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. Virtual marking and advice of counsel.
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. Supplemental examination.
Sec. 11. Residency of Federal
Circuit judges.
Sec. 12. Micro entity defined.
Sec. 13. Funding agreements.
Sec. 14. Tax strategies deemed within the prior
art.
Sec. 15. Best mode requirement.
Sec. 16. Technical amendments.
Sec. 17. Clarification of
jurisdiction.
Sec. 18. Transitional program for covered business-method
patents.
Sec. 19. Travel expenses and payment of administrative
judges.
Sec. 20. Patent and Trademark Office funding.
Sec. 21. Satellite
offices.
Sec. 22. Patent Ombudsman
Program for small business concerns.
Sec. 23. Priority examination
for technologies important to American competitiveness.
Sec. 24. Designation of Detroit
satellite office.
Sec. 25. Effective
date.
Sec. 26. 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
of 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 the preceding paragraph 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). 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 18 months after the date of the enactment of
this Act, and shall apply to any request for a statutory invention registration
filed on or after that 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 the statutory
and inserting that 1-year
; and
(B)in paragraph (3), by striking any
statutory bar date that may occur under this title due to publication, on sale,
or public use
and inserting the expiration of the 1-year period
referred to in section 102(b)
.
(h)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 only be
filed within 1 year after 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.
.
(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 only be filed within 1
year after 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 3 months after 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 41, 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 154 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, as amended by this paragraph, is
further amended by—
(i)striking or
and inserting
of
; and
(ii)striking secrecy order
and
inserting secrecy
orders
.
(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)Section 154(b)(1)(C) of title 35, United
States Code, is amended by striking interferences
and inserting
derivation
proceedings
.
(6)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.
.
(7)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.
.
(8)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 292 of title 35, United States
Code, is amended—
(A)in subsection (a), by adding at the end the
following:
Only the United States may sue for the
penalty authorized by this subsection.
;
and
(B)by striking subsection (b) and inserting
the following:
(b)Any 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.
.
(2)The amendments made by
this subsection shall apply to all cases, without exception, pending on or
after the date of the enactment of this Act.
(l)
(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 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 all cases in which the time period for instituting
a proceeding under section 32 of title 35, United State Code, had not lapsed
prior to the date of the enactment of this Act.
(m)
(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 disadvantage 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 1 year after the date of
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).
(n)Report on Prior User Rights
(1)Not later than 1 year after 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.
(o)
(1)Except as otherwise provided by this
section, the amendments made by this section shall take effect on the date that
is 18 months after 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 18 months or more after the date of the enactment of this Act;
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, in effect on the day prior to 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,
earlier than 18 months after the date of the enactment of this Act; 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)No patent shall be
invalid or unenforceable based upon the failure to comply with a requirement
under this section if the failure is remedied as provided under paragraph
(1).
(i)Acknowledgment of penaltiesAny declaration or statement filed pursuant
to this section shall contain an acknowledgment that any willful false
statement made in such declaration or statement is punishable under section
1001 of title 18 by fine or imprisonment of not more than 5 years, or
both.
.
(2)Relationship to divisional
applicationsSection 121 of
title 35, United States Code, is amended by striking If a divisional
application
and all that follows through
inventor.
.
(3)Requirements for nonprovisional
applicationsSection 111(a)
of title 35, United States Code, is amended—
(A)in paragraph (2)(C), by striking by
the applicant
and inserting or declaration
;
(B)in the heading for paragraph (3), by
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 paragraph—
(A)by striking The
specification
and inserting (a)
In general.—The
specification
; and
(B)by striking of carrying out his
invention
and inserting or joint inventor of carrying out the
invention
;
(2)in the second paragraph—
(A)by striking The
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 paragraph, by striking
A claim
and inserting (c)
Form.—A
claim
;
(4)in the fourth paragraph, by striking
Subject to the following paragraph,
and inserting (d)
Reference in dependent
forms.—Subject to subsection (e),
;
(5)in the fifth paragraph, by striking
A claim
and inserting (e)
Reference in multiple dependent
form.—A claim
; and
(6)in the last paragraph, by striking
An element
and inserting (f)
Element in claim for a
combination.—An element
.
(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 1 year after the date of the enactment of this
Act and shall apply to patent applications that are filed on or after that
effective date.
4.Virtual marking
and advice of counsel
(a)Defense to infringement based on earