[Congressional Bills 110th Congress]
[From the U.S. Government Publishing Office]
[S. 1145 Introduced in Senate (IS)]
110th CONGRESS
1st Session
S. 1145
To amend title 35, United States Code, to provide for patent reform.
_______________________________________________________________________
IN THE SENATE OF THE UNITED STATES
April 18, 2007
Mr. Leahy (for himself, Mr. Hatch, Mr. Schumer, Mr. Cornyn, and Mr.
Whitehouse) 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.
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 2007''.
(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. Right of the inventor to obtain damages.
Sec. 6. Post-grant procedures and other quality enhancements.
Sec. 7. Definitions; patent trial and appeal board.
Sec. 8. Study and report on reexamination proceedings.
Sec. 9. Submissions by third parties and other quality enhancements.
Sec. 10. Venue and jurisdiction.
Sec. 11. Regulatory authority.
Sec. 12. Technical amendments.
Sec. 13. Effective date; rule of construction.
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repealed, that amendment or repeal shall be considered to be made to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 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:
``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 in public use or on sale--
``(A) more than one year before the effective
filing date of the claimed invention; or
``(B) one year or less before the effective filing
date of the claimed invention, other than through
disclosures made by the inventor or a joint inventor or
by others who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint
inventor; or
``(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) Exceptions.--
``(1) Prior inventor disclosure exception.--Subject matter
that would otherwise qualify as prior art under subparagraph
(B) of subsection (a)(1) shall not be prior art to a claimed
invention under that subparagraph if the subject matter had,
before the applicable date under such subparagraph (B), been
publicly disclosed by the inventor or a joint inventor or
others who obtained the subject matter disclosed directly or
indirectly from the inventor, joint inventor, or applicant.
``(2) Derivation and common assignment exceptions.--Subject
matter that would otherwise qualify as prior art only under
subsection (a)(2), after taking into account the exception
under paragraph (1), shall not be prior art to a claimed
invention if--
``(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,
not later than the effective filing date of the claimed
invention, were owned by the same person or subject to
an obligation of assignment to the same person.
``(3) Joint research agreement exception.--
``(A) In general.--Subject matter and a claimed
invention shall be deemed to have been owned by the
same person or subject to an obligation of assignment
to the same person in applying the provisions of
paragraph (2) if--
``(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 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) 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.
``(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 to read as follows:
``Sec. 103. Conditions for patentability; nonobvious subject matter
``A patent for a claimed invention may not be obtained though the
claimed invention is not identically disclosed as set forth in section
102, if the differences between the claimed invention and the prior art
are such that the claimed invention as a whole would have been obvious
before the effective filing date of the claimed invention to a person
having ordinary skill in the art to which the claimed invention
pertains. Patentability shall not be negated by the manner in which the
invention was made.''.
(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 that 2-year
period''; and
(ii) by striking ``the statutory'' and
inserting ``that 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 derivation proceeding.--An applicant
may request initiation of a derivation proceeding to determine
the right of the applicant to a patent by filing a request
which sets forth with particularity the basis for finding that
an earlier applicant derived the claimed invention from the
applicant requesting the proceeding and, without authorization,
filed an application claiming such invention. Any such request
may only be made within 12 months after the date of first
publication of an application containing a claim that is the
same or is substantially the same as the claimed invention,
must be made under oath, and must be supported by substantial
evidence. Whenever the Director determines that patents or
applications for patent naming different individuals as the
inventor interfere with one another because of a dispute over
the right to patent under section 101, the Director shall
institute a derivation proceeding for the purpose of
determining which applicant is entitled to a patent.
``(2) Requirements.--A proceeding under this subsection may
not be commenced unless the party requesting the proceeding has
filed an application that was filed not later than 18 months
after the effective filing date of the application or patent
deemed to interfere with the subsequent application or patent.
``(3) Determination by patent trial and appeal board.--In
any proceeding under this subsection, the Patent Trial and
Appeal Board--
``(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) Derivation proceeding.--The Board may defer action on
a request to initiate a derivation proceeding until 3 months
after the date on which the Director issues a patent to the
applicant that filed the earlier application.
``(5) Effect of final decision.--The final decision of the
Patent Trial and Appeal Board, if adverse to the claim of an
applicant, shall constitute the final refusal by the Patent and
Trademark Office on the claims involved. The Director may issue
a patent to an applicant who is determined by the Patent Trial
and Appeal Board to have the right to patent. The final
decision of the Board, if adverse to a patentee, shall, if no
appeal or other review of the decision has been or can be taken
or had, constitute cancellation of the claims involved in the
patent, and notice of such cancellation shall be endorsed on
copies of the patent distributed after such cancellation by the
Patent and Trademark Office.''.
