1.Short title; table of
contents
(a)This Act may be cited as the America Invents Act
.
(b)The table of contents for this Act is as follows:
Sec. 1. Short title; table of contents.
Sec. 2. First inventor to file.
Sec. 3. Inventor’s oath or declaration.
Sec. 4. Defense to infringement based on earlier
inventor.
Sec. 5. Post-grant review proceedings.
Sec. 6. Patent Trial and Appeal Board.
Sec. 7. Preissuance submissions by third parties.
Sec. 8. Venue.
Sec. 9. Fee setting authority.
Sec. 10. Fees for patent services.
Sec. 11. Supplemental examination.
Sec. 12. Funding agreements.
Sec. 13. Tax strategies deemed within the prior
art.
Sec. 14. Best mode requirement.
Sec. 15. Marking.
Sec. 16. Advice of counsel.
Sec. 17. Ownership; assignment.
Sec. 18. Transitional program for covered business method
patents.
Sec. 19. Clarification of jurisdiction.
Sec. 20. Technical amendments.
Sec. 21. Travel expenses and payment of administrative
judges.
Sec. 22. Patent and Trademark Office funding.
Sec. 23. Satellite offices.
Sec. 24. Patent Ombudsman Program for small business
concerns.
Sec. 25. Priority examination for technologies important to
American competitiveness.
Sec. 26. Designation of Detroit satellite office.
Sec. 27. Effective date.
Sec. 28. Budgetary effects.
2.
(a)Section
100 of title 35, United States Code, is amended by adding at the end the
following:
(f)The term
inventor means the individual or, if a joint invention, the
individuals collectively who invented or discovered the subject matter of the
invention.
(g)The terms
joint inventor and coinventor mean any 1 of the
individuals who invented or discovered the subject matter of a joint
invention.
(h)The 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.
(i)(1)The term effective
filing date for a claimed invention in a patent or application for
patent means—
(A)if subparagraph (B) does not apply,
the actual filing date of the patent or the application for the patent
containing a claim to the invention; or
(B)the filing date of the earliest
application for which the patent or application is entitled, as to such
invention, to a right of priority under section 119, 365(a), or 365(b) or to
the benefit of an earlier filing date under section 120, 121, or 365(c).
(2)The effective filing date for a
claimed invention in an application for reissue or reissued patent shall be
determined by deeming the claim to the invention to have been contained in the
patent for which reissue was sought.
(j)The term
claimed invention means the subject matter defined by a claim in a
patent or an application for a
patent.
.
(b)Conditions for
Patentability
(1)Section 102 of title 35, United States Code, is amended
to read as follows:
102.Conditions for
patentability; novelty
(a)A 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 before the effective filing date
of the claimed invention; or
(2)the claimed
invention was described in a patent issued under section 151, or in an
application for patent published or deemed published under section 122(b), in
which the patent or application, as the case may be, names another inventor and
was effectively filed before the effective filing date of the claimed
invention.
(b)
(1)Disclosures made
1 year or less before the effective filing date of the claimed
inventionA disclosure made 1 year or less before the effective
filing date of a claimed invention shall not be prior art to the claimed
invention under subsection (a)(1) if—
(A)the disclosure was
made by the inventor or joint inventor or by another who obtained the subject
matter disclosed directly or indirectly from the inventor or a joint inventor;
or
(B)the subject matter
disclosed had, before such disclosure, been publicly disclosed by the inventor
or a joint inventor or another who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor.
(2)Disclosures
appearing in applications and patentsA disclosure shall not be
prior art to a claimed invention under subsection (a)(2) if—
(A)the subject matter
disclosed was obtained directly or indirectly from the inventor or a joint
inventor;
(B)the subject matter
disclosed had, before such subject matter was effectively filed under
subsection (a)(2), been publicly disclosed by the inventor or a joint inventor
or another who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor; or
(C)the subject matter
disclosed 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.
(c)Common Ownership
Under Joint Research AgreementsSubject matter disclosed 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 subsection (b)(2)(C) if—
(1)the subject matter
disclosed was developed and the claimed invention was made by, or on behalf of,
1 or more parties to a joint research agreement that was in effect on or before
the effective filing date of the claimed invention;
(2)the claimed
invention was made as a result of activities undertaken within the scope of the
joint research agreement; and
(3)the application
for patent for the claimed invention discloses or is amended to disclose the
names of the parties to the joint research agreement.
(d)Patents and
Published Applications Effective as Prior ArtFor purposes of
determining whether a patent or application for patent is prior art to a
claimed invention under subsection (a)(2), such patent or application shall be
considered to have been effectively filed, with respect to any subject matter
described in the patent or application—
(1)if paragraph (2)
does not apply, as of the actual filing date of the patent or the application
for patent; or
(2)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)Continuity of
intent under the create actThe enactment of section 102(c) of
title 35, United States Code, under paragraph (1) of this subsection 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 subsection
(c) of this section. The United States Patent and Trademark Office shall
administer section 102(c) 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.
(3)The item relating to section 102 in the table of
sections for chapter 10 of title 35, United States Code, is amended to read as
follows:
102. Conditions for patentability;
novelty.
.
(c)Conditions for
Patentability; Nonobvious Subject MatterSection 103 of title 35,
United States Code, is amended to read as follows:
103.Conditions for
patentability; nonobvious subject matterA patent for a claimed invention may not be
obtained, notwithstanding that the claimed invention is not identically
disclosed as set forth in section 102, if the differences between the claimed
invention and the prior art are such that the claimed invention as a whole
would have been obvious before the effective filing date of the claimed
invention to a person having ordinary skill in the art to which the claimed
invention pertains. Patentability shall not be negated by the manner in which
the invention was
made.
.
(d)Repeal of
Requirements for Inventions Made AbroadSection 104 of title 35,
United States Code, and the item relating to that section in the table of
sections for chapter 10 of title 35, United States Code, are repealed.
(e)Repeal of
Statutory Invention Registration
(1)Section 157 of title 35, United States Code, and the item
relating to that section in the table of sections for chapter 14 of title 35,
United States Code, are repealed.
(2)Removal of cross
referencesSection 111(b)(8) of title 35, United States Code, is
amended by striking sections 115, 131, 135, and 157
and
inserting sections 131 and 135
.
(3)The amendments made by this subsection shall take effect
upon the expiration of the 18-month period beginning on the date of the
enactment of this Act, and shall apply to any request for a statutory invention
registration filed on or after that effective date.
(f)Earlier Filing
Date for Inventor and Joint InventorSection 120 of title 35,
United States Code, is amended by striking which is filed by an inventor
or inventors named
and inserting which names an inventor or
joint inventor
.
(g)
(1)Section 172 of title 35, United States Code, is amended
by striking and the time specified in section 102(d)
.
(2)Section 287(c)(4) of title 35, United States Code, is
amended by striking the earliest effective filing date of which is prior
to
and inserting which has an effective filing date
before
.
(3)International
application designating the united states: effectSection 363 of
title 35, United States Code, is amended by striking except as otherwise
provided in section 102(e) of this title
.
(4)Publication of
international application: effectSection 374 of title 35, United
States Code, is amended by striking sections 102(e) and 154(d)
and inserting section 154(d)
.
(5)Patent issued on
international application: effectThe second sentence of section
375(a) of title 35, United States Code, is amended by striking Subject
to section 102(e) of this title, such
and inserting
Such
.
(6)Limit on right
of prioritySection 119(a) of title 35, United States Code, is
amended by striking ; but no patent shall be granted
and all
that follows through one year prior to such filing
.
(7)Inventions made
with federal assistanceSection 202(c) of title 35, United States
Code, is amended—
(A)in paragraph
(2)—
(i)by
striking publication, on sale, or public use,
and all that
follows through obtained in the United States
and inserting
the 1-year period referred to in section 102(b) would end before the end
of that 2-year period
; and
(ii)by
striking prior to the end of the statutory
and inserting
before the end of 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(b)
.
(h)
(1)Section 291 of title 35, United States Code, is amended
to read as follows:
291.
(a)The owner of a patent may have relief by civil action
against the owner of another patent that claims the same invention and has an
earlier effective filing date if the invention claimed in such other patent was
derived from the inventor of the invention claimed in the patent owned by the
person seeking relief under this section.
(b)An action under this section may be filed only before
the end of the 1-year period beginning on the date of the issuance of the first
patent containing a claim to the allegedly derived invention and naming an
individual alleged to have derived such invention as the inventor or joint
inventor.
.
(2)The item relating to section 291 in the table of
sections for chapter 29 of title 35, United States Code, is amended to read as
follows:
291. Derived
patents.
.
(i)Section 135 of title 35, United States Code, is
amended to read as follows:
135.
(a)Institution of
ProceedingAn applicant for patent may file a petition to
institute a derivation proceeding in the Office. The petition shall set forth
with particularity the basis for finding that an inventor named in an earlier
application derived the claimed invention from an inventor named in the
petitioner’s application and, without authorization, the earlier application
claiming such invention was filed. Any such petition may be filed only within
the 1-year period beginning the date of the first publication of a claim to an
invention that is the same or substantially the same as the earlier
application’s claim to the invention, shall be made under oath, and shall be
supported by substantial evidence. Whenever the Director determines that a
petition filed under this subsection demonstrates that the standards for
instituting a derivation proceeding are met, the Director may institute a
derivation proceeding. The determination by the Director whether to institute a
derivation proceeding shall be final and nonappealable.
(b)Determination by
Patent Trial and Appeal BoardIn a derivation proceeding
instituted under subsection (a), the Patent Trial and Appeal Board shall
determine whether an inventor named in the earlier application derived the
claimed invention from an inventor named in the petitioner’s application and,
without authorization, the earlier application claiming such invention was
filed. The Director shall prescribe regulations setting forth standards for the
conduct of derivation proceedings.
(c)The Patent Trial and Appeal Board may defer action on a
petition for a derivation proceeding until the expiration of the 3-month period
beginning on the date on which the Director issues a patent that includes the
claimed invention that is the subject of the petition. The Patent Trial and
Appeal Board also may defer action on a petition for a derivation proceeding,
or stay the proceeding after it has been instituted, until the termination of a
proceeding under chapter 30, 31, or 32 involving the patent of the earlier
applicant.
(d)The final decision of the Patent Trial and Appeal Board,
if adverse to claims in an application for patent, shall constitute the final
refusal by the Office on those claims. The final decision of the Patent Trial
and Appeal Board, if adverse to claims in a patent, shall, if no appeal or
other review of the decision has been or can be taken or had, constitute
cancellation of those claims, and notice of such cancellation shall be endorsed
on copies of the patent distributed after such cancellation.
(e)Parties
to a proceeding instituted under subsection (a) 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, if any, 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.
(f)Parties
to a proceeding instituted under subsection (a) may, within such time as may be
specified by the Director by regulation, 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 the patentability of the claimed inventions involved in the
proceeding.
.
(j)Elimination of
References to Interferences(1)Sections 134, 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)(A)Sections 146 and 157(a)
of title 35, United States Code, are each amended—
(i)by striking an
interference
each place it appears and inserting a derivation
proceeding
; and
(ii)by striking
interference
each additional place it appears and inserting
derivation proceeding
.
(B)The subparagraph heading for section
154(b)(1)(C) of title 35, United States Code, is amended to read as
follows:
(C)Guarantee of adjustments for delays due
to derivation proceedings, secrecy orders, and
appeals
.
(3)The section heading for section 134
of title 35, United States Code, is amended to read as follows:
134.Appeal to the
Patent Trial and Appeal
Board
.
(4)The section heading for section 146
of title 35, United States Code, is amended to read as follows:
146.Civil action in
case of derivation
proceeding
.
(5)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.
.
(6)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.
.
(k)
(1)Section 32 of title 35, United States Code, is amended by
inserting between the third and fourth sentences the following: A
proceeding under this section shall be commenced not later than the earlier of
either the date that is 10 years after the date on which the misconduct forming
the basis for the proceeding occurred, or 1 year after the date on which the
misconduct forming the basis for the proceeding is made known to an officer or
employee of the Office as prescribed in the regulations established under
section 2(b)(2)(D).
.
(2)The Director shall provide on a biennial basis to the
Judiciary Committees of the Senate and House of Representatives a report
providing a short description of incidents made known to an officer or employee
of the Office as prescribed in the regulations established under section
2(b)(2)(D) of title 35, United States Code, that reflect substantial evidence
of misconduct before the Office but for which the Office was barred from
commencing a proceeding under section 32 of title 35, United States Code, by
the time limitation established by the fourth sentence of that section.
(3)The amendment made by paragraph (1) shall apply in any case
in which the time period for instituting a proceeding under section 32 of title
35, United State Code, had not lapsed before the date of the enactment of this
Act.
(l)
(1)In
this subsection—
(A)the term
Chief Counsel means the Chief Counsel for Advocacy of the Small
Business Administration;
(B)the term
General Counsel means the General Counsel of the United States
Patent and Trademark Office; and
(C)the term
small business concern has the meaning given that term under
section 3 of the Small Business Act
(15 U.S.C. 632).
