1.Short title; table of
contents
(a)This Act may be cited as the Patent Reform Act of 2008
.
(b)The table of contents for this Act is as follows:
Sec. 1. Short title; table of contents.
Sec. 2. Right of the first inventor to file.
Sec. 3. Inventor’s oath or declaration.
Sec. 4. Damages.
Sec. 5. Post-grant review proceedings.
Sec. 6. Definition; patent trial and appeal board.
Sec. 7. Submissions by third parties and other quality
enhancements.
Sec. 8. Venue.
Sec. 9. Patent and trademark office regulatory
authority.
Sec. 10. Applicant quality submissions.
Sec. 11. Inequitable conduct and civil sanctions for misconduct
before the Office.
Sec. 12. Authority of the Director of the Patent and Trademark
Office to accept late filings.
Sec. 13. Limitation on damages and other remedies with respect
to patents for methods in compliance with check imaging methods.
Sec. 14. Patent and trademark office
funding.
Sec. 15. Technical amendments.
Sec. 16. Effective date; rule of construction.
2.Right of the
first inventor to file
(a)Section
100 of title 35, United States Code, 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.
.
(b)Conditions
for patentability
(1)Section 102 of title 35, United States Code, is amended
to read as follows:
102.Conditions
for patentability; novelty
(a)A patent for a claimed invention may not be obtained
if—
(1)the claimed
invention was patented, described in a printed publication, or otherwise made
available to the public (other than through testing undertaken to reduce the
invention to practice)—
(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, 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)
(1)Prior
Inventor Disclosure ExceptionSubject matter that would otherwise
qualify as prior art based upon a disclosure under subparagraph (B) of
subsection (a)(1) shall not be prior art to a claimed invention under that
subparagraph if the subject matter had, before such disclosure, been publicly
disclosed by the inventor or a joint inventor or others who obtained the
subject matter disclosed directly or indirectly from the inventor or a joint
inventor.
(2)Derivation,
prior disclosure, and common assignment exceptionsSubject 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;
(B)the subject
matter had been publicly disclosed by the inventor or a joint inventor or
others who obtained the subject matter disclosed, directly or indirectly, from
the inventor or a joint inventor before the effective filing date of the
application or patent set forth under subsection (a)(2); or
(C)the subject
matter and the claimed invention, not later than the effective filing date of
the claimed invention, were owned by the same person or subject to an
obligation of assignment to the same person.
(3)Joint
research agreement exception
(A)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 subject
matter and the claimed invention were made by or on behalf of 1 or more parties
to a joint research agreement that was in effect on or before the effective
filing date of the claimed invention;
(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 2 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 filedA 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)The item relating to section 102 in the table of
sections for chapter 10 of title 35, United States Code, is amended to read as
follows:
102. Conditions for
patentability;
novelty.
.
(c)Conditions
for patentability; nonobvious subject matterSection 103 of title
35, United States Code, is amended to read as follows:
103.Conditions
for patentability; nonobvious subject matterA 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 abroadSection 104 of title 35,
United States Code, and the item relating to that section in the table of
sections for chapter 10 of title 35, United States Code, are repealed.
(e)Repeal of
statutory invention registration
(1)Section 157 of title 35, United States Code, and the item
relating to that section in the table of sections for chapter 14 of title 35,
United States Code, are repealed.
(2)Removal of
cross referencesSection 111(b)(8) of title 35, United States
Code, is amended by striking sections 115, 131, 135, and 157
and
inserting sections 131 and 135
.
(f)Earlier
filing date for inventor and joint inventorSection 120 of title
35, United States Code, is amended by striking which is filed by an
inventor or inventors named
and inserting which names an
inventor or joint inventor
.
(g)
(1)Section 172 of title 35, United States Code, is amended
by striking and the time specified in section 102(d)
.
(2)Section 287(c)(4) of title 35, United States Code, is
amended by striking the earliest effective filing date of which is prior
to
and inserting which has an effective filing date
before
.
(3)International
application designating the United States: effectSection 363 of
title 35, United States Code, is amended by striking except as otherwise
provided in section 102(e) of this title
.
(4)Publication
of International application: effectSection 374 of title 35,
United States Code, is amended by striking sections 102(e) and
154(d)
and inserting section 154(d)
.
(5)Patent
issued on international application: effectThe second sentence
of section 375(a) of title 35, United States Code, is amended by striking
Subject to section 102(e) of this title, such
and inserting
Such
.
(6)Limit on
right of prioritySection 119(a) of title 35, United States Code,
is amended by striking ; but no patent shall be granted
and all
that follows through one year prior to such filing
.
(7)Inventions
made with Federal assistanceSection 202(c) of title 35, United
States Code, 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 remediesSection 291 of title 35, United
States Code, and the item relating to that section in the table of sections for
chapter 29 of title 35, United States Code, are repealed.
(i)Action for
claim to patent on derived inventionSection 135(a) of title 35,
United States Code, is amended to read as follows:
(a)Dispute
over right to patent
(1)Institution
of derivation proceedingAn applicant may request initiation of a
derivation proceeding to determine the right of the applicant to a patent by
filing a request which sets forth with particularity the basis for finding that
an earlier applicant derived the claimed invention from the applicant
requesting the proceeding and, without authorization, filed an application
claiming such invention. Any such request may only be made within 1 year after
the date of first publication of an application or of the issuance of a patent,
whichever is earlier, containing a claim that is the same or is substantially
the same as the claimed invention, must be made under oath, and must be
supported by substantial evidence. Whenever the Director determines that
patents or applications for patent naming different individuals as the inventor
interfere with one another because of a dispute over the right to patent under
section 101, the Director shall institute a derivation proceeding for the
purpose of determining which applicant is entitled to a patent.
(2)Determination
by Patent Trial and Appeal BoardIn 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.
(3)The Board may defer action on a request to initiate a
derivation proceeding until 3 months after the date on which the Director
issues a patent to the applicant whose application has the earlier effective
filing date of the commonly claimed invention.
(4)The final decision of the Patent Trial and Appeal
Board, if adverse to the claim of an applicant, shall constitute the final
refusal by the United States Patent and Trademark Office on the claims
involved. The Director may issue a patent to an applicant who is determined by
the Patent Trial and Appeal Board to have the right to patent. The final
decision of the Board, if adverse to a patentee, shall, if no appeal or other
review of the decision has been or can be taken or had, constitute cancellation
of the claims involved in the patent, and notice of such cancellation shall be
endorsed on copies of the patent distributed after such cancellation by the
United States Patent and Trademark
Office.
.
(j)Elimination
of references to interferences(1)Sections 6, 41,
134, 141, 145, 146, 154, 305, and 314 of title 35, United States Code, are each
amended by striking Board of Patent Appeals and Interferences
each place it appears and inserting Patent Trial and Appeal
Board
.
(2)Sections 141, 146, and 154 of title
35, United States Code, 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 of
title 35, United States Code, is amended to read as follows:
134.Appeal to
the Patent Trial and Appeal
Board
.
(4)The section heading for section 135 of
title 35, United States Code, is amended to read as follows:
.
(5)The section heading for section 146
of title 35, United States Code, is amended to read as follows:
146.Civil
action in case of derivation
proceeding
.
(6)Section 154(b)(1)(C) of title 35,
United States Code, is amended by striking interferences
and
inserting derivation
proceedings
.
(7)The item relating to section 6 in the
table of sections for chapter 1 of title 35, United States Code, is amended to
read as follows:
6. Patent Trial and Appeal
Board.
.
(8)The items relating to sections 134
and 135 in the table of sections for chapter 12 of title 35, United States
Code, are amended to read as follows:
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 of title 35, United States Code, is
amended to read as follows:
146. Civil action in case of derivation
proceeding.
.
(10)Section 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 2008), 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;
.
3.Inventor’s
oath or declaration
(a)Inventor’s
oath or declaration
(1)Section 115 of title 35, United States Code, is amended
to read as follows:
115.Inventor’s
oath or declaration
(a)Naming the
inventor; inventor’s oath or declarationAn application for
patent that is filed under section 111(a) or that commences the national stage
under section 371 (including an application under section 111 that is filed by
an inventor for an invention for which an application has previously been filed
under this title by that inventor) shall include, or be amended to include, the
name of the inventor of any claimed invention in the application. Except as
otherwise provided in this section, an individual who is the inventor or a
joint inventor of a claimed invention in an application for patent shall
execute an oath or declaration in connection with the application.