(j) Elimination of References to Interferences.--(1) 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 ``Patent Trial and Appeal Board''.
(2) Sections 141, 146, and 154 are each amended--
(A) by striking ``an interference'' each place it appears
and inserting ``a derivation proceeding''; and
(B) by striking ``interference'' each additional place it
appears and inserting ``derivation proceeding''.
(3) The section heading for section 134 is amended to read as
follows:
``Sec. 134. Appeal to the Patent Trial and Appeal Board''.
(4) The section heading for section 135 is amended to read as
follows:
``Sec. 135. Derivation proceedings''.
(5) The section heading for section 146 is amended to read as
follows:
``Sec. 146. Civil action in case of derivation proceeding''.
(6) Section 154(b)(1)(C) is amended by striking ``interferences''
and inserting ``derivation proceedings''.
(7) The item relating to section 6 in the table of sections for
chapter 1 is amended to read as follows:
``6. Patent Trial and Appeal Board.''.
(8) 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 Patent Trial and Appeal Board.
``135. Derivation proceedings.''.
(9) 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 derivation proceeding.''.
(10) 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, derivation proceedings, and
post-grant review proceedings, at the instance of an
applicant for a patent or any party to a patent
interference (commenced before the effective date of
the Patent Reform Act of 2007), derivation proceeding,
or post-grant review proceeding, and any such appeal
shall waive any right of such applicant or party to
proceed under section 145 or 146 of title 35;''.
SEC. 4. INVENTOR'S OATH OR DECLARATION.
(a) Inventor's Oath or Declaration.--
(1) In general.--Section 115 is amended to read as follows:
``Sec. 115. Inventor's oath or declaration
``(a) Naming the Inventor; Inventor's Oath or Declaration.--An
application for patent that is filed under section 111(a), that
commences the national stage under section 363, or that is filed by an
inventor for an invention for which an application has previously been
filed under this title by that inventor shall include, or be amended to
include, the name of the inventor of any claimed invention in the
application. Except as otherwise provided in this section, an
individual who is the inventor or a joint inventor of a claimed
invention in an application for patent shall execute an oath or
declaration in connection with the application.
``(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) is permitted with respect to any individual
who--
``(A) is unable to file the oath or declaration
under subsection (a) because the individual--
``(i) is deceased;
``(ii) is under legal incapacity; or
``(iii) cannot be found or reached after
diligent effort; or
``(B) is under an obligation to assign the
invention but has refused to make the oath or
declaration required under subsection (a).
``(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.--Any person making a statement required
under this section may withdraw, replace, or otherwise correct
the statement at any time. If a change is made in the naming of
the inventor requiring the filing of 1 or more additional
statements under this section, the Director shall establish
regulations under which such additional statements may be
filed.
``(2) Supplemental statements not required.--If an
individual has executed an oath or declaration under subsection
(a) or an assignment meeting the requirements of subsection (e)
with respect to an application for patent, the Director may not
thereafter require that individual to make any additional oath,
declaration, or other statement equivalent to those required by
this section in connection with the application for patent or
any patent issuing thereon.
``(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 divisional application'' and all
that follows through ``inventor.''.
(3) Requirements for nonprovisional applications.--Section
111(a) is amended--
(A) in paragraph (2)(C), by striking ``by the
applicant'' and inserting ``or declaration'';
(B) in the heading for paragraph (3), by striking
``and oath''; and
(C) by striking ``and oath'' each place it appears.
(4) 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:
``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.''.
(c) 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 ``of carrying out his invention''
and inserting ``or joint inventor of carrying out the
invention''; and
(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''.
SEC. 5. RIGHT OF THE INVENTOR TO OBTAIN DAMAGES.
(a) Damages.--Section 284 is amended--
(1) in the first paragraph--
(A) by striking ``Upon'' and inserting ``(a) Award
of Damages.--
``(1) In general.--Upon'';
(B) by aligning the remaining text accordingly; and
(C) by adding at the end the following:
``(2) Relationship of damages to contributions over prior
art.--The court shall conduct an analysis to ensure that a
reasonable royalty under paragraph (1) is applied only to that
economic value properly attributable to the patent's specific
contribution over the prior art. In a reasonable royalty
analysis, the court shall identify all factors relevant to the
determination of a reasonable royalty under this subsection,
and the court or the jury, as the case may be, shall consider
only those factors in making the determination. The court shall
exclude from the analysis the economic value properly
attributable to the prior art, and other features or
improvements, whether or not themselves patented, that
contribute economic value to the infringing product or process.