(2)
(A)The Chief Counsel, in consultation with the General
Counsel, shall conduct a study of the effects of eliminating the use of dates
of invention in determining whether an applicant is entitled to a patent under
title 35, United States Code.
(B)The study conducted under subparagraph (A) shall include
examination of the effects of eliminating the use of invention dates, including
examining—
(i)how
the change would affect the ability of small business concerns to obtain
patents and their costs of obtaining patents;
(ii)whether the
change would create, mitigate, or exacerbate any disadvantages for applicants
for patents that are small business concerns relative to applicants for patents
that are not small business concerns, and whether the change would create any
advantages for applicants for patents that are small business concerns relative
to applicants for patents that are not small business concerns;
(iii)the cost savings
and other potential benefits to small business concerns of the change;
and
(iv)the
feasibility and costs and benefits to small business concerns of alternative
means of determining whether an applicant is entitled to a patent under title
35, United States Code.
(3)Not
later than the date that is 1 year after the date of the enactment of this Act,
the Chief Counsel shall submit to the Committee on Small Business and
Entrepreneurship and the Committee on the Judiciary of the Senate and the
Committee on Small Business and the Committee on the Judiciary of the House of
Representatives a report regarding the results of the study under paragraph
(2).
(m)Report on Prior
User Rights
(1)Not later than the end of the 4-month period beginning on
the date of the 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 members of the European Union and 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.
(F)An analysis of
whether the change to a first-to-file patent system creates a particular need
for prior user rights.
(2)Consultation
with other agenciesIn 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.
(n)
(1)Except as otherwise provided in this section, the
amendments made by this section shall take effect upon the expiration of the
18-month period beginning on the date of the enactment of this Act, and shall
apply to any application for patent, and to any patent issuing thereon, that
contains or contained at any time—
(A)a claim to a
claimed invention that has an effective filing date as defined in section
100(i) of title 35, United States Code, that is on or after the effective date
described in this paragraph; or
(B)a specific
reference under section 120, 121, or 365(c) of title 35, United States Code, to
any patent or application that contains or contained at any time such a
claim.
(2)The provisions of sections 102(g), 135, and 291 of title
35, United States Code, as in effect on the day before the date of the
enactment of this Act, shall apply to each claim of an application for patent,
and any patent issued thereon, for which the amendments made by this section
also apply, if such application or patent contains or contained at any
time—
(A)a claim to an
invention having an effective filing date as defined in section 100(i) of title
35, United States Code, that occurs before the effective date set forth in
paragraph (1) of this subsection; or
(B)a specific
reference under section 120, 121, or 365(c) of title 35, United States Code, to
any patent or application that contains or contained at any time such a
claim.
3.Inventor’s oath
or declaration
(a)Inventor’s Oath
or Declaration
(1)Section 115 of title 35, United States Code, is amended
to read as follows:
115.Inventor’s oath
or declaration
(a)Naming the
Inventor; Inventor’s Oath or DeclarationAn application for
patent that is filed under section 111(a) or commences the national stage under
section 371 shall include, or be amended to include, the name of the inventor
for any invention claimed in the application. Except as otherwise provided in
this section, each individual who is the inventor or a joint inventor of a
claimed invention in an application for patent shall execute an oath or
declaration in connection with the application.
(b)An oath or declaration under subsection (a) shall
contain statements that—
(1)the application
was made or was authorized to be made by the affiant or declarant; and
(2)such individual
believes himself or herself to be the original inventor or an original joint
inventor of a claimed invention in the application.
(c)The Director may specify additional information
relating to the inventor and the invention that is required to be included in
an oath or declaration under subsection (a).
(d)
(1)In lieu of executing an oath or declaration under
subsection (a), the applicant for patent may provide a substitute statement
under the circumstances described in paragraph (2) and such additional
circumstances that the Director may specify by regulation.
(2)A substitute statement under paragraph (1) is
permitted with respect to any individual who—
(A)is unable to file
the oath or declaration under subsection (a) because the individual—
(i)is
deceased;
(ii)is under legal
incapacity; or
(iii)cannot be found
or reached after diligent effort; or
(B)is under an
obligation to assign the invention but has refused to make the oath or
declaration required under subsection (a).
(3)A
substitute statement under this subsection shall—
(A)identify the
individual with respect to whom the statement applies;
(B)set forth the
circumstances representing the permitted basis for the filing of the substitute
statement in lieu of the oath or declaration under subsection (a); and
(C)contain any
additional information, including any showing, required by the Director.
(e)Making Required
Statements in Assignment of RecordAn individual who is under an
obligation of assignment of an application for patent may include the required
statements under subsections (b) and (c) in the assignment executed by the
individual, in lieu of filing such statements separately.
(f)A notice of allowance under section 151 may be provided to
an applicant for patent only if the applicant for patent has filed each
required oath or declaration under subsection (a) or has filed a substitute
statement under subsection (d) or recorded an assignment meeting the
requirements of subsection (e).
(g)Earlier-Filed
Application Containing Required Statements or Substitute Statement
(1)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 who claims the benefit under section 120, 121, or
365(c) of the filing of an earlier-filed application, if—
(A)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;
(B)a substitute
statement meeting the requirements of subsection (d) was filed in the earlier
filed application with respect to the individual; or
(C)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.
(2)Copies of oaths,
declarations, statements, or assignmentsNotwithstanding
paragraph (1), the Director may require that a copy of the executed oath or
declaration, the substitute statement, or the assignment filed in the
earlier-filed application be included in the later-filed application.
(h)Supplemental and
Corrected Statements; Filing Additional Statements
(1)Any person making a statement required under this section
may withdraw, replace, or otherwise correct the statement at any time. If a
change is made in the naming of the inventor requiring the filing of 1 or more
additional statements under this section, the Director shall establish
regulations under which such additional statements may be filed.
(2)Supplemental
statements not requiredIf an individual has executed an oath or
declaration meeting the requirements of 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)A patent shall not be invalid or unenforceable based upon
the failure to comply with a requirement under this section if the failure is
remedied as provided under paragraph (1).
(i)Acknowledgment
of PenaltiesAny declaration or statement filed pursuant to this
section shall contain an acknowledgment that any willful false statement made
in such declaration or statement is punishable under section 1001 of title 18
by fine or imprisonment of not more than 5 years, or
both.
.
(2)Relationship to
divisional applicationsSection 121 of title 35, United States
Code, is amended by striking If a divisional application
and all
that follows through inventor.
.
(3)Requirements for
nonprovisional applicationsSection 111(a) of title 35, United
States Code, is amended—
(A)in paragraph
(2)(C), by striking by the applicant
and inserting or
declaration
;
(B)in the heading for
paragraph (3), by inserting or
declaration
after and oath
; and
(C)by inserting
or declaration
after and oath
each place it
appears.
(4)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
(1)Section 118 of title 35, United States Code, is amended
to read as follows:
118.Filing by other
than inventorA person to whom
the inventor has assigned or is under an obligation to assign the invention may
make an application for patent. A person who otherwise shows sufficient
proprietary interest in the matter may make an application for patent on behalf
of and as agent for the inventor on proof of the pertinent facts and a showing
that such action is appropriate to preserve the rights of the parties. If the
Director grants a patent on an application filed under this section by a person
other than the inventor, the patent shall be granted to the real party in
interest and upon such notice to the inventor as the Director considers to be
sufficient.
.
(2)Section 251 of title 35, United States Code, is amended
in the third undesignated paragraph by inserting or the application for
the original patent was filed by the assignee of the entire interest
after claims of the original patent
.
(c)Section
112 of title 35, United States Code, is amended—
(1)in the first
undesignated 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
undesignated paragraph—
(A)by striking
The specification
and inserting (b)
Conclusion.—The
specification
; and
(B)by striking
applicant regards as his invention
and inserting inventor
or a joint inventor regards as the invention
;
(3)in the third
undesignated paragraph, by striking A claim
and inserting
(c) Form.—A
claim
;
(4)in the fourth
undesignated paragraph, by striking Subject to the following
paragraph,
and inserting (d) Reference in Dependent Forms.—Subject to
subsection (e),
;
(5)in the fifth
undesignated paragraph, by striking A claim
and inserting
(e) Reference in Multiple Dependent
Form.—A claim
; and
(6)in the last
undesignated paragraph, by striking An element
and inserting
(f) Element in Claim for a
Combination.—An element
.
(d)
(1)Sections
111(b)(1)(A) is amended by striking the first paragraph of section 112
of this title
and inserting section 112(a)
.
(2)Section 111(b)(2)
is amended by striking the second through fifth paragraphs of section
112,
and inserting subsections (b) through (e) of section
112,
.
(e)The amendments made by this section shall take effect upon
the expiration of the 1-year period beginning on the date of the enactment of
this Act and shall apply to any patent application that is filed on or after
that effective date.
4.Defense to
infringement based on earlier inventorSection 273 of title 35, United States Code,
is amended as follows:
(1)Subsection (a) is
amended—
(A)in paragraph (1),
by striking use of a method in
and inserting use of the
subject matter of a patent in or outside
;
(B)by striking
paragraph (3); and
(C)by redesignating
paragraph (4) as paragraph (3).
(2)Subsection (b) is
amended—
(A)in paragraph (1),
by striking for a method
;
(B)in paragraph (2),
by striking patented method
and inserting patented
process
;
(C)in paragraph
(3)—
(i)by
striking subparagraph (A);
(ii)by
redesignating subparagraphs (B) and (C) as subparagraph (A) and (C),
respectively; and
(iii)by
adding at the end the following:
(D)
(i)Defense not
available in certain casesA person may not assert the defense
under this section if the subject matter of the patent on which the defense is
based was developed pursuant to a funding agreement under chapter 18 of this
title or by a nonprofit institution of higher education, or a technology
transfer organization affiliated with such an institution, that did not receive
funding from a private business enterprise in support of that
development.
(ii)In
this subparagraph—
(I)the term institution of higher
education
has the meaning given that term in section 101(a) of the
Higher Education Act of 1965 (20 U.S.C. 1001(a)); and
(II)the term
technology transfer organization
means an organization the
primary purpose of which is to facilitate the commercialization of technologies
developed by one or more institutions of higher
education.
;
and
(D)by amending
paragraph (6) to read as follows:
(6)
(A)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.
(B)Notwithstanding subparagraph (A), any
person may, on the person’s own behalf, assert a defense based on the
exhaustion of rights provided under paragraph (2), including any necessary
elements
thereof.
.
5.Post-grant review
proceedings
(a)Chapter 31 of title 35, United States Code, is amended to
read as follows:
31
Sec.
311. Inter partes review.
312. Petitions.
313. Preliminary response to
petition.
314. Institution of inter partes
review.
315. Relation to other proceedings or
actions.
316. Conduct of inter partes
review.
317. Settlement.
318. Decision of the Board.
319. Appeal.
320. Request for stay of certain
proceedings.
311.
(a)Subject to the provisions of this chapter, a person who
is not the owner of a patent may file with the Office a petition to institute
an inter partes review of the patent. The Director shall establish, by
regulation, fees to be paid by the person requesting the review, in such
amounts as the Director determines to be reasonable, considering the aggregate
costs of the review.
(b)A
petitioner in an inter partes review may request to cancel as unpatentable 1 or
more claims of a patent only on a ground that could be raised under section 102
or 103 and only on the basis of prior art consisting of patents or printed
publications.
(c)A petition for inter partes review shall be filed after
the later of either—
(1)the date that is
12 months after the grant of a patent or issuance of a reissue of a patent;
or
(2)if a post-grant
review is instituted under chapter 32, the date of the termination of such
post-grant review.
312.
(a)A petition filed under section 311 may be considered
only if—
(1)the petition is
accompanied by payment of the fee established by the Director under section
311;
(2)the petition
identifies all real parties in interest;
(3)the petition
identifies, in writing and with particularity, each claim challenged, the
grounds on which the challenge to each claim is based, and the evidence that
supports the grounds for the challenge to each claim, including—
(A)copies of patents
and printed publications that the petitioner relies upon in support of the
petition; and
(B)affidavits or
declarations of supporting evidence and opinions, if the petitioner relies on
expert opinions;
(4)the petition
provides such other information as the Director may require by regulation;
and
(5)the petitioner
provides copies of any of the documents required under paragraphs (2), (3), and
(4) to the patent owner or, if applicable, the designated representative of the
patent owner.
(b)As soon as practicable after the receipt of a
petition under section 311, the Director shall make the petition available to
the public.
313.Preliminary
response to petition
(a)If an inter partes review petition is filed under
section 311, the patent owner shall have the right to file a preliminary
response within a time period set by the Director.
(b)A preliminary response to a petition for inter partes
review shall set forth reasons why no inter partes review should be instituted
based upon the failure of the petition to meet any requirement of this
chapter.