(b)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)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)
(1)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)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)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 recordAn 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)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
statementThe 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)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 requiredIf 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)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).
(i)Acknowledgment of penaltiesAny declaration or statement filed pursuant
to this section shall contain an acknowledgment that any willful false
statement made in such declaration or statement is punishable under section
1001 of title 18 by fine or imprisonment of not more than 5 years, or
both.
.
(2)Relationship
to divisional applicationsSection 121 of title 35, United States
Code, is amended by striking If a divisional application
and all
that follows through inventor.
.
(3)Requirements
for nonprovisional applicationsSection 111(a) of title 35,
United States Code, 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)The item relating to section 115 in the table of
sections for chapter 10 of title 35, United States Code, is amended to read as
follows:
115. Inventor's oath or
declaration.
.
(b)Filing by
other than inventorSection
118 of title 35, United States Code, is amended to read as follows:
118.Filing by
other than inventorA 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)Section
112 of title 35, United States Code, is amended—
(1)in the first
paragraph—
(A)by striking
The specification
and inserting (a)
In general.—The
specification
; and
(B)by striking
, and shall set forth
and all that follows through his
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
.
4.
(a)Section
284 of title 35, United States Code, is amended to read as follows:
284.
(a)
(1)Upon finding for a claimant, the court shall award the
claimant damages adequate to compensate for the infringement, but in no event
less than a reasonable royalty for the use made of the invention by the
infringer, together with interest and costs as determined by the court.
(2)When the damages are not found by a jury, the court shall
assess them. In either event the court may increase the damages up to 3 times
the amount found or assessed. Increased damages under this paragraph shall not
apply to provisional rights under section 154(d) of this title.
(3)Subsections
(b) through (i) of this section apply only to the determination of the amount
of reasonable royalty and shall not apply to the determination of other types
of damages.
(b)For purposes of this section, the term
reasonable royalty
means the amount that the infringer would
have agreed to pay and the claimant would have agreed to accept if the
infringer and claimant had voluntarily negotiated a license for use of the
invention at the time just prior to when the infringement began. The court or
the jury, as the case may be, shall assume that the infringer and claimant
would have agreed that the patent is valid, enforceable, and infringed.
(c)The court or the jury, as the case may be, may consider
any factors that are relevant to the determination of the amount of a
reasonable royalty.
(d)The amount of a reasonable royalty shall not be
determined by the use of a standard or average ratio for the division of
profits, an industry average rate for royalties, or other methods that are not
based on the particular benefits or advantages of the use of the invention,
unless the party asserting the propriety of such a method demonstrates
that—
(1)the use made of
the invention is the primary reason for demand for the infringing product or
process;
(2)the method
consists of the use of an established royalty;
(3)the method
consists of the use of an industry average range to confirm that an estimate of
the amount of a reasonable royalty that is produced by an independently
allowable method falls within a reasonable range; or
(4)no other method
is reasonably available to determine the amount of a reasonable royalty and the
use of the method is otherwise appropriate.
(e)
(1)The amount of a reasonable royalty shall not be
determined by comparison to royalties paid for patents other than the patent in
suit unless—
(A)such other
patents are used in the same or an analogous technological field;
(B)such other
patents are found to be economically comparable to the patent in suit;
and
(C)evidence of the
value of such other patents is presented in conjunction with or as confirmation
of other evidence for determining the amount of a reasonable royalty.
(2)Factors
that may be considered to determine whether another patent is economically
comparable to the patent in suit under paragraph (1)(A) include whether—
(A)the other patent
is comparable to the patent in suit in terms of the overall significance of the
other patent to the product or process licensed under such other patent;
and
(B)the product or
process that uses the other patent is comparable to the infringing product or
process based upon its profitability or a like measure of value.
(f)The financial condition of the infringer as of the time
of the trial shall not be relevant to the determination of the amount of a
reasonable royalty.
(g)Either
party may request that a patent-infringement trial be sequenced so that the
court or the jury, as the case may be, decides questions of the patent's
infringement and validity before the issue of the amount of a reasonable
royalty is presented to the court or the jury, as the case may be. The court
shall grant such a request absent good cause to reject the request, such as the
absence of issues of significant damages or infringement and validity. The
sequencing of a trial pursuant to this subsection shall not affect other
matters, such as the timing of discovery.
(h)In
addition to the expert disclosure requirements under rule 26(a)(2) of the
Federal Rules of Civil Procedure, a party that intends to present the testimony
of an expert relating to the amount of a reasonable royalty shall
provide—
(1)to the other
parties to that civil action, the expert report relating to damages, including
all data and other information considered by the expert in forming the opinions
of the expert; and
(2)to the court, at
the same time as to the other parties, the complete statement of all opinions
that the expert will express and the basis and reasons for those
opinions.
(i)On the motion of any party and after allowing any
other party to the civil action a reasonable opportunity to be heard, the court
shall determine whether there is no legally sufficient evidence to support 1 or
more of the contentions of a party relating to the amount of a reasonable
royalty. The court shall identify for the record those factors that are
supported by legally sufficient evidence, and shall instruct the jury to
consider only those factors when determining the amount of a reasonable
royalty. The jury may not consider any factor for which legally sufficient
evidence has not been admitted at
trial.
.
(b)Chapter 29 of title 35, United States Code, as amended by
section 11, is further amended by adding at the end the following:
299A.
(a)In a patent case, the court shall ensure that the testimony
of a witness qualified as an expert by knowledge, skill, experience, training,
or education meets the requirements set forth in rule 702 of the Federal Rules
of Evidence.
(b)Determination
of reliabilityTo determine whether an expert's principles and
methods are reliable, the court may consider, among other factors—
(1)whether the
expert's theory or technique can be or has been tested;
(2)whether the
theory or technique has been subjected to peer review and publication;
(3)the known or
potential error rate of the theory or technique, and the existence and
maintenance of standards controlling the technique's operation;
(4)the degree of
acceptance of the theory or technique within the relevant scientific or
specialized community;
(5)whether the
theory or technique is employed independently of litigation; or
(6)whether the
expert has adequately considered or accounted for readily available alternative
theories or techniques.
(c)The court shall explain its reasons for allowing or
barring the introduction of an expert's proposed testimony under this
section.
.
5.Post-grant
review proceedings
(a)Section
303(a) of title 35, United States Code, 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. 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)Repeal of
optional inter partes reexamination procedures
(1)Sections 311, 312, 313, 314, 315, 316, 317, and 318 of
title 35, United States Code, and the items relating to those sections in the
table of sections, are repealed.
(2)Notwithstanding paragraph (1), the provisions of sections
311, 312, 313, 314, 315, 316, 317, and 318 of title 35, United States Code,
shall continue to apply to any inter partes reexamination determination request
filed on or before the effective date of subsection (c).
(c)Post-grant
review proceedingsPart III of title 35, United States Code, is
amended by adding at the end the following:
32Post-grant review proceedings
Sec.
321. Petition for post-grant
review.
322. Relation to other
proceedings or actions.
323. Requirements of
petition.
324. Publication and public
availability of petition.
325. Consolidation or stay of
proceedings.
326. Submission of additional
information.
327. Institution of
post-grant review proceedings.
328. Determination not
appealable.
329. Conduct of post-grant
review proceedings.
330. Patent owner
response.
331. Proof and evidentiary
standards.
332. Amendment of the
patent.
333. Settlement.
334. Decision of the
board.
335. Effect of
decision.
336. Appeal.
321.Petition for
post-grant review
(a)Subject to the provisions of this chapter, a person who
has a substantial economic interest adverse to a patent may file with the
Office a petition to institute a post-grant review proceeding for that patent.
If instituted, such a proceeding shall be deemed to be either a first-period
proceeding or a second-period proceeding. The Director shall establish, by
regulation, fees to be paid by the person requesting the proceeding, in such
amounts as the Director determines to be reasonable, considering the aggregate
costs of the post-grant review proceeding and the status of the
petitioner.
(b)
(1)A
petitioner in a first-period proceeding may request to cancel as unpatentable 1
or more claims of a patent on any ground that could be raised under paragraph
(2) or (3) of section 282(b) (relating to invalidity of the patent or any
claim).
(2)A petition for a first-period proceeding shall be filed
not later than 9 months after the grant of the patent or issuance of a reissue
patent.
