further action.
``(4) Final determination; appeal to board.--
``(A) In general.--If a matter relating to possible
misconduct is not settled under paragraph (3), the
preliminary determination shall become final and may
not be appealed unless 1 or more of the subject parties
contests the preliminary determination by requesting a
hearing on the matter, within 2 months after the end of
the settlement period provided under paragraph (3)(B),
before a panel of the Board of Patent Appeals.
``(B) Hearing.--If a hearing is timely requested
under subparagraph (A), the hearing shall provide the
Director and the patent owner an opportunity to present
evidence and arguments.
``(C) Determination of panel.--The panel shall, not
later than 1 year after the date of the request by 1 or
more of the subject parties for a hearing under
subparagraph (B), issue a written determination
containing findings of facts and conclusions of law on
the matters before it. If the written determination by
the panel concludes that one or more alleged violations
of the duty of candor and good faith do not constitute
acts of misconduct, then the determination is final
with respect to such issues of possible misconduct and
may not be appealed, and no penalty shall be imposed
with respect to such issues. If the written
determination by the panel concludes that one or more
alleged violations of the duty of candor and good faith
do constitute acts of misconduct, then the decision of
the panel shall represent a final determination of the
Office on the matters involved.
``(5) Notice of final determination.--If a matter of
possible misconduct is not settled or otherwise terminated
following the opportunity for settlement and hearing under
paragraphs (3) and (4), the Director shall notify the subject
parties in writing of the final determination on the matter
under paragraph (4), setting forth--
``(A) the factual findings of the investigation;
``(B) the legal conclusions reached;
``(C) a description of each separate act of
misconduct determined to have taken place;
``(D) the amount of any civil monetary penalty
imposed against the subject parties under paragraph
(6); and
``(E) a deadline for payment of any penalty
imposed, which may not be earlier than 6 months after
the date on which the notice is provided to the patent
owner under this paragraph of the final determination.
``(6) Penalty amount.--
``(A) In general.--Subject to the limitations of
this paragraph, the Director may impose civil monetary
penalties on each subject party for each act of
misconduct of which notice is given under paragraph
(5), in amounts that the Director considers sufficient
in the Director's discretion to act as a deterrent to
future such violations of the duty of candor and good
faith under this section, taking into account the
totality of the circumstances in each individual case.
``(B) Limitation on amount.--The amount of a civil
penalty imposed under subparagraph (A) may not exceed
$1,000,000 for each separate act of misconduct, except
that in a case in which the violation of the duty of
candor and good faith is found to be the result of
fraudulent or other particularly egregious misconduct,
the penalty imposed may not exceed $5,000,000 for such
act of misconduct. In an exceptional case, the Director
may impose an additional penalty in an amount equal to
the costs incurred by the Director in conducting the
investigation.
``(C) Limitation on parties on which penalties may
be imposed.--No penalty based upon an act of misconduct
may be imposed under subparagraph (A) on a subject
party other than the patent owner unless the subject
party was the owner of a claimed invention in the
patent or application for patent (or entitled to an
assignment thereof), at the time the act of misconduct
giving rise to the penalty occurred. Unless otherwise
specified in the final determination, subject parties
shall be jointly and severally liable for any penalty
imposed.
``(7) Tolling of penalty; failure of timely payment.--The
deadline for payment of any penalty imposed shall be tolled
during the pendency of an appeal brought by a subject party
under paragraph (8). If the patent owner fails to make timely
payment of any penalty imposed on the patent owner, including
any penalty for which the patent owner is jointly liable,
before the expiration of the deadline provided under paragraph
(5)(E), the failure to pay the penalty constitutes a disclaimer
of all enforceable rights in each patent involved in the
violation of the duty of candor and good faith for which the
penalty was imposed.
``(8) Appeal.--A subject party dissatisfied with the final
determination of the Director under this section may, unless
the penalty has been paid pursuant to the final determination,
appeal the determination under sections 141 through 144.
