II 109th CONGRESS 2d Session S. 3818 IN THE SENATE OF THE UNITED STATES August 3, 2006 Mr. Hatch (for himself and Mr. Leahy) introduced the following bill; which was read twice and referred to the Committee on the Judiciary A BILL To amend title 35, United States Code, to provide for patent reform.

1.

Short title; table of contents

(a)

Short title

This Act may be cited as the Patent Reform Act of 2006. (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. Inventor’s oath or declaration. Sec. 5. Remedies for infringement and affirmative defenses thereto. Sec. 6. Post-grant procedures. Sec. 7. Submissions by third parties and other quality enhancements. Sec. 8. Venue and jurisdiction. Sec. 9. Other statutory and conforming amendments. Sec. 10. Effective date.

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Whenever in this Act a section or other provision is amended or repealed, that amendment or repeal shall be considered to be made to that section or other provision of title 35, United States Code.

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 1 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. (i)The term claimed invention means the subject matter defined by a claim in a patent or an application for a patent. (j)The term joint invention means an invention resulting from the collaboration of inventive endeavors of 2 or more persons working toward the same end and producing an invention by their collective efforts. . (b)

Conditions for patentability

(1)

In general

Section 102 is amended to read as follows:

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 1 year before the effective filing date of the claimed invention; or (B)1 year or less before the effective filing date of the claimed invention, if the invention was patented or described in a printed publication or otherwise publicly known before the invention thereof by the applicant for a patent; 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)

Derivation and common assignment exceptions

Subject matter that would otherwise qualify as prior art only under subsection (a)(2) shall not be prior art to a claimed invention if— (A)the subject matter was obtained directly or indirectly from the inventor or a joint inventor; or (B)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)

Grace period

Subject matter disclosed in the prior art less than 1 year before the effective filing date of the claimed invention shall not preclude the patenting of a claimed invention under subsection (a) or section 103 if the claimed invention was made prior to the date the subject matter becomes prior art pursuant to section 102(b), if the subject matter disclosed was obtained directly or indirectly from an inventor of the claimed subject matter or the applicant. (3)

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 1 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; nonobvious subject matter

Section 103 is amended— (1)in subsection (a)— (A)by striking A patent may not be obtained through the invention and inserting A patent for the claimed invention may not be obtained through the claimed invention; (B)by striking sought to be patented and inserting of the claimed invention; and (C)by striking at the time the invention was made and inserting before the effective filing date of the claimed invention; (2)by striking subsection (b) and redesignating subsection (c) as subsection (b); (3)by amending subsection (b)(1), as so redesignated, to read as follows: (d)(1)Subject matter developed by another person, which is disqualified as prior art under section 102(b), shall not preclude patentability under this section if the subject matter and the claimed invention were owned by the same person, or subject to an obligation of assignment to the same person, on or before the effective filing date of the claimed invention. ; and (4)in subsection (b)(2)(A), as so redesignated, by striking the date the claimed invention was made and inserting 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

(1)

In general

Section 157, and the item relating to that section in the table of sections for chapter 14, are repealed. (2)

Removal of cross references

Section 111(b)(8) is amended by striking sections 115, 131, 135, and 157 and inserting sections 131 and 135. (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)

Action for claim to patent on derived invention

Section 135(a) is amended to read as follows: (a)

Dispute over right to patent

(1)

Institution of inventor’s rights contest

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 and without authorization filed an application claiming such invention. Any such request shall be made within 12 months of the date of first publication of an application containing a claim that is the same or is substantially the same as the claimed invention, under oath and supported by substantial evidence. Whenever patents or applications for patent naming different individuals as the inventor are determined 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 which applicant is entitled to a patent. (2)

Requirements

No proceeding shall be commenced under this subsection unless the party requesting the proceeding has filed an application that— (A)was filed not later than 18 months after the effective filing date of the application or patent deemed to interfere with the subsequent application or patent; and (B)did not, within 1 year of the earliest effective filing date of the application, contain a claim that is the same or substantially the same as the invention claimed in the earlier filed application; (3)

Determination by Patent Trial and Appeal Board

In any proceeding under this subsection, the Patent Trial and Appeal Board— (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. (4)

Derivative proceeding

The Board may defer action on a request to initiate a derivation proceeding until 3 months after the date on which the Director issues a patent to the applicant that filed the earlier application. (5)

Effect of final decision

The final decision of the Patent Trials and Appeal Board, 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 judged 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)

Patent Trial and Appeal Board

(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 each place it appears and inserting Patent Trial and Appeal Board. (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 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.