(c)
(1)A
petitioner in a second-period proceeding may request to cancel as unpatentable
1 or more claims of a patent only on a ground that could be raised under
section 102 or 103 and only on the basis of prior art consisting of patents or
printed publications.
(2)A petition for a second-period proceeding shall be filed
after the later of either—
(A)9 months after
the grant of a patent or issuance of a reissue of a patent; or
(B)if a first-period
proceeding is instituted under section 327, the date of the termination of such
first-period proceeding.
322.Relation to
other proceedings or actions
(a)A first-period proceeding may not be instituted until
after a civil action alleging infringement of the patent is finally concluded
if—
(1)the infringement
action is filed within 3 months after the grant of the patent;
(2)a stay of the
proceeding is requested by the patent owner;
(3)the Director
determines that the infringement action is likely to address the same or
substantially the same questions of patentability that would be addressed in
the proceeding; and
(4)the Director
determines that a stay of the proceeding would not be contrary to the interests
of justice.
(b)
(1)A post-grant review proceeding may not be instituted or
maintained if the petitioner or real party in interest has filed a civil action
challenging the validity of a claim of the patent.
(2)A second-period proceeding may not be instituted if the
petition requesting the proceeding is filed more than 3 months after the date
on which the petitioner, real party in interest, or his privy is required to
respond to a civil action alleging infringement of the patent.
(3)The Director may stay or dismiss a second-period
proceeding if the petitioner or real party in interest challenges the validity
of a claim of the patent in a civil action.
(c)A post-grant review or reexamination proceeding may
not be instituted if—
(1)the petition
requesting the proceeding identifies the same petitioner or real party in
interest and the same patent as a previous petition requesting a post-grant
review proceeding; or
(2)the petition
requests cancellation of a claim in a reissue patent that is identical to a
claim in the original patent from which the reissue patent was issued, and the
time limitations in section 321 would bar filing a post-grant review petition
for such original patent.
(d)The
petitioner in any post-grant review proceeding under this chapter may not
request or maintain a proceeding before the Office with respect to a claim, or
assert either in a civil action arising in whole or in part under section 1338
of title 28 or in a proceeding before the International Trade Commission that a
claim in a patent is invalid, on any ground that—
(1)the petitioner,
real party in interest, or his privy raised during a post-grant review
proceeding resulting in a final decision under section 334; or
(2)the petitioner,
real party in interest, or his privy could have raised during a second-period
proceeding resulting in a final decision under section 334.
323.A 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 all real parties in interest;
(3)the petition
identifies, in writing and with particularity, each claim challenged, the
grounds on which the challenge to each claim is based, and the evidence that
supports the grounds for each challenged claim, including—
(A)copies of patents
and printed publications that the petitioner relies upon in support of the
petition; and
(B)affidavits or
declarations of supporting evidence and opinions, if the petitioner relies on
other factual evidence or on expert opinions;
(4)the petition
provides such other information as the Director may require by regulation;
and
(5)the petitioner
provides copies of any of the documents required under paragraphs (3) and (4)
to the patent owner or, if applicable, the designated representative of the
patent owner.
324.Publication
and public availability of petition
(a)As soon as practicable after the receipt of a petition
under section 321, the Director shall—
(1)publish the
petition in the Federal Register; and
(2)make that
petition available on the website of the United States Patent and Trademark
Office.
(b)The file of any proceeding under this chapter shall
be made available to the public except that any petition or document filed with
the intent that it be sealed shall be accompanied by a motion to seal. Such
petition or document shall be treated as sealed, pending the outcome of the
ruling on the motion. Failure to file a motion to seal will result in the
pleadings being placed in the public record.
325.Consolidation
or stay of proceedings
(a)If more than 1 petition for a first-period proceeding
is properly filed against the same patent and the Director determines that more
than 1 of these petitions warrants the instituting of a first-period proceeding
under section 327, the Director shall consolidate such proceedings into a
single first-period proceeding.
(b)Second-period
proceedingsIf the Director institutes a second-period
proceeding, the Director, in his discretion, may join as a party to that
second-period proceeding any person who properly files a petition under section
321 that the Director, after receiving a preliminary response under section 330
or the expiration of the time for filing such a response, determines warrants
the instituting of a second-period proceeding under section 327.
(c)Notwithstanding sections 135(a), 251, and 252, and
chapter 30, during the pendency of any post-grant review proceeding the
Director may determine the manner in which any proceeding or matter involving
the patent that is before the Office may proceed, including providing for stay,
transfer, consolidation, or termination of any such proceeding or
matter.
326.Submission of
additional informationA
petitioner under this chapter shall file such additional information with
respect to the petition as the Director may require by regulation.
327.Institution of
post-grant review proceedings
(a)The
Director may not authorize a post-grant review proceeding to commence unless
the Director determines that the information presented in the petition, if such
information is not rebutted, would provide a sufficient basis to conclude that
at least 1 of the claims challenged in the petition is unpatentable.
(b)In the case of a petition for a first-period proceeding,
the determination required under subsection (a) may be satisfied by a showing
that the petition raises a novel or unsettled legal question that is important
to other patents or patent applications.
(c)The Director may not institute an additional
second-period proceeding if a prior second-period proceeding has been
instituted and the time period established under section 329(b)(2) for
requesting joinder under section 325(b) has expired, unless the Director
determines that—
(1)the additional
petition satisfies the requirements under subsection (a); and
(2)either—
(A)the additional
petition presents exceptional circumstances; or
(B)such an
additional proceeding is reasonably required in the interests of
justice.
(d)The
Director shall determine whether to institute a post-grant review proceeding
under this chapter within 3 months after receiving a preliminary response under
section 330 or the expiration of the time for filing such a response.
(e)The
Director shall notify the petitioner and patent owner, in writing, of the
Director's determination under subsection (a). The Director shall publish each
notice of institution of a post-grant review proceeding in the Federal Register
and make such notice available on the website of the United States Patent and
Trademark Office. Such notice shall list the date on which the proceeding shall
commence.
328.Determination
not appealableThe
determination by the Director regarding whether to institute a post-grant
review proceeding under section 327 shall not be appealable.
329.Conduct of
post-grant review proceedings
(a)The Director shall prescribe regulations—
(1)in accordance
with section 2(b)(2), establishing and governing post-grant review proceedings
under this chapter and their relationship to other proceedings under this
title;
(2)for setting forth
the standards for showings of sufficient grounds to institute a proceeding
under section 321(a) and subsections (a), (b), and (c) of section 327;
(3)providing for the
publication in the Federal Register all requests for the institution of
post-grant proceedings;
(4)establishing
procedures for the submission of supplemental information after the petition is
filed; and
(5)setting forth
procedures for discovery of relevant evidence, including that such discovery
shall be limited to evidence directly related to factual assertions advanced by
either party in the proceeding.
(b)Post-grant
review regulationsThe regulations required under subsection
(a)(1) shall—
(1)require that the
final determination in any post-grant review proceeding be issued not later
than 1 year after the date on which the Director notices the institution of a
post-grant proceeding under this chapter, except that the Director may, for
good cause shown, extend the 1-year period by not more than 6 months, and may
adjust the time periods in this paragraph in the case of joinder under section
325(b);
(2)set a time period
for requesting joinder under section 325(b);
(3)allow for
discovery upon order of the Director, provided that in a second-period
proceeding discovery shall be limited to—
(A)the deposition of
witnesses submitting affidavits or declarations; and
(B)what is otherwise
necessary in the interest of justice;
(4)prescribe
sanctions for abuse of discovery, abuse of process, or any other improper use
of the proceeding, such as to harass or to cause unnecessary delay or
unnecessary increase in the cost of the proceeding;
(5)provide for
protective orders governing the exchange and submission of confidential
information;
(6)ensure that any
information submitted by the patent owner in support of any amendment entered
under section 332 is made available to the public as part of the prosecution
history of the patent; and
(7)provide either
party with the right to an oral hearing as part of the proceeding.
(c)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)The Patent Trial and Appeal Board shall, in accordance
with section 6(b), conduct each proceeding authorized by the Director.
330.
(a)If a post-grant review petition is filed under section
321, the patent owner shall have the right to file a preliminary
response—
(1)in the case of a
first-period proceeding, within 2 months of the expiration of the time for
filing a petition for a first-period proceeding; and
(2)in the case of a
second-period proceeding, within a time period set by the Director.