``(f) Other Actions not Subject to Preemption.--Nothing in this
section shall in any manner operate to--
``(1) prevent or otherwise obstruct a criminal
investigation or supersede any criminal law, or any penalty
imposed pursuant thereto, in connection with any matter
involving a patent or application for patent;
``(2) limit the ability of the courts of any State or the
District of Columbia to investigate and make determinations
with respect to issues of attorney malpractice and impose
sanctions on an attorney for malpractice; or
``(3) limit the ability of any entity before which an
individual is registered or otherwise entitled to practice a
profession to investigate and sanction such individual based
upon professional misconduct.
``(g) Actions Based Upon Prior Misconduct Adjudication.--If a
final, nonappealable adjudication of misconduct has been made based
upon a criminal action not subject to preemption under subsection
(f)(1), a fraud pleading described in subsection (d), or a misconduct
proceeding instituted pursuant to a referral described in subsection
(e)(1), such adjudication of misconduct may be used as a basis for
pursuing further remedies under any Federal or State law, including
common law, except that nothing in this subsection shall authorize any
investigation or determination of misconduct that is otherwise
preempted under this section.
``Sec. 137. Duty of candor: parties adverse to a patent or application
``(a) Duty.--The Director shall prescribe by regulation a duty of
candor and good faith applicable to individuals who are parties adverse
to a patent or application for patent in contested cases before the
Office. The duty shall apply to individuals associated with such a
proceeding on behalf of a party adverse to the patent or application.
Each such individual shall timely disclose information known to that
individual to be material to issues raised or responded to by the
adverse party on whose behalf the individual is involved and shall not
materially misrepresent information.
``(b) Misconduct.--Misconduct under this section shall be defined
with respect to individuals described in subsection (a) in the same
manner as that provided in section 136(b) with respect to individuals
under that section. The Director may conduct an investigation of
possible misconduct by an individual based upon a violation of the duty
described in subsection (a) in the manner provided in section 136(e),
except that the written notice described in section 136(e)(2)(B) shall
be given by the Director to each party on whose behalf an individual is
acting who is being investigated for possible violation of the duty of
candor and good faith under this section. The persons receiving such
written notice shall be the subject parties of the investigation. If,
on the basis of an investigation the Director determines that there is
a basis for concluding that a violation of the duty that amounts to
misconduct may have occurred, the Director shall provide written notice
of the preliminary determination to each subject party and shall afford
the subject party an opportunity to reach a settlement of the issue
before taking any further action.
``(c) Penalties.--If an issue of misconduct arising from a possible
violation of the duty of candor and good faith under this section is
not settled or otherwise terminated following the opportunity for
settlement and hearing described in subsection (b), the Director may
impose a civil monetary penalty against the subject parties. The
procedures described in section 136(e) shall be followed in imposing a
civil penalty under this subsection, except that the maximum civil
monetary penalty that may be imposed on a subject party under this
section may not exceed $500,000.''.
(b) Table of Sections.--The table of sections for chapter 12 is
amended by adding at the end the following new items:
``136. Duty of candor: patents and applications for patent.
``137. Duty of candor: parties adverse to a patent or application.''.
(c) Removal of Deceptive Intent Restriction.--
(1) Inventor.--
(A) In general.--The third paragraph of section 116
is amended--
(i) by striking ``Whenever'' and inserting
``(c) Correction of Errors in Application.--
Whenever''; and
(ii) by striking ``, and such error arose
without any deceptive intention on his part''.
(B) Correction of named inventor.--Section 256 is
amended--
(i) in the first paragraph--
(I) by striking ``Whenever'' and
inserting ``(a) Correction.--
Whenever''; and
(II) by striking ``and such error
arose without any deceptive intention
on his part''; and
(ii) in the second paragraph, by striking
``The error'' and inserting ``(b) Patent Valid
If Error Corrected.--The error''.
