[Congressional Bills 111th Congress]
[From the U.S. Government Publishing Office]
[S. 515 Reported in Senate (RS)]
Calendar No. 46
111th CONGRESS
1st Session
S. 515
To amend title 35, United States Code, to provide for patent reform.
_______________________________________________________________________
IN THE SENATE OF THE UNITED STATES
March 3, 2009
Mr. Leahy (for himself, Mr. Hatch, Mr. Schumer, Mr. Crapo, Mr.
Whitehouse, Mr. Risch, Mrs. Gillibrand, Ms. Klobuchar, Mr. Specter, Mr.
Cornyn, and Mrs. Feinstein) introduced the following bill; which was
read twice and referred to the Committee on the Judiciary
April 2, 2009
Reported by Mr. Leahy, with amendments
[Omit the part struck through and insert the part printed in italic]
_______________________________________________________________________
A BILL
To amend title 35, United States Code, to provide for patent reform.
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,
SECTION 1. SHORT TITLE; TABLE OF CONTENTS.
(a) Short Title.--This Act may be cited as the ``Patent Reform Act
of 2009''.
(b) Table of Contents.--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. Right of the inventor to obtain damages.
Sec. 5. Post-grant procedures and other quality enhancements.
Sec. 6. Definitions; Patent Trial and Appeal Board.
Sec. 7. Preissuance submissions by third parties.
Sec. 8. Venue and jurisdiction.
Sec. 9. Patent and Trademark Office regulatory authority.
Sec. 10. Residency of Federal Circuit judges.
Sec. 11. Micro-entity defined.
Sec. 12. Funding agreements.
Sec. 13. Patent and Trademark Office travel expenses test program.
Sec. 14. Best mode requirement.
Sec. 15. Pilot program in certain district courts.
Sec. <DELETED>12</DELETED>16. Technical amendments.
Sec. <DELETED>13</DELETED>17. Effective date; rule of construction.
Sec. <DELETED>14</DELETED>18. Severability.
SEC. 2. RIGHT OF THE FIRST INVENTOR TO FILE.
(a) Definitions.--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
the patent containing <DELETED>the claim</DELETED>a 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.''.
<DELETED> ``(j) The term `joint invention' means an invention
resulting from the collaboration of inventive endeavors of 2 or more
persons working toward the same end and producing an invention by their
collective efforts.''.</DELETED>
(b) Conditions for Patentability.--
(1) In general.--Section 102 of title 35, United States
Code, is amended to read as follows:
``Sec. 102. Conditions for patentability; novelty
``(a) Novelty; Prior Art.--<DELETED>A patent for a claimed
invention may not be obtained if </DELETED>A person shall be entitled
to a patent unless--
``(1) the claimed invention was patented, described in a
printed publication, or in public use, on sale, or otherwise
available to the public--
``(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) Exceptions.--
``(1) Prior inventor disclosure exception.--Subject 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
exceptions.--Subject matter that would otherwise qualify as
prior art only under subsection (a)(2), after taking into
account the exception under paragraph (1), shall not be prior
art to a claimed invention if--
``(A) the subject matter was obtained directly or
indirectly from the inventor or a joint inventor;
<DELETED> ``(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</DELETED>
``(B) the subject matter had been publicly
disclosed before the effective filing date of the
application or patent set forth under subsection (a)(2)
by the inventor or a joint inventor, or by others who
obtained the subject matter disclosed, directly or
indirectly, from the inventor or joint inventor; 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) In general.--Subject matter and a claimed
invention shall be deemed to have been owned by the
same person or subject to an obligation of assignment
to the same person in applying the provisions of
paragraph (2) if--
``(i) <DELETED>the claimed invention
was</DELETED>the subject matter and the claimed
invention were made by or on behalf of parties
to a joint research agreement that was in
effect on or before the effective filing date
of the claimed invention;
``(ii) the claimed invention was made as a
result of activities undertaken within the
scope of the joint research agreement; and
``(iii) the application for patent for the
claimed invention discloses or is amended to
disclose the names of the parties to the joint
research agreement.
``(B) For purposes of subparagraph (A), the term
`joint research agreement' means a written contract,
grant, or cooperative agreement entered into by 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
filed.--A patent or application for patent is effectively filed
under subsection (a)(2) with respect to any subject matter
described in the patent or application--
``(A) as of the filing date of the patent or the
application for patent; or
``(B) if the patent or application for patent is
entitled to claim a right of priority under section
119, 365(a), or 365(b) or to claim the benefit of an
earlier filing date under section 120, 121, or 365(c),
based upon 1 or more prior filed applications for
patent, as of the filing date of the earliest such
application that describes the subject matter.''.
(2) Conforming amendment.--The item relating to section 102
in the table of sections for chapter 10 of title 35, United
States Code, is amended to read as follows:
``102. Conditions for patentability; novelty.''.
(c) Conditions for Patentability; Nonobvious Subject Matter.--
Section 103 of title 35, United States Code, is amended to read as
follows:
``Sec. 103. Conditions for patentability; nonobvious subject matter
``A patent for a claimed invention may not be obtained though the
claimed invention is not identically disclosed as set forth in section
102, if the differences between the claimed invention and the prior art
are such that the claimed invention as a whole would have been obvious
before the effective filing date of the claimed invention to a person
having ordinary skill in the art to which the claimed invention
pertains. Patentability shall not be negated by the manner in which the
invention was made.''.
(d) Repeal of Requirements for Inventions Made Abroad.--Section 104
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) In general.--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 references.--Section 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 Inventor.--Section
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) Conforming Amendments.--
(1) Right of priority.--Section 172 of title 35, United
States Code, is amended by striking ``and the time specified in
section 102(d)''.
(2) Limitation on remedies.--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: effect.--Section 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: effect.--
Section 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: effect.--
The 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 priority.--Section 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 assistance.--Section
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 Remedies.--Section 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 Invention.--Section 135
of title 35, United States Code, is amended to read as follows:
``(a) Dispute Over Right to Patent.--
``(1) Institution of derivation proceeding.--An applicant
may request initiation of a derivation proceeding to determine
the right of the applicant to a patent by filing a request
which sets forth with particularity the basis for finding that
an earlier applicant derived the claimed invention from the
applicant requesting the proceeding and, without authorization,
filed an application claiming such invention. Any such request
may only be made within 12 months after the date of first
publication of an application containing a claim that is the
same or is substantially the same as the claimed invention,
must be made under oath, and must be supported by substantial
evidence. Whenever the Director determines that patents or
applications for patent naming different individuals as the
inventor interfere with one another because of a dispute over
the right to patent under <DELETED>section 101</DELETED>section
102(a), 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 board.--In
any proceeding instituted by the Director under this
subsection, the Patent Trial and Appeal Board--
<DELETED> ``(A) shall determine the question of the
right to patent;</DELETED>
``(A) shall determine which applicant or patent
owner is entitled to a patent on the claimed invention
that is the subject of the request;
``(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) Derivation proceeding.--The Board may defer action on
a request to initiate a derivation proceeding until 3 months
after the date on which the Director issues a patent to the
applicant <DELETED>that filed the earlier
application</DELETED>whose application has the earlier
effective filing date.
``(4) Effect of final decision.--The final decision of the
Patent Trial and Appeal Board, if adverse to the claim of an
applicant, shall constitute the final refusal by the 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.
``(b) Settlement.--Parties to a derivation proceeding may terminate
the proceeding by filing a written statement reflecting the agreement
of the parties as to the correct inventors of the claimed invention in
dispute. Unless the Patent Trial and Appeal Board finds the agreement
to be inconsistent with the evidence of record, it shall take action
consistent with the agreement. Any written settlement or understanding
of the parties shall be filed with the Director. At the request of a
party to the proceeding, the agreement or understanding shall be
treated as business confidential information, shall be kept separate
from the file of the involved patents or applications, and shall be
made available only to Government agencies on written request, or to
any person on a showing of good cause.
``(c) Arbitration.--Parties to a derivation proceeding, within such
time as may be specified by the Director by regulation, may determine
such contest or any aspect thereof by arbitration. Such arbitration
shall be governed by the provisions of title 9 to the extent such title
is not inconsistent with this section. The parties shall give notice of
any arbitration award to the Director, and such award shall, as between
the parties to the arbitration, be dispositive of the issues to which
it relates. The arbitration award shall be unenforceable until such
notice is given. Nothing in this subsection shall preclude the Director
from determining patentability of the invention involved in the
derivation proceeding.''.
(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:
``Sec. 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:
``Sec. 135. Derivation proceedings''.
(5) The section heading for section 146 of title 35, United States
Code, is amended to read as follows:
``Sec. 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) Certain Appeals.--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, interference proceedings
<DELETED>(commenced before the date of enactment of the
Patent Reform Act of 2009)</DELETED>, 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 2009), 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;''.
(k) Search and Examination Functions.--Section 131 of title 35,
United States Code, is amended by--
(1) by striking ``The Director shall cause'' and inserting
``(a) In General.--The Director shall cause''; and
(2) by adding at the end the following:
``(b) Search and Examination Functions.--To the extent consistent
with United States obligations under international agreements,
examination and search duties for the grant of a United States patent
are sovereign functions which shall be performed within the United
States by United States citizens who are employees of the United States
Government.''.
SEC. 3. INVENTOR'S OATH OR DECLARATION.
(a) Inventor's Oath or Declaration.--
(1) In general.--Section 115 of title 35, United States
Code, is amended to read as follows:
``Sec. 115. Inventor's oath or declaration
``(a) Naming the Inventor; Inventor's Oath or Declaration.--An
application for patent that is filed under section 111(a), that
commences the national stage under section <DELETED>363, or that is
filed by an inventor for an invention for which an application has
previously been filed under this title by that inventor</DELETED>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) Required Statements.--An oath or declaration under subsection
(a) shall contain statements that--
``(1) the application was made or was authorized to be made
by the affiant or declarant; and
``(2) such individual believes himself or herself to be the
original inventor or an original joint inventor of a claimed
invention in the application.
``(c) Additional Requirements.--The Director may specify additional
information relating to the inventor and the invention that is required
to be included in an oath or declaration under subsection (a).
``(d) Substitute Statement.--
``(1) In general.--In lieu of executing an oath or
declaration under subsection (a), the applicant for patent may
provide a substitute statement under the circumstances
described in paragraph (2) and such additional circumstances
that the Director may specify by regulation.
``(2) Permitted circumstances.--A substitute statement
under paragraph (1) is permitted with respect to any individual
who--
``(A) is unable to file the oath or declaration
under subsection (a) because the individual--
``(i) is deceased;
``(ii) is under legal incapacity; or
``(iii) cannot be found or reached after
diligent effort; or
``(B) is under an obligation to assign the
invention but has refused to make the oath or
declaration required under subsection (a).
``(3) Contents.--A substitute statement under this
subsection shall--
``(A) identify the individual with respect to whom
the statement applies;
``(B) set forth the circumstances representing the
permitted basis for the filing of the substitute
statement in lieu of the oath or declaration under
subsection (a); and
``(C) contain any additional information, including
any showing, required by the Director.
``(e) Making Required Statements in Assignment of Record.--An
individual who is under an obligation of assignment of an application
for patent may include the required statements under subsections (b)
and (c) in the assignment executed by the individual, in lieu of filing
such statements separately.
``(f) Time for Filing.--A notice of allowance under section 151 may
be provided to an applicant for patent only if the applicant for patent
has filed each required oath or declaration under subsection (a) or has
filed a substitute statement under subsection (d) or recorded an
assignment meeting the requirements of subsection (e).
``(g) Earlier-Filed Application Containing Required Statements or
Substitute Statement.--The requirements under this section shall not
apply to an individual with respect to an application for patent in
which the individual is named as the inventor or a joint inventor and
that claims the benefit under section 120 or 365(c) of the filing of an
earlier-filed application, if--
``(1) an oath or declaration meeting the requirements of
subsection (a) was executed by the individual and was filed in
connection with the earlier-filed application;
``(2) a substitute statement meeting the requirements of
subsection (d) was filed in the earlier filed application with
respect to the individual; or
``(3) an assignment meeting the requirements of subsection
(e) was executed with respect to the earlier-filed application
by the individual and was recorded in connection with the
earlier-filed application.
``(h) Supplemental and Corrected Statements; Filing Additional
Statements.--
``(1) In general.--Any person making a statement required
under this section may withdraw, replace, or otherwise correct
the statement at any time. If a change is made in the naming of
the inventor requiring the filing of 1 or more additional
statements under this section, the Director shall establish
regulations under which such additional statements may be
filed.
``(2) Supplemental statements not required.--If an
individual has executed an oath or declaration under subsection
(a) or an assignment meeting the requirements of subsection (e)
with respect to an application for patent, the Director may not
thereafter require that individual to make any additional oath,
declaration, or other statement equivalent to those required by
this section in connection with the application for patent or
any patent issuing thereon.
``(3) Savings clause.--No patent shall be invalid or
unenforceable based upon the failure to comply with a
requirement under this section if the failure is remedied as
provided under paragraph (1).
``(i) Acknowledgment of Penalties.--Any 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 applications.--Section 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 applications.--Section
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) Conforming amendment.--The item relating to section 115
in the table of sections for chapter 11 of title 35, United
States Code, is amended to read as follows:
``115. Inventor's oath or declaration.''.
(b) Filing by Other Than Inventor.--Section 118 of title 35, United
States Code, is amended to read as follows:
``Sec. 118. Filing by other than inventor
``A person to whom the inventor has assigned or is under an
obligation to assign the invention may make an application for patent.
A person who otherwise shows sufficient proprietary interest in the
matter may make an application for patent on behalf of and as agent for
the inventor on proof of the pertinent facts and a showing that such
action is appropriate to preserve the rights of the parties. If the
Director grants a patent on an application filed under this section by
a person other than the inventor, the patent shall be granted to the
real party in interest and upon such notice to the inventor as the
Director considers to be sufficient.''.
(c) Specification.--Section 112 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 ``of carrying out his invention''
and inserting ``or joint inventor of carrying out the
invention'';
(2) in the second paragraph--
(A) by striking ``The
<DELETED>specifications</DELETED>specification'' and
inserting ``(b) Conclusion.--The
<DELETED>specifications</DELETED>specification''; and
(B) by striking ``applicant regards as his
invention'' and inserting ``inventor or a joint
inventor regards as the invention'';
(3) in the third paragraph, by striking ``A claim'' and
inserting ``(c) Form.--A claim'';
(4) in the fourth paragraph, by striking ``Subject to the
following paragraph,'' and inserting ``(d) Reference in
Dependent Forms.--Subject to subsection (e),'';
(5) in the fifth paragraph, by striking ``A claim'' and
inserting ``(e) Reference in Multiple Dependent Form.--A
claim''; and
(6) in the last paragraph, by striking ``An element'' and
inserting ``(f) Element in Claim for a Combination.--An
element''.
SEC. 4. RIGHT OF THE INVENTOR TO OBTAIN DAMAGES.
(a) Damages.--Section 284 of title 35, United States Code, is
amended to read as follows:
<DELETED>``Sec. 284. Damages</DELETED>
<DELETED> ``(a) In General.--Upon finding for the 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 fixed by the court, subject to the provisions of this
section.</DELETED>
<DELETED> ``(b) Determination of Damages; Evidence Considered;
Procedure.--The court may receive expert testimony as an aid to the
determination of damages or of what royalty would be reasonable under
the circumstances. The admissibility of such testimony shall be
governed by the rules of evidence governing expert testimony. When the
damages are not found by a jury, the court shall assess them.</DELETED>
<DELETED> ``(c) Standard for Calculating Reasonable Royalty.--
</DELETED>
<DELETED> ``(1) In general.--The court shall determine,
based on the facts of the case and after adducing any further
evidence the court deems necessary, which of the following
methods shall be used by the court or the jury in calculating a
reasonable royalty pursuant to subsection (a). The court shall
also identify the factors that are relevant to the
determination of a reasonable royalty, and the court or jury,
as the case may be, shall consider only those factors in making
such determination.</DELETED>
<DELETED> ``(A) Entire market value.--Upon a showing
to the satisfaction of the court that the claimed
invention's specific contribution over the prior art is
the predominant basis for market demand for an
infringing product or process, damages may be based
upon the entire market value of that infringing product
or process.</DELETED>
<DELETED> ``(B) Established royalty based on
marketplace licensing.--Upon a showing to the
satisfaction of the court that the claimed invention
has been the subject of a nonexclusive license for the
use made of the invention by the infringer, to a number
of persons sufficient to indicate a general marketplace
recognition of the reasonableness of the licensing
terms, if the license was secured prior to the filing
of the case before the court, and the court determines
that the infringer's use is of substantially the same
scope, volume, and benefit of the rights granted under
such license, damages may be determined on the basis of
the terms of such license. Upon a showing to the
satisfaction of the court that the claimed invention
has sufficiently similar noninfringing substitutes in
the relevant market, which have themselves been the
subject of such nonexclusive licenses, and the court
determines that the infringer's use is of substantially
the same scope, volume, and benefit of the rights
granted under such licenses, damages may be determined
on the basis of the terms of such licenses.</DELETED>
<DELETED> ``(C) Valuation calculation.--Upon a
determination by the court that the showings required
under subparagraphs (A) and (B) have not been made, the
court shall conduct an analysis to ensure that a
reasonable royalty is applied only to the portion of
the economic value of the infringing product or process
properly attributable to the claimed invention's
specific contribution over the prior art. In the case
of a combination invention whose elements are present
individually in the prior art, the contribution over
the prior art may include the value of the additional
function resulting from the combination, as well as the
enhanced value, if any, of some or all of the prior art
elements as part of the combination, if the patentee
demonstrates that value.</DELETED>
<DELETED> ``(2) Additional factors.--Where the court
determines it to be appropriate in determining a reasonable
royalty under paragraph (1), the court may also consider, or
direct the jury to consider, any other relevant factors under
applicable law.</DELETED>
<DELETED> ``(d) Inapplicability to Other Damages Analysis.--The
methods for calculating a reasonable royalty described in subsection
(c) shall have no application to the calculation of an award of damages
that does not necessitate the determination of a reasonable royalty as
a basis for monetary relief sought by the claimant.</DELETED>
``Sec. 284. Damages
``(a) In General.--
``(1) Compensatory damages authorized.--Upon finding for
the 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
fixed by the court.