(b)A preliminary response to a petition for a post-grant
review proceeding shall set forth reasons why no post-grant review proceeding
should be instituted based upon the failure of the petition to meet any
requirement of this chapter.
(c)After a post-grant review proceeding under this chapter
has been instituted with respect to a patent, the patent owner shall have the
right to file, within a time period set by the Director, a response to the
petition. The patent owner shall file with the response, through affidavits or
declarations, any additional factual evidence and expert opinions on which the
patent owner relies in support of the response.
331.Proof and
evidentiary standards
(a)The presumption of validity set forth in section 282 of
this title shall apply in post-grant review proceedings instituted under this
chapter.
(b)The petitioner shall have the burden of proving a
proposition of invalidity by a preponderance of the evidence in a first-period
proceeding and by clear and convincing evidence in a second-period
proceeding.
332.
(a)During a post-grant review proceeding instituted under
this chapter, the patent owner may file 1 motion to amend the patent in 1 or
more of the following ways:
(1)Cancel any
challenged patent claim.
(2)For each
challenged claim, propose a reasonable number of substitute claims.
(b)Additional motions to amend may be permitted upon the
joint request of the petitioner and the patent owner to materially advance the
settlement of a proceeding under section 333, or upon the request of the patent
owner for good cause shown.
(c)An amendment under this section may not enlarge the scope
of the claims of the patent or introduce new matter.
333.
(a)A post-grant review proceeding instituted under this
chapter shall be terminated with respect to any petitioner upon the joint
request of the petitioner and the patent owner, unless the Office has decided
the matter before the request for termination is filed. If the post-grant
review proceeding is terminated with respect to a petitioner under this
section, no estoppel under this chapter shall apply to that petitioner. If no
petitioner remains in the post-grant review proceeding, the Office may
terminate the post-grant review proceeding or proceed to a final written
decision under section 334.
(b)Any agreement or understanding between the patent owner
and a petitioner, including any collateral agreements referred to in such
agreement or understanding, made in connection with, or in contemplation of,
the termination of a post-grant review proceeding under this section shall be
in writing and a true copy of such agreement or understanding shall be filed in
the United States Patent and Trademark Office before the termination of the
post-grant review proceeding as between the parties to the agreement or
understanding. If any party filing such agreement or understanding so requests,
the copy shall be kept separate from the file of the post-grant review
proceeding, and shall be made available only to Federal Government agencies
upon written request, or to any other person on a showing of good cause.
334.If the post-grant
review proceeding is instituted and not dismissed under this chapter, the
Patent Trial and Appeal Board shall issue a final written decision with respect
to the patentability of any patent claim challenged and any new claim added
under section 332.
335.If the Patent Trial
and Appeal Board issues a final decision under section 334 and the time for
appeal has expired or any appeal proceeding has terminated, the Director shall
issue and publish a certificate canceling any claim of the patent finally
determined to be unpatentable and incorporating in the patent by operation of
the certificate any new claim determined to be patentable.
336.A party dissatisfied with the final
determination of the Patent Trial and Appeal Board in a post-grant review
proceeding instituted under this chapter may appeal the determination under
sections 141 through 144. Any party to the post-grant review proceeding shall
have the right to be a party to the
appeal.
.
(d)Technical and
conforming amendmentThe
table of chapters for part III of title 35, United States Code, is amended by
adding at the end the following:
32. Post-Grant Review
Proceedings...........................................321.
.
(e)Regulations and
effective date
(1)The
Under Secretary of Commerce for Intellectual Property and the Director of the
United States Patent and Trademark Office (in this subsection referred to as
the Director
) shall, not later than the date that is 1 year
after the date of the enactment of this Act, issue regulations to carry out
chapter 32 of title 35, United States Code, as added by subsection (c) of this
section.
(2)The
amendments made by subsection (c) shall take effect on the date that is 1 year
after the date of the enactment of this Act and shall apply only to patents
issued on or after that date, except that, in the case of a patent issued
before the effective date of subsection (c) on an application filed between
September 15, 1999 and the effective date of subsection (c), a petition for
second-period review may be filed.
(3)The Director shall determine the procedures under
which interferences commenced before the effective date under paragraph (2) are
to proceed, including whether any such interference is to be dismissed without
prejudice to the filing of a petition for a post-grant review proceeding under
chapter 32 of title 35, United States Code, or is to proceed as if this Act had
not been enacted. The Director shall include such procedures in regulations
issued under paragraph (1).
6.Definition;
patent trial and appeal board
(a)Section
100 of title 35, United States Code, as amended by section 2 of this Act, is
further amended in subsection (e), by striking or inter partes
reexamination under section 311
.
(b)Patent trial
and appeal boardSection 6 of title 35, United States Code, is
amended to read as follows:
6.Patent trial and
appeal board
(a)Establishment
and compositionThere shall be in the Office a Patent Trial and
Appeal Board. The Director, the Deputy Director, the Commissioner for Patents,
the Commissioner for Trademarks, and the administrative patent judges shall
constitute the Patent Trial and Appeal Board. The administrative patent judges
shall be persons of competent legal knowledge and scientific ability who are
appointed by the Secretary. Any reference in any Federal law, Executive order,
rule, regulation, or delegation of authority, or any document of or pertaining
to the Board of Patent Appeals and Interferences is deemed to refer to the
Patent Trial and Appeal Board.
(b)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;
(3)determine
priority and patentability of invention in derivation proceedings under
subsection 135(a); and
(4)conduct
post-grant review proceedings under chapter 32.
Each
appeal, derivation, and post-grant review proceeding shall be heard by at least
3 members of the Patent Trial and Appeal Board, who shall be designated by the
Director. Only the Patent Trial and Appeal Board may grant
rehearings..
7.Submissions
by third parties and other quality enhancementsSection 122 of title 35, United States Code,
is amended by adding at the end the following:
(e)Preissuance
submissions by third parties
(1)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)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 person making such submission affirming that the submission
was made in compliance with this
section.
.
8.
(a)Section 1400 of title 28, United States Code, is
amended by striking subsection (b) and inserting the following:
(b)Notwithstanding
subsections (b) and (c) of section 1391 of this title, any civil action for
patent infringement or any action for declaratory judgment arising under any
Act of Congress relating to patents may be brought only in a judicial
district—
(1)where the
defendant has its principal place of business or is incorporated;
(2)where the
defendant has committed acts of infringement and has a regular and established
physical facility;
(3)where the
defendant has agreed or consented to be sued;
(4)where the
invention claimed in a patent in suit was conceived or actually reduced to
practice;
(5)where significant
research and development of an invention claimed in a patent in suit occurred
at a regular and established physical facility;
(6)where a party has
a regular and established physical facility that such party controls and
operates and has—
(A)engaged in
management of significant research and development of an invention claimed in a
patent in suit;
(B)manufactured a
product that embodies an invention claimed in a patent in suit; or
(C)implemented a
manufacturing process that embodies an invention claimed in a patent in
suit;
(7)where a nonprofit
organization whose function is the management of inventions on behalf of an
institution of higher education (as that term is defined under section 101(a)
of the Higher Education Act of 1965 (20 U.S.C. 1001(a))), including the patent
in suit, has its principal place of business; or
(8)for foreign
defendants that do not meet the requirements of paragraphs (1) or (2),
according to section 1391(d) of this
title.
.
(b)Technical
amendments relating to venueSections 32, 145, 146, 154(b)(4)(A),
and 293 of title 35, United States Code, and section 1071(b)(4) of an Act
entitled Act to provide for the registration and protection of
trademarks used in commerce, to carry out the provisions of certain
international conventions, and for other purposes
, approved July 5,
1946 (commonly referred to as the Trademark Act of 1946
or the
Lanham Act
) are each amended by striking United States
District Court for the District of Columbia
each place that term
appears and inserting United States District Court for the Eastern
District of Virginia
.
9.Patent and
trademark office regulatory authority
(a)
(1)The Director shall have authority to set or adjust by
rule any fee established or charged by the Office under sections 41 and 376 of
title 35, United States Code or under section 31 of the Trademark Act of 1946
(15 U.S.C. 1113) for the filing or processing of any submission to, and for all
other services performed by or materials furnished by, the Office, provided
that such fee amounts are set to reasonably compensate the Office for the
services performed.