314.Institution of
inter partes review
(a)The
Director may not authorize an inter partes review to commence unless the
Director determines that the information presented in the petition filed under
section 311 and any response filed under section 313 shows that a substantial
new question of patentability exists.
(b)The
Director shall determine whether to institute an inter partes review under this
chapter pursuant to a petition filed under section 311 within 3 months
after—
(1)receiving a
preliminary response to the petition under section 313; or
(2)if no such
preliminary response is filed, the last date on which such response may be
filed.
(c)The
Director shall notify the petitioner and patent owner, in writing, of the
Director’s determination under subsection (a), and shall make such notice
available to the public as soon as is practicable. Such notice shall include
the date on which the review shall commence.
(d)The determination by the Director whether to institute an
inter partes review under this section shall be final and nonappealable.
315.Relation to
other proceedings or actions
(a)
(1)Inter partes
review barred by civil actionAn inter partes review may not be
instituted if, before the date on which the petition for such a review is
filed, the petitioner, real party in interest, or privy of the petitioner filed
a civil action challenging the validity of a claim of the patent.
(2)If the petitioner, real party in interest, or privy of the
petitioner files a civil action challenging the validity of a claim of the
patent on or after the date on which the petitioner files a petition for inter
partes review of the patent, that civil action shall be automatically stayed
until either—
(A)the patent owner
requests to lift the stay;
(B)the patent owner
files a civil action or counterclaim alleging that the petitioner, real party
in interest, or privy of the petitioner has infringed the patent; or
(C)the petitioner, real party in interest, or
privy of the petitioner requests to dismiss the civil action.
(3)Treatment of
counterclaimA counterclaim challenging the validity of a claim
of a patent does not constitute a civil action challenging the validity of a
claim of a patent for purposes of this subsection.
(b)An inter partes review may not be instituted if the
petition requesting the proceeding is filed more than 9 months after the date
on which the petitioner, real party in interest, or privy of the petitioner is
served with a complaint alleging infringement of the patent. The time
limitation set forth in the preceding sentence shall not apply to a request for
joinder under subsection (c).
(c)If
the Director institutes an inter partes review, the Director, in his or her
discretion, may join as a party to that inter partes review any person who
properly files a petition under section 311 that the Director, after receiving
a preliminary response under section 313 or the expiration of the time for
filing such a response, determines warrants the institution of an inter partes
review under section 314.
(d)Notwithstanding sections 135(a), 251, and 252, and
chapter 30, during the pendency of an inter partes review, if another
proceeding or matter involving the patent is before the Office, the Director
may determine the manner in which the inter partes review or other proceeding
or matter may proceed, including providing for stay, transfer, consolidation,
or termination of any such matter or proceeding.
(e)
(1)Proceedings
before the officeThe petitioner in an inter partes review under
this chapter, or the real party in interest or privy of the petitioner, may not
request or maintain a proceeding before the Office with respect to a claim on
any ground that the petitioner raised or reasonably could have raised during an
inter partes review of the claim that resulted in a final written decision
under section 318(a).
(2)Civil actions
and other proceedingsThe petitioner in an inter partes review
under this chapter, or the real party in interest or privy of the petitioner,
may not assert either in a civil action arising in whole or in part under
section 1338 of title 28 or in a proceeding before the International Trade
Commission under section 337 of the Tariff Act of 1930 that a claim in a patent
is invalid on any ground that the petitioner raised or reasonably could have
raised during an inter partes review of the claim that resulted in a final
written decision under section 318(a).
316.Conduct of
inter partes review
(a)The
Director shall prescribe regulations—
(1)providing that the
file of any proceeding under this chapter shall be made available to the
public, except that any petition or document filed with the intent that it be
sealed shall, if accompanied by a motion to seal, be treated as sealed pending
the outcome of the ruling on the motion;
(2)setting forth the
standards for the showing of sufficient grounds to institute a review under
section 314(a);
(3)establishing
procedures for the submission of supplemental information after the petition is
filed;
(4)in accordance with
section 2(b)(2), establishing and governing inter partes review under this
chapter and the relationship of such review to other proceedings under this
title;
(5)setting a time
period for requesting joinder under section 315(c);
(6)setting forth
standards and procedures for discovery of relevant evidence, including that
such discovery shall be limited to—
(A)the deposition of
witnesses submitting affidavits or declarations; and
(B)what is otherwise
necessary in the interest of justice;
(7)prescribing
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 an
unnecessary increase in the cost of the proceeding;
(8)providing for
protective orders governing the exchange and submission of confidential
information;
(9)providing for the
filing by the patent owner of a response to the petition under section 313
after an inter partes review has been instituted, and requiring that the patent
owner file with such response, through affidavits or declarations, any
additional factual evidence and expert opinions on which the patent owner
relies in support of the response;
(10)setting forth
standards and procedures for allowing the patent owner to move to amend the
patent under subsection (d) to cancel a challenged claim or propose a
reasonable number of substitute claims, and ensuring that any information
submitted by the patent owner in support of any amendment entered under
subsection (d) is made available to the public as part of the prosecution
history of the patent;
(11)providing either
party with the right to an oral hearing as part of the proceeding; and
(12)requiring that
the final determination in an inter partes review be issued not later than 1
year after the date on which the Director notices the institution of a review
under this chapter, except that the Director may, for good cause shown, extend
the 1-year period by not more than 6 months, and may adjust the time periods in
this paragraph in the case of joinder under section 315(c).
(b)In
prescribing regulations under this section, the Director shall consider the
effect of any such regulation on the economy, the integrity of the patent
system, the efficient administration of the Office, and the ability of the
Office to timely complete proceedings instituted under this chapter.
(c)Patent Trial and
Appeal BoardThe Patent Trial and Appeal Board shall, in
accordance with section 6, conduct each proceeding authorized by the
Director.
(d)
(1)During an inter partes review instituted under this
chapter, the patent owner may file 1 motion to amend the patent in 1 or more of
the following ways:
(A)Cancel any
challenged patent claim.
(B)For each
challenged claim, propose a reasonable number of substitute claims.
(2)Additional motions to amend may be permitted upon the
joint request of the petitioner and the patent owner to materially advance the
settlement of a proceeding under section 317, or as permitted by regulations
prescribed by the Director.
(3)An amendment under this subsection may not enlarge the
scope of the claims of the patent or introduce new matter.
(e)In an inter partes review instituted under this
chapter, the petitioner shall have the burden of proving a proposition of
unpatentability by a preponderance of the evidence.
317.
(a)An inter partes review instituted under this chapter
shall be terminated with respect to any petitioner upon the joint request of
the petitioner and the patent owner, unless the Office has decided the merits
of the proceeding before the request for termination is filed. If the inter
partes review is terminated with respect to a petitioner under this section, no
estoppel under section 315(e) shall apply to that petitioner. If no petitioner
remains in the inter partes review, the Office may terminate the review or
proceed to a final written decision under section 318(a).
(b)Any agreement or understanding between the patent owner
and a petitioner, including any collateral agreements referred to in such
agreement or understanding, made in connection with, or in contemplation of,
the termination of an inter partes review under this section shall be in
writing and a true copy of such agreement or understanding shall be filed in
the Office before the termination of the inter partes review as between the
parties. If any party filing such agreement or understanding so requests, the
copy shall be kept separate from the file of the inter partes review, and shall
be made available only to Federal Government agencies upon written request, or
to any other person on a showing of good cause.
318.
(a)If an inter partes review is instituted and not
dismissed under this chapter, the Patent Trial and Appeal Board shall issue a
final written decision with respect to the patentability of any patent claim
challenged by the petitioner and any new claim added under section
316(d).
(b)If
the Patent Trial and Appeal Board issues a final written decision under
subsection (a) and the time for appeal has expired or any appeal has
terminated, the Director shall issue and publish a certificate canceling any
claim of the patent finally determined to be unpatentable, confirming any claim
of the patent determined to be patentable, and incorporating in the patent by
operation of the certificate any new or amended claim determined to be
patentable.
(c)The Office shall make available to the public data
describing the length of time between the institution of, and the issuance of a
final written decision under subsection (a) for, each inter partes
review.
319.A party dissatisfied with the final written
decision of the Patent Trial and Appeal Board under section 318(a) may appeal
the decision pursuant to sections 141 through 144. Any party to the inter
partes review shall have the right to be a party to the appeal.
320.Request for
stay of certain proceedingsIf
a party seeks a stay of a civil action alleging infringement of a patent under
section 281, or a proceeding before the International Trade Commission under
section 337 of the Tariff Act of 1930, relating to an inter partes review under
this chapter, the court shall decide whether to enter a stay based on—
(1)whether a stay, or
the denial thereof, will simplify the issues in question and streamline the
trial;
(2)whether discovery
is complete and whether a trial date has been set;
(3)whether a stay, or
the denial thereof, would unduly prejudice the nonmoving party or present a
clear tactical advantage for the moving party; and
(4)whether a stay, or
the denial thereof, will reduce the burden of litigation on the parties and on
the
court.
.
(b)The table of chapters for part III of title 35, United
States Code, is amended by striking the item relating to chapter 31 and
inserting the following:
31. Inter Partes
Review311.
(c)Regulations and
Effective Date
(1)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 31 of title 35,
United States Code, as amended by subsection (a) of this section.
(2)
(A)The amendments made by subsection (a) shall take effect
upon the expiration of the 1-year period beginning on the date of the enactment
of this Act and shall apply to any patent issued before, on, or after that
effective date.
(B)The Director may impose a limit on the number of
inter partes reviews that may be instituted under chapter 31 of title 35,
United States Code, during each of the first 4 1-year periods in which the
amendments made by subsection (a) are in effect, if such number in each year
equals or exceeds the number of such inter partes reexaminations that are
ordered in the last fiscal year ending before the effective date of the
amendments made by subsection (a).
(d)Part III of title 35, United States Code, is amended by
adding at the end the following:
32
Sec.
321. Post-grant review.
322. Petitions.
323. Preliminary response to
petition.
324. Institution of post-grant
review.
325. Relation to other proceedings or
actions.
326. Conduct of post-grant
review.
327. Settlement.
328. Decision of the Board.
329. Appeal.
330. Request for stay of certain
proceedings.
321.
(a)Subject to the provisions of this chapter, a person who
is not the patent owner may file with the Office a petition to institute a
post-grant review of a patent. The Director shall establish, by regulation,
fees to be paid by the person requesting the review, in such amounts as the
Director determines to be reasonable, considering the aggregate costs of the
post-grant review.
(b)A
petitioner in a post-grant review may request to cancel as unpatentable 1 or
more claims of a patent on any ground that could be raised under paragraph (2)
or (3) of section 282(b) (relating to invalidity of the patent or any
claim).
(c)A petition for a post-grant review may only be filed not
later than the date that is 12 months after the date of the grant of the patent
or of the issuance of a reissue patent (as the case may be).
322.
(a)A petition filed under section 321 may be considered
only if—
(1)the petition is
accompanied by payment of the fee established by the Director under section
321;
(2)the petition
identifies all real parties in interest;
(3)the petition
identifies, in writing and with particularity, each claim challenged, the
grounds on which the challenge to each claim is based, and the evidence that
supports the grounds for the challenge to each claim, including—
(A)copies of patents
and printed publications that the petitioner relies upon in support of the
petition; and
(B)affidavits or
declarations of supporting evidence and opinions, if the petitioner relies on
other factual evidence or on expert opinions;
(4)the petition
provides such other information as the Director may require by regulation;
and
(5)the petitioner
provides copies of any of the documents required under paragraphs (2), (3), and
(4) to the patent owner or, if applicable, the designated representative of the
patent owner.
(b)As soon as practicable after the receipt of a
petition under section 321, the Director shall make the petition available to
the public.
323.Preliminary
response to petition
(a)If a post-grant review petition is filed under section
321, the patent owner shall have the right to file a preliminary response to
the petition within 2 months after the date on which the petition is
filed.
(b)A preliminary response to a petition for post-grant
review shall set forth reasons why no post-grant review should be instituted
based upon the failure of the petition to meet any requirement of this
chapter.
324.Institution of
post-grant review
(a)The Director may not authorize a post-grant
review to commence unless the Director determines that the information
presented in the petition filed under section 321, if such information is not
rebutted, would demonstrate that it is more likely than not that at least 1 of
the claims challenged in the petition is unpatentable.
(b)The determination required under subsection (a) may also
be satisfied by a showing that the petition raises a novel or unsettled legal
question that is important to other patents or patent applications.
(c)The
Director shall determine whether to institute a post-grant review under this
chapter pursuant to a petition filed under section 321 within 3 months
after—
(1)receiving a
preliminary response to the petition under section 323; or
(2)if no such
preliminary response is filed, the last date on which such response may be
filed.
(d)The
Director shall notify the petitioner and patent owner, in writing, of the
Director’s determination under subsection (a) or (b), and shall make such
notice available to the public as soon as is practicable. The Director shall
make each notice of the institution of a post-grant review available to the
public. Such notice shall include the date on which the review shall
commence.