``(3) Entire market value.--Unless the claimant shows that
the patent's specific contribution over the prior art is the
predominant basis for market demand for an infringing product
or process, damages may not be based upon the entire market
value of that infringing product or process.
``(4) Other factors.--In determining damages, the court may
also consider, or direct the jury to consider, the terms of any
nonexclusive marketplace licensing of the invention, where
appropriate, as well as any other relevant factors under
applicable law.'';
(2) by amending the second undesignated 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).
``(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 may not find
that an infringer has willfully infringed a patent under
paragraph (2) for any period of time during which the infringer
had an informed good faith belief that the patent was invalid
or unenforceable, or would not be infringed by the conduct
later shown to constitute infringement of the patent.
``(B) An informed good faith belief within the meaning of
subparagraph (A) 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) The decision of the infringer not to present evidence
of advice of counsel is not relevant to a determination of
willful infringement under paragraph (2).
``(4) Limitation on pleading.--Before the date on which a
court determines that the patent in suit is not invalid, is
enforceable, and has been infringed by the infringer, a
patentee may not plead and a court may not determine that an
infringer has willfully infringed a patent. The court's
determination of an infringer's willfulness shall be made
without a jury.''; and
(3) in the third undesignated paragraph, by striking ``The
court'' and inserting ``(c) Expert Testimony.--The court''.
(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 relating 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) Effective Date.--The amendments made by this section shall
apply to any civil action commenced on or after the date of enactment
of this Act.
SEC. 6. POST-GRANT PROCEDURES AND OTHER QUALITY ENHANCEMENTS.
(a) Reexamination.--Section 303(a) is amended to read as follows:
``(a) Within 3 months after the owner of a patent files a request
for reexamination under section 302, the Director shall determine
whether a substantial new question of patentability affecting any claim
of the patent concerned is raised by the request, with or without
consideration of other patents or printed publications. On the
Director's own initiative, and at any time, the Director may determine
whether a substantial new question of patentability is raised by
patents and publications discovered by the Director, is cited under
section 301, or is cited by any person other than the owner of the
patent under section 302 or section 311. The existence of a substantial
new question of patentability is not precluded by the fact that a
patent or printed publication was previously cited by or to the Office
or considered by the Office.''.
(b) Reexamination.--Section 315(c) is amended by striking ``or
could have raised''.
(c) Reexamination Prohibited After District Court Decision.--
Section 317(b) is amended--
(1) in the subsection heading, by striking ``Final
Decision'' and inserting ``District Court Decision''; and
(2) by striking ``Once a final decision has been entered''
and inserting ``Once the judgment of the district court has
been entered''.
(d) Effective Dates.--Notwithstanding any other provision of law,
sections 311 through 318 of title 35, United States Code, as amended by
this Act, shall apply to any patent that issues before, on, or after
the date of enactment of this Act from an original application filed on
any date.
(e) Post-Grant Opposition Procedures.--
(1) In general.--Part III is amended by adding at the end
the following new chapter:
``CHAPTER 32--POST-GRANT REVIEW PROCEDURES
``Sec.
``321. Petition for post-grant review.
``322. Timing and bases of petition.
``323. Requirements of petition.
``324. Prohibited filings.
``325. Submission of additional information; showing of sufficient
grounds.
``326. Conduct of post-grant review proceedings.
``327. Patent owner response.
``328. Proof and evidentiary standards.
``329. Amendment of the patent.
``330. Decision of the Board.
``331. Effect of decision.
``332. Relationship to other pending proceedings.
``333. Effect of decisions rendered in civil action on future post-
grant review proceedings.
``334. Effect of final decision on future proceedings.
``335. Appeal.
``Sec. 321. Petition for post-grant review
``Subject to sections 322, 324, 332, and 333, a person who is not
the patent owner may file with the Office a petition for cancellation
seeking to institute a post-grant review proceeding to cancel as
unpatentable any claim of a patent on any ground that could be raised
under paragraph (2) or (3) of section 282(b) (relating to invalidity of
the patent or any claim). The Director shall establish, by regulation,
fees to be paid by the person requesting the proceeding, in such
amounts as the Director determines to be reasonable.