4.

Inventor’s oath or declaration

(a)

Inventor’s oath or declaration

(1)

In general

Section 115 is amended to read as follows:

115.

Inventor’s oath or declaration

(a)

Naming the inventor; inventor’s oath or declaration

An application for patent that is filed under section 111(a), that commences the national stage under section 363, or that is filed by an inventor for an invention for which an application has previously been filed under this title by that inventor shall include, or be amended to include, the name of the inventor of any claimed invention in the application. Except as otherwise provided in this section, an individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application. (b)

Required statements

An oath or declaration under subsection (a) shall contain statements that— (1)the application was made or was authorized to be made by the affiant or declarant; and (2)such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application. (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). (d)

Substitute statement

(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. (2)

Permitted circumstances

A substitute statement under paragraph (1) shall be permitted with respect to any individual who, at the time the substitute statement is filed— (A)is deceased; (B)is under legal incapacity; (C)is under an obligation to assign the invention, but has refused to make the oath or declaration required under subsection (a); or (D)cannot be found or reached after diligent effort. (3)

Contents

A substitute statement under this subsection shall— (A)identify the individual with respect to whom the statement applies; (B)set forth the circumstances representing the permitted basis for the filing of the substitute statement in lieu of the oath or declaration under subsection (a); and (C)contain any additional information, including any showing, required by the Director. (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. (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). (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— (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; (2)a substitute statement meeting the requirements of subsection (d) was filed in the earlier filed application with respect to the individual; or (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. (h)

Supplemental and corrected statements; filing additional statements

(1)

In general

A statement made under this section may be withdrawn, replaced, or otherwise corrected 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. (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, no supplemental oath or declaration or further substitute statement shall thereafter be required in connection with the application for patent or any patent issuing thereon. (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).

. (2)

Relationship to divisional applications

Section 121 is amended by striking If a 3 divisional application and all that follows through inventor.. (3)

Conforming amendment

The item relating to section 115 in the table of sections for chapter 10 is amended to read as follows: 115. Inventor's oath or declaration.. (b)

Filing by other than inventor

Section 118 is amended to read as follows:

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.

. (c)

Specification

Section 112 is amended— (1)in the first paragraph by striking The specification and inserting (a) In general.—The specification; (2)in the second paragraph— (A)by striking The specifications and inserting (b) Conclusion.—The specifications; 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.

5.

Remedies for infringement and affirmative defenses thereto

(a)

Damages

Section 284 is amended by— (1)in the first paragraph— (A)by striking Upon and inserting (a) Award of damages.—(1) Upon; and (B)by adding at the end the following: (2)In determining a reasonable royalty consideration shall be given to— (A)the economic value that should be attributed to the novel and non-obvious feature or features of the invention, as distinguished from the economic value attributable to other features, improvements added by the infringer, and the business risks the infringer undertook in commercialization; (B)the terms of non-exclusive marketplace licensing of the invention; and (C)other relevant factors in applicable law. ; (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 3 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). (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)the infringer, having received adequate written notice from the patentee, after a reasonable opportunity to investigate, thereafter performed 1 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)

Written notice

For purposes of paragraph (2), written notice shall be adequate only if such notice— (A)alleges acts of infringement in a manner sufficient to give the infringer an objectively reasonable apprehension of suit on such patent, and (B)identifies 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. (4)

Limitations on willfulness

(A)

In general

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)

Informed good faith belief

For purposes of this paragraph, an informed good faith belief may be established by— (i)reasonable reliance on advice of counsel; (ii)evidence that the infringer sought to modify its conduct to avoid infringement once it had discovered the patent; or (iii)other evidence a court may find sufficient to establish such good faith belief. (C)

Evidence

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). (5)