(2) Filing.--
(A) Filing of application in foreign country.--The
first paragraph of section 184 is amended--
(i) by striking ``Except when'' and
inserting ``(a) Filing in Foreign Country.--
Except when''; and
(ii) by striking ``and without deceptive
intent''.
(B) Patent barred for filing without license.--
Section 185 is amended by striking ``and without
deceptive intent''.
(3) Reissue of defective patents.--The first paragraph of
section 251 is amended--
(A) by striking ``Whenever'' and inserting ``(a) In
General.--Whenever''; and
(B) by striking ``, through error without any
deceptive intention,''.
(4) Disclaimer.--The first paragraph of section 253 is
amended--
(A) by striking ``Whenever'' and inserting ``(a) In
General.--Whenever''; and
(B) by striking ``, without any deceptive
intention,''.
(5) Action for infringement.--Section 288 is amended by
striking ``, without deceptive intention,''.
(d) Technical Amendments.--(1) Section 116 is amended--
(A) in the first paragraph, by striking ``When'' and
inserting ``(a) Joint Inventions.--When''; and
(B) in the second paragraph, by striking ``If a joint
inventor'' and inserting ``(b) Omitted Inventor.--If a joint
inventor''.
(2) Section 184 is amended--
(A) in the second paragraph, by striking ``The term'' and
inserting ``(b) Application.--The term''; and
(B) in the third paragraph, by striking ``The scope'' and
inserting ``(c) Subsequent Modifications, Amendments, and
Supplements.--The scope''.
(3) Section 251 is amended--
(A) in the second paragraph, by striking ``The Director''
and inserting ``(b) Multiple Reissued Patents.--The Director'';
(B) in the third paragraph, by striking ``The provision''
and inserting ``(c) Applicability of This Title.--The
provisions''; and
(C) in the last paragraph, by striking ``No reissued
patent'' and inserting ``(d) Reissue Patent Enlarging Scope of
Claims.--No reissued patent''.
(4) Section 253 is amended in the second paragraph, by striking
``in like manner'' and inserting ``(b) Additional Disclaimer or
Dedication.--In the manner set forth in subsection (a),''.
SEC. 6. RIGHT OF THE INVENTOR TO OBTAIN DAMAGES.
Section 284 is amended--
(1) in the first paragraph--
(A) by striking ``Upon'' and inserting ``(a) Award
of Damages.--Upon''; and
(B) by adding at the end the following: ``In
determining a reasonable royalty in the case of a
combination, the court shall consider, if relevant and
among other factors, the portion of the realizable
profit that should be credited to the inventive
contribution as distinguished from other features of
the combination, the manufacturing process, business
risks, or significant features or improvements added by
the infringer.'';
(2) by amending the second paragraph to read as follows:
``(b) Willful Infringement.--
``(1) Increased damages.--A court that has determined that
the infringer has willfully infringed a patent or patents may
increase the damages up to three times the amount of damages
found or assessed under subsection (a), except that increased
damages under this paragraph shall not apply to provisional
rights under section 154(d) of this title.
``(2) Permitted grounds for willfulness.--A court may find
that an infringer has willfully infringed a patent only if the
patent owner presents clear and convincing evidence that--
``(A) after receiving written notice from the
patentee--
``(i) alleging acts of infringement in a
manner sufficient to give the infringer an
objectively reasonable apprehension of suit on
such patent, and
``(ii) identifying with particularity each
claim of the patent, each product or process
that the patent owner alleges infringes the
patent, and the relationship of such product or
process to such claim,
the infringer, after a reasonable opportunity to
investigate, thereafter performed one or more of the
alleged acts of infringement;
``(B) the infringer intentionally copied the
patented invention with knowledge that it was patented;
or
``(C) after having been found by a court to have
infringed that patent, the infringer engaged in conduct
that was not colorably different from the conduct
previously found to have infringed the patent, and
which resulted in a separate finding of infringement of
the same patent.