(2)Reduction of
fees in certain fiscal yearsIn any fiscal year, the
Director—
(A)shall consult
with the Patent Public Advisory Committee and the Trademark Public Advisory
Committee on the advisability of reducing any fees described in paragraph (1);
and
(B)after that
consultation may reduce such fees.
(3)Role of the
Public Advisory CommitteeThe Director shall—
(A)submit to the
Patent or Trademark Public Advisory Committee, or both, as appropriate, any
proposed fee under paragraph (1) not less than 45 days before publishing any
proposed fee in the Federal Register;
(B)provide the
relevant advisory committee described in subparagraph (A) a 30-day period
following the submission of any proposed fee, on which to deliberate, consider,
and comment on such proposal, and require that—
(i)during such
30-day period, the relevant advisory committee hold a public hearing related to
such proposal; and
(ii)the Director
shall assist the relevant advisory committee in carrying out such public
hearing, including by offering the use of Office resources to notify and
promote the hearing to the public and interested stakeholders;
(C)require the
relevant advisory committee to make available to the public a written report
detailing the comments, advice, and recommendations of the committee regarding
any proposed fee;
(D)consider and
analyze any comments, advice, or recommendations received from the relevant
advisory committee before setting or adjusting any fee; and
(E)notify, through
the Chair and Ranking Member of the Senate and House Judiciary Committees, the
Congress of any final decision regarding proposed fees.
(4)Publication in
the Federal Register
(A)Any rules prescribed under this subsection shall be
published in the Federal Register.
(B)Any
proposal for a change in fees under this section shall—
(i)be
published in the Federal Register; and
(ii)include, in such
publication, the specific rationale and purpose for the proposal, including the
possible expectations or benefits resulting from the proposed change.
(C)Following the publication of any proposed fee in the
Federal Register pursuant to subparagraph (A), the Director shall seek public
comment for a period of not less than 45 days.
(5)Congressional
comment periodFollowing the notification described in paragraph
(3)(E), Congress shall have not more than 45 days to consider and comment on
any proposed fee under paragraph (1). No proposed fee shall be effective prior
to the end of such 45-day comment period.
(6)No rules prescribed under this subsection may
diminish—
(A)an applicant's
rights under this title or the Trademark Act of 1946; or
(B)any rights under
a ratified treaty.
(b)Division B of Public Law 108–447 is amended in title
VIII of the Departments of Commerce, Justice and State, the Judiciary, and
Related Agencies Appropriations Act, 2005, in section 801(a) by striking
During fiscal years 2005, 2006, and 2007,
, and inserting
Until such time as the Director sets or adjusts the fees
otherwise,
.
(c)Adjustment of
Trademark feesDivision B of Public Law 108–447 is amended in
title VIII of the Departments of Commerce, Justice and State, the Judiciary and
Related Agencies Appropriations Act, 2005, in section 802(a) by striking
During fiscal years 2005, 2006, and 2007,
, and inserting
Until such time as the Director sets or adjusts the fees
otherwise,
.
(d)Effective date,
applicability, and transitional provisionDivision B of Public
Law 108–447 is amended in title VIII of the Departments of Commerce, Justice
and State, the Judiciary and Related Agencies Appropriations Act, 2005, in
section 803(a) by striking and shall apply only with respect to the
remaining portion of fiscal year 2005 and fiscal year 2006.
.
(e)Nothing in this section shall be construed to affect
any other provision of Division B of Public Law 108–447, including section
801(c) of title VII of the Departments of Commerce, Justice and State, the
Judiciary and Related Agencies Appropriations Act, 2005.
(f)In
this section:
(1)The
term Director means the Director of the United States Patent and
Trademark Office.
(2)The
term Office means the United States Patent and Trademark
Office.
(3)The term Trademark Act of 1946 means an Act
entitled Act to provide for the registration and protection of
trademarks used in commerce, to carry out the provisions of certain
international conventions, and for other purposes
, approved July 5,
1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the Trademark Act of
1946 or the Lanham Act).
10.Applicant
quality submissions
(a)Chapter 11 of title
35, United States Code, is amended by adding at the end the following new
section:
123.
(a)The Director may, by regulation, offer
incentives to applicants who submit a search report, a patentability analysis,
or other information relevant to patentability. Such incentives may include
prosecution flexibility, modifications to requirements for adjustment of a
patent term pursuant to section 154(b) of this title, or modifications to fees
imposed pursuant to section 9 of the Patent Reform Act of 2008.
(b)If the Director
certifies that an applicant has satisfied the requirements of the regulations
issued pursuant to this section with regard to a patent, the record made in a
matter or proceeding before the Office involving that patent or efforts to
obtain the patent shall not be admissible to construe the patent in a civil
action or in a proceeding before the International Trade Commission, except
that such record may be introduced to demonstrate that the patent owner is
estopped from asserting that the patent is infringed under the doctrine of
equivalents. The Director may, by regulation, identify any material submitted
in an attempt to satisfy the requirements of any regulations issued pursuant to
this section that also shall not be admissible to construe the patent in a
civil action or in a proceeding before the International Trade
Commission.
.
(b)Nothing in this section shall be construed to imply
that, prior to the date of enactment of this section, the Director either
lacked or possessed the authority to offer incentives to applicants who submit
a search report, a patentability analysis, or other information relevant to
patentability.
11.Inequitable
conduct and civil sanctions for misconduct before the Office
(a)Chapter 29 of title
35, United States Code, is amended by adding at the end the following new
sections:
298.
(a)Except as provided under this section or section 299, a
patent shall not be held invalid or unenforceable based upon misconduct before
the Office. Nothing in this section shall be construed to create a cause of
action or a defense in a civil action.
(b)
(1)
(A)If a court in a civil action, upon motion of a party to
the action, finds that it is more likely than not that a person who
participated in a matter or proceeding before the Office knowingly and
intentionally deceived the Office by concealing material information or by
submitting false material information in such matter or proceeding, the court
shall order the patent to be made the subject of a reissue application under
section 251. The motion shall set forth any basis upon which the moving party
contends 1 or more claims of the patent are invalid in view of information
relating to the conduct at issue not previously considered by the Director. The
decision on a motion filed under this paragraph shall not be subject to
appellate review.
(B)For purposes of this paragraph, information is
material if it is not part of the record or cumulative to information in the
record and either establishes that a patent claim is not patentable or refutes
a position that the applicant or patent owner took in response to a rejection
of the claim as unpatentable.
(2)A motion described under paragraph (1) shall be filed
promptly after discovery of the conduct at issue by the moving party.
(3)Required
specificity in court orderAn order issued by a court under
paragraph (1) shall contain findings of fact setting out with specificity the
information relating to the conduct at issue not previously considered by the
Director and upon which the court based its order. The findings of fact shall
not be used by a court except as provided under this paragraph.
(4)A
court shall not stay a civil action by reason of commencement of a reissue
proceeding that was authorized to be filed under this section unless—
(A)the Director in a
notification under section 132 makes a rejection of 1 or more claims of the
patent;
(B)an allegation of
infringement remains in the civil action for at least 1 of the claims rejected;
and
(C)the court
determines that the interests of justice require a stay of the action.
(5)Judgment that
patent is unenforceableIf a patentee involved in a civil action
in which an order under this subsection is issued does not seek reissue of the
patent within 2 months of such order, the court shall enter judgment that the
patent is unenforceable.
(c)Permitted
reissue by patenteeA patentee may request reissue of a patent on
the basis of information not previously considered by the Director in
connection with a patent, or the efforts to obtain such patent, by filing an
application for reissue under section 251.
(d)Required
statement, amended claimsIn any application for reissue of a
patent authorized to be filed under this section, the patentee shall provide a
statement to the Director containing the information described in subsections
(b) and (c). The reissue application may be filed with the omission of 1 or
more claims of the original patent and with a single substitute claim of
equivalent or narrower scope replacing any omitted claim of the original
patent. For a reissue application authorized to be filed under subsection (c),
the statement shall identify with specificity the issues of patentability
arising from the information and the basis upon which the claims in the reissue
application are believed by the applicant to be patentable notwithstanding the
information.
(e)Conduct of
reissue proceeding
(1)The Director shall provide at least 1 of the notifications
under section 132 or a notice of allowance under section 151 not later than 3
months after the filing date of an application for reissue authorized to be
filed under this section.