``Sec. 322. Timing and bases of petition
``A post-grant proceeding may be instituted under this chapter
pursuant to a cancellation petition filed under section 321 only if--
``(1) the petition is filed not later than 12 months after
the grant of the patent or issuance of a reissue patent, as the
case may be;
``(2)(A) the petitioner establishes a substantial reason to
believe that the continued existence of the challenged claim in
the petition causes or is likely to cause the petitioner
significant economic harm; or
``(B) the petitioner has received notice from the patent
holder alleging infringement by the petitioner of the patent;
or
``(3) the patent owner consents in writing to the
proceeding.
``Sec. 323. Requirements of petition
``A cancellation petition filed under section 321 may be considered
only if--
``(1) the petition is accompanied by payment of the fee
established by the Director under section 321;
``(2) the petition identifies the cancellation petitioner;
and
``(3) the petition sets forth in writing the basis for the
cancellation, identifying each claim challenged and providing
such information as the Director may require by regulation, and
includes copies of patents and printed publications that the
cancellation petitioner relies upon in support of the petition;
and
``(4) the petitioner provides copies of those documents to
the patent owner or, if applicable, the designated
representative of the patent owner.
``Sec. 324. Prohibited filings
``A post-grant review proceeding may not be instituted under
paragraph (1), (2), or (3) of section 322 if the petition for
cancellation requesting the proceeding identifies the same cancellation
petitioner and the same patent as a previous petition for cancellation
filed under the same paragraph of section 322.
``Sec. 325. Submission of additional information; showing of sufficient
grounds
``The cancellation petitioner shall file such additional
information with respect to the petition as the Director may require.
The Director may not authorize a post-grant review proceeding to
commence unless the Director determines that the information presented
provides sufficient grounds to proceed.
``Sec. 326. Conduct of post-grant review proceedings
``(a) In General.--The Director shall--
``(1) prescribe regulations, in accordance with section
2(b)(2), establishing and governing post-grant review
proceedings under this chapter and their relationship to other
proceedings under this title;
``(2) prescribe regulations setting forth the standards for
showings of substantial reason to believe and significant
economic harm under section 322(2) and sufficient grounds under
section 325;
``(3) prescribe regulations establishing procedures for the
submission of supplemental information after the petition for
cancellation is filed; and
``(4) 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 require that the final determination in a post-
grant proceeding issue not later than one year after the date
on which the post-grant review proceeding is instituted under
this chapter, except that, for good cause shown, the Director
may extend the 1-year period by not more than six months;
``(2) shall provide for discovery upon order of the
Director;
``(3) shall prescribe sanctions for abuse of discovery,
abuse of process, or any other improper use of the proceeding,
such as to harass or to cause unnecessary delay or unnecessary
increase in the cost of the proceeding;
``(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
328 is 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 consider the effect on the economy, the
integrity of the patent system, and the efficient administration of the
Office.
``(d) Conduct of Proceeding.--The Patent Trial and Appeal Board
shall, in accordance with section 6(b), conduct each post-grant review
proceeding authorized by the Director.
``Sec. 327. Patent owner response
``After a post-grant proceeding under this chapter has been
instituted with respect to a patent, the patent owner shall have the
right to file, within a time period set by the Director, a response to
the cancellation petition. The patent owner shall file with the
response, through affidavits or declarations, any additional factual
evidence and expert opinions on which the patent owner relies in
support of the response.
``Sec. 328. 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 by a
preponderance of the evidence.
``Sec. 329. 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.
``(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.--An amendment under this section may not
enlarge the scope of the claims of the patent or introduce new matter.
``Sec. 330. Decision of the Board
``If the post-grant review proceeding is instituted and not
dismissed under this chapter, the Patent Trial and Appeal Board shall
issue a final written decision with respect to the patentability of any
patent claim challenged and any new claim added under section 329.
``Sec. 331. Effect of decision
``(a) In General.--If the Patent Trial and Appeal Board issues a
final decision under section 330 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
subsection (a) of this section.
``Sec. 332. 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
(commenced before the effective date of the Patent Reform Act of 2007),
derivation proceeding, or post-grant review proceeding, that is pending
during a post-grant review proceeding, may proceed, including providing
for stay, transfer, consolidation, or termination of any such
proceeding.