(e)The determination by the Director whether to institute a
post-grant review under this section shall be final and nonappealable.
325.Relation to
other proceedings or actions
(a)
(1)Post-grant
review barred by civil actionA post-grant review may not be
instituted under this chapter if, before the date on which the petition for
such a review is filed, the petitioner, real party in interest, or privy of the
petitioner filed a civil action challenging the validity of a claim of the
patent.
(2)If the petitioner, real party in interest, or privy of the
petitioner files a civil action challenging the validity of a claim of the
patent on or after the date on which the petitioner files a petition for
post-grant review of the patent, that civil action shall be automatically
stayed until either—
(A)the patent owner
requests to lift the stay;
(B)the patent owner
files a civil action or counterclaim alleging that the petitioner, real party
in interest, or privy of the petitioner has infringed the patent; or
(C)the petitioner,
real party in interest, or privy of the petitioner requests to dismiss his
civil action.
(3)Treatment of
counterclaimA counterclaim challenging the validity of a claim
of a patent does not constitute a civil action challenging the validity of a
claim of a patent for purposes of this subsection.
(b)If a civil action alleging infringement of a patent
is filed within 3 months after the date on which the patent is granted, the
court may not stay its consideration of the patent owner’s motion for a
preliminary injunction against infringement of the patent on the basis that a
petition for post-grant review has been filed under this chapter or that such a
post-grant review has been instituted under this chapter.
(c)If
more than 1 petition for a post-grant review under this chapter is properly
filed against the same patent and the Director determines that more than 1 of
these petitions warrants the institution of a post-grant review under section
324, the Director may consolidate such reviews into a single post-grant
review.
(d)Notwithstanding sections 135(a), 251, and 252, and
chapter 30, during the pendency of any post-grant review under this chapter, if
another proceeding or matter involving the patent is before the Office, the
Director may determine the manner in which the post-grant review or other
proceeding or matter may proceed, including providing for the stay, transfer,
consolidation, or termination of any such matter or proceeding. In determining
whether to institute or order a proceeding under this chapter, chapter 30, or
chapter 31, the Director may take into account whether, and reject the petition
or request because, the same or substantially the same prior art or arguments
previously were presented to the Office.
(e)
(1)Proceedings
before the officeThe petitioner in a post-grant review under
this chapter, or the real party in interest or privy of the petitioner, may not
request or maintain a proceeding before the Office with respect to a claim on
any ground that the petitioner raised or reasonably could have raised during a
post-grant review of the claim that resulted in a final written decision under
section 328(a).
(2)Civil actions
and other proceedingsThe petitioner in a post-grant review under
this chapter, or the real party in interest or privy of the petitioner, may not
assert either in a civil action arising in whole or in part under section 1338
of title 28 or in a proceeding before the International Trade Commission under
section 337 of the Tariff Act of 1930 that a claim in a patent is invalid on
any ground that the petitioner raised during a post-grant review of the claim
that resulted in a final written decision under section 328(a).
(f)A post-grant review may not be instituted under this
chapter if the petition requests cancellation of a claim in a reissue patent
that is identical to or narrower than a claim in the original patent from which
the reissue patent was issued, and the time limitations in section 321(c) would
bar filing a petition for a post-grant review for such original patent.
326.Conduct of
post-grant review
(a)The
Director shall prescribe regulations—
(1)providing that the
file of any proceeding under this chapter shall be made available to the
public, except that any petition or document filed with the intent that it be
sealed shall, if accompanied by a motion to seal, be treated as sealed pending
the outcome of the ruling on the motion;
(2)setting forth the
standards for the showing of sufficient grounds to institute a review under
subsections (a) and (b) of section 324;
(3)establishing
procedures for the submission of supplemental information after the petition is
filed;
(4)in accordance with
section 2(b)(2), establishing and governing a post-grant review under this
chapter and the relationship of such review to other proceedings under this
title;
(5)setting forth
standards and 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;
(6)prescribing
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 an
unnecessary increase in the cost of the proceeding;
(7)providing for
protective orders governing the exchange and submission of confidential
information;
(8)allowing the
patent owner to file a response to the petition after a post-grant review has
been instituted, and requiring that the patent owner file with such response,
through affidavits or declarations, any additional factual evidence and expert
opinions on which the patent owner relies in support of the response;
(9)setting forth
standards and procedures for allowing the patent owner to move to amend the
patent under subsection (d) to cancel a challenged claim or propose a
reasonable number of substitute claims, and ensuring that any information
submitted by the patent owner in support of any amendment entered under
subsection (d) is made available to the public as part of the prosecution
history of the patent;
(10)providing either
party with the right to an oral hearing as part of the proceeding; and
(11)requiring that
the final determination in any post-grant review be issued not later than 1
year after the date on which the Director notices the institution of a
proceeding under this chapter, except that the Director may, for good cause
shown, extend the 1-year period by not more than 6 months, and may adjust the
time periods in this paragraph in the case of joinder under section
325(c).
(b)In
prescribing regulations under this section, the Director shall consider the
effect of any such regulation on the economy, the integrity of the patent
system, the efficient administration of the Office, and the ability of the
Office to timely complete proceedings instituted under this chapter.
(c)Patent Trial and
Appeal BoardThe Patent Trial and Appeal Board shall, in
accordance with section 6, conduct each proceeding authorized by the
Director.
(d)
(1)During a post-grant review instituted under this chapter,
the patent owner may file 1 motion to amend the patent in 1 or more of the
following ways:
(A)Cancel any
challenged patent claim.
(B)For each
challenged claim, propose a reasonable number of substitute claims.
(2)Additional motions to amend may be permitted upon the
joint request of the petitioner and the patent owner to materially advance the
settlement of a proceeding under section 327, or upon the request of the patent
owner for good cause shown.
(3)An amendment under this subsection may not enlarge the
scope of the claims of the patent or introduce new matter.
(e)In a post-grant review instituted under this chapter,
the petitioner shall have the burden of proving a proposition of
unpatentability by a preponderance of the evidence.
327.
(a)A post-grant review instituted under this chapter shall
be terminated with respect to any petitioner upon the joint request of the
petitioner and the patent owner, unless the Office has decided the merits of
the proceeding before the request for termination is filed. If the post-grant
review is terminated with respect to a petitioner under this section, no
estoppel under section 325(e) shall apply to that petitioner. If no petitioner
remains in the post-grant review, the Office may terminate the post-grant
review or proceed to a final written decision under section 328(a).
(b)Any agreement or understanding between the patent owner
and a petitioner, including any collateral agreements referred to in such
agreement or understanding, made in connection with, or in contemplation of,
the termination of a post-grant review under this section shall be in writing,
and a true copy of such agreement or understanding shall be filed in the Office
before the termination of the post-grant review as between the parties. If any
party filing such agreement or understanding so requests, the copy shall be
kept separate from the file of the post-grant review, and shall be made
available only to Federal Government agencies upon written request, or to any
other person on a showing of good cause.
328.
(a)If a post-grant review is instituted and not dismissed
under this chapter, the Patent Trial and Appeal Board shall issue a final
written decision with respect to the patentability of any patent claim
challenged by the petitioner and any new claim added under section
326(d).
(b)If
the Patent Trial and Appeal Board issues a final written decision under
subsection (a) and the time for appeal has expired or any appeal has
terminated, the Director shall issue and publish a certificate canceling any
claim of the patent finally determined to be unpatentable, confirming any claim
of the patent determined to be patentable, and incorporating in the patent by
operation of the certificate any new or amended claim determined to be
patentable.
(c)The Office shall
make available to the public data describing the length of time between the
institution of, and the issuance of a final written decision under subsection
(a) for, each post-grant review.
329.A party dissatisfied with the final written
decision of the Patent Trial and Appeal Board under section 328(a) may appeal
the decision pursuant to sections 141 through 144. Any party to the post-grant
review shall have the right to be a party to the appeal.
330.Request for
stay of certain proceedingsIf
a party seeks a stay of a civil action alleging infringement of a patent under
section 281, or a proceeding before the International Trade Commission under
section 337 of the Tariff Act of 1930, relating to a post-grant review under
this chapter, the court shall decide whether to enter a stay based on—
(1)whether a stay, or
the denial thereof, will simplify the issues in question and streamline the
trial;
(2)whether discovery
is complete and whether a trial date has been set;
(3)whether a stay, or
the denial thereof, would unduly prejudice the nonmoving party or present a
clear tactical advantage for the moving party; and
(4)whether a stay, or
the denial thereof, will reduce the burden of litigation on the parties and on
the
court.
.
(e)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
Review321.
(f)Regulations and
Effective Date
(1)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 (d) of this section.
(2)
(A)The amendments made by subsection (d) shall take effect
upon the expiration of the 1-year period beginning on the date of the enactment
of this Act and, except as provided in section 18 and in paragraph (3), shall
apply to any patent that is described in section 2(n)(1).
(B)The
Director may impose a limit on the number of post-grant reviews that may be
instituted under chapter 32 of title 35, United States Code, during each of the
4 years following the effective date set forth in subparagraph (A).
(3)
(A)The Director shall determine, and include in the
regulations issued under paragraph (1), the procedures under which an
interference commenced before the effective date set forth in paragraph (2) is
to proceed, including whether such interference—
(i)is
to be dismissed without prejudice to the filing of a petition for a post-grant
review under chapter 32 of title 35, United States Code; or
(ii)is
to proceed as if this Act had not been enacted.
(B)Proceedings by
Patent Trial and Appeal BoardFor purposes of an interference
that is commenced before the effective date set forth in paragraph (2), the
Director may deem the Patent Trial and Appeal Board to be the Board of Patent
Appeals and Interferences, and may allow the Patent Trial and Appeal Board to
conduct any further proceedings in that interference.
(C)The
authorization to appeal or have remedy from derivation proceedings in sections
141(d) and 146 of title 35, United States Code, and the jurisdiction to
entertain appeals from derivation proceedings in section 1295(a)(4)(A) of title
28, United States Code, shall be deemed to extend to any final decision in an
interference that is commenced before the effective date set forth in paragraph
(2) of this subsection and that is not dismissed pursuant to this
paragraph.
(g)Citation of
Prior Art and Written Statements
(1)Section 301 of title 35, United States Code, is amended
to read as follows:
301.Citation of
prior art and written statements
(a)Any person at any time may cite to the Office in
writing—
(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)statements of the
patent owner filed in a proceeding before a Federal court or the Office in
which the patent owner took a position on the scope of any claim of a
particular patent.
(b)If the person citing prior art or written statements
pursuant to subsection (a) explains in writing the pertinence and manner of
applying the prior art or written statements to at least 1 claim of the patent,
the citation of the prior art or written statements and the explanation thereof
shall become a part of the official file of the patent.
(c)A party that submits a written statement pursuant to
subsection (a)(2) shall include any other documents, pleadings, or evidence
from the proceeding in which the statement was filed that addresses the written
statement.
(d)A
written statement submitted pursuant to subsection (a)(2), and additional
information submitted pursuant to subsection (c), shall not be considered by
the Office for any purpose other than to determine the proper meaning of a
patent claim in a proceeding that is ordered or instituted pursuant to section
304, 314, or 324. If any such written statement or additional information is
subject to an applicable protective order, it shall be redacted to exclude
information that is subject to that order.
(e)Upon
the written request of the person citing prior art or written statements
pursuant to subsection (a), that person’s identity shall be excluded from the
patent file and kept
confidential.
.
(2)The item relating to section 301 in the table of
sections for chapter 30 of title 35, United States Code, is amended to read as
follows:
301. Citation of prior art and written
statements.
.
(3)The amendments made by this subsection shall take effect
upon the expiration of the 1-year period beginning on the date of the enactment
of this Act and shall apply to any patent issued before, on, or after that
effective date.
(h)
(1)Determination by
director
(A)Section 303(a) of title 35, United States Code, is
amended by striking section 301 of this title
and inserting
section 301 or 302
.
(B)The amendment made by this paragraph shall take effect upon
the expiration of the 1-year period beginning on the date of the enactment of
this Act and shall apply to any patent issued before, on, or after that
effective date.
(2)
(A)Section 306 of title 35, United States Code, is amended
by striking 145
and inserting 144
.
(B)The amendment made by this paragraph shall take effect on
the date of the enactment of this Act and shall apply to any appeal of a
reexamination that is pending before the Board of Patent Appeals and
Interferences or the Patent Trial and Appeal Board on or after the date of the
enactment of this Act.
6.Patent Trial and
Appeal Board
(a)
(1)Section 6 of title 35, United States Code, is amended to
read as follows:
6.Patent Trial and
Appeal Board
(a)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, in consultation with the Director. Any reference in
any Federal law, Executive order, rule, regulation, or delegation of authority,
or any document of or pertaining to the Board of Patent Appeals and
Interferences is deemed to refer to the Patent Trial and Appeal Board.