Limitation on pleading

Before the date on which a determination has been made that the patent in suit is not invalid, is enforceable, and has been infringed by the infringer, a patentee may not plead, and a court may not determine, that an infringer has willfully infringed the patent. The court’s determination of an infringer’s willfulness shall be made without a jury. ; and (3)in the third paragraph, by striking The court and inserting (c) Expert testimony.—The court. (b)

Attorney's fees

Section 285 is amended to read: (a)The court shall award, to a prevailing party, fees and other expenses incurred by that party in connection with that proceeding, unless the court finds that the position of the nonprevailing party or parties was substantially justified or that special circumstances make an award unjust. . (c)

Unenforceability

Section 282 of title 35, United States Code, is amended— (1)by inserting (a) In general.— before A patent shall be presumed valid.; and (2)by adding at the end the following: (b)

Unenforceability

(1)

Permitted grounds for unenforceability

A court may find that a patent is unenforceable only if the patent owner presents clear and convincing evidence that, with respect to the patent at issue the patentee, or a patentee’s agent, or privy before issuance of the patent— (A)failed to disclose material information, or submitted false material information or statements; and (B)did so with an intent to mislead or deceive the United States Patent and Trademark Office. (2)

Limitations on unenforceability

A court shall not find that a patent in unenforceable under paragraph (1) if— (A)the patentee, agent, or privy had an informed good faith belief that the specific information that was not disclosed was not material; (B)the patentee had no actual or constructive knowledge of the misconduct of an agent or privy, exercised due care in selecting and supervising such agent or privy, and reasonably relied on counsel in obtaining the patent; (C)establishes good faith by other evidence a court may find sufficient; or (D)the court has not determined 1 or more claims in the patent at issue in the action to be invalid. (3)

Limitation on pleading

Before the date on which a determination has been made that the patent in suit is not invalid in whole and has been infringed by the infringer, a defendant may not plead, and a court may not determine, that the patent in question is unenforceable. . (d)

Defense to infringement based on earlier inventor

Section 273 of title 35, United States Code, is amended— (1)in subsection (a)— (A)in paragraph (1)— (i)by striking of a method; and (ii)by striking review period; and inserting review period; and; (B)in paragraph (2)(B), by striking the semicolon at the end and inserting a period; and (C)by striking paragraphs (3) and (4); (2)in subsection (b)— (A)in paragraph (1)— (i)by striking for a method; and (ii)by striking at least 1 year before the effective filing date of such patent, and and all that follows through the period and inserting and commercially used, or made substantial preparations for commercial use of, the subject matter before the effective filing date of the claimed invention.; (B)in paragraph (2)— (i)by striking The sale or other disposition of a useful end result produced by a patented method and inserting The sale or other disposition of subject matter that qualifies for the defense set forth in this section; and (ii)by striking a defense under this section with respect to that useful end result and inserting such defense; and (C)in paragraph (3)— (i)by striking subparagraph (A); and (ii)by redesignating subparagraphs (B) and (C) as subparagraphs (A) and (B), respectively; (3)in paragraph (7), by striking of the patent and inserting of the claimed invention; and (4)by amending the heading to read as follows:

273.

Special defenses to and exemptions from infringement

. (e)

Table of sections

The item related to section 273 in the table of sections for chapter 28 is amended to read as follows: Sec. 273. Special defenses to and exemptions from infringement. . (f)

Effect of extraterritorial infringement

Section 271(f) is repealed.

6.

Post-grant procedures

(a)

Post-grant opposition procedures

(1)

In general

Chapter 31 is amended to read as follows: 31

Post-grant review proceedings

Sec. 311. Petition for post-grant review. 312. Timing of petition. 313. Submission of petition. 314. Prohibited filings. 315. Conduct of post-grant review proceedings. 316. Proof and evidentiary standards. 317. Showing of sufficient grounds; institution of post-grant review proceedings. 318. Amendment of the patent. 319. Decision of the Patent Trial and Appeal Board. 320. Effect of decision. 321. Relationship to other pending proceedings. 322. Effect of decisions rendered in civil action on future post-grant review proceedings. 323. Effect of final decision on future proceedings.

311.

Petition for post-grant review

Any person who is not the patent owner may file a petition for cancellation seeking to institute a post-grant review proceeding before the Patent Trial and Appeal Board to cancel as unpatentable any claim of a patent on any ground which might be raised under section 282(a) (2) and (3) (relating to invalidity of the patent or any claim).