(2)
(A)A reissue proceeding authorized to be filed under this
section shall, unless substitute claims are submitted, address only whether
original claims continue to be patentable after consideration of the additional
information provided by the applicant for reissue pursuant to subsection (d) in
combination with information already of record in the original patent.
(B)If the Director determines during a reissue
proceeding authorized to be filed under this section that 1 or more of the
original claims of the patent cannot be reissued and the time for appeal of
such determination has expired or any appeal proceeding related to such
determination has terminated, the Director shall notify the patentee of the
surrender of the patent in connection with the termination of the reissue
proceeding, subject to the patentee’s right to obtain a reissue for claims the
Director determines to be patentable.
(3)For a reissue application authorized to be filed under
subsection (b), a final decision on all issues of patentability shall be made
by the Director within 1 year from the date of the initial notification under
paragraph (1), subject to the right of the patentee to appeal under section
134.
(4)Termination of
proceedingIf the Director determines that all of the original
claims continue to be patentable, the Director shall terminate the proceeding
without the surrender of the original patent.
(5)
(A)A reissue application authorized to be filed under this
section may not be abandoned by the applicant or otherwise terminated without
surrender of the original patent, except as provided under this section, and
shall be conducted as an ex parte matter before the Office.
(B)Subject to subsection (d), no amendments other than an
amendment presenting a single substitute claim of equivalent or narrower scope
for each canceled claim in the first reply to the first action under section
132 may be made during the examination of a reissue application authorized to
be filed under this section. The Director may amend pending claims at any time
on agreement to a change proposed by the Director to the applicant. The
Director may refuse to admit any paper filed after a second notification under
section 132.
(C)Continuing
applications barredNo application shall be entitled to the
benefit of the filing date of an application authorized to be filed under this
section.
(D)The Director may consider additional information
introduced by the Director if substitute claims are presented.
(E)An
applicant in a reissue application authorized to be filed by this section
dissatisfied with a decision by the Patent Trial and Appeal Board may appeal
only under the provisions of sections 141 though 144.
(f)Limitation on
enlarging scope of claimsNo patent may be reissued based upon
the filing of a reissue application authorized to be filed under this section
that enlarges the scope of the claims of the original patent.
(g)Except
as provided under subsection (h), if a reissue proceeding authorized under this
section concludes without the surrender of the original patent or with the
grant of 1 or more reissued patents, no further sanctions may be imposed
against the patentee in connection with the original patent or the reissued
patents based upon misconduct arising from the concealment of information
subsequently provided, or the misrepresentation of information subsequently
corrected in the statement provided under subsection (d).
(h)Nothing in this section shall be construed—
(1)to preclude the
imposition of sanctions based upon criminal or antitrust laws (including
section 1001(a) of title 18, the first section of the Clayton Act, and section
5 of the Federal Trade Commission Act to the extent that section relates to
unfair methods of competition);
(2)to limit the
authority of the Director to investigate issues of possible misconduct and
impose sanctions for misconduct in connection with matters or proceedings
before the Office; or
(3)to limit the
authority of the Director to promulgate regulations under chapter 3 relating to
sanctions for misconduct by representatives practicing before the
Office.
299.Civil
sanctions for misconduct before the Office
(a)Information
relating to possible misconductThe Director shall provide by
regulation procedures for receiving and reviewing information indicating that
parties to a matter or proceeding before the Office may have engaged in
misconduct in connection with such matter or proceeding.
(b)Administrative
proceeding
(1)The Director shall determine, based on information received
and reviewed under subsection (a), if there is probable cause to believe that 1
or more individuals or parties engaged in misconduct consisting of
intentionally deceptive conduct of a material nature in connection with a
matter or proceeding before the Office. A determination of probable cause by
the Director under this paragraph shall be final and shall not be reviewable on
appeal or otherwise.
(2)If
the Director finds probable cause under paragraph (1), the Director shall,
after notice and an opportunity for a hearing, and not later than 1 year after
the date of such finding, determine whether misconduct consisting of
intentionally deceptive conduct of a material nature in connection with the
applicable matter or proceeding before the Office has occurred. The proceeding
to determine whether such misconduct occurred shall be before an individual
designated by the Director.
(3)
(A)If the Director determines under paragraph (2) that
misconduct has occurred, the Director may levy a civil penalty against the
party that committed such misconduct.
(B)In
establishing the amount of any civil penalty to be levied under subparagraph
(A), the Director shall consider—
(i)the materiality
of the misconduct;
(ii)the impact of
the misconduct on a decision of the Director regarding a patent, proceeding, or
application; and
(iii)the impact of
the misconduct on the integrity of matters or proceedings before the
Office.
(C)A
civil penalty levied under subparagraph (A) may consist of—
(i)a
penalty of up to $150,000 for each act of misconduct;
(ii)in the case of a
finding of a pattern of misconduct, a penalty of up to $1,000,000; or
(iii)in the case of
a finding of exceptional misconduct establishing that an application for a
patent amounted to a fraud practiced by or at the behest of a real party in
interest of the application—
(I)a determination
that 1 or more claims of the patent is unenforceable; or
(II)a penalty of up
to $10,000,000.
(D)Joint and
several liabilityAny party found to have been responsible for
misconduct in connection with any matter or proceeding before the Office under
this section may be jointly and severally liable for any civil penalty levied
under subparagraph (A).
(E)Deposit with
the TreasuryAny civil penalty levied under subparagraph (A)
shall—
(i)accrue to the
benefit of the United States Government; and
(ii)be deposited
under Miscellaneous Receipts
in the United States
Treasury.
(F)Authority to
bring action for recovery of penalties
(i)If any party refuses to pay or remit to the United States
Government a civil penalty levied under this paragraph, the United States may
recover such amounts in a civil action brought by the United States Attorney
General on behalf of the Director in the United States District Court for the
Eastern District of Virginia.
(ii)In
any action brought under clause (i), the United States District Court for the
Eastern District of Virginia may, as the court determines appropriate, issue a
mandatory injunction incorporating the relief sought by the Director.
(4)If the misconduct that is the subject of a proceeding
under this subsection is attributed to a practitioner who practices before the
Office, the Director may combine such proceeding with any other disciplinary
proceeding under section 32 of this title.
(c)
(1)During the period in which an investigation for a finding
of probable cause or for a determination of whether misconduct occurred in
connection with any matter or proceeding before the Office is being conducted,
the Director may require, by subpoena issued by the Director, persons to
produce any relevant information, documents, reports, answers, records,
accounts, papers, and other documentary or testimonial evidence.
(2)For the purposes of carrying out this section, the
Director—
(A)shall have access
to, and the right to copy, any document, paper, or record, the Director
determines pertinent to any investigation or determination under this section,
in the possession of any person;
(B)may summon
witnesses, take testimony, and administer oaths;
(C)may require any
person to produce books or papers relating to any matter pertaining to such
investigation or determination; and
(D)may require any
person to furnish in writing, in such detail and in such form as the Director
may prescribe, information in their possession pertaining to such investigation
or determination.
(3)
(A)The Director may require the attendance of any witness
and the production of any documentary evidence from any place in the United
States at any designated place of hearing.
(B)
(i)In the case of contumacy or failure to obey a subpoena
issued under this subsection, any appropriate United States district court or
territorial court of the United States may issue an order requiring such
person—
(I)to appear before
the Director;
(II)to appear at any
other designated place to testify; and
(III)to produce
documentary or other evidence.
(ii)Any failure to obey an order issued under this subparagraph
court may be punished by the court as a contempt of that court.
(4)
(A)In any proceeding or investigation under this section,
the Director may order a person to give testimony by deposition.
(B)Requirements of
deposition
(i)A
deposition may be taken before an individual designated by the Director and
having the power to administer oaths.
(ii)Before
taking a deposition, the Director shall give reasonable notice in writing to
the person ordered to give testimony by deposition under this paragraph. The
notice shall state the name of the witness and the time and place of taking the
deposition.
(iii)The testimony of a person deposed under this paragraph
shall be under oath. The person taking the deposition shall prepare, or cause
to be prepared, a written transcript of the testimony taken. The transcript
shall be subscribed by the deponent. Each deposition shall be filed promptly
with the Director.
(d)
(1)A party may appeal a determination under subsection
(b)(2) that misconduct occurred in connection with any matter or proceeding
before the Office to the United States Court of Appeals for the Federal
Circuit.