(b)The
Patent Trial and Appeal Board shall—
(1)on written appeal
of an applicant, review adverse decisions of examiners upon applications for
patents pursuant to section 134(a);
(2)review appeals of
reexaminations pursuant to section 134(b);
(3)conduct derivation
proceedings pursuant to section 135; and
(4)conduct inter
partes reviews and post-grant reviews pursuant to chapters 31 and 32.
(c)Each appeal, derivation proceeding, post-grant review, and
inter partes review 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.
(d)Treatment of
prior appointmentsThe Secretary of Commerce may, in the
Secretary’s discretion, deem the appointment of an administrative patent judge
who, before the date of the enactment of this subsection, held office pursuant
to an appointment by the Director to take effect on the date on which the
Director initially appointed the administrative patent judge. It shall be a
defense to a challenge to the appointment of an administrative patent judge on
the basis of the judge’s having been originally appointed by the Director that
the administrative patent judge so appointed was acting as a de facto
officer.
.
(2)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.
.
(b)Section 134 of title 35, United States Code, is
amended—
(1)in subsection (b),
by striking any reexamination proceeding
and inserting a
reexamination
; and
(2)by striking
subsection (c).
(c)
(1)Section 141 of title 35, United States Code, is amended
to read as follows:
141.Appeal to the
Court of Appeals for the Federal Circuit
(a)An
applicant who is dissatisfied with the final decision in an appeal to the
Patent Trial and Appeal Board under section 134(a) may appeal the Board’s
decision to the United States Court of Appeals for the Federal Circuit. By
filing such an appeal, the applicant waives his or her right to proceed under
section 145.
(b)A
patent owner who is dissatisfied with the final decision in an appeal of a
reexamination to the Patent Trial and Appeal Board under section 134(b) may
appeal the Board’s decision only to the United States Court of Appeals for the
Federal Circuit.
(c)Post-Grant and
Inter Partes ReviewsA party to a post-grant or inter partes
review who is dissatisfied with the final written decision of the Patent Trial
and Appeal Board under section 318(a) or 328(a) may appeal the Board’s decision
only to the United States Court of Appeals for the Federal Circuit.
(d)A party to a derivation proceeding who is
dissatisfied with the final decision of the Patent Trial and Appeal Board in
the proceeding may appeal the decision to the United States Court of Appeals
for the Federal Circuit, but such appeal shall be dismissed if any adverse
party to such derivation proceeding, within 20 days after the appellant has
filed notice of appeal in accordance with section 142, files notice with the
Director that the party elects to have all further proceedings conducted as
provided in section 146. If the appellant does not, within 30 days after the
filing of such notice by the adverse party, file a civil action under section
146, the Board’s decision shall govern the further proceedings in the
case.
.
(2)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 a patent application, derivation proceeding, reexamination, post-grant
review, or inter partes review at the instance of a party who exercised that
party’s right to participate in the applicable proceeding before or appeal to
the Board, except that an applicant or a party to a derivation proceeding may
also have remedy by civil action pursuant to section 145 or 146 of title 35; an
appeal under this subparagraph of a decision of the Board with respect to an
application or derivation proceeding shall waive the right of such applicant or
party to proceed under section 145 or 146 of title
35;
.
(3)Section 143 of title 35, United States Code, is
amended—
(A)by striking the
third sentence and inserting the following: In an ex parte case, the
Director shall submit to the court in writing the grounds for the decision of
the Patent and Trademark Office, addressing all of the issues raised in the
appeal. The Director shall have the right to intervene in an appeal from a
decision entered by the Patent Trial and Appeal Board in a derivation
proceeding under section 135 or in an inter partes or post-grant review under
chapter 31 or 32.
; and
(B)by striking the
last sentence.
(d)The amendments made by this section shall take effect upon
the expiration of the 1-year period beginning on the date of the enactment of
this Act and shall apply to proceedings commenced on or after that effective
date, except that—
(1)the extension of
jurisdiction to the United States Court of Appeals for the Federal Circuit to
entertain appeals of decisions of the Patent Trial and Appeal Board in
reexaminations under the amendment made by subsection (c)(2) shall be deemed to
take effect on the date of enactment of this Act and shall extend to any
decision of the Board of Patent Appeals and Interferences with respect to a
reexamination that is entered before, on, or after the date of the enactment of
this Act;
(2)the provisions of
sections 6, 134, and 141 of title 35, United States Code, as in effect on the
day before the date of the enactment of this Act shall continue to apply to
inter partes reexaminations that are requested under section 311 of such title
before the effective date of the amendments made by this section;
(3)the Patent Trial
and Appeal Board may be deemed to be the Board of Patent Appeals and
Interferences for purposes of appeals of inter partes reexaminations that are
requested under section 311 of title 35, United States Code, before the
effective date of the amendments made by this section; and
(4)the Director’s
right under the fourth sentence of section 143 of title 35, United States Code,
as amended by subsection (c)(3) of this section, to intervene in an appeal from
a decision entered by the Patent Trial and Appeal Board shall be deemed to
extend to inter partes reexaminations that are requested under section 311 of
such title before the effective date of the amendments made by this
section.
7.Preissuance
submissions by third parties
(a)Section 122 of title 35, United States Code, is amended
by adding at the end the following:
(e)Preissuance
Submissions by Third Parties
(1)Any third party may submit for consideration and
inclusion in the record of a patent application, any patent, published patent
application, or other printed 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 given or mailed in the application for
patent; or
(B)the later
of—
(i)6
months after the date on which the application for patent is first published
under section 122 by the Office, 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.
(2)Any submission under paragraph (1) shall—
(A)set forth a
concise description of the asserted relevance of each submitted
document;
(B)be accompanied by
such fee as the Director may prescribe; and
(C)include a
statement by the person making such submission affirming that the submission
was made in compliance with this
section.
.
(b)The amendments made by this section shall take effect upon
the expiration of the 1-year period beginning on the date of the enactment of
this Act and shall apply to any patent application filed before, on, or after
that effective date.
8.
(a)Technical
Amendments Relating to VenueSections 32, 145, 146, 154(b)(4)(A),
and 293 of title 35, United States Code, and section 21(b)(4) of the Trademark
Act of 1946 (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
.
(b)The amendments made by this section shall take effect on the
date of the enactment of this Act and shall apply to any civil action commenced
on or after that date.
9.
(a)
(1)The Director may set or adjust by rule any fee
established, authorized, or charged under title 35, United States Code, or the
Trademark Act of 1946 (15 U.S.C. 1051 et seq.), for any services performed by
or materials furnished by, the Office, subject to paragraph (2).
(2)Fees may be set or
adjusted under paragraph (1) only to recover the aggregate estimated costs to
the Office for processing, activities, services, and materials relating to
patents (in the case of patent fees) and trademarks (in the case of trademark
fees), including administrative costs of the Office with respect to such patent
or trademark fees (as the case may be).
(b)The fees set or adjusted under subsection (a) for
filing, searching, examining, issuing, appealing, and maintaining patent
applications and patents shall be reduced by 50 percent with respect to the
application of such fees to any small entity that qualifies for reduced fees
under section 41(h)(1) of title 35, United States Code, and shall be reduced by
75 percent with respect to the application of such fees to any micro entity as
defined in section 123 of that title (as added by subsection (f) of this
section).
(c)Reduction of
fees in certain fiscal yearsIn each fiscal year, the
Director—
(1)shall consult with
the Patent Public Advisory Committee and the Trademark Public Advisory
Committee on the advisability of reducing any fees described in subsection (a);
and
(2)after the
consultation required under paragraph (1), may reduce such fees.
(d)Role of the
public advisory committeeThe Director shall—
(1)not less than 45 days before publishing any
proposed fee under subsection (a) in the Federal Register, submit the proposed
fee to the Patent Public Advisory Committee or the Trademark Public Advisory
Committee, or both, as appropriate;
(2)(A)provide the relevant
advisory committee described in paragraph (1) a 30-day period following the
submission of any proposed fee, in which to deliberate, consider, and comment
on such proposal;
(B)require that, during that 30-day
period, the relevant advisory committee hold a public hearing relating to such
proposal; and
(C)assist the relevant advisory committee in
carrying out that public hearing, including by offering the use of the
resources of the Office to notify and promote the hearing to the public and
interested stakeholders;
(3)require the
relevant advisory committee to make available to the public a written report
setting forth in detail the comments, advice, and recommendations of the
committee regarding the proposed fee; and
(4)consider and analyze any comments, advice,
or recommendations received from the relevant advisory committee before setting
or adjusting (as the case may be) the fee.
(e)Publication in
the Federal register
(1)Publication and
rationaleThe Director shall—
(A)publish any
proposed fee change under this section in the Federal Register;
(B)include, in such
publication, the specific rationale and purpose for the proposal, including the
possible expectations or benefits resulting from the proposed change;
and
(C)notify, through
the Chair and Ranking Member of the Committees on the Judiciary of the Senate
and the House of Representatives, the Congress of the proposed change not later
than the date on which the proposed change is published under subparagraph
(A).
(2)The Director shall, in the publication under paragraph
(1), provide the public a period of not less than 45 days in which to submit
comments on the proposed change in fees.
(3)Publication of
final ruleThe final rule
setting or adjusting a fee under this section shall be published in the Federal
Register and in the Official Gazette of the Patent and Trademark Office.
(4)Congressional
comment periodA fee set or
adjusted under subsection (a) may not become effective—
(A)before the end of
the 45-day period beginning on the day after the date on which the Director
publishes the final rule adjusting or setting the fee under paragraph (3);
or
(B)if a law is
enacted disapproving such fee.
(5)Rules prescribed under this section shall not
diminish—
(A)the rights of an
applicant for a patent under title 35, United States Code, or for a trademark
under the Trademark Act of 1946; or
(B)any rights under a
ratified treaty.
(f)The Director retains the authority under subsection (a)
to set or adjust fees only during such period as the Patent and Trademark
Office remains an agency within the Department of Commerce.
(g)
(1)Chapter 11 of title 35, United States Code, is amended by
adding at the end the following new section:
123.
(a)For purposes of this
title, the term micro entity means an applicant who makes a
certification that the applicant—
(1)qualifies as a small entity, as defined in
regulations issued by the Director;
(2)has not been named
as an inventor on more than 4 previously filed patent applications, other than
applications filed in another country, provisional applications under section
111(b), or international applications filed under the treaty defined in section
351(a) for which the basic national fee under section 41(a) was not
paid;
(3)did not, in the calendar year preceding the
calendar year in which the examination fee for the application is being paid,
have a gross income, as defined in section 61(a) of the Internal Revenue Code
of 1986, exceeding 3 times the median household income for that preceding
calendar year, as reported by the Bureau of the Census; and
(4)has not assigned, granted, or conveyed, and
is not under an obligation by contract or law to assign, grant, or convey, a
license or other ownership interest in the application concerned to an entity
that, in the calendar year preceding the calendar year in which the examination
fee for the application is being paid, had a gross income, as defined in
section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the
median household income for that preceding calendar year, as most recently
reported by the Bureau of the Census.
(b)Applications
Resulting From Prior EmploymentAn applicant is not considered to
be named on a previously filed application for purposes of subsection (a)(2) if
the applicant has assigned, or is under an obligation by contract or law to
assign, all ownership rights in the application as the result of the
applicant’s previous employment.
(c)Foreign Currency
Exchange RateIf an applicant’s or entity’s gross income in the
preceding year is not in United States dollars, the average currency exchange
rate, as reported by the Internal Revenue Service, during the preceding year
shall be used to determine whether the applicant’s or entity’s gross income
exceeds the threshold specified in paragraphs (3) or (4) of subsection
(a).
(d)Public
Institutions of Higher Education
(1)For purposes of this section, a micro entity shall
include an applicant who certifies that—
(A)the applicant’s
employer, from which the applicant obtains the majority of the applicant’s
income, is an institution of higher education, as defined in section 101 of the
Higher Education Act of 1965 (20
U.S.C. 1001), that is a public institution; or
(B)the applicant 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 such State public institution.
(2)The Director may, in the Director’s discretion, impose
income limits, annual filing limits, or other limits on who may qualify as a
micro entity pursuant to this subsection if the Director determines that such
additional limits are reasonably necessary to avoid an undue impact on other
patent applicants or owners or are otherwise reasonably necessary and
appropriate. At least 3 months before any limits proposed to be imposed
pursuant to this paragraph shall take effect, the Director shall inform the
Committee on the Judiciary of the House of Representatives and the Committee on
the Judiciary of the Senate of any such proposed
limits.
.
(2)Chapter 11 of title 35, United States Code, is amended
by adding at the end the following new item:
123. Micro entity
defined.
.
(h)Electronic
filing incentive
(1)Notwithstanding any other provision of this section, a
fee of $400 shall be established for each application for an original patent,
except for a design, plant, or provisional application, that is not filed by
electronic means as prescribed by the Director. The fee established by this
subsection shall be reduced by 50 percent for small entities that qualify for
reduced fees under section 41(h)(1) of title 35, United States Code. All fees
paid under this subsection shall be deposited in the Treasury as an offsetting
receipt that shall not be available for obligation or expenditure.