312.

Timing of petition

A post-grant review proceeding may be instituted only if the petition for cancellation is filed by a cancellation petitioner— (1)not later than 12 months after the date the patent was issued or reissued; or (2)who establishes a substantial reason to believe that the continued existence of the challenged claim causes or is likely to cause the petitioner significant economic harm.

313.

Submission of petition

The petition for cancellation shall— (1)be accompanied by payment of the post-grant review fee set forth in subsection 41(a); (2)identify the cancellation petitioner; and (3)set forth in writing the basis for the cancellation, identifying each claim challenged and providing such information as the Director may require by regulation.

314.

Prohibited filings

No post-grant review proceeding shall be instituted— (1)under subsection (a) of section 312 if the petition for cancellation identifies the same cancellation petitioner and the same patent as a previous petition for cancellation filed under subsection (a) of section 312; or (2)under subsection (b) of section 312 if the petition for cancellation identifies the same cancellation petitioner and the same patent as a previous petition for cancellation filed under subsection (b) of section 312.

315.

Conduct of post-grant review proceedings

(a)

In general

The Director shall— (1)establish regulations, in accordance with section 2(b)(2), to govern post-grant review proceedings and their relationship to other proceedings; (2)prescribe regulations setting forth the standards for showings of substantial reason to believe and significant economic harm under section 312(b) and sufficient grounds in section 317; and (3)prescribe regulations setting forth procedures for discovery of relevant evidence, including that such discovery shall be limited to evidence directly related to factual assertions advanced by either party in the proceeding, and the procedures for obtaining such evidence shall be consistent with the purpose and nature of the proceeding. (b)

Post-grant regulations

Regulations under subsection (a)(1)— (1)shall be designed to result in a final decision on a petition for cancellation within 12 months of the institution of the post-grant review proceeding; (2)shall provide for discovery upon order of the Board; (3)may prescribe sanctions for abuse of discovery or abuse of process to the extent authorized in United States district courts by rule 11 and rule 37 of the Federal Rules of Civil Procedure; (4)may provide for protective orders governing the exchange and submission of confidential information; and (5)shall ensure that any information submitted by the patent owner in support of any amendment entered under section 318 shall be made available to the public as part of the prosecution history of the patent. (c)

considerations

In prescribing regulations under this section, the Director shall take into consideration the effect on the economy, the integrity of the patent system, and the efficient administration of the Office.

316.

Proof and evidentiary standards

(a)

In general

The presumption of validity set forth in section 282 shall not apply in a challenge to any patent claim under this chapter. (b)

Burden of proof

The party advancing a proposition under this chapter shall have the burden of proving that proposition.

317.

Showing of sufficient grounds; institution of post-grant review proceedings

Within such time as may be prescribed by regulation, the cancellation petitioner shall file any information known to it that supports its allegation of the unpatentability of any challenged claim. The Patent Trial and Appeal Board shall not institute a post-grant review proceeding unless it determines that the information presented provides sufficient grounds to proceed. If the Patent Trial and Appeal Board does not institute a post-grant review proceeding under this section then the cancellation petitioner may not assert the same grounds against the same claims in any other proceeding within the Office.

318.

Amendment of the patent

(a)

In general

In response to a challenge in a petition for cancellation, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways: (1)Cancel any challenged patent claim. (2)For each challenged claim, propose a substitute claim that includes all the limitations of the challenged claim. (3)Amend the patent drawings or otherwise amend the patent other than the claims. (b)

Additional motions

Additional motions to amend may be permitted only for good cause shown. (c)

Scope of claims

No amendment shall enlarge the scope of the claims of the patent. No amendment shall introduce new matter.

319.

Decision of the Patent Trial and Appeal Board

If the post-grant review proceeding is instituted under section 317 and not dismissed under section 320 or subsection (b) of section 323, the Patent Trial and Appeal Board shall issue a final decision with respect to patentability of any patent claim challenged and any new claim added under this section 318.

320.