``(3) Limitations on willfulness.--(A) A court shall not
find that an infringer has willfully infringed a patent under
paragraph (2) for any period of time during which the infringer
had an informed good faith belief that the patent was invalid
or unenforceable, or would not be infringed by the conduct
later shown to constitute infringement of the patent.
``(B) Reasonable reliance on advice of counsel shall
establish an informed good faith belief within the meaning of
subparagraph (A).
``(C) The decision of the infringer not to present evidence
of advice of counsel shall have no relevance to a determination
of willful infringement under paragraph (2).
``(4) Limitation on pleading.--A patentee may not plead,
and a court may not determine, that an infringer has willfully
infringed a patent before the date on which a determination has
been made that the patent in suit is not invalid, is
enforceable, and has been infringed by the infringer.''; and
(3) in the third paragraph, by striking ``The court'' and
inserting ``(c) Expert Testimony.--The court''.
SEC. 7. INJUNCTIONS.
Section 283 is amended by adding at the end the following:
``In determining equity, the court shall consider the fairness of the
remedy in light of all the facts and the relevant interests of the
parties associated with the invention. Unless the injunction is entered
pursuant to a nonappealable judgment of infringement, a court shall
stay the injunction pending an appeal upon an affirmative showing that
the stay would not result in irreparable harm to the owner of the
patent and that the balance of hardships from the stay does not favor
the owner of the patent.''.
SEC. 8. CONTINUATION APPLICATIONS.
(a) In General.--Chapter 11 is amended by adding at the end the
following:
``Sec. 123. Limitations on continuation applications
``The Director may by regulation limit the circumstances under
which an application for patent, other than a divisional application
that meets the requirements for filing under section 121, may be
entitled to the benefit under section 120 of the filing date of a
prior-filed application. No such regulation may deny applicants an
adequate opportunity to obtain claims for any invention disclosed in an
application for patent.''.
(b) Conforming Amendment.--The table of sections for chapter 11 is
amended by adding at the end the following new item:
``123. Limitations on continuation applications.''.
SEC. 9. POST-GRANT PROCEDURES AND OTHER QUALITY ENHANCEMENTS.
(a) Publication.--Section 122(b)(2) is amended--
(1) by striking subparagraph (B); and
(2) in subparagraph (A)--
(A) by striking ``(A) An application'' and
inserting ``An application''; and
(B) by redesignating clauses (i) through (iv) as
subparagraphs (A) through (D), respectively.
(b) Defense to Infringement Based on Earlier Inventor.--Section 273
of title 35, United States Code, is amended--
(1) in subsection (a)--
(A) in paragraph (1)--
(i) by striking ``of a method''; and
(ii) by striking ``review period;'' and
inserting ``review period; and'';
(B) in paragraph (2)(B), by striking the semicolon
at the end and inserting a period; and
(C) by striking paragraphs (3) and (4);
(2) in subsection (b)--
(A) in paragraph (1)--
(i) by striking ``for a method''; and
(ii) by striking ``at least 1 year before
the effective filing date of such patent, and''
and all that follows through the period and
inserting ``and commercially used, or made
substantial preparations for commercial use of,
the subject matter before the effective filing
date of the claimed invention.'';
(B) in paragraph (2)--
(i) by striking ``The sale or other
disposition of a useful end result produced by
a patented method'' and inserting ``The sale or
other disposition of subject matter that
qualifies for the defense set forth in this
section''; and
(ii) by striking ``a defense under this
section with respect to that useful end
result'' and inserting ``such defense''; and
(C) in paragraph (3)--
(i) by striking subparagraph (A); and
(ii) by redesignating subparagraphs (B) and
(C) as subparagraphs (A) and (B), respectively;
(3) in paragraph (7), by striking ``of the patent'' and
inserting ``of the claimed invention''; and
(4) by amending the heading to read as follows:
``Sec. 273. Special defenses to and exemptions from infringement''.
(c) Table of Sections.--The item related to section 273 in the
table of sections for chapter 28 is amended to read as follows:
``273. Special defenses to and exemptions from infringement.''.
(d) Reexamination.--Section 315(c) is amended by striking ``or
could have raised''.
(e) Effective Dates.--Notwithstanding any other provision of law,
sections 311 through 318 of title 35, United States Code, as amended by
this Act, shall apply to any patent that issues from an original
application filed on any date.
(f) Post-Grant Opposition Procedures.--
(1) In general.--Part III is amended by adding at the end
the following new chapter:
``CHAPTER 32--POST-GRANT OPPOSITION PROCEDURES
``321. Right to oppose patent; opposition request.
``322. Real party in interest.
``323. Timing of opposition request.
``324. Limits on scope of validity issues raised.
``325. Institution of the opposition proceeding.
``326. Patent owner response.
``327. Amendment of claims.
``328. Discovery and sanctions.
``329. Supplemental submissions.
``330. Hearing and briefs.
``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.
``Sec. 321. Right to oppose patent; opposition request
``(a) Filing of Opposition.--A person may request that the grant or
reissue of a patent be reconsidered by the Office by filing an
opposition seeking to invalidate one or more claims in the patent. The
Director shall establish, by regulation, fees to be paid by 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
under section 322(b) that the identity of a real party in interest be
kept separate, then the identity of the real party in interest may be
redacted from the copies provided.
``(c) File Available to the Public.--The file of any opposition
proceeding shall be made available to the public except as provided in
section 322.
``Sec. 322. Real party in interest
``(a) Identification.--The person making the request under section
321 shall identify in writing each real party in interest, and the
opposition shall proceed in the name of the real party in interest.
``(b) Identity Kept Secret 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 subsection, then the opposition shall proceed in the name
of the individual filing the request as representative of the
real party in interest.
``(2) Exception.--No request under this 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 becomes a party to an appeal under section 141.
``Sec. 323. Timing of opposition request
``An person may not make an opposition request under section 321
later than 9 months after the grant of the patent or issuance of a
reissue patent, or later than 6 months after receiving notice from the
patent holder alleging infringement, except that, if the patent owner
consents in writing, an opposition request may be filed at any time
during the period of enforceability of the patent. A court having
jurisdiction over an issue of validity of a patent may not require the
patent owner to consent to such a request.
``Sec. 324. Limits on scope of validity issues raised
``An opposition request must identify with particularity the claims
that are alleged to be invalid and, as to each claim, one 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, 112, and 251(d).
``Sec. 325. Institution of the opposition proceeding; stay upon timely
filed suit
``(a) Determination on Opposition Request; Institution of
Opposition Proceeding.--
``(1) Determination by the director.--For each opposition
request submitted under section 321(a), the Director shall
determine if the written statement, and any evidence submitted
with the request, establish that a substantial question of
patentability exists for at least one claim in the patent. The
Director shall notify the patent owner and each opposer in
writing of the Director's findings, not later than the date in
which an opposition proceeding is instituted pursuant to the
request. Any determination made by the Director under this
paragraph shall not be appealable.
``(2) Institution.--If the Director makes a determination
under paragraph (1) that a substantial question of
patentability exists, the Director shall commence an opposition
proceeding. The Director shall institute such proceeding not
earlier than the date on which the applicable period specified
in section 323 expires, and not later than the date that is
three months after such date. Absent a showing of good cause,
the opposition proceeding shall be limited to review of the
claim or claims and the issues identified in the opposition
request.
``(3) Consolidated proceeding.--If an opposition is
instituted based upon more than one opposition request, the
opposition shall proceed as a single consolidated proceeding,
unless later divided under subsection (c).
``(b) Parties.--The parties to the opposition proceeding shall be
the patent owner and each opposer who has filed a request that results
in a determination under subsection (a)(2) to institute the opposition
proceeding.
``(c) Assignment to 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 the opposition request. The
decision shall be based upon the prosecution record that was the basis
for the grant or reissue 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.
``(d) Stay of Opposition.--If the owner of a patent files suit
alleging infringement of the patent before the expiration of the 9-
month or 6-month period for filing an opposition request under section
321, the Director, if requested by the patent owner, shall stay the
opposition proceeding until judgment in the suit, and all appeals
thereof, have become final.
``Sec. 326. Patent owner response
``After the Director has instituted an opposition proceeding under
section 325, the patent owner shall have the right to file, within a
time period set by the panel, a response to each opposition request
that results in a determination under section 325(a)(2) to institute an
opposition proceeding. 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.
``Sec. 327. Amendment of claims
``The patent owner is entitled to request amendment of any claims
that are the subject of an opposition proceeding under this chapter,
including by the addition of new claims. Any such request for amendment
shall be filed with the patent owner's response to an opposition
request. The panel may permit further requests for amendment of the
claims only upon good cause shown by the patent owner. No amendment
enlarging the scope of the claims of the patent shall be permitted in
the opposition proceeding.
``Sec. 328. Discovery and sanctions
``(a) Depositions.--After an opposition proceeding under this
chapter is instituted, 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.
``(b) Additional Discovery.--No discovery other than that provided
for in subsection (a) shall be permitted unless the panel determines
that additional discovery is required in the interest of justice.
``(c) Schedule.--The panel shall determine the schedule for the
taking of discovery under subsections (a) and (b).
``(d) Consequences for Failure to Respond Properly.--If any party
to an opposition proceeding fails to properly respond to any discovery
under subsection (a) or (b), the panel may draw appropriate adverse
inferences and take other action permitted by statute, rule, or
regulation.
``Sec. 329. Supplemental submissions
``The panel may permit one or more supplemental submissions to be
made by any party to an opposition proceeding under this chapter,
subject to the rights and limitations on discovery under section 328.
``Sec. 330. Hearing and briefs
``A party to an opposition proceeding under this chapter may
request an oral hearing by the date set by the panel. If a hearing is
requested or the panel determines sua sponte that a hearing is
warranted, the panel shall set a time for the hearing. The panel may
permit the parties to file briefs for the hearing, and shall permit
cross-examination of all affiants and declarants in the hearing, either
before the panel or by deposition taken under section 328.
``Sec. 331. Written decision
``The panel shall issue a written decision on each issue of
patentability with respect to each claim that is the subject of an
opposition proceeding under this chapter. The written decision shall
consist of findings of fact and conclusions of law. The written
decision shall become a final determination of the Office on the issues
raised in the opposition unless a party to the opposition files a
request for reconsideration and modification of the written decision
within a period of time set by the panel. Such time period shall not be
less than two weeks after the date of the written decision.
``Sec. 332. Burden of proof and evidence
``(a) Burden of Proof.--The opposer in an opposition proceeding
under this chapter shall have the burden to prove the invalidity of a
claim by a preponderance of the evidence. The determination of
invalidity shall be based upon the broadest reasonable construction of
the claim.
``(b) Evidence.--The Federal Rules of Evidence shall apply to the
opposition proceeding, except to the extent inconsistent with any
provision of this chapter.
``Sec. 333. Reconsideration
``If a request is filed for reconsideration of the written decision
in an opposition proceeding under this chapter, the panel may authorize
a party to the proceeding who did not file such a request to file a
response to the request for reconsideration. Following any
reconsideration, the panel shall either deny the request for
modification of the written decision or grant the request and issue a
modified written decision, which shall constitute the final
determination of the Office on the issues raised in the opposition
proceeding.
``Sec. 334. Appeal
``A party dissatisfied with the final determination of the panel in
an opposition proceeding under this chapter may appeal the
determination under sections 141 through 144. Any party to the
opposition proceeding shall have the right to be a party to the appeal.
``Sec. 335. Certificate
``When a decision of a panel in an opposition proceeding under this
chapter has become final under section 331, 333, or 334, the Director
shall issue and publish a certificate in accordance with the decision,
canceling any claim of the patent determined to be unpatentable, and
shall incorporate into the patent any new or amended claims determined
to be patentable. The issuance of the certificate shall terminate the
opposition proceeding.
``Sec. 336. Estoppel
``(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 the opposer from asserting, in any
subsequent proceeding before the Office or a court involving
that opposer under this title, that any claim of that patent
addressed in the opposition proceeding is invalid on the basis
of any issue of fact or law actually decided by the panel 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 and necessary to
the final determination in the opposition proceeding, that
could not reasonably have been discovered 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 subsequent proceeding, within 30
days after receiving notice that the subsequent proceeding has been
filed.
``Sec. 337. Duration of opposition
``The final determination of a panel described in section 333 shall
issue not later than one 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 six months.
``Sec. 338. Settlement
``(a) In General.--An opposition proceeding under this chapter
shall be terminated with respect to any opposer upon the joint request
of the opposer and the patent owner, unless the panel has issued a
written decision under section 331 before the request for termination
is filed. If the opposition is terminated with respect to an opposer
under this section, no estoppel under section 336 shall apply to that
opposer. If no opposer remains in the proceeding, the panel may
terminate the proceeding or proceed without the opposer to issue a
written decision under section 331.
``(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, shall be
in writing. An opposition proceeding as between 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 Office. If any party filing an
agreement or understanding requests, the agreement or understanding
shall be kept separate from the file of the opposition, and shall be
made available only to Government agencies on written request, or to
any person on a showing of good cause.
``(c) Discretionary Actions Reviewable.--Any discretionary action
of the Director under subsection (b) shall be reviewable under chapter
7 of title 5.
``Sec. 339. Intervening rights
``Any proposed amended or new claim determined to be patentable and
incorporated into a patent following an opposition proceeding under
this chapter shall have the same effect as that specified in section
252 of this title for reissued patents on the right of any person who
made, purchased, or used within the United States, or imported into the
United States, anything patented by such proposed amended or new claim,
or who made substantial preparation therefor, before the certificate is
issued under section 335 with respect to that amended or new claim.
``Sec. 340. Relationship with reexamination proceedings
``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. An ex parte
reexamination request made by a person other than the patent owner
during the 9-month or 6-month period specified in section 323, or an
inter partes reexamination request made during the 9-month or 6-month
period specified in section 323, shall be treated as a request under
section 321, and no ex parte reexamination or inter partes
reexamination may be ordered based on such request. A request for ex
parte reexamination or inter partes reexamination made after the 9-
month or 6-month period specified in section 323, and a request for ex
parte reexamination made by the patent owner at any time, shall be
stayed during the pendency of any opposition proceeding under this
chapter.''.
(g) Conforming Amendment.--The table of chapters for part III of
title 35, United States Code, is amended by adding at the end the
following:
``32. Post-Grant Opposition Procedures...................... 321''.
SEC. 10. SUBMISSIONS BY THIRD PARTIES.
Section 122 is amended by adding at the end the following:
``(e) Preissuance Submissions by Third Parties.--
``(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--
``(A) the date a notice of allowance under section
151 is mailed in the application for patent; or
``(B) either--
``(i) six months after the date on which
the application for patent is published under
section 122, or
``(ii) the date of the first rejection
under section 132 of any claim by the examiner
during the examination of the application for
patent,
whichever occurs later.
``(2) Other requirements.--Any submission under paragraph
(1) shall--
``(A) set forth a concise description of the
asserted relevance of each submitted document;
``(B) be accompanied by such fee as the Director
may prescribe; and
``(C) include a statement by the submitter
affirming that the submission was made in compliance
with this section.''.
SEC. 11. APPLICABILITY; TRANSITIONAL PROVISIONS.