(2)This subsection shall take effect upon the expiration of the
60-day period beginning on the date of the enactment of this Act.
(i)This section and the amendments made by this section shall
take effect on the date of the enactment of this Act.
10.
(a)Subsections (a) and
(b) of section 41 of title 35, United States Code, are amended to read as
follows:
(a)The Director shall charge the following fees:
(1)Filing and basic
national fees
(A)On filing each
application for an original patent, except for design, plant, or provisional
applications, $330.
(B)On filing each
application for an original design patent, $220.
(C)On filing each
application for an original plant patent, $220.
(D)On filing each
provisional application for an original patent, $220.
(E)On filing each
application for the reissue of a patent, $330.
(F)The basic national
fee for each international application filed under the treaty defined in
section 351(a) entering the national stage under section 371, $330.
(G)In addition,
excluding any sequence listing or computer program listing filed in an
electronic medium as prescribed by the Director, for any application the
specification and drawings of which exceed 100 sheets of paper (or equivalent
as prescribed by the Director if filed in an electronic medium), $270 for each
additional 50 sheets of paper (or equivalent as prescribed by the Director if
filed in an electronic medium) or fraction thereof.
(2)
(A)In addition to the
fee specified in paragraph (1)—
(i)on filing or on
presentation at any other time, $220 for each claim in independent form in
excess of 3;
(ii)on filing or on
presentation at any other time, $52 for each claim (whether dependent or
independent) in excess of 20; and
(iii)for each
application containing a multiple dependent claim, $390.
(B)Multiple
dependent claimsFor the purpose of computing fees under
subparagraph (A), a multiple dependent claim referred to in section 112 or any
claim depending therefrom shall be considered as separate dependent claims in
accordance with the number of claims to which reference is made.
(C)Refunds; errors
in paymentThe Director may by regulation provide for a refund of
any part of the fee specified in subparagraph (A) for any claim that is
canceled before an examination on the merits, as prescribed by the Director,
has been made of the application under section 131. Errors in payment of the
additional fees under this paragraph may be rectified in accordance with
regulations prescribed by the Director.
(3)
(A)
(i)For examination of
each application for an original patent, except for design, plant, provisional,
or international applications, $220.
(ii)For examination
of each application for an original design patent, $140.
(iii)For examination
of each application for an original plant patent, $170.
(iv)For examination
of the national stage of each international application, $220.
(v)For examination of
each application for the reissue of a patent, $650.
(B)Applicability of
other fee provisionsThe
provisions of paragraphs (3) and (4) of section 111(a) relating to the payment
of the fee for filing the application shall apply to the payment of the fee
specified in subparagraph (A) with respect to an application filed under
section 111(a). The provisions of section 371(d) relating to the payment of the
national fee shall apply to the payment of the fee specified in subparagraph
(A) with respect to an international application.
(4)
(A)For issuing each
original patent, except for design or plant patents, $1,510.
(B)For issuing each
original design patent, $860.
(C)For issuing each
original plant patent, $1,190.
(D)For issuing each
reissue patent, $1,510.
(5)On filing each disclaimer, $140.
(6)
(A)On filing an
appeal from the examiner to the Patent Trial and Appeal Board, $540.
(B)In addition, on filing a brief in support
of the appeal, $540, and on requesting an oral hearing in the appeal before the
Patent Trial and Appeal Board, $1,080.
(7)On filing each petition for the revival of an
unintentionally abandoned application for a patent, for the unintentionally
delayed payment of the fee for issuing each patent, or for an unintentionally
delayed response by the patent owner in any reexamination proceeding, $1,620,
unless the petition is filed under section 133 or 151, in which case the fee
shall be $540.
(8)For petitions for 1-month extensions of time to take actions
required by the Director in an application—
(A)on filing a first
petition, $130;
(B)on filing a second
petition, $360; and
(C)on filing a third
or subsequent petition, $620.
(b)
(1)The Director shall
charge the following fees for maintaining in force all patents based on
applications filed on or after December 12, 1980:
(A)Three years and 6
months after grant, $980.
(B)Seven years and 6
months after grant, $2,480.
(C)Eleven years and 6
months after grant, $4,110.
(2)Unless payment of the applicable maintenance fee under
paragraph (1) is received in the Office on or before the date the fee is due or
within a grace period of 6 months thereafter, the patent shall expire as of the
end of such grace period. The Director may require the payment of a surcharge
as a condition of accepting within such 6-month grace period the payment of an
applicable maintenance fee.
(3)No maintenance
fee for design or plant patentNo fee may be established for
maintaining a design or plant patent in
force.
.
(b)Subsection (c) of section 41 of title 35, United States
Code, is amended—
(1)by striking
(c)(1) The Director
and inserting:
(c)Delays in
payment of maintenance fees
(1)The
Director
;
and
(2)by striking
(2) A patent
and inserting (2)
Effect on rights of
others.—A patent
.
(c)Subsection (d) of section 41 of title 35, United States
Code, is amended to read as follows:
(d)Patent Search
and Other Fees
(1)
(A)The Director shall charge the fees specified under
subparagraph (B) for the search of each application for a patent, except for
provisional applications. The Director shall adjust the fees charged under this
paragraph to ensure that the fees recover an amount not to exceed the estimated
average cost to the Office of searching applications for patent either by
acquiring a search report from a qualified search authority, or by causing a
search by Office personnel to be made, of each application for patent.
(B)The fees referred to in subparagraph (A) are—
(i)$540 for each
application for an original patent, except for design, plant, provisional, or
international applications;
(ii)$100 for each
application for an original design patent;
(iii)$330 for each
application for an original plant patent;
(iv)$540 for the
national stage of each international application; and
(v)$540 for each
application for the reissue of a patent.
(C)Applicability of
other provisionsThe provisions of paragraphs (3) and (4) of
section 111(a) relating to the payment of the fee for filing the application
shall apply to the payment of the fee specified in this paragraph with respect
to an application filed under section 111(a). The provisions of section 371(d)
relating to the payment of the national fee shall apply to the payment of the
fee specified in this paragraph with respect to an international
application.
(D)The
Director may by regulation provide for a refund of any part of the fee
specified in this paragraph for any applicant who files a written declaration
of express abandonment as prescribed by the Director before an examination has
been made of the application under section 131.
(E)Applications
subject to secrecy orderA search of an application that is the
subject of a secrecy order under section 181 or otherwise involves classified
information may be conducted only by Office personnel.
(F)A qualified search authority that is a commercial entity
may not conduct a search of a patent application if the entity has any direct
or indirect financial interest in any patent or in any pending or imminent
application for patent filed or to be filed in the Office.
(2)
(A)The Director shall
establish fees for all other processing, services, or materials relating to
patents not specified in this section to recover the estimated average cost to
the Office of such processing, services, or materials, except that the Director
shall charge the following fees for the following services:
(i)For recording a
document affecting title, $40 per property.
(ii)For each
photocopy, $.25 per page.
(iii)For each black
and white copy of a patent, $3.
(B)The yearly fee for providing a library specified in
section 12 with uncertified printed copies of the specifications and drawings
for all patents in that year shall be
$50.
.
(d)Subsection (h) of section 41 of title 35, United States
Code, is amended to read as follows:
(h)
(1)Subject to paragraph (3), fees charged under subsections
(a), (b), and (d)(1) shall be reduced by 50 percent with respect to their
application to any small business concern as defined under section 3 of the
Small Business Act, and to any independent inventor or nonprofit organization
as defined in regulations issued by the Director.
(2)Surcharges and
other feesWith respect to its application to any entity
described in paragraph (1), any surcharge or fee charged under subsection (c)
or (d) shall not be higher than the surcharge or fee required of any other
entity under the same or substantially similar circumstances.
(3)Reduction for
electronic filingThe fee charged under subsection (a)(1)(A)
shall be reduced by 75 percent with respect to its application to any entity to
which paragraph (1) applies, if the application is filed by electronic means as
prescribed by the
Director.
.
(e)Section 41 of title 35, United States Code, is
amended—
(1)in subsection (e),
in the first sentence, by striking The Director
and inserting
Waiver of fees; copies
regarding notice.—The Director
;
(2)in subsection (f),
by striking The fees
and inserting Adjustment of fees.—The
fees
;
(3)by repealing
subsection (g); and
(4)in subsection
(i)—
(A)by striking
(i)(1) The Director
and inserting the following:
(i)Electronic
patent and trademark data
(1)Maintenance of
collectionsThe
Director
;
(B)by striking
(2) The Director
and inserting the following:
(2)Availability of
automated search systemsThe
Director
;
(C)by striking (3) The Director
and inserting the following:
(3)The
Director
;
and
(D)by striking
(4) The Director
and inserting the following:
(4)Annual report to
congressThe
Director
.
(f)Adjustment of
trademark feesSection 802(a) of division B of the Consolidated
Appropriations Act, 2005 (Public Law 108–447) is amended—
(1)in the first
sentence, by striking During fiscal years 2005, 2006 and 2007,
,
and inserting Until such time as the Director sets or adjusts the fees
otherwise,
; and
(2)in the second
sentence, by striking During fiscal years 2005, 2006, and 2007,
the
and inserting The
.
(g)Effective date,
applicability, and transition provisionsSection 803(a) of division B of the
Consolidated Appropriations Act, 2005 (Public Law 108–447) Division B of Public
Law 108–447 is amended by striking and shall apply only with respect to
the remaining portion of fiscal year 2005 and fiscal year 2006
.
(h)Electronic
filing incentive
(1)Notwithstanding any other provision of this section, a
fee of $400 shall be established for each application for an original patent,
except for a design, plant, or provisional application, that is not filed by
electronic means as prescribed by the Director. The fee established by this
subsection shall be reduced by 50 percent for small entities that qualify for
reduced fees under section 41(h)(1) of title 35, United States Code. All fees
paid under this subsection shall be deposited in the Treasury as an offsetting
receipt that shall not be available for obligation or expenditure.
(2)This subsection shall take effect upon the expiration of the
60-day period beginning on the date of the enactment of this Act.
(i)Reduction in
Fees for Small Entity PatentsThe Director shall reduce fees for
providing prioritized examination of utility and plant patent applications by
50 percent for small entities that qualify for reduced fees under section
41(h)(1) of title 35, United States Code, so long as the fees of the
prioritized examination program are set to recover the estimated cost of the
program.
(j)Except as provided in subsection (h), this section and the
amendments made by this section shall take effect on the date of the enactment
of this Act.
11.
(a)Chapter 25 of title
35, United States Code, is amended by adding at the end the following:
257.Supplemental
examinations to consider, reconsider, or correct information
(a)Request for
supplemental examinationA patent owner may request supplemental
examination of a patent in the Office to consider, reconsider, or correct
information believed to be relevant to the patent, in accordance with such
requirements as the Director may establish. Within 3 months after the date a
request for supplemental examination meeting the requirements of this section
is received, the Director shall conduct the supplemental examination and shall
conclude such examination by issuing a certificate indicating whether the
information presented in the request raises a substantial new question of
patentability.
(b)If the certificate issued under subsection (a) indicates
that a substantial new question of patentability is raised by 1 or more items
of information in the request, the Director shall order reexamination of the
patent. The reexamination shall be conducted according to procedures
established by chapter 30, except that the patent owner shall not have the
right to file a statement pursuant to section 304. During the reexamination,
the Director shall address each substantial new question of patentability
identified during the supplemental examination, notwithstanding the limitations
in chapter 30 relating to patents and printed publication or any other
provision of such chapter.
(c)
(1)A patent shall not be held unenforceable on the basis of
conduct relating to information that had not been considered, was inadequately
considered, or was incorrect in a prior examination of the patent if the
information was considered, reconsidered, or corrected during a supplemental
examination of the patent. The making of a request under subsection (a), or the
absence thereof, shall not be relevant to enforceability of the patent under
section 282.
(2)
(A)Paragraph (1) shall not apply to an allegation pled
with particularity, or set forth with particularity in a notice received by the
patent owner under section 505(j)(2)(B)(iv)(II) of the Federal Food, Drug, and
Cosmetic Act (21 U.S.C. 355(j)(2)(B)(iv)(II)), before the date of a
supplemental examination request under subsection (a) to consider, reconsider,
or correct information forming the basis for the allegation.
(B)Patent
enforcement actionsIn an action brought under section 337(a) of
the Tariff Act of 1930 (19 U.S.C. 1337(a)), or section 281 of this title,
paragraph (1) shall not apply to any defense raised in the action that is based
upon information that was considered, reconsidered, or corrected pursuant to a
supplemental examination request under subsection (a), unless the supplemental
examination, and any reexamination ordered pursuant to the request, are
concluded before the date on which the action is brought.