``(2) Use of experts permitted.--The court may receive
expert testimony as an aid to the determination of damages or
of what royalty would be reasonable under the circumstances.
``(b) Procedure for Determining Damages.--
``(1) In general.--The court shall identify the
methodologies and factors that are relevant to the
determination of damages, and the court or jury, shall consider
only those methodologies and factors relevant to making such
determination.
``(2) Disclosure of claims.--By no later than the entry of
the final pretrial order, unless otherwise ordered by the
court, the parties shall state, in writing and with
particularity, the methodologies and factors the parties
propose for instruction to the jury in determining damages
under this section, specifying the relevant underlying legal
and factual bases for their assertions.
``(3) Sufficiency of evidence.--Prior to the introduction
of any evidence concerning the determination of damages, upon
motion of either party or sua sponte, the court shall consider
whether one or more of a party's damages contentions lacks a
legally sufficient evidentiary basis. After providing a
nonmovant the opportunity to be heard, and after any further
proffer of evidence, briefing, or argument that the court may
deem appropriate, the court shall identify on the record those
methodologies and factors as to which there is a legally
sufficient evidentiary basis, and the court or jury shall
consider only those methodologies and factors in making the
determination of damages under this section. The court shall
only permit the introduction of evidence relating to the
determination of damages that is relevant to the methodologies
and factors that the court determines may be considered in
making the damages determination.
``(<DELETED>e</DELETED>c) Willful Infringement.--
``(1) Increased damages.--A court that has determined that
an infringer has willfully infringed a patent or patents may
increase damages up to 3 times the amount of the damages found
or assessed under subsection (a), except that increased damages
under this paragraph shall not apply to provisional rights
under section 154(d).
``(2) Permitted grounds for willfulness.--A court may find
that an infringer has willfully infringed a patent only if the
patent owner <DELETED>presents</DELETED>proves by clear and
convincing evidence that acting with objective recklessness--
``(A) after receiving written notice from the
patentee--
``(i) alleging acts of infringement in a
manner sufficient to give the infringer an
objectively reasonable apprehension of suit on
such patent, and
``(ii) identifying with particularity each
claim of the patent, each product or process
that the patent owner alleges infringes the
patent, and the relationship of such product or
process to such claim,
the infringer, after a reasonable opportunity to
investigate, thereafter performed 1 or more of the
alleged acts of infringement;
``(B) the infringer intentionally copied the
patented invention with knowledge that it was patented;
or
``(C) after having been found by a court to have
infringed that patent, the infringer engaged in conduct
that was not colorably different from the conduct
previously found to have infringed the patent, and
which resulted in a separate finding of infringement of
the same patent.
``(3) Limitations on willfulness.--
<DELETED> ``(A) In general.--A court may not find
that an infringer has willfully infringed a patent
under paragraph (2) for any period of time during which
the infringer had an informed good faith belief that
the patent was invalid or unenforceable, or would not
be infringed by the conduct later shown to constitute
infringement of the patent.</DELETED>
<DELETED> ``(B) Good faith established.--An informed
good faith belief within the meaning of subparagraph
(A) may be established by--</DELETED>
<DELETED> ``(i) reasonable reliance on
advice of counsel;</DELETED>
<DELETED> ``(ii) evidence that the infringer
sought to modify its conduct to avoid
infringement once it had discovered the patent;
or</DELETED>
<DELETED> ``(iii) other evidence a court may
find sufficient to establish such good faith
belief.</DELETED>
``(A) In general.--Notwithstanding paragraph (2),
an infringer may not be found to have acted with
objective recklessness where for any period of time
during which the infringer had an informed good faith
belief that the patent was invalid or unenforceable, or
would not be infringed by the conduct later shown to
constitute infringement of the patent, and--
``(i) there was reasonable reliance on
advice of counsel;
``(ii) the infringer sought to modify its
conduct to avoid infringement once it had
discovered the patent; or
``(iii) there is sufficient evidence that
the infringer had a good faith belief that the
patent was invalid or unenforceable, or would
not be infringed by conduct later shown to
constitute infringement of the patent.
``<DELETED>(C)</DELETED>(B) Relevance of not
presenting certain evidence.--The decision of the
infringer not to present evidence of advice of counsel
is not relevant to a determination of willful
infringement under paragraph (2).
``(4) Limitation on pleading.--Before the date on which a
court determines that the patent in suit is not invalid, is
enforceable, and has been infringed by the infringer, a
patentee may not plead and a court may not determine that an
infringer has willfully infringed a patent. <DELETED>The
court's determination of an infringer's willfulness shall be
made without a jury.</DELETED>''.
(b) Report to Congressional Committees.--
(1) In general.--Not later than 2 years after the date of
enactment of this Act, the Director shall report to the
Committee on the Judiciary of the Senate and the Committee on
the Judiciary of the House of Representatives, the findings and
recommendations of the Director on the operation of prior user
rights in selected countries in the industrialized world. The
report shall include the following:
(A) A comparison between patent laws of the United
States and the laws of other industrialized countries,
including the European Union, Japan, Canada, and
Australia.
(B) An analysis of the effect of prior user rights
on innovation rates in the selected countries.
(C) An analysis of the correlation, if any, between
prior user rights and start-up enterprises and the
ability to attract venture capital to start new
companies.
(D) An analysis of the effect of prior user rights,
if any, on small businesses, universities, and
individual inventors.
(E) An analysis of legal and constitutional issues,
if any, that arise from placing trade secret law in
patent law.
(2) Consultation with other agencies.--In preparing the
report required under paragraph (1), the Director shall consult
with the United States Trade Representative, the Secretary of
State and the Attorney General.
(c) Defense to Infringement Based on Earlier Inventor.--Section
273(b)(6) of title 35, United States Code, is amended to read as
follows:
``(6) Personal defense.--The defense under this section may
be asserted only by the person who performed or caused the
performance of the acts necessary to establish the defense as
well as any other entity that controls, is controlled by, or is
under common control with such person and, except for any
transfer to the patent owner, the right to assert the defense
shall not be licensed or assigned or transferred to another
person except as an ancillary and subordinate part of a good
faith assignment or transfer for other reasons of the entire
enterprise or line of business to which the defense relates.
Notwithstanding the preceding sentence, any person may, on its
own behalf, assert a defense based on the exhaustion of rights
provided under paragraph (3), including any necessary elements
thereof.''.
(d) Effective Date.--The amendments made by this section shall
apply to any civil action commenced on or after the date of enactment
of this Act.
(e) Virtual Marking.--Section 287(a) of title 35, United States
Code, is amended by inserting ``, or by fixing thereon the word
`patent' or the abbreviation `pat.' together with an address of a
posting on the Internet, accessible to the public without charge for
accessing the address, that associates the patented article with the
number of the patent'' before ``, or when''.
SEC. 5. POST-GRANT PROCEDURES AND OTHER QUALITY ENHANCEMENTS.