(a) Section 3.--The amendments made by section 3 shall apply to
applications for patent, and any patents issued thereon, that contain a
claim to a claimed invention that has an effective filing date (as
defined in section 100(h) of title 35, United States Code) that is one
year or more after the date of the enactment of this Act. With respect
to any patent or application for patent to which the amendments made by
section 3 apply, no claim in the patent or in the application shall be
entitled to an effective filing date that is before the date of the
enactment of this Act.
(b) Sections 4, 6, and 7.--The amendments made by sections 4, 6,
and 7 shall take effect on the date of the enactment of this Act,
except that such amendments shall not apply to any action brought in
any court before such date of the enactment.
(c) Section 5.--The amendments made by section 5 shall take effect
on the date of the enactment of this Act and shall apply to patents
issued on or after such date of enactment, except that, in any action
brought on or after the date of the enactment of this Act in any court
involving a patent issued before the date of the enactment of this Act,
the patent owner may consent to--
(1) the jurisdiction of the United States Patent and
Trademark Office based on a referral by the court under section
136(c)(4) of title 35, United States Code; and
(2) any penalty imposed by the Patent and Trademark Office
under section 136(e) of such title pursuant to such referral.
(d) Section 8.--Any regulations issued under section 123 of title
35, United States Code, as added by section 8 of this Act, shall apply
to any application for patent that is filed on or after the effective
date of such regulations. Such regulations may not take effect before
the end of the 1-year period beginning on the date of the enactment of
this Act.
(e) Section 9.--(1) The amendments made by section 9(a) shall apply
to applications for patent filed on or after the date of the enactment
of this Act.
(2) The amendments made by section 9(b) shall apply to patents
issuing on applications filed on or after the date of the enactment of
this Act.
(3) The amendments made by subsections (c) and (d) of section 9
shall apply to any request made under section 311 of title 35, United
States Code, on or after the date of the enactment of this Act.
(4) The amendments made by section 9(e) shall take effect on the
date of the enactment of this Act, except that--
(A) no request for institution of an opposition proceeding
under chapter 32 of title 35, United States Code, may be made
until--
(i) the end of the 1-year period beginning on the
date of the enactment of this Act; or
(ii) such later date that the Director may
establish through notice published in the Federal
Register; and
(B) no such request may be made unless the amendments made
by section 3 apply with respect to the patent that is the
subject of the request.
(f) Section 10.--The amendments made by section 10 shall take
effect at the end of the 1-year period beginning on the date of the
enactment of this Act.
(g) Determining Validity of Claims.--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 section 3, other than in an
action brought in a court before the date of the enactment of this
Act--
(1) the provisions of sections 102(c) and 102(d) of title
35, United States Code, shall be deemed to be repealed;
(2) the provisions of sections 102(f) of title 35, United
States Code, shall be deemed to be repealed and replaced by the
provisions of section 101 of title 35, United States Code, as
amended by section 4(a) of this Act, relating to the inventor's
right to seek and obtain a patent, except that a claim in a
patent that is otherwise valid shall not be invalidated by
reason of this paragraph; and
(3) the term ``in public use or on sale'' as used in
section 102(b) of title 35, United States Code, shall be deemed
to exclude the use, sale, or offer for sale of any subject
matter that had not become reasonably and effectively
accessible to persons of ordinary skill in the art to which the
subject matter pertains, as defined in the amendments made by
section 3 of this Act.
(h) Effect of European Patent Convention and Patent Laws of
Japan.--Before the date, if ever, that the Director of the United
States Patent and Trademark Office publishes a notice in the Official
Gazette of the Office declaring that both the European Patent
Convention and the patent laws of Japan afford inventors seeking
patents a 1-year period prior to the effective filing date of a claimed
invention during which disclosures made by the inventor or by others
who obtained the subject matter disclosed directly or indirectly from
the inventor do not constitute prior art, the term ``effective filing
date'' as used in section 102(a)(1)(A) of title 35, United States Code,
shall be construed by disregarding any right of priority except that
provided under section 119(e) of title 35, United States Code.
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