(d)
(1)The
Director shall, by regulation, establish fees for the submission of a request
for supplemental examination of a patent, and to consider each item of
information submitted in the request. If reexamination is ordered under
subsection (b), fees established and applicable to ex parte reexamination
proceedings under chapter 30 shall be paid, in addition to fees applicable to
supplemental examination.
(2)The
Director shall issue regulations governing the form, content, and other
requirements of requests for supplemental examination, and establishing
procedures for reviewing information submitted in such requests.
(e)Nothing in this section shall be construed—
(1)to preclude the
imposition of sanctions based upon criminal or antitrust laws (including
section 1001(a) of title 18, the first section of the Clayton Act, and section
5 of the Federal Trade Commission Act to the extent that section relates to
unfair methods of competition);
(2)to limit the
authority of the Director to investigate issues of possible misconduct and
impose sanctions for misconduct in connection with matters or proceedings
before the Office; or
(3)to limit the
authority of the Director to issue regulations under chapter 3 relating to
sanctions for misconduct by representatives practicing before the
Office.
.
(b)The table of sections for chapter 25 of title 35,
United States Code, is amended by adding at the end the following new
item:
257. Supplemental examinations to
consider, reconsider, or correct
information.
.
(c)The amendments made by this section shall take effect upon
the expiration of the 1-year period beginning on the date of the enactment of
this Act and shall apply to any patent issued before, on, or after that
effective date.
12.
(a)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
.
(b)The amendments made by this section shall take effect on the
date of enactment of this Act and shall apply to any patent issued before, on,
or after that date.
13.Tax strategies
deemed within the prior art
(a)For purposes of evaluating an invention under section 102
or 103 of title 35, United States Code, any strategy for reducing, avoiding, or
deferring tax liability, whether known or unknown at the time of the invention
or application for patent, shall be deemed insufficient to differentiate a
claimed invention from the prior art.
(b)For
purposes of this section, the term tax liability refers to any
liability for a tax under any Federal, State, or local law, or the law of any
foreign jurisdiction, including any statute, rule, regulation, or ordinance
that levies, imposes, or assesses such tax liability.
(c)This
section does not apply to that part of an invention that—
(1)is a method,
apparatus, technology, computer program product, or system, that is used solely
for preparing a tax or information return or other tax filing, including one
that records, transmits, transfers, or organizes data related to such filing;
or
(2)is a method, apparatus, technology,
computer program product, or system used solely for financial management, to
the extent that it is severable from any tax strategy or does not limit the use
of any tax strategy by any taxpayer or tax advisor.
(d)Nothing in this section shall be construed to imply
that other business methods are patentable or that other business-method
patents are valid.
(e)Effective Date;
ApplicabilityThis section shall take effect on the date of
enactment of this Act and shall apply to any patent application pending, and
any patent issued, on or after that date.
14.
(a)Section 282 of title 35, United State Code, is amended in
its second undesignated paragraph 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, 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.
.
(b)Sections 119(e)(1) and 120 of title 35, United States
Code, are each amended by striking the first paragraph of section 112 of
this title
and inserting section 112(a) (other than the
requirement to disclose the best mode)
.
(c)The amendments made by this section shall take effect upon
the date of the enactment of this Act and shall apply to proceedings commenced
on or after that date.
15.
(a)
(1)Section 287(a) of
title 35, United States Code, is amended by striking or when,
and 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, or when,”.
(2)The amendment made by this subsection shall apply to any
case that is pending on, or commenced on or after, the date of the enactment of
this Act.
(b)
(1)Section 292(a) of
title 35, United States, Code, is amended by adding at the end the following:
Only the United States may sue for the penalty authorized by this
subsection.
.
(2)Subsection (b) of section 292 of title 35, United States
Code, is amended to read as follows:
(b)A person who has suffered a competitive
injury as a result of a violation of this section may file a civil action in a
district court of the United States for recovery of damages adequate to
compensate for the
injury.
.
(3)The amendments made by this subsection shall apply to any
case that is pending on, or commenced on or after, the date of the enactment of
this Act.
16.
(a)Chapter 29 of title
35, United States Code, is amended by adding at the end the following:
298.The failure of an
infringer to obtain the advice of counsel with respect to any allegedly
infringed patent, or the failure of the infringer to present such advice to the
court or jury, may not be used to prove that the accused infringer willfully
infringed the patent or that the infringer intended to induce infringement of
the
patent.
.
(b)The table of
sections for chapter 29 of title 35, United States Code, is amended by adding
at the end the following:
298. Advice of
counsel.
.
17.The fourth
undesignated paragraph of section 261 of title 35, United States Code, is
amended by inserting before the period the following: and identifies all
real parties in interest and those entities that control, directly or
indirectly, such real parties in interest
.
18.Transitional
program for covered business method patents
(a)Except
as otherwise expressly provided, wherever in this section language is expressed
in terms of a section or chapter, the reference shall be considered to be made
to that section or chapter in title 35, United States Code.
(b)
(1)Not
later than the date that is 1 year after the date of the enactment of this Act,
the Director shall issue regulations establishing and implementing a
transitional post-grant review proceeding for review of the validity of covered
business method patents. The transitional proceeding implemented pursuant to
this subsection shall be regarded as, and shall employ the standards and
procedures of, a post-grant review under chapter 32, subject to the
following:
(A)Section 321(c) and
subsections (b), (e)(2), and (f) of section 325 shall not apply to a
transitional proceeding.
(B)A person may not
file a petition for a transitional proceeding with respect to a covered
business method patent unless the person or the person’s real party in interest
has been sued for infringement of the patent or has been charged with
infringement under that patent.
(C)A petitioner in a
transitional proceeding who challenges the validity of 1 or more claims in a
covered business method patent on a ground raised under section 102 or 103, as
in effect on the day before the date of the enactment of this Act, may support
such ground only on the basis of—
(i)prior art that is
described by section 102(a) (as in effect on the day before the date of the
enactment of this Act); or
(ii)prior art
that—
(I)discloses the
invention more than 1 year before the date of the application for patent in the
United States; and
(II)would be
described by section 102(a) (as in effect on the day before the date of the
enactment of this Act) if the disclosure had been made by another before the
invention thereof by the applicant for patent.
(D)The petitioner in
a transitional proceeding, or the petitioner’s real party in interest, may not
assert, either in a civil action arising in whole or in part under section 1338
of title 28, United States Code, or in a proceeding before the International
Trade Commission, that a claim in a patent is invalid on any ground that the
petitioner raised during a transitional proceeding that resulted in a final
written decision.
(E)The Director may
institute a transitional proceeding only for a patent that is a covered
business method patent.
(2)The regulations issued under paragraph (1) shall take effect
upon the expiration of the 1-year period beginning on the date of the enactment
of this Act and shall apply to any covered business method patent issued
before, on, or after such effective date, except that the regulations shall not
apply to a patent described in the first sentence of section 5(f)(2) of this
Act during the period that a petition for post-grant review of that patent
would satisfy the requirements of section 321(c).
(3)
(A)This subsection, and the regulations issued under this
subsection, are repealed effective upon the expiration of the 4-year period
beginning on the date that the regulations issued under to paragraph (1) take
effect.
(B)Notwithstanding
subparagraph (A), this subsection and the regulations issued under this
subsection shall continue to apply, after the date of the repeal under
subparagraph (A), to any petition for a transitional proceeding that is filed
before the date of such repeal.
(c)
(1)If a party seeks a stay of a civil action alleging
infringement of a patent under section 281 relating to a transitional
proceeding for that patent, the court shall decide whether to enter a stay
based on—
(A)whether a stay, or
the denial thereof, will simplify the issues in question and streamline the
trial;
(B)whether discovery
is complete and whether a trial date has been set;
(C)whether a stay, or
the denial thereof, would unduly prejudice the nonmoving party or present a
clear tactical advantage for the moving party; and
(D)whether a stay, or
the denial thereof, will reduce the burden of litigation on the parties and on
the court.
(2)A
party may take an immediate interlocutory appeal from a district court’s
decision under paragraph (1). The United States Court of Appeals for the
Federal Circuit shall review de novo the district court’s decision to ensure
consistent application of established precedent.
(d)Venue of
infringement actionsNotwithstanding section 1400(b) of title
28, United States Code, an action for infringement under section 281 of title
35, United States Code, of a covered business method patent may be brought only
in a judicial district—
(1)where the
defendant has its principal place of business or is incorporated;
(2)where the
defendant has committed acts of infringement and has a regular and established
place of business;
(3)where the
defendant has agreed or consented to be sued; or
(4)for foreign
defendants that do not meet the requirements of paragraphs (1) or (2), in
accordance with section 1391(d) of title 28, United States Code.
(e)Attorney’s fees
and costsIn an action for infringement under section 281 of
title 35, United States Code, of a covered business method patent, the
prevailing party shall be entitled to reasonable attorney’s fees and
costs.
(f)ATM exemption
for venue purposesIn an
action for infringement under section 281 of title 35, United States Code, of a
covered business method patent, an automated teller machine shall not be deemed
to be a physical facility for purposes of section 1400(b)(2) of title 28,
United States Code.
(g)
(1)For purposes of this
section, the term covered business method patent
means a patent
that claims a method or corresponding apparatus for performing data processing
or other operations used in the practice, administration, or management of a
financial product or service, except that the term does not include patents for
technological inventions.
(2)To
assist in implementing the transitional proceeding authorized by this
subsection, the Director shall issue regulations for determining whether a
patent is for a technological invention.
(h)Nothing in this section shall be construed as
amending or interpreting categories of patent-eligible subject matter set forth
under section 101.
19.Clarification of
jurisdiction
(a)Section 1338(a) of title 28, United States Code, is
amended by striking the second sentence and inserting the following: No
State court shall have jurisdiction over any claim for relief arising under any
Act of Congress relating to patents, plant variety protection, or
copyrights.
.
(b)Court of appeals
for the Federal CircuitSection 1295(a)(1) of title 28, United
States Code, is amended to read as follows:
(1)of an appeal from
a final decision of a district court of the United States, the District Court
of Guam, the District Court of the Virgin Islands, or the District Court of the
Northern Mariana Islands, in any civil action arising under, or in any civil
action in which a party has asserted a compulsory counterclaim arising under,
any Act of Congress relating to patents or plant variety
protection;
.
(c)
(1)Chapter 89 of title 28, United States Code, is amended by
adding at the end the following new section:
1454.Patent, plant
variety protection, and copyright cases
(a)A civil action in which any party asserts a claim for
relief arising under any Act of Congress relating to patents, plant variety
protection, or copyrights may be removed to the district court of the United
States for the district and division embracing the place where the action is
pending.
(b)The removal of an action under this section shall be made
in accordance with section 1446 of this chapter, except that if the removal is
based solely on this section—
(1)the action may be
removed by any party; and
(2)the time
limitations contained in section 1446(b) may be extended at any time for cause
shown.
(c)Clarification of
jurisdiction in certain casesThe court to which a civil action is
removed under this section is not precluded from hearing and determining any
claim in the civil action because the State court from which the civil action
is removed did not have jurisdiction over that claim.
(d)If
a civil action is removed solely under this section, the district court—
(1)shall remand all
claims that are neither a basis for removal under subsection (a) nor within the
original or supplemental jurisdiction of the district court under any Act of
Congress; and
(2)may, under the
circumstances specified in section 1367(c), remand any claims within the
supplemental jurisdiction of the district court under section
1367.
.
(2)The table of sections for chapter 89 of title 28,
United States Code, is amended by adding at the end the following new
item:
1454. Patent, plant variety
protection, and copyright
cases.
.
(d)Transfer by
Court of Appeals for the Federal Circuit
(1)Chapter 99 of title 28, United States Code, is amended by
adding at the end the following new section:
1632.Transfer by
the Court of Appeals for the Federal CircuitWhen a case is appealed to the Court of
Appeals for the Federal Circuit under section 1295(a)(1), and no claim for
relief arising under any Act of Congress relating to patents or plant variety
protection is the subject of the appeal by any party, the Court of Appeals for
the Federal Circuit shall transfer the appeal to the court of appeals for the
regional circuit embracing the district from which the appeal has been
taken.
.
(2)The table of sections for chapter 99 of title 28,
United States Code, is amended by adding at the end the following new
item:
1632. Transfer by the Court of
Appeals for the Federal
Circuit.
.
(e)The amendments made by this section shall apply to any civil
action commenced on or after the date of the enactment of this Act.
20.
(a)Section 116 of title 35, United States Code, is
amended—
(1)in the first undesignated
paragraph, by striking When
and inserting (a)
Joint
Inventions.—When
;
(2)in the second undesignated paragraph, by
striking If a joint inventor
and inserting (b)
Omitted
Inventor.—If a joint inventor
; and
(3)in the third undesignated paragraph—
(A)by striking Whenever
and
inserting (c) Correction
of Errors in Application.—Whenever
; and
(B)by striking and such error arose
without any deceptive intent on his part,
.