Effect of decision

(a)

In general

Where a final decision of the Patent Trial and Appeal Board is issued under section 319 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. (b)

New claims

Any new claim held to be patentable and incorporated into a patent in a post-grant review proceeding shall have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by such new claim, or who made substantial preparations therefore, prior to issuance of a certificate under the provisions of subsection (a) of this section.

321.

Relationship to other pending proceedings

Notwithstanding subsection 135(a), sections 251 and 252, and chapter 30, the Director may determine the manner in which any reexamination proceeding, reissue proceeding, interference proceeding, or post-grant review proceeding that is pending during a post-grant review proceeding, may proceed, including providing for stay, transfer, consolidation, or termination of such proceedings.

322.

Effect of decisions rendered in civil action on future post-grant review proceedings

If a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28 establishing that the party has not sustained its burden of proving the invalidity of any patent claim— (1)that party to the civil action and the privies of that party may not thereafter request a post-grant review proceeding on such patent claim on the basis of any grounds, under the provisions of section 311, which that party or the privies of that party raised or could have raised in such civil action; and (2)the Office may not thereafter maintain a post-grant review proceeding previously requested by that party or the privies of that party on the basis of such grounds.

323.

Effect of final decision on future proceedings

(a)

In general

If a final decision under section 319 is favorable to the patentability of any original or new claim of the patent, the cancellation petitioner may not thereafter, based on any ground which the cancellation petitioner raised during the post-grant review proceeding— (1)request or pursue a reexamination of such claims; (2)request or pursue an interference of such claims; (3)request or pursue a post-grant review proceeding of such claims; or (4)assert the invalidity of any such claims, in any civil action arising in whole or in part under section 1338 of title 28. (b)

Extension of prohibition

If the final decision is the result of a petition for cancellation under section 312(b), the prohibition under this section shall extend to any ground which the cancellation petitioner raised or could have raised during the post-grant review proceeding.

. (b)

Technical and conforming amendment

The table of chapters is amended to read as follows: 31. Post-grant review proceedings. .

7.

Submissions by third parties 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)

Reexamination

Subsection 303(a) is amended to read as follows: (a)Within 3 months following the filing of a request for reexamination under the provisions of section 302, by the owner of the patent, the Director shall determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. On his own initiative, and at any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him, cited under the provisions of section 301, or cited by any person other than the owner of the patent under the provisions of section 302 or section 311. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office. . (c)

Preissuance 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)6 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. . (d)

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.

8.

Venue and jurisdiction

(a)

Venue for patent cases

Section 1400 of title 28, United States Code, is amended by striking subsection (b) and inserting the following: (b)Any civil action arising under any Act of Congress relating to patents, other than an action for declaratory judgment or an action seeking review of a decision of the Patent Trial and Appeal Board under chapter 13 of title 35, may be brought only— (1)in the judicial district where either party resides; or (2)in the judicial district where the defendant has committed acts of infringement and has a regular and established place of business. (c)Notwithstanding section 1391(c) of this title, for purposes of venue under subsection (b), a corporation shall be deemed to reside in the judicial district in which the corporation has its principal place of business or in the State in which the corporation is incorporated. . (b)

Interlocutory appeals

Subsection (c)(2) of section 1292 of title 28, United States Code, is amended by adding at the end: (3)of an appeal from an interlocutory order or decree determining construction of claims in a civil action for patent infringement under section 271 of title 35. (A)Application for an appeal hereunder shall be made to the court within 10 days after entry of the order or decree. (B)Proceedings in the district court shall be stayed during pendency of the appeal. .

9.

Other statutory and conforming amendments

(a)

Fees

Section 41(a) of title 35, United States Code is amended— (1)by redesignating paragraphs (8), (9), (10), (11), (12), (13), (14), and (15) as paragraphs (10), (11), (12), (13), (14), (15), (16), and (17) respectively; and (2)by inserting after paragraph (7) the following: (8)On filing a petition for cancellation under subsection (a) of section 312, a fee established by the Director to recover ½ the estimated average cost to the Office of a post-grant review proceeding. (9)On filing a petition for cancellation under subsection (b) of section 312, a fee established by the Director to recover the estimated average cost to the Office of a post-grant review proceeding. . (b)

Definitions

Section 100 (as amended by this Act) is further amended— (1)in subsection (e), by striking or inter partes reexamination under section 311; (2)by inserting the following: (k)The term cancellation petitioner means the real party in interest requesting cancellation of any claim of a patent under chapter 31 of this title and the privies of the real party in interest. . (c)

Patent Trial and Appeal Board

(1)Section 6 is amended to read as follows:

6.