(a) Citation of Prior Art.--Section 301 of title 35, United States
Code, is amended to read as follows:
``Sec. 301. Citation of prior art
``(a) In General.--Any person at any time may cite to the Office in
writing--
<DELETED> ``(1) prior art consisting of patents, printed
publications, or evidence that the claimed invention was in
public use or sale in the United States more than 1 year prior
to the effective filing date of the application for patent in
the United States, which that person believes to have a bearing
on the patentability of any claim of a particular patent;
or</DELETED>
``(1) prior art consisting of patents or printed
publications which that person believes to have a bearing on
the patentability of any claim of a particular patent; or
``(2) written statements of the patent owner filed in a
proceeding before a Federal court or the Patent and Trademark
Office in which the patent owner takes a position on the scope
of one or more patent claims.
``(b) Submissions Part of Official File.--If the person citing
prior art or written submissions under subsection (a) explains in
writing the pertinence and manner of applying the prior art or written
submission to at least one claim of the patent, the citation of the
prior art <DELETED>or documentary evidence (as the case may
be)</DELETED>or written submissions (as the case may be) and the
explanation thereof shall become a part of the official file of the
patent.
``(c) Procedures for Written Statements.--
``(1) Submission of additional materials.--A party that
submits written statements under subsection (a)(2) in a
proceeding shall include any other documents, pleadings, or
evidence from the proceeding that address the patent owner's
statements or the claims addressed by the written statements.
``(2) Limitation on use of statements.--Written statements
submitted under subsection (a)(2) shall not be considered for
any purpose other than to determine the proper meaning of the
claims that are the subject of the request in a proceeding
ordered pursuant to section 304 or 313. Any such written
statements, and any materials submitted under paragraph (1),
that are subject to an applicable protective order shall be
redacted to exclude information subject to the order.
``(d) Identity Withheld.--Upon the written request of the person
<DELETED>making the citation</DELETED>citing prior art or written
statements under subsection (a), the person's identity shall be
excluded from the patent file and kept confidential.''.
<DELETED> (b) Request for Reexamination.--The first sentence of
section 302 of title 35, United States Code, is amended to read as
follows: ``Any person at any time may file a request for reexamination
by the Office of any claim on a patent on the basis of any prior art or
documentary evidence cited under paragraph (1) or (3) of subsection (a)
of section 301 of this title.''.</DELETED>
(<DELETED>c</DELETED>b) Reexamination.--Section 303(a) of title 35,
United States Code, is amended to read as follows:
``(a) Within three months following the filing of a request for
reexamination under section 302, the Director shall determine whether a
substantial new question of patentability affecting any claim of the
patent concerned is raised by the request, with or without
consideration of other patents or printed publications. On the
Director's own initiative, and at any time, the Director may determine
whether a substantial new question of patentability is raised by
<DELETED>patents, publications, or other evidence</DELETED>patents or
publications discovered by the Director, is cited under section 301, or
is cited by any person other than the owner of the patent under section
302 or section 311. The existence of a substantial new question of
patentability is not precluded by the fact that a <DELETED>patent,
printed publication, or other evidence</DELETED>patent or printed
publication was previously considered by the Office.''.
<DELETED> (d) Request for Inter Partes Reexamination.--Section
311(a) of title 35, United States Code, is amended to read as
follows:</DELETED>
<DELETED> ``(a) In General.--Any third-party requester at any time
may file a request for inter partes reexamination by the Office of a
patent on the basis of any prior art or documentary evidence cited
under paragraph (1) or (3) of subsection (a) of section 301 of this
title.''.</DELETED>
(<DELETED>e</DELETED>c) Conduct of Inter Partes Proceedings.--
Section 314 of title 35, United States Code, is amended--
(1) in the first sentence of subsection (a), by striking
``conducted according to the procedures established for initial
examination under the provisions of sections 132 and 133'' and
inserting ``heard by an administrative patent judge in
accordance with procedures which the Director shall
establish'';
(2) in subsection (b), by striking paragraph (2) and
inserting the following:
``(2) The third-party requester shall have the opportunity to file
written comments on any action on the merits by the Office in the inter
partes reexamination proceeding, and on any response that the patent
owner files to such an action, if those written comments are received
by the Office within 60 days after the date of service on the third-
party requester of the Office action or patent owner response, as the
case may be.''; and
(3) by adding at the end the following:
``(d) Oral Hearing.--At the request of a third-party requestor or
the patent owner, the administrative patent judge shall conduct an oral
hearing, unless the judge finds cause lacking for such hearing.''.
(<DELETED>f</DELETED>d) Estoppel.--Section 315(c) of title 35,
United States Code, is amended by striking ``or could have raised''.
(<DELETED>g</DELETED>e) Reexamination Prohibited After District
Court Decision.--Section 317(b) of title 35, United States Code, is
amended--
(1) in the subsection heading, by striking ``Final
Decision'' and inserting ``District Court Decision''; and
(2) by striking ``Once a final decision has been entered''
and inserting ``Once the judgment of the district court has
been entered''.
(<DELETED>h</DELETED>f) Post-Grant Opposition Procedures.--
(1) In general.--Part III of title 35, United States Code,
is amended by adding at the end the following new chapter:
``CHAPTER 32--POST-GRANT REVIEW PROCEDURES
``Sec.
``321. Petition for post-grant review.
``322. Timing and bases of petition.
``323. Requirements of petition.
``324. Prohibited filings.
``325. Submission of additional information; showing of sufficient
grounds.
``326. Conduct of post-grant review proceedings.
``327. Patent owner response.
``328. Proof and evidentiary standards.
``329. Amendment of the patent.
``330. Decision of the Board.
``331. Effect of decision.
``332. Settlement.
``333. Relationship to other pending proceedings.
``334. Effect of decisions rendered in civil action on post-grant
review proceedings.
``335. Effect of final decision on future proceedings.
``336. Appeal.
``Sec. 321. Petition for post-grant review
``Subject to sections 322, 324, 332, and 333, a person who is not
the patent owner may file with the Office a petition for cancellation
seeking to institute a post-grant review proceeding to cancel as
unpatentable any claim of a patent on any ground that could be raised
under <DELETED>paragraph (2) or (3) of section 282(b)</DELETED>section
282 (relating to invalidity of the patent or any claim). The Director
shall establish, by regulation, fees to be paid by the person
requesting the proceeding, in such amounts as the Director determines
to be reasonable.
``Sec. 322. Timing and bases of petition
``A post-grant proceeding may be instituted by the Director under
this chapter pursuant to a cancellation petition filed under section
321. Such proceeding may be instituted only if--
``(1) the petition is filed not later than 12 months after
the issuance of the patent or a reissue patent, as the case may
be; or
``(2) the patent owner consents in writing to the
proceeding.
``Sec. 323. Requirements of petition
``A cancellation petition filed under section 321 may be considered
only if--
``(1) the petition is accompanied by payment of the fee
established by the Director under section 321;
``(2) the petition identifies the cancellation petitioner;
``(3) for each claim sought to be canceled, the petition
sets forth in writing the basis for cancellation and provides
the evidence in support thereof, including copies of patents
and printed publications, or written testimony of a witness
attested to under oath or declaration by the witness, or any
other information that the Director may require by regulation;
and
``(4) the petitioner provides copies of the petition,
including any evidence submitted with the petition and any
other information submitted under paragraph (3), to the patent
owner or, if applicable, the designated representative of the
patent owner.
``Sec. 324. Prohibited filings
``A post-grant review proceeding may not be instituted under
section 322 if the petition for cancellation requesting the
proceeding--
``(1) identifies the same cancellation petitioner and the
same patent as a previous petition for cancellation filed under
such section; or
``(2) is based on the best mode requirement contained in
section 112.
``Sec. 325. Submission of additional information; showing of sufficient
grounds
``(a) In General.--The cancellation petitioner shall file such
additional information with respect to the petition as the Director may
require. For each petition submitted under section 321, the Director
shall determine if the written statement, and any evidence submitted
with the request, establish that a substantial question of
patentability exists for at least one claim in the patent. The Director
may <DELETED>initiate</DELETED>institute a post-grant review proceeding
if the Director determines that the information presented provides
sufficient grounds to believe that there is a substantial question of
patentability concerning one or more claims of the patent at issue.
``(b) Notification; Determinations Not Reviewable.--The Director
shall notify the patent owner and each petitioner in writing of the
Director's determination under subsection (a), including a
determination to deny the petition. The Director shall make that
determination in writing not later than 60 days after receiving the
petition. Any determination made by the Director under subsection (a),
including whether or not to institute a post-grant review proceeding or
to deny the petition, shall not be reviewable.