(2)A party appealing under this subsection shall file in the
Office a written notice of appeal directed to the Director, within such time
after the date of the determination from which the appeal is taken as the
Director prescribes, but in no case less than 60 days after such date.
(3)Required
actions of the DirectorIn any appeal under this subsection, the
Director shall transmit to the United States Court of Appeals for the Federal
Circuit a certified list of the documents comprising the record in the
determination proceeding. The court may request that the Director forward the
original or certified copies of such documents during the pendency of the
appeal. The court shall, before hearing the appeal, give notice of the time and
place of the hearing to the Director and the parties in the appeal.
(4)The United States Court of Appeals for the Federal
Circuit shall have power to enter, upon the pleadings and evidence of record at
the time the determination was made, a judgment affirming, modifying, or
setting aside, in whole or in part, the determination, with or without
remanding the case for a rehearing. The court shall not set aside or remand the
determination made under subsection (b)(2) unless there is not substantial
evidence on the record to support the findings or the determination is not in
accordance with law. Any sanction levied under subsection (b)(3) shall not be
set aside or remanded by the court, unless the court determines that such
sanction constitutes an abuse of discretion of the Director.
(e)For
purposes of this section, the term person
means any individual,
partnership, corporation, company, association, firm, partnership, society,
trust, estate, cooperative, association, or any other entity capable of suing
and being sued in a court of
law.
.
(b)Suspension or
exclusion from practiceSection 32 of title 35, United States
Code, is amended—
(1)by striking
The Director may
and inserting the following:
(a)The Director may
;
and
(2)by adding at the
end the following:
(b)The time period for instituting a proceeding under
subsection (a), as provided in section 2462 of title 28, shall not begin to run
where fraud, concealment, or misconduct is involved until the information
regarding fraud, concealment, or misconduct is made known in the manner set
forth by regulation under section 2(b)(2)(D) to an officer or employee of the
United States Patent and Trademark Office designated by the Director to receive
such
information.
.
(c)
(1)Except as otherwise provided under paragraph (2), the
amendments made by this section shall take effect on the date of enactment of
this Act.
(2)Inapplicability
to pending litigationSubsections (a) and (b) of section 298 of
title 35, United States Code (as added by the amendment made by subsection (a)
of this section), shall apply to any civil action filed on or after the date of
the enactment of this Act.
12.Authority of
the Director of the Patent and Trademark Office to accept late filings
(a)Section
2 of title 35, United States Code, is amended by adding at the end the
following:
(e)Discretion To
accept late filings in certain cases of unintentional delay
(1)The Director may accept any application or other filing
made by—
(A)an applicant for,
or owner of, a patent after the applicable deadline set forth in this title
with respect to the application or patent; or
(B)an applicant for,
or owner of, a mark after the applicable deadline under the Trademark Act of
1946 with respect to the registration or other filing of the mark,
to the
extent that the Director considers appropriate, if the applicant or owner files
a petition within 30 days after such deadline showing, to the satisfaction of
the Director, that the delay was unintentional.(2)Treatment of
director's actions on petitionIf the Director has not made a
determination on a petition filed under paragraph (1) within 60 days after the
date on which the petition is filed, the petition shall be deemed to be denied.
A decision by the Director not to exercise, or a failure to exercise, the
discretion provided by this subsection shall not be subject to judicial
review.
(3)Other
provisions not affectedThis subsection shall not apply to any
other provision of this title, or to any provision of the Trademark Act of
1946, that authorizes the Director to accept, under certain circumstances,
applications or other filings made after a statutory deadline or to statutory
deadlines that are required by reason of the obligations of the United States
under any treaty.
(4)In
this subsection, the term Trademark Act of 1946 means the Act
entitled An Act to provide for the registration and protection of
trademarks used in commerce, to carry out the provisions of certain
international conventions, and for other purposes
, approved July 5,
1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the Trademark Act of
1946 or the Lanham
Act).
.
(b)
(1)The amendment made by subsection (a) shall apply to any
application or other filing that—
(A)is filed on or
after the date of the enactment of this Act; or
(B)on such date of
enactment, is pending before the Director or is subject to judicial
review.
(2)Treatment of
pending applications and filingsIn the case of any application
or filing described in paragraph (1)(B), the 30-day period prescribed in
section 2(e)(1) of title 35, United States Code, as added by subsection (a) of
this section, shall be deemed to be the 30-day period beginning on the date of
the enactment of this Act.
(c)Conversion of
day-based deadlines into month-based deadlines
(1)Sections 141,
156(d)(2)(A), 156(d)(2)(B)(ii), 156(d)(5)(C), and 282 of title 35, United
States Code, are each amended by striking 30 days
or
thirty days
each place that term appears and inserting 1
month
.
(2)Sections 135(c),
142, 145, 146, 156(d)(2)(B)(ii), 156(d)(5)(C), and the matter preceding clause
(i) of section 156(d)(2)(A) of title 35, United States Code, are each amended
by striking 60 days
or sixty days
each place that
term appears and inserting 2 months
.
(3)The matter
preceding subparagraph (A) of section 156(d)(1) and sections 156(d)(2)(B)(ii)
and 156(d)(5)(E) of title 35, United States Code, are each amended by striking
60-day
or sixty-day
each place that term appears
and inserting 2-month
.
(4)Sections 155 and
156(d)(2)(B)(i) of title 35, United States Code, are each amended by striking
90 days
or ninety days
each place that term
appears and inserting 3 months
.
(5)Sections
154(b)(4)(A) and 156(d)(2)(B)(i) of title 35, United States Code, are each
amended by striking 180 days
each place that term appears and
inserting 6 months
.
13.Limitation on
damages and other remedies with respect to patents for methods in compliance
with check imaging methods
(a)Section 287 of title 35, United States
Code, is amended by adding at the end the following:
(d)(1)With respect to the use by a financial
institution of a check collection system that constitutes an infringement under
subsection (a) or (b) of section 271, the provisions of sections 281, 283, 284,
and 285 shall not apply against the financial institution with respect to such
a check collection system.
(2)For the purposes of this
subsection—
(A)the term check has the
meaning given under section 3(6) of the Check Clearing for the 21st Century Act
(12 U.S.C. 5002(6));
(B)the term check collection
system means the use, creation, transmission, receipt, storing,
settling, or archiving of truncated checks, substitute checks, check images, or
electronic check data associated with or related to any method, system, or
process that furthers or effectuates, in whole or in part, any of the purposes
of the Check Clearing for the 21st Century Act (12 U.S.C. 5001 et seq.);
(C)the term financial
institution has the meaning given under section 509 of the
Gramm-Leach-Bliley Act (15 U.S.C. 6809);
(D)the term substitute check has
the meaning given under section 3(16) of the Check Clearing for the 21st
Century Act (12 U.S.C. 5002(16)); and
(E)the term truncate has the
meaning given under section 3(18) of the Check Clearing for the 21st Century
Act (12 U.S.C. 5002(18)).
(3)This subsection shall not limit or
affect the enforcement rights of the original owner of a patent where such
original owner—
(A)is directly engaged in the commercial
manufacture and distribution of machinery or the commercial development of
software; and
(B)has operated as a subsidiary of a bank
holding company, as such term is defined under section 2(a) of the Bank Holding
Company Act of 1956 (12 U.S.C. 1841(a)), prior to July 19, 2007.
(4)A party shall not manipulate its
activities, or conspire with others to manipulate its activities, for purposes
of establishing compliance with the requirements of this subsection, including,
without limitation, by granting or conveying any rights in the patent,
enforcement of the patent, or the result of any such
enforcement.
.
(b)If
this section is found to establish a taking of private property for public use
without just compensation, this section shall be null and void. The exclusive
remedy for such a finding shall be invalidation of this section. In the event
of such invalidation, for purposes of application of the time limitation on
damages in section 286 of title 35, United States Code, any action for patent
infringement or counterclaim for infringement that could have been filed or
continued but for this section, shall be considered to have been filed on the
date of enactment of this Act or continued from such date of enactment.
(c)The amendment made by subsection (a) shall apply to any
civil action for patent infringement pending or filed on or after the date of
enactment of this Act.
14.Patent and
trademark office funding
(a)In
this section:
(1)The
term Director means the Director of the United States Patent and
Trademark Office.
(2)The
term Fund means the public enterprise revolving fund established
under subsection (c).
(3)The
term Office means the United States Patent and Trademark
Office.
(4)The term Trademark Act of 1946 means an Act
entitled Act to provide for the registration and protection of
trademarks used in commerce, to carry out the provisions of certain
international conventions, and for other purposes
, approved July 5,
1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the Trademark Act
of 1946
or the Lanham Act
).
(5)The
term Undersecretary means the Under Secretary of Commerce for
Intellectual Property.
(b)
(1)Section 42 of title 35, United States
Code, is amended—
(A)in subsection
(b), by striking Patent and Trademark Office Appropriation
Account
and inserting United States Patent and Trademark Office
Public Enterprise Fund
; and
(B)in subsection (c),
in the first sentence—
(i)by
striking To the extent
and all that follows through
fees
and inserting Fees
; and
(ii)by
striking shall be collected by and shall be available to the
Director
and inserting shall be collected by the Director and
shall be available until expended
.
(2)The amendments made by paragraph (1) shall take effect on
the later of—
(A)October 1, 2008;
or
(B)the date of
enactment of this Act.
(c)
(1)There
is established in the Treasury of the United States a revolving fund to be
known as the United States Patent and Trademark Office Public Enterprise
Fund
. Any amounts in the Fund shall be available for use by the
Director without fiscal year limitation.
(2)There shall be deposited into the Fund—
(A)any fees
collected under sections 41, 42, and 376 of title 35, United States Code,
provided that notwithstanding any other provision of law, if such fees are
collected by, and payable to, the Director, the Director shall transfer such
amounts to the Fund; and
(B)any fees
collected under section 31 of the Trademark Act of 1946 (15 U.S.C.
1113).
(3)Amounts
deposited into the Fund under paragraph (2) shall be available, without fiscal
year limitation, to cover—
(A)all expenses to
the extent consistent with the limitation on the use of fees set forth in
section 42(c) of title 35, United States Code, including all administrative and
operating expenses, determined in the discretion of the Under Secretary to be
ordinary and reasonable, incurred by the Under Secretary and the Director for
the continued operation of all services, programs, activities, and duties of
the Office, as such services, programs, activities, and duties are described
under—
(i)title 35, United
States Code; and
(ii)the Trademark
Act of 1946; and
(B)all expenses
incurred pursuant to any obligation, representation, or other commitment of the
Office.
(4)Notwithstanding section 3302 of title 31, United States
Code, any funds received by the Director and transferred to Fund, or any
amounts directly deposited into the Fund, may be used—
(A)to cover the
expenses described in paragraph (3); and
(B)to purchase
obligations of the United States, or any obligations guaranteed by the United
States.
(d)Not later than 60 days after the end of each fiscal year,
the Under Secretary and the Director shall submit a report to Congress which
shall—
(1)summarize the
operations of the Office for the preceding fiscal year, including financial
details and staff levels broken down by each major activity of the
Office;
(2)detail the
operating plan of the Office, including specific expense and staff needs for
the upcoming fiscal year;
(3)describe the long
term modernization plans of the Office;
(4)set forth details
of any progress towards such modernization plans made in the previous fiscal
year; and
(5)include the
results of the most recent audit carried out under subsection (e).
(e)
(1)Not later than 30 days after the beginning of each fiscal
year, the Director shall notify the Committees on Appropriations of both Houses
of Congress of the plan for the obligation and expenditure of the total amount
of the funds for that fiscal year in accordance with section 605 of the
Science, State, Justice, Commerce, and Related Agencies Appropriations Act,
2006 (Public Law 109–108; 119 Stat. 2334).
(2)Each
plan under paragraph (1) shall—
(A)summarize the
operations of the Office for the current fiscal year, including financial
details and staff levels with respect to major activities; and
(B)detail the
operating plan of the Office, including specific expense and staff needs, for
the current fiscal year.
(f)The
Under Secretary shall, on an annual basis, provide for an independent audit of
the financial statements of the Office. Such audit shall be conducted in
accordance with generally acceptable accounting procedures.
(g)In
accordance with section 9103 of title 31, United States Code, the Fund shall
prepare and submit each year to the President a business-type budget in a way,
and before a date, the President prescribes by regulation for the budget
program.
15.
(a)Section 116 of title 35, United States Code, 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—
(A)by striking Whenever
and
inserting (c) Correction
of Errors in Application.—Whenever
; and
(B)by striking and such error arose
without any deceptive intent on his part,
.
(b)Filing of
application in foreign countrySection 184 of title 35, United
States Code, is amended—
(1)in the first
paragraph—
(A)by striking
Except when
and inserting (a)
Filing in Foreign
Country.—Except when
; and
(B)by striking
and without deceptive intent
;
(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)Section 185 of title 35, United States Code, is amended
by striking and without deceptive intent
.
(d)Reissue of
defective patentsSection 251 of title 35, United States Code, is
amended—
(1)in the first
paragraph—
(A)by striking
Whenever
and inserting (a)
In
general.—Whenever reissue of any patent is authorized under
section 298 or
; and
(B)by striking
without deceptive intention
;
(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
.
(e)Section 253 of title 35, United States Code, is
amended—
(1)in the first
paragraph, by striking Whenever, without deceptive intention
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),
.
(f)Correction
of named inventorSection 256 of title 35, United States Code, 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
.
(g)Section 282 of title 35, United States Code, 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
.
(h)Section 288 of title 35, United States Code, is
amended by striking , without any deceptive intention,
.
16.Effective date;
rule of construction
(a)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)Special
provisions relating to determinations of validity and patentability
(1)The amendments made by section 2 shall apply to any
application for a patent and any patent issued pursuant to such an application
that at any time—
(A)contained a claim
to a claimed invention that has an effective filing date, as such date is
defined under section 100(h) of title 35, United States Code, 1 year or more
after the date of the enactment of this Act;
(B)asserted a claim
to a right of priority under section 119, 365(a), or 365(b) of title 35, United
States Code, to any application that was filed 1 year or more after the date of
the enactment of this Act; or
(C)made a specific
reference under section 120, 121, or 365(c) of title 35, United States Code, to
any application to which the amendments made by section 2 otherwise apply under
this subsection.
(2)For
any application for patent and any patent issued pursuant to such an
application to which the amendments made by section 2 apply, no claim asserted
in such application shall be patentable or valid unless such claim meets the
conditions of patentability specified in section 102(g) of title 35, United
States Code, as such conditions were in effect on the day prior to the date of
enactment of this Act, if the application at any time—
(A)contained a claim
to a claimed invention that has an effective filing date as defined in section
100(h) of title 35, United States Code, earlier than 1 year after the date of
the enactment of this Act;
(B)asserted a claim
to a right of priority under section 119, 365(a), or 365(b) of title 35, United
States Code, to any application that was filed earlier than 1 year after the
date of the enactment of this Act; or
(C)made a specific
reference under section 120, 121, or 365(c) of title 35, United States Code,
with respect to which the requirements of section 102(g) applied.
(3)For the purpose of determining the validity of a claim in
any patent or the patentability of any claim in a nonprovisional application
for patent that is made before the effective date of the amendments made by
sections 2 and 3, other than in an action brought in a court before the date of
the enactment of this Act—
(A)the provisions of
subsections (c), (d), and (f) of section 102 of title 35, United States Code,
that were in effect on the day prior to the date of enactment of this Act shall
be deemed to be repealed;
(B)the amendments
made by section 3 of this Act shall apply, except that a claim in a patent that
is otherwise valid under the provisions of section 102(f) of title 35, United
States Code, as such provision was in effect on the day prior to the date of
enactment of this Act, shall not be invalidated by reason of this paragraph;
and
(C)the term
in public use or on sale
as used in section 102(b) of title 35,
United States Code, as such section was in effect on the day prior to the date
of enactment of this Act shall be deemed to exclude the use, sale, or offer for
sale of any subject matter that had not become available to the public.
(4)Continuity
of intent under the Create ActThe enactment of section 102(b)(3)
of title 35, United States Code, under section (2)(b) of this Act is done with
the same intent to promote joint research activities that was expressed,
including in the legislative history, through the enactment of the Cooperative
Research and Technology Enhancement Act of 2004 (Public Law 108–453; the
CREATE Act
), the amendments of which are stricken by section
2(c) of this Act. The United States Patent and Trademark Office shall
administer section 102(b)(3) of title 35, United States Code, in a manner
consistent with the legislative history of the CREATE Act that was relevant to
its administration by the United States Patent and Trademark Office.