(b)Filing of
application in foreign countrySection 184 of title 35, United
States Code, is amended—
(1)in the first undesignated paragraph—
(A)by striking
Except when
and inserting (a)
Filing in Foreign
Country.—Except when
; and
(B)by striking
and without deceptive intent
;
(2)in the second
undesignated paragraph, by striking The term
and inserting
(b) Application.—The term
; and
(3)in the third undesignated paragraph, by
striking The scope
and inserting (c)
Subsequent modifications,
amendments, and supplements.—The scope
.
(c)Section 185 of title 35, United States Code, is amended
by striking and without deceptive intent
.
(d)Reissue of
defective patentsSection 251 of title 35, United States Code, is
amended—
(1)in the first undesignated paragraph—
(A)by striking
Whenever
and inserting (a)
In
general.—Whenever
; and
(B)by striking
without any deceptive intention
;
(2)in the second undesignated paragraph, by
striking The Director
and inserting (b)
Multiple reissued
patents.—The Director
;
(3)in the third undesignated paragraph, by
striking The provisions
and inserting (c)
Applicability of this
title.—The provisions
; and
(4)in the last undesignated paragraph, by
striking No reissued patent
and inserting (d)
Reissue patent enlarging scope
of claims.—No reissued patent
.
(e)Section 253 of title 35, United States Code, is
amended—
(1)in the first undesignated paragraph, by
striking Whenever, without any deceptive intention,
and
inserting (a) In
general.—Whenever
; and
(2)in the second undesignated paragraph, by
striking In like manner
and inserting (b)
Additional disclaimer or
dedication.—In the manner set forth in subsection
(a),
.
(f)Correction of
named inventorSection 256 of title 35, United States Code, is
amended—
(1)in the first undesignated paragraph—
(A)by striking
Whenever
and inserting (a)
Correction.—Whenever
; and
(B)by striking
and such error arose without any deceptive intention on his
part
; and
(2)in the second undesignated paragraph, by
striking The error
and inserting (b)
Patent valid if error
corrected.—The error
.
(g)The fourth
undesignated paragraph of section 261 of title 35, United States Code, is
amended by inserting before the period the following: and identifies all
real parties in interest
.
(h)Section 282 of title 35, United States Code, is
amended—
(1)in the first
undesignated paragraph—
(A)by striking
A patent
and inserting (a)
In general.—A
patent
; and
(B)by striking the
third sentence;
(2)in the second
undesignated paragraph, by striking The following
and inserting
(b) Defenses.—The following
; and
(3)in the third
undesignated paragraph—
(A)by striking
In actions involving the validity or infringement of a patent
and inserting (c) Notice
of actions; actions during extension of patent term.—In an
action involving the validity or infringement of patent, the party asserting
infringement shall identify, in the pleadings or otherwise in writing to the
adverse party, all of its real parties in interest, and
; and
(B)by striking
Claims Court
and inserting Court of Federal
Claims
.
(i)Section 288 of title 35, United States Code, is
amended by striking , without deceptive intention,
.
(j)
(1)Section 3(e)(2) of
title 35, United States Code, is amended by striking this Act,
and inserting that Act,
.
(2)Section 202 of
title 35, United States Code, is amended—
(A)in subsection
(b)(3), by striking the section 203(b)
and inserting
section 203(b)
; and
(B)in subsection
(c)(7)—
(i)in
subparagraph (D), by striking except where it proves
and all
that follows through small business firms; and
and inserting:
except where it is determined to be infeasible following a reasonable
inquiry, a preference in the licensing of subject inventions shall be given to
small business firms; and
; and
(ii)in subparagraph
(E)(i), by striking as described above in this clause (D);
and
inserting described above in this clause;
.
(3)Section 209(d)(1)
of title 35, United States Code, is amended by striking
nontransferrable
and inserting
nontransferable
.
(4)Section
287(c)(2)(G) of title 35, United States Code, is amended by striking any
state
and inserting any State
.
(5)Section 371(b) of
title 35, United States Code, is amended by striking of the
treaty
and inserting of the treaty.
.
(k)
(1)Title 35, United
States Code, is amended by striking of this title
each place
that term appears.
(2)The amendment made by paragraph (1) shall
not apply to the use of such term in the following sections of title 35, United
States Code:
(A)Section 1(c).
(B)Section
100.
(C)Section 101.
(D)Subsections (a) and (b) of section
105.
(E)The first instance of the use of such term
in section 111(b)(8).
(F)Section 157(a), in
the matter preceding paragraph (1).
(G)Section 161.
(H)Section 164.
(I)Section 171.
(J)Section 251(c), as so designated by this
section.
(K)Section 261.
(L)Subsections (a), (g), and (h) of section
271.
(M)Section 287(b)(1).
(N)Section 289.
(O)The first instance of the use of such term
in section 375(a).
(l)The amendments made by this section shall take effect upon
the expiration of the 1-year period beginning on the date of the enactment of
this Act and shall apply to proceedings commenced on or after that effective
date.
21.Travel expenses
and payment of administrative judges
(a)Authority To
Cover Certain Travel Related ExpensesSection 2(b)(11) of title
35, United States Code, is amended by inserting , and the Office is
authorized to expend funds to cover the subsistence expenses and travel-related
expenses, including per diem, lodging costs, and transportation costs, of
non-federal employees attending such programs
after
world
.
(b)Payment of
Administrative JudgesSection 3(b) of title 35, United States
Code, is amended by adding at the end the following:
(6)Administrative
patent judges and administrative trademark judgesThe Director
has the authority to fix the rate of basic pay for the administrative patent
judges appointed pursuant to section 6 of this title and the administrative
trademark judges appointed pursuant to section 17 of the Trademark Act of 1946
(15 U.S.C. 1067) at not greater than the rate of basic pay payable for Level
III of the Executive Schedule. The payment of a rate of basic pay under this
paragraph shall not be subject to the pay limitation of section 5306(e) or 5373
of title
5.
.
22.Patent and
Trademark Office funding
(a)In this section, the term Fund
means the United States Patent and Trademark Office Public Enterprise Fund
established under subsection (c).
(b)
(1)Section 42 of title 35, United States Code, is
amended—
(A)in subsection (b),
by striking Patent and Trademark Office Appropriation Account
and inserting United States Patent and Trademark Office Public
Enterprise Fund
; and
(B)in subsection (c),
in the first sentence—
(i)by
striking To the extent
and all that follows through
fees
and inserting Fees
; and
(ii)by
striking shall be collected by and shall be available to the
Director
and inserting shall be collected by the Director and
shall be available until expended
.
(2)The amendments made by paragraph (1) shall take effect on
the later of—
(A)October 1, 2011;
or
(B)the first day of
the first fiscal year that begins after the date of the enactment of this
Act.
(c)
(1)There is established in the Treasury of the
United States a revolving fund to be known as the United States Patent
and Trademark Office Public Enterprise Fund
. Amounts shall be deposited
in the Fund as an offsetting receipt and shall be available for use by the
Director without fiscal year limitation.
(2)There shall be deposited into the Fund, on and after
the effective date set forth in subsection (b)(2)—
(A)any fees collected
under sections 41, 42, and 376 of title 35, United States Code, except
that—
(i)notwithstanding
any other provision of law, if such fees are collected by, and payable to, the
Director, the Director shall transfer such amounts to the Fund; and
(ii)no
funds collected pursuant to section 9(h) of this Act or section 1(a)(2) of
Public Law 111–45 shall be deposited in the Fund; and
(B)any fees collected
under section 31 of the Trademark Act of 1946 (15 U.S.C. 1113).
(3)Amounts
deposited into the Fund under paragraph (2) shall be available, without fiscal
year limitation, to cover—
(A)all expenses to
the extent consistent with the limitation on the use of fees set forth in
section 42(c) of title 35, United States Code, including all administrative and
operating expenses, determined in the discretion of the Director to be ordinary
and reasonable, incurred by the Director for the continued operation of all
services, programs, activities, and duties of the Office relating to patents
and trademarks, as such services, programs, activities, and duties are
described under—
(i)title 35, United
States Code; and
(ii)the
Trademark Act of 1946; and
(B)all expenses
incurred pursuant to any obligation, representation, or other commitment of the
Office.
(d)Not later than 60 days after the end of each fiscal year,
the Director shall submit a report to Congress which shall—
(1)summarize the
operations of the Office for the preceding fiscal year, including financial
details and staff levels broken down by each major activity of the
Office;
(2)detail the
operating plan of the Office, including specific expense and staff needs for
the upcoming fiscal year;
(3)describe the
long-term modernization plans of the Office;
(4)set forth details
of any progress towards such modernization plans made in the previous fiscal
year; and
(5)include the
results of the most recent audit carried out under subsection (f).
(e)
(1)Not later than 30 days after the beginning of each fiscal
year, the Director shall notify the Committees on Appropriations of both Houses
of Congress of the plan for the obligation and expenditure of the total amount
of the funds for that fiscal year in accordance with section 605 of the
Science, State, Justice, Commerce, and Related Agencies Appropriations Act,
2006 (Public Law 109–108; 119 Stat. 2334).
(2)Each
plan under paragraph (1) shall—
(A)summarize the
operations of the Office for the current fiscal year, including financial
details and staff levels with respect to major activities; and
(B)detail the
operating plan of the Office, including specific expense and staff needs, for
the current fiscal year.
(f)The
Director shall, on an annual basis, provide for an independent audit of the
financial statements of the Office. Such audit shall be conducted in accordance
with generally acceptable accounting procedures.
(g)The
Fund shall prepare and submit each year to the President a business-type budget
in a manner, and before a date, as the President prescribes by regulation for
the budget program.
23.
(a)Subject
to available resources, the Director shall, by not later than the date that is
3 years after the date of the enactment of this Act establish 3 or more
satellite offices in the United States to carry out the responsibilities of the
Patent and Trademark Office.
(b)The
purpose of the satellite offices established under subsection (a) are
to—
(1)increase outreach
activities to better connect patent filers and innovators with the Patent and
Trademark Office;
(2)enhance patent
examiner retention;
(3)improve
recruitment of patent examiners; and
(4)decrease the
number of patent applications waiting for examination and improve the quality
of patent examination.
(c)
(1)In selecting the location of each satellite office to be
established under subsection (a), the Director—
(A)shall ensure
geographic diversity among the offices, including by ensuring that such offices
are established in different States and regions throughout the Nation;
(B)may rely upon any
previous evaluations by the Patent and Trademark Office of potential locales
for satellite offices, including any evaluations prepared as part of the
Office’s Nationwide Workforce Program that resulted in the 2010 selection of
Detroit, Michigan, as the first ever satellite office of the Office.
(2)Nothing in paragraph (1) shall constrain the Patent and
Trademark Office to only consider its evaluations in selecting the Detroit,
Michigan, satellite office.
(d)Not later than the end of the first 3 fiscal years that
begin after the date of the enactment of this Act, the Director shall submit a
report to Congress on—
(1)the rationale of
the Director in selecting the location of any satellite office required under
subsection (a);
(2)the progress of
the Director in establishing all such satellite offices; and
(3)whether the
operation of existing satellite offices is achieving the purposes required
under subsection (b).
24.Patent Ombudsman
Program for small business concernsSubject to available resources, the Director
may establish in the Office a Patent Ombudsman Program. The duties of the
Program’s staff shall include providing support and services relating to patent
filings to small business concerns.
25.Priority
examination for technologies important to American
competitivenessSection
2(b)(2) of title 35, United States Code, is amended—
(1)in subparagraph
(E), by striking and
after the semicolon;
(2)in subparagraph
(F), by inserting and
after the semicolon; and
(3)by adding at the
end the following:
(G)may, subject to
any conditions prescribed by the Director and at the request of the patent
applicant, provide for prioritization of examination of applications for
products, processes, or technologies that are important to the national economy
or national competitiveness without recovering the aggregate extra cost of
providing such prioritization, notwithstanding section 41 or any other
provision of
law;
.
26.Designation of
Detroit satellite office
(a)The
satellite office of the United States Patent and Trademark Office to be located
in Detroit, Michigan, shall be known and designated as the Elijah J.
McCoy United States Patent and Trademark Office
.
(b)Any
reference in a law, map, regulation, document, paper, or other record of the
United States to the satellite office of the United States Patent and Trademark
Office to be located in Detroit, Michigan, referred to in subsection (a) shall
be deemed to be a reference to the Elijah J. McCoy United States Patent
and Trademark Office
.
27.Except as otherwise
provided in this Act, the provisions of this Act shall take effect 1 year after
the date of the enactment of this Act and shall apply to any patent issued on
or after that effective date.
28.The budgetary effects
of this Act, for the purpose of complying with the Statutory Pay-As-You-Go Act
of 2010, shall be determined by reference to the latest statement titled
Budgetary Effects of PAYGO Legislation
for this Act, submitted
for printing in the Congressional Record by the Chairman of the House Budget
Committee, provided that such statement has been submitted prior to the vote on
passage.