``Sec. 326. Conduct of post-grant review proceedings
``(a) In General.--The Director shall prescribe regulations, in
accordance with section 2(b)(2)--
``(1) establishing and governing post-grant review
proceedings under this chapter and their relationship to other
proceedings under this title;
``(2) establishing procedures for the submission of
supplemental information after the petition for cancellation is
filed; and
``(3) setting forth procedures for discovery of relevant
evidence, including that such discovery shall be limited to
evidence directly related to factual assertions advanced by
either party in the proceeding, and the procedures for
obtaining such evidence shall be consistent with the purpose
and nature of the proceeding.
In carrying out paragraph (3), the Director shall bear in mind that
discovery must be in the interests of justice.
``(b) Post-Grant Regulations.--Regulations under subsection
(a)(1)--
``(1) shall require that the final determination in a post-
grant proceeding issue not later than one year after the date
on which the post-grant review proceeding is instituted under
this chapter, except that, for good cause shown, the Director
may extend the 1-year period by not more than six months;
``(2) shall provide for discovery upon order of the
Director;
``(3) shall provide for publication of notice in the
Federal Register of the filing of a petition for post-grant
review under this chapter, for publication of the petition, and
documents, orders, and decisions relating to the petition, on
the website of the Patent and Trademark Office, and for filings
under seal exempt from publication requirements;
``(4) shall prescribe sanctions for abuse of discovery,
abuse of process, or any other improper use of the proceeding,
such as to harass or to cause unnecessary delay or unnecessary
increase in the cost of the proceeding;
``(5) may provide for protective orders governing the
exchange and submission of confidential information; and
``(6) shall ensure that any information submitted by the
patent owner in support of any amendment entered under section
329 is made available to the public as part of the prosecution
history of the patent.
``(c) Considerations.--In prescribing regulations under this
section, the Director shall consider the effect on the economy, the
integrity of the patent system, and the efficient administration of the
Office.
``(d) Conduct of Proceeding.--The Patent Trial and Appeal Board
shall, in accordance with section 6(b), conduct each post-grant review
proceeding <DELETED>authorized</DELETED>instituted by the Director.
``Sec. 327. Patent owner response
``After a post-grant proceeding under this chapter has been
instituted with respect to a patent, the patent owner shall have the
right to file, within a time period set by the Director, a response to
the cancellation petition. The patent owner shall file with the
response, through affidavits or declarations, any additional factual
evidence and expert opinions on which the patent owner relies in
support of the response.
``Sec. 328. Proof and evidentiary standards
``(a) In General.--The presumption of validity set forth in section
282 shall not apply in a challenge to any patent claim under this
chapter.
``(b) Burden of Proof.--The party advancing a proposition under
this chapter shall have the burden of proving that proposition by a
preponderance of the evidence.
``Sec. 329. Amendment of the patent
``(a) In General.--In response to a challenge in a petition for
cancellation, the patent owner may file one motion to amend the patent
in one or more of the following ways:
``(1) Cancel any challenged patent claim.
``(2) For each challenged claim, propose a substitute
claim.
``(3) Amend the patent drawings or otherwise amend the
patent other than the claims.
``(b) Additional Motions.--Additional motions to amend may be
permitted only for good cause shown.
``(c) Scope of Claims.--An amendment under this section may not
enlarge the scope of the claims of the patent or introduce new matter.
``Sec. 330. Decision of the Board
``If the post-grant review proceeding is instituted and not
dismissed under this chapter, the Patent Trial and Appeal Board shall
issue a final written decision addressing the patentability of any
patent claim challenged and any new claim added under section 329.
``Sec. 331. Effect of decision
``(a) In General.--If the Patent Trial and Appeal Board issues a
final decision under section 330 and the time for appeal has expired or
any appeal proceeding has terminated, the Director shall issue and
publish a certificate canceling any claim of the patent finally
determined to be unpatentable and incorporating in the patent by
operation of the certificate any new claim determined to be patentable.
``(b) New Claims.--Any new claim held to be patentable and
incorporated into a patent in a post-grant review proceeding shall have
the same effect as that specified in section 252 for reissued patents
on the right of any person who made, purchased, offered to sell, or
used within the United States, or imported into the United States,
anything patented by such new claim, or who made substantial
preparations therefor, before a certificate under subsection (a) of
this section is issued.
``Sec. 332. Settlement
``(a) In General.--A post-grant review proceeding shall be
terminated with respect to any petitioner upon the joint request of the
petitioner and the patent owner, unless the Patent Trial and Appeal
Board has issued a written decision before the request for termination
is filed. If the post-grant review proceeding is terminated with
respect to a petitioner under this paragraph, no estoppel shall apply
to that petitioner. If no petitioner remains in the proceeding, the
panel of administrative patent judges assigned to the proceeding shall
terminate the proceeding.
``(b) Agreement in Writing.--Any agreement or understanding between
the patent owner and a petitioner, including any collateral agreements
referred to in the agreement or understanding, that is made in
connection with or in contemplation of the termination of a post-grant
review proceeding, must be in writing. A post-grant review proceeding
as between the parties to the agreement or understanding may not be
terminated until a copy of the agreement or understanding, including
any such collateral agreements, has been filed in the Office. If any
party filing such an agreement or understanding requests, the agreement
or understanding shall be kept separate from the file of the post-grant
review proceeding, and shall be made available only to Government
agencies on written request, or to any person on a showing of good
cause.
``Sec. 333. Relationship to other proceedings
``(a) In General.--Notwithstanding subsection 135(a), sections 251
and 252, and chapter 30, the Director may determine the manner in which
any reexamination proceeding, reissue proceeding, interference
proceeding (commenced with respect to an application for patent filed
before the effective date provided in <DELETED>section
3(k)</DELETED>section 5(k) of the Patent Reform Act of 2009),
derivation proceeding, or post-grant review proceeding, that is pending
during a post-grant review proceeding, may proceed, including providing
for stay, transfer, consolidation, or termination of any such
proceeding.
``(b) Stays.--The Director may stay a post-grant review proceeding
if a pending civil action for infringement of a patent addresses the
same or substantially the same questions of patentability raised
against the patent in a petition for the post-grant review proceeding.
``(c) Effect of Commencement of Proceeding.--The commencement of a
post-grant review proceeding--
``(1) shall not limit in any way the right of the patent
owner to commence an action for infringement of the patent; and
``(2) shall not be cited as evidence relating to the
validity of any claim of the patent in any proceeding before a
court or the International Trade Commission concerning the
patent.
``Sec. 334. Effect of decisions rendered in civil action on post-grant
review proceedings
``If a final decision is entered against a party in a civil action
arising in whole or in part under section 1338 of title 28 establishing
that the party has not sustained its burden of proving the invalidity
of any patent claim--
``(1) that party to the civil action and the privies of
that party may not thereafter request a post-grant review
proceeding on that patent claim on the basis of any grounds,
under the provisions of section 321, which that party or the
privies of that party raised or could have raised; and
``(2) the Director may not thereafter maintain a post-grant
review proceeding that was requested, before the final decision
was so entered, by that party or the privies of that party on
the basis of such grounds.
``Sec. 335. Effect of final decision on future proceedings
``If a final decision under section 330 is favorable to the
patentability of any original or new claim of the patent challenged by
the cancellation petitioner, the cancellation petitioner may not
thereafter, based on any ground that the cancellation petitioner raised
during the post-grant review proceeding--
``(1) request or pursue a reexamination of such claim under
chapter 31;
``(2) request or pursue a derivation proceeding with
respect to such claim;
``(3) request or pursue a post-grant review proceeding
under this chapter with respect to such claim;
``(4) assert the invalidity of any such claim in any civil
action arising in whole or in part under section 1338 of title
28; or
``(5) assert the invalidity of any such claim in defense to
an action brought under section 337 of the Tariff Act of 1930
(19 U.S.C. 1337).
``Sec. 336. Appeal
``A party dissatisfied with the final determination of the Patent
Trial and Appeal Board in a post-grant proceeding under this chapter
may appeal the determination under sections 141 through 144. Any party
to the post-grant proceeding shall have the right to be a party to the
appeal.''.
(<DELETED>i</DELETED>g) Conforming Amendment.--The table of
chapters for part III of title 35, United States Code, is amended by
adding at the end the following:
``32. Post-Grant Review Proceedings......................... 321''.
(<DELETED>j</DELETED>h) Repeal.--Section 4607 of the Intellectual
Property and Communications Omnibus Reform Act of 1999, as enacted by
section 1000(a)(9) of Public Law 106-113, is repealed.
(<DELETED>k</DELETED>i) Effective Dates.--
(1) In general.--The amendments and repeal made by this
section shall take effect at the end of the 1-year period
beginning on the date of the enactment of this Act.
(2) Applicability to ex parte and inter partes
proceedings.--Notwithstanding any other provision of law,
sections 301 and 311 through 318 of title 35, United States
Code, as amended by this section, shall apply to any patent
that issues before, on, or after the effective date under
paragraph (1) from an original application filed on any date.
(3) Applicability to post-grant proceedings.--The
amendments made by subsections <DELETED>(h) and
(i)</DELETED>(f) and (g) shall apply to patents issued on or
after the effective date under paragraph (1).
(<DELETED>l</DELETED>j) Regulations.--The Under Secretary of
Commerce for Intellectual Property and Director of the United States
Patent and Trademark Office (in this subsection referred to as the
``Director'') shall, not later than the date that is 1 year after the
date of the enactment of this Act, issue regulations to carry out
chapter 32 of title 35, United States Code, as added by subsection
<DELETED>(h)</DELETED>(f) of this section.
SEC. 6. DEFINITIONS; PATENT TRIAL AND APPEAL BOARD.
(a) Definitions.--Section 100 of title 35, United States Code, (as
amended by section 2 of this Act) is further <DELETED>amended--
<DELETED> (1) in subsection (e), by striking ``or inter
partes reexamination under section 311''; and</DELETED>
(2)</DELETED> by adding at the end the following:</DELETED>
amended by adding at the end the following:
``(<DELETED>k</DELETED>j) The term `cancellation petitioner' means
the real party in interest requesting cancellation of any claim of a
patent under chapter <DELETED>31</DELETED>32 of this title and the
privies of the real party in interest.''.
(b) Patent Trial and Appeal Board.--Section 6 of title 35, United
States Code, is amended to read as follows:
``Sec. 6. Patent Trial and Appeal Board
``(a) Establishment and Composition.--There shall be in the Office
a Patent Trial and Appeal Board. The Director, the Deputy Director, the
Commissioner for Patents, the Commissioner for Trademarks, and the
administrative patent judges shall constitute the Patent Trial and
Appeal Board. The administrative patent judges shall be persons of
competent legal knowledge and scientific ability who are appointed by
the Secretary of Commerce. Any reference in any Federal law, Executive
order, rule, regulation, or delegation of authority, or any document of
or pertaining to the Board of Patent Appeals and Interferences is
deemed to refer to the Patent Trial and Appeal Board.
``(b) Duties.--The Patent Trial and Appeal Board shall--
``(1) on written appeal of an applicant, review adverse
decisions of examiners upon application for patents;
``(2) on written appeal of a patent owner, review adverse
decisions <DELETED>of examiners</DELETED> upon patents in
reexamination proceedings under chapter 30;
``(3) conduct derivation proceedings under subsection
135(a); and
``(4) conduct post-grant opposition proceedings under
chapter 32.
<DELETED>Each appeal and derivation proceeding</DELETED>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. The Director shall assign each post-grant review proceeding
to a panel of 3 administrative patent judges. Once assigned, each such
panel of administrative patent judges shall have the responsibilities
under chapter 32 in connection with post-grant review proceedings.''.
SEC. 7. PREISSUANCE SUBMISSIONS BY THIRD PARTIES.
Section 122 of title 35, United States Code, is amended by adding
at the end the following:
``(e) Preissuance Submissions by Third Parties.--
``(1) In general.--Any person may submit for consideration
and inclusion in the record of a patent application, any
patent, published patent application, or other publication of
potential relevance to the examination of the application, if
such submission is made in writing before the earlier of--
``(A) the date a notice of allowance under section
151 is mailed in the application for patent; or
``(B) either--
``(i) 6 months after the date on which the
application for patent is published under
section 122, or
``(ii) the date of the first rejection
under section 132 of any claim by the examiner
during the examination of the application for
patent,
whichever occurs later.
``(2) Other requirements.--Any submission under paragraph
(1) shall--
``(A) set forth a concise description of the
asserted relevance of each submitted document;
``(B) be accompanied by such fee as the Director
may prescribe; and
``(C) include a statement by the person making such
submission affirming that the submission was made in
compliance with this section.''.
SEC. 8. VENUE AND JURISDICTION.
<DELETED> (a) Venue for Patent Cases.--Section 1400 of title 28,
United States Code, is amended by striking subsection (b) and inserting
the following:</DELETED>
<DELETED> ``(b) Notwithstanding section 1391 of this title, in any
civil action arising under any Act of Congress relating to patents, a
party shall not manufacture venue by assignment, incorporation, or
otherwise to invoke the venue of a specific district court.</DELETED>
<DELETED> ``(c) Notwithstanding section 1391 of this title, any
civil action for patent infringement or any action for declaratory
judgment may be brought only in a judicial district--</DELETED>
<DELETED> ``(1) where the defendant has its principal place
of business or in the location or place in which the defendant
is incorporated or formed, or, for foreign corporations with a
United States subsidiary, where the defendant's primary United
States subsidiary has its principal place of business or is
incorporated or formed;</DELETED>
<DELETED> ``(2) where the defendant has committed
substantial acts of infringement and has a regular and
established physical facility that the defendant controls and
that constitutes a substantial portion of the operations of the
defendant;</DELETED>
<DELETED> ``(3) where the primary plaintiff resides, if the
primary plaintiff in the action is--</DELETED>
<DELETED> ``(A) an institution of higher education
as defined under section 101(a) of the Higher Education
Act of 1965 (20 U.S.C. 1001(a)); or</DELETED>
<DELETED> ``(B) a nonprofit organization that--
</DELETED>
<DELETED> ``(i) qualifies for treatment
under section 501(c)(3) of the Internal Revenue
Code (26 U.S.C. 501(c)(3));</DELETED>
<DELETED> ``(ii) is exempt from taxation
under section 501(a) of such Code;
and</DELETED>
<DELETED> ``(iii) serves as the patent and
licensing organization for an institution of
higher education as defined under section
101(a) of the Higher Education Act of 1965 (20
U.S.C. 1001(a)); or</DELETED>
<DELETED> ``(4) where the plaintiff resides, if the sole
plaintiff in the action is an individual inventor who is a
natural person and who qualifies at the time such action is
filed as a micro-entity pursuant to section 123 of title
35.</DELETED>
<DELETED> ``(d) If a plaintiff brings a civil action for patent
infringement or declaratory judgment relief under subsection (c), then
the defendant may request the district court to transfer that action to
another district or division where, in the court's determination--
</DELETED>
<DELETED> ``(1) any of the parties has substantial evidence
or witnesses that otherwise would present considerable
evidentiary burdens to the defendant if such transfer were not
granted;</DELETED>
<DELETED> ``(2) such transfer would not cause undue hardship
to the plaintiff; and</DELETED>
<DELETED> ``(3) venue would be otherwise appropriate under
section 1391 of this title.''.</DELETED>
<DELETED> (b) Interlocutory Appeals.--Subsection (c)(2) of section
1292 of title 28, United States Code, is amended by adding at the end
the following:</DELETED>
<DELETED> ``(3) of an appeal from an interlocutory order or
decree determining construction of claims in a civil action for
patent infringement under section 271 of title 35.</DELETED>
<DELETED>Application for an appeal under paragraph (3) shall be
made to the court within 10 days after entry of the order or
decree. The district court shall have discretion whether to
approve the application and, if so, whether to stay proceedings
in the district court during the pendency of such
appeal.''.</DELETED>
(a) Change of Venue.--Section 1400 of title 28, Unite States Code,
is amended by adding at the end the following:
``(c) Change of Venue.--For the convenience of parties and
witnesses, in the interest of justice, a district court shall transfer
any civil action arising under any Act of Congress relating to patents
upon a showing that the transferee venue is clearly more convenient
than the venue in which the civil action is pending.''.
(b) Interlocutory Appeals.--Section 1292(c) of title 28, United
States Code, is amended--
(1) in paragraph (1), by striking ``and'' after the
semicolon;
(2) in paragraph (2), by striking the period and inserting
``; and''; and
(3) by adding at the end the following:
``(3) of a final order or decree of a district court
determining construction of a patent claim in a civil action
for patent infringement under section 271 of title 35, if the
district court finds that there is a sufficient evidentiary
record and an immediate appeal from the order (A) may
materially advance the ultimate termination of the litigation,
or (B) will likely control the outcome of the case, unless such
certification is clearly erroneous.''.
(c) Technical Amendments Relating to Venue.--Sections 32, 145, 146,
154(b)(4)(A), and 293 of title 35, United States Code, and section
21(b)(4) of 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 (commonly referred to as the
``Trademark Act of 1946'' or the ``Lanham Act''; 15 U.S.C. 1071(b)(4)),
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''.
SEC. 9. PATENT AND TRADEMARK OFFICE REGULATORY AUTHORITY.
(a) Fee Setting.--
(1) In general.--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 years.--In 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 committee.--The 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) In general.--Any rules prescribed under this
subsection shall be published in the Federal Register.
(B) Rationale.--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) Public comment period.--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 period.--Following 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) Rule of construction.--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) Fees for Patent Services.--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 <DELETED>fiscal years 2005, 2006
and 2007</DELETED>2005 and 2006'', and inserting ``Until such time as
the Director sets or adjusts the fees otherwise,''.
(c) Adjustment of Trademark Fees.--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 802(a) by striking ``During <DELETED>fiscal years 2005, 2006
and 2007</DELETED>2005 and 2006'', and inserting ``Until such time as
the Director sets or adjusts the fees otherwise,''.
(d) Effective Date, Applicability, and Transitional Provision.--
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 803(a) by striking ``and
shall apply only with respect to the remaining portion of
<DELETED>fiscal year 2005, 2006 and 2007</DELETED>fiscal year 2005 and
fiscal year 2006''.
(e) Statutory Authority.--Section 41(d)(1)(A) of title 35, United
States Code, is amended by striking ``, and the Director may not
increase any such fee thereafter''.
(<DELETED>e</DELETED>f) Rule of Construction.--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.
(<DELETED>f</DELETED>g) Definitions.--In this section:
(1) Director.--The term ``Director'' means the Director of
the United States Patent and Trademark Office.
(2) Office.--The term ``Office'' means the United States
Patent and Trademark Office.
(3) Trademark act of 1946.--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).
SEC. 10. RESIDENCY OF FEDERAL CIRCUIT JUDGES.
(a) Residency.--The second sentence of section 44(c) of title 28,
United States Code, is repealed.
(b) Facilities.--Section 44 of title 28, United States Code, is
amended by adding at the end the following:
``(e)(1) The Director of the Administrative Office of the United
States Courts shall provide--
``(A) a judge of the Federal judicial circuit who lives
within 50 miles of the District of Columbia with appropriate
facilities and administrative support services in the District
of the District of Columbia; and
``(B) a judge of the Federal judicial circuit who does not
live within 50 miles of the District of Columbia with
appropriate facilities and administrative support services--
``(i) in the district and division in which that
judge resides; or
``(ii) if appropriate facilities are not available
in the district and division in which that judge
resides, in the district and division closest to the
residence of that judge in which such facilities are
available, as determined by the Director.
``(2) Nothing in this subsection may be construed to authorize or
require the construction of new facilities.''.
SEC. 11. MICRO-ENTITY DEFINED.
Chapter 11 of title 35, United States Code, is amended by adding at
the end the following new section:
``Sec. 123. Micro-entity defined
``(a) In General.--For purposes of this title, the term `micro-
entity' means an applicant who makes a certification under either
<DELETED>subsections</DELETED>subsection (b) or (c).
``(b) Unassigned Application.--For an unassigned application, each
applicant shall certify that the applicant--
``(1) qualifies as a small entity, as defined in
regulations issued by the Director;
``(2) has not been named on 5 or more previously filed
patent applications;
``(3) has not assigned, granted, or conveyed, and is not
under an obligation by contract or law to assign, grant, or
convey, a license or any other ownership interest in the
particular application; and
``(4) does not have a gross income, as defined in section
61(a) of the Internal Revenue Code (26 U.S.C. 61(a)), exceeding
2.5 times the average gross income, as reported by the
Department of Labor, in the calendar year immediately preceding
the calendar year in which the examination fee is being paid.
``(c) Assigned Application.--For an assigned application, each
applicant shall certify that the applicant--
``(1) qualifies as a small entity, as defined in
regulations issued by the Director, and meets the requirements
of subsection (b)(4);
``(2) has not been named on 5 or more previously filed
patent applications; and
``(3) has assigned, granted, conveyed, or is under an
obligation by contract or law to assign, grant, or convey, a
license or other ownership interest in the particular
application to an entity that has 5 or fewer employees and that
such entity has a gross income, as defined in section 61(a) of
the Internal Revenue Code (26 U.S.C. 61(a)), that does not
exceed 2.5 times the average gross income, as reported by the
Department of Labor, in the calendar year immediately preceding
the calendar year in which the examination fee is being paid.
``(d) Income Level Adjustment.--The gross income levels established
under subsections (b) and (c) shall be adjusted by the Director on
October 1, 2009, and every year thereafter, to reflect any fluctuations
occurring during the previous 12 months in the Consumer Price Index, as
determined by the Secretary of Labor.''.
SEC. 12. FUNDING AGREEMENTS.
Section 202(c)(7)(E)(i) of title 35, United States Code, is
amended--
(1) by striking ``75 percent'' and inserting ``15
percent''; and
(2) by striking ``25 percent'' and inserting ``85
percent''.
SEC. 13. PATENT AND TRADEMARK OFFICE TRAVEL EXPENSES TEST PROGRAM.
(a) In General.--Section 5710 of title 5, United States Code, is
amended--
(1) in subsection (a)(1), by striking ``for a period not to
exceed 24 months''; and
(2) by striking subsection (e) and inserting the following:
``(e)(1) The Patent and Trademark Office shall conduct a test
program under this section.
``(2) In conducting the program under this subsection, the Patent
and Trademark Office may pay any travel expenses of an employee for
travel to and from a Patent and Trademark Office worksite, if--
``(A) the employee is employed at a Patent and Trademark
Office worksite and enters into an approved telework
arrangement;
``(B) the employee requests to telework from a location
beyond the local commuting area of the Patent and Trademark
Office worksite; and
``(C) the Patent and Trademark Office approves the
requested arrangement for reasons of employee convenience
instead of an agency need for the employee to relocate in order
to perform duties specific to the new location.
``(3)(A) The Patent and Trademark Office shall establish an
oversight committee comprising an equal number of members representing
management and labor, including representatives from each collective
bargaining unit.
``(B) The oversight committee shall develop the operating
procedures for the program under this subsection to--
``(i) provide for the effective and appropriate functioning
of the program; and
``(ii) ensure that--
``(I) reasonable technological or other
alternatives to employee travel are used before
requiring employee travel, including teleconferencing,
videoconferencing or internet-based technologies;
``(II) the program is applied consistently and
equitably throughout the Patent and Trademark Office;
and
``(III) an optimal operating standard is developed
and implemented for maximizing the use of the telework
arrangement described under paragraph (2) while
minimizing agency travel expenses and employee travel
requirements.
``(4)(A) The test program under this subsection shall be designed
to enhance cost savings or other efficiencies that accrue to the
Government.
``(B) The Director of the Patent and Trademark Office shall--
``(i) prepare an analysis of the expected costs and
benefits and a set of criteria for evaluating the
effectiveness of the program; and
``(ii) before the test program is implemented,
submit the analysis and criteria to the Administrator
of General Services and to the appropriate committees
of Congress.
``(C) With respect to an employee of the Patent and Trademark
Office who voluntarily relocates from the pre-existing duty station of
that employee, the operating procedures of the program may include a
reasonable maximum number of occasional visits to the pre-existing duty
station before that employee is eligible for payment of any accrued
travel expenses by the Office.
``(D)(i) Not later than 3 months after completion of the test
program under this subsection, the Director of the Patent and Trademark
Office shall provide a report on the results of the program to the
Administrator of General Services and to the appropriate committees of
Congress.
``(ii) The results in the report described under paragraph (1) may
include--
``(I) the number of visits an employee makes to the pre-
existing duty station of that employee;
``(II) the travel expenses paid by the Office;
``(III) the travel expenses paid by the employee; or
``(IV) any other information that the Director determines
may be useful to aid the Administrator and Congress in
understanding the test program and the impact of the program.
``(E) In this paragraph, the term `appropriate committees of
Congress' means--
``(i) the Committees on Homeland Security and Governmental
Affairs and on the Judiciary of the Senate; and
``(ii) the Committees on Government Oversight and Reform
and on the Judiciary of the House of Representatives.
``(f)(1) Except as provided under paragraph (2), the authority to
conduct test programs under this section shall expire 7 years after the
date of the enactment of the Travel and Transportation Reform Act of
1998.
``(2) The authority to conduct a test program by the Patent and
Trademark Office under this section shall expire 20 years after the
date of the enactment of the Travel and Transportation Reform Act of
1998.''.
(b) Effective Date.--The amendments made by this section shall take
effect as though enacted as part of the Travel and Transportation
Reform Act of 1998 (Public Law 105-264; 112 Stat. 2350).
SEC. 14. BEST MODE REQUIREMENT.
Section 282(b), as so designated and amended by section 16(f), is
further amended by striking paragraph (3) and inserting the following:
``(3) Invalidity of the patent or any claim in suit for
failure to comply with--
``(A) any requirement of section 112 of this title,
except that the failure to disclose the best mode shall
not be a basis on which any claim of a patent may be
canceled or held invalid or otherwise unenforceable; or
``(B) any requirement of section 251 of this
title.''.
SEC. 15. PILOT PROGRAM IN CERTAIN DISTRICT COURTS.
(a) Establishment.--
(1) In general.--There is established a program, in each of
the United States district courts designated under subsection
(b), under which--
(A) those district judges of that district court
who request to hear cases under which 1 or more issues
arising under any Act of Congress relating to patents
or plant variety protection are required to be decided,
are designated by the chief judge of the court to hear
those cases;
(B) cases described in subparagraph (A) are
randomly assigned to the judges of the district court,
regardless of whether the judges are designated under
subparagraph (A);
(C) a judge not designated under subparagraph (A)
to whom a case is assigned under subparagraph (B) may
decline to accept the case; and
(D) a case declined under subparagraph (C) is
randomly reassigned to 1 of those judges of the court
designated under subparagraph (A).
(2) Senior judges.--Senior judges of a district court may
be designated under paragraph (1)(A) if at least 1 judge of the
court in regular active service is also so designated.
(3) Right to transfer cases preserved.--This section shall
not be construed to limit the ability of a judge to request the
reassignment of or otherwise transfer a case to which the judge
is assigned under this section, in accordance with otherwise
applicable rules of the court.
(b) Designation.--
(1) In general.--Not later than 6 months after the date of
the enactment of this Act, the Director of the Administrative
Office of the United States Courts shall designate not less
than 6 United States district courts, in at least 3 different
judicial circuits, in which the program established under
subsection (a) will be carried out.
(2) Criteria for designations.--
(A) In general.--The Director shall make
designations under paragraph (1) from--
(i) the 15 district courts in which the
largest number of patent and plant variety
protection cases were filed in the most recent
calendar year that has ended; or
(ii) the district courts that have adopted
local rules for patent and plant variety
protection cases.
(B) Selection of courts.--From amongst the district
courts that satisfy the criteria for designation under
this subsection, the Director shall select--
(i) 3 district courts that each have at
least 10 district judges authorized to be
appointed by the President, whether under
section 133(a) of title 28, United States Code,
or on a temporary basis under any other
provision of law, and at least 3 judges of the
court have made the request under subsection
(a)(1)(A); and
(ii) 3 district courts that each have fewer
than 10 district judges authorized to be
appointed by the President, whether under
section 133(a) of title 28, United States Code,
or on a temporary basis under any other
provision of law, and at least 2 judges of the
court have made the request under subsection
(a)(1)(A).
(c) Duration.--The program established under subsection (a) shall
terminate 10 years after the end of the 6-month period described in
subsection (b).
(d) Applicability.--The program established under subsection (a)
shall apply in a district court designated under subsection (b) only to
cases commenced on or after the date of such designation.
(e) Reports to Congress.--
(1) In general.--At the times specified in paragraph (2),
the Director of the Administrative Office of the United States
Courts, in consultation with the chief judge of each of the
district courts designated under subsection (b) and the
Director of the Federal Judicial Center, shall submit to the
Committee on the Judiciary of the House of Representatives and
the Committee on the Judiciary of the Senate a report on the
pilot program established under subsection (a). The report
shall include--
(A) an analysis of the extent to which the program
has succeeded in developing expertise in patent and
plant variety protection cases among the district
judges of the district courts so designated;
(B) an analysis of the extent to which the program
has improved the efficiency of the courts involved by
reason of such expertise;
(C) with respect to patent cases handled by the
judges designated pursuant to subsection (a)(1)(A) and
judges not so designated, a comparison between the 2
groups of judges with respect to--
(i) the rate of reversal by the Court of
Appeals for the Federal Circuit, of such cases
on the issues of claim construction and
substantive patent law; and
(ii) the period of time elapsed from the
date on which a case is filed to the date on
which trial begins or summary judgment is
entered;
(D) a discussion of any evidence indicating that
litigants select certain of the judicial districts
designated under subsection (b) in an attempt to ensure
a given outcome; and
(E) an analysis of whether the pilot program should
be extended to other district courts, or should be made
permanent and apply to all district courts.
(2) Timetable for reports.--The times referred to in
paragraph (1) are--
(A) not later than the date that is 5 years and 3
months after the end of the 6-month period described in
subsection (b); and
(B) not later than 5 years after the date described
in subparagraph (A).
(3) Periodic reports.--The Director of the Administrative
Office of the United States Courts, in consultation with the
chief judge of each of the district courts designated under
subsection (b) and the Director of the Federal Judicial Center,
shall keep the committees referred to in paragraph (1)
informed, on a periodic basis while the pilot program is in
effect, with respect to the matters referred to in
subparagraphs (A) through (E) of paragraph (1).
(f) Authorization for Training and Clerkships.--
(1) In general.--In addition to any other funds made
available to carry out this section, there are authorized to be
appropriated not less than $5,000,000 in each fiscal year for--
(A) educational and professional development of
those district judges designated under subsection
(a)(1)(A) in matters relating to patents and plant
variety protection; and
(B) compensation of law clerks with expertise in
technical matters arising in patent and plant variety
protection cases, to be appointed by the courts
designated under subsection (b) to assist those courts
in such cases.
(2) Availability of funds.--Amounts made available pursuant
to this subsection shall remain available until expended.
SEC. <DELETED>12</DELETED>16. TECHNICAL AMENDMENTS.
(a) Joint Inventions.--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, by striking
``Whenever'' and inserting ``(c) Correction of Errors
in Application.--Whenever''.
(b) Filing of Application in Foreign Country.--Section 184 of title
35, United States Code, is amended--
(1) in the first paragraph, by striking ``Except when'' and
inserting ``(a) Filing in Foreign Country.--Except when'';
(2) in the second paragraph, by striking ``The term'' and
inserting ``(b) Application.--The term''; and
(3) in the third paragraph, by striking ``The scope'' and
inserting ``(c) Subsequent Modifications, Amendments, and
Supplements.--The scope''.
(c) Reissue of Defective Patents.--Section 251 of title 35, United
States Code, is amended--
(1) in the first paragraph, by striking ``Whenever'' and
inserting ``(a) In General.--Whenever'';
(2) in the second paragraph, by striking ``The Director''
and inserting ``(b) Multiple Reissued Patents.--The Director'';
(3) in the third paragraph, by striking ``The provision''
and inserting ``(c) Applicability of This Title.--The
provisions''; and
(4) in the last paragraph, by striking ``No reissued
patent'' and inserting ``(d) Reissue Patent Enlarging Scope of
Claims.--No reissued patent''.
(d) Effect of Reissue.--Section 253 of title 35, United States
Code, is amended--
(1) in the first paragraph, by striking ``Whenever'' and
inserting ``(a) In General.--Whenever''; and
(2) in the second paragraph, by striking ``in like manner''
and inserting ``(b) Additional Disclaimer or Dedication.--In
the manner set forth in subsection (a),''.
(e) Correction of Named Inventor.--Section 256 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''.
(f) Presumption of Validity.--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''.
SEC. <DELETED>13</DELETED>17. EFFECTIVE DATE; RULE OF CONSTRUCTION.
(a) Effective Date.--Except as otherwise provided in this Act, the
provisions of this Act shall take effect 12 months after the date of
the enactment of this Act and shall apply to any patent issued on or
after that effective date.
(b) Continuity of Intent Under the Create Act.--The enactment of
section 102(b)(3) of title 35, United States Code, under section (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.
SEC. <DELETED>14</DELETED>18. SEVERABILITY.
If any provision of this Act or of any amendment or repeals made by
this Act, or the application of such a provision to any person or
circumstance, is held to be invalid or unenforceable, the remainder of
this Act and the amendments and repeals made by this Act, and the
application of this Act and such amendments and repeals to any other
person or circumstance, shall not be affected by such holding.
Calendar No. 46
111th Congress
1st Session
S. 515
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A BILL
To amend title 35, United States Code, to provide for patent reform.
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April 2, 2009
Reported with amendments