Patent Trial and Appeal Board

(a)

Establishment and composition

There shall be in the Office a Patent Trial and Appeal Board. The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Patent Trial and Appeal Board. The administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Director. Any reference in any Federal law, Executive order, rule, regulation, or delegation of authority, or any document of or pertaining to the Board of Patent Appeals and Interferences is deemed to refer to the Patent Trial and Appeal Board. (b)

Duties

The Patent Trial and Appeal Board shall, on written appeal of an applicant, review adverse decisions of examiners upon application for patents; shall, on written appeal of a patent owner, review adverse decisions of examiners upon patents in reexamination proceedings under chapter 30; shall determine priority and patentability of invention in inventor’s rights contests declared under subsection 135(a); and shall preside over post-grant review proceedings under chapter 31. Each appeal, inventor’s rights contest, 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.

. (2)Title 35, United States Code, is amended by striking Board of Patent Appeals each place it appears and inserting in its place Patent Trial and Appeal Board. (d)

Authority of panels of administrative patent judges

Section 6 (as amended by this section) is further amended by adding at the end the following: (c)

Additional responsibilities of administrative patent judges

Panels of administrative patent judges, once assigned by the Director, shall have the responsibilities under chapter 32 in connection with post-grant opposition proceedings. . (e)

Rulemaking authority

Section 3(a) is amended by adding at the end the following: (5)

Rulemaking authority

In addition to the authority conferred by other provisions of this title, the Director may promulgate such rules, regulations, and orders as the Director determines appropriate to carry out the provisions of this title or any other law applicable to the United States Patent and Trademark Office or that the Director determines necessary to govern the operation and organization of the Office. . (f)

Reexamination

(1)Section 304 is amended by striking the final 3 sentences. (2)Section 305 is amended by striking, in the first sentence, “and reply” and also striking have and inserting has in its place. (3)Section 315(c) is amended by striking or could have raised. (4)Section 4607 of the Intellectual Property and Communications Omnibus Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law 106–113, is repealed. (g)

Appeal to the court of appeals for the Federal circuit

(1)

In general

Section 141 is amended to read as follows:

141.

Appeal to the Court of Appeals for the Federal Circuit

(a)

Examinations

An applicant dissatisfied with the final decision in an appeal to the Patent Trial and Appeal Board under section 134 may appeal the decision to the United States Court of Appeals for the Federal Circuit. By filing such an appeal, the applicant waives his right to proceed under section 145. (b)

Reexaminations

A patent owner in any reexamination proceeding who is dissatisfied with the final decision in an appeal to the Patent Trial and Appeal Board under section 134 may appeal the decision to the United States Court of Appeals for the Federal Circuit. (c)

Inventor’s rights contest

A party to an inventor’s rights contest dissatisfied with the final decision of the Patent Trial and Appeal Board on the interference may appeal the decision to the United States Court of Appeals for the Federal Circuit. (d)

Post-grant review

A party to a post-grant review proceeding dissatisfied with the final decision of the Patent Trial and Appeal Board under section 319 may appeal the decision only to the United States Court of Appeals for the Federal Circuit. Any decision of the Patent Trial and Appeal Board under subsection 312(b) or section 317 shall be final and nonappealable. A decision by the Board under section 320 not to issue a final decision under subsection 319 as a result of settlement shall also be final and nonappealable.

. (2)

Certain appeals

Subsection 1295(a)(4)(A) of title 28, United States Code, is amended to read as follows: (A)the Patent Trial and Appeal Board of the United States Patent and Trademark Office with respect to patent applications, reexaminations, and inventor’s rights contests, at the instance of an applicant for a patent or any party to a patent interference, reexamination, 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; .

10.

Effective date

Except as otherwise provided in this Act, the provisions of this Act shall take effect 12 months after the date of enactment of this Act and shall apply to any patent issued on or after that effective date.