``Sec. 333. 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 that patent claim on the basis of any grounds,
under the provisions of section 311, which that party or the
privies of that party raised or had actual knowledge of; and
``(2) the Director may not thereafter maintain a post-grant
review proceeding previously requested by that party or the
privies of that party on the basis of such grounds.
``Sec. 334. Effect of final decision on future proceedings
``(a) In General.--If a final decision under section 330 is
favorable to the patentability of any original or new claim of the
patent challenged by the cancellation petitioner, 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 claim under
chapter 31;
``(2) request or pursue a derivation proceeding with
respect to such claim;
``(3) request or pursue a post-grant review proceeding
under this chapter with respect to such claim; or
``(4) assert the invalidity of any such claim, 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 filed on the basis of paragraph
(2) of section 322, the prohibition under this section shall extend to
any ground which the cancellation petitioner raised during the post-
grant review proceeding.
``Sec. 335. Appeal
``A party dissatisfied with the final determination of the Patent
Trial and Appeal Board in a post-grant proceeding under this chapter
may appeal the determination under sections 141 through 144. Any party
to the post-grant proceeding shall have the right to be a party to the
appeal.''.
(f) Conforming Amendment.--The table of chapters for part III is
amended by adding at the end the following:
``32. Post-Grant Review Proceedings......................... 321''.
(g) Regulations and Effective Date.--
(1) Regulations.--The Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent
and Trademark Office (in this subsection referred to as the
``Director'') shall, not later than the date that is 1 year
after the date of the enactment of this Act, issue regulations
to carry out chapter 32 of title 35, United States Code, as
added by subsection (e) of this section
(2) Applicability.--The amendments made by subsection (e)
shall take effect on the date that is 1 year after the date of
the enactment of this Act and shall apply to patents issued
before, on, or after that date, except that, in the case of a
patent issued before that date, a petition for cancellation
under section 321 of title 35, United States Code, may be filed
only if a circumstance described in paragraph (2), (3), or (4)
of section 322 of title 35, United States Code, applies to the
petition.
(3) Pending interferences.--The Director shall determine
the procedures under which interferences commenced before the
effective date under paragraph (2) are to proceed, including
whether any such interference is to be dismissed without
prejudice to the filing of a cancellation petition for a post-
grant opposition proceeding under chapter 32 of title 35,
United States Code, or is to proceed as if this Act had not
been enacted. The Director shall include such procedures in
regulations issued under paragraph (1).
SEC. 7. DEFINITIONS; PATENT TRIAL AND APPEAL BOARD.
(a) Definitions.--Section 100 (as amended by this Act) is further
amended--
(1) in subsection (e), by striking ``or inter partes
reexamination under section 311''; and
(2) by adding at the end 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.''.
(b) Patent Trial and Appeal Board.--Section 6 is amended to read as
follows:
``Sec. 6. Patent Trial and Appeal Board
``(a) Establishment and Composition.--There shall be in the Office
a Patent Trial and Appeal Board. The Director, the Deputy Director, the
Commissioner for Patents, the Commissioner for Trademarks, and the
administrative patent judges shall constitute the Patent Trial and
Appeal Board. The administrative patent judges shall be persons of
competent legal knowledge and scientific ability who are appointed by
the Director. Any reference in any Federal law, Executive order, rule,
regulation, or delegation of authority, or any document of or
pertaining to the Board of Patent Appeals and Interferences is deemed
to refer to the Patent Trial and Appeal Board.
``(b) Duties.--The Patent Trial and Appeal Board shall--
``(1) on written appeal of an applicant, review adverse
decisions of examiners upon application for patents;
``(2) on written appeal of a patent owner, review adverse
decisions of examiners upon patents in reexamination
proceedings under chapter 30; and
``(3) determine priority and patentability of invention in
derivation proceedings under subsection 135(a); and
``(4) conduct post-grant opposition proceedings under
chapter 32.
Each appeal and derivation proceeding shall be heard by at least 3
members of the Patent Trial and Appeal Board, who shall be designated
by the Director. Only the Patent Trial and Appeal Board may grant
rehearings. The Director shall assign each post-grant review proceeding
to a panel of 3 administrative patent judges. Once assigned, each such
panel of administrative patent judges shall have the responsibilities
under chapter 32 in connection with post-grant review proceedings.''.
SEC. 8. STUDY AND REPORT ON REEXAMINATION PROCEEDINGS.
The Under Secretary of Commerce for Intellectual Property and
Director of the Patent and Trademark Office shall, not later than 3
years after the date of the enactment of this Act--
(1) conduct a study of the effectiveness and efficiency of
the different forms of proceedings available under title 35,
United States Code, for the reexamination of patents; and
(2) submit to the Committees on the Judiciary of the House
of Representatives and the Senate a report on the results of
the study, including any of the Director's suggestions for
amending the law, and any other recommendations the Director
has with respect to patent reexamination proceedings.
SEC. 9. 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) 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.''.
SEC. 10. 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 the
following:
``(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.
Application for an appeal under paragraph (3) shall be made to the
court within 10 days after entry of the order or decree, and
proceedings in the district court under such paragraph shall be stayed
during pendency of the appeal.''.
SEC. 11. REGULATORY AUTHORITY.
Section 3(a) is amended by adding at the end the following:
``(5) Regulatory authority.--In addition to the authority
conferred by other provisions of this title, the Director may
promulgate such rules, regulations, and orders that the
Director determines 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.''.
SEC. 12. TECHNICAL AMENDMENTS.
(a) Joint Inventions.--Section 116 is amended--
(1) in the first paragraph, by striking ``When''
and inserting ``(a) Joint Inventions.--When'';
(2) in the second paragraph, by striking ``If a
joint inventor'' and inserting ``(b) Omitted
Inventor.--If a joint inventor''; and
(3) in the third paragraph, by striking
``Whenever'' and inserting ``(c) Correction of Errors
in Application.--Whenever''.
(b) Filing of Application in Foreign Country.--Section 184 is
amended--
(1) in the first paragraph, by striking ``Except when'' and
inserting ``(a) Filing in Foreign Country.--Except when'';
(2) in the second paragraph, by striking ``The term'' and
inserting ``(b) Application.--The term''; and
(3) in the third paragraph, by striking ``The scope'' and
inserting ``(c) Subsequent Modifications, Amendments, and
Supplements.--The scope''.
(c) Reissue of Defective Patents.--Section 251 is amended--
(1) in the first paragraph, by striking ``Whenever'' and
inserting ``(a) In General.--Whenever'';
(2) in the second paragraph, by striking ``The Director''
and inserting ``(b) Multiple Reissued Patents.--The Director'';
(3) in the third paragraph, by striking ``The provision''
and inserting ``(c) Applicability of This Title.--The
provisions''; and
(4) in the last paragraph, by striking ``No reissued
patent'' and inserting ``(d) Reissue Patent Enlarging Scope of
Claims.--No reissued patent''.
(d) Effect of Reissue.--Section 253 is amended--
(1) in the first paragraph, by striking ``Whenever'' and
inserting ``(a) In General.--Whenever''; and
(2) in the second paragraph, by striking ``in like manner''
and inserting ``(b) Additional Disclaimer or Dedication.--In
the manner set forth in subsection (a),''.
(e) Correction of Named Inventor.--Section 256 is amended--
(1) in the first paragraph, by striking ``Whenever'' and
inserting ``(a) Correction.--Whenever''; and
(2) in the second paragraph, by striking ``The error'' and
inserting ``(b) Patent Valid if Error Corrected.--The error''.
(f) Presumption of Validity.--Section 282 is amended--
(1) in the first undesignated paragraph, by striking ``A
patent'' and inserting ``(a) In General.--A patent'';
(2) in the second undesignated paragraph, by striking ``The
following'' and inserting ``(b) Defenses.--The following''; and
(3) in the third undesignated paragraph, by striking ``In
actions'' and inserting ``(c) Notice of Actions; Actions During
Extension of Patent Term.--In actions''.
SEC. 13. EFFECTIVE DATE; RULE OF CONSTRUCTION.
(a) Effective Date.--Except as otherwise provided in this Act, the
provisions of this Act shall take effect 12 months after the date of
the enactment of this Act and shall apply to any patent issued on or
after that effective date.
(b) Continuity of Intent Under the Create Act.--The enactment of
section 102(b)(3) of title 35, United States Code, under section (3)(b)
of this Act is done with the same intent to promote joint research
activities that was expressed, including in the legislative history,
through the enactment of the Cooperative Research and Technology
Enhancement Act of 2004 (Public Law 108-453; the ``CREATE Act''), the
amendments of which are stricken by section 3(c) of this Act. The
United States Patent and Trademark Office shall administer section
102(b)(3) of title 35, United States Code, in a manner consistent with
the legislative history of the CREATE Act that was relevant to its
administration by the Patent and Trademark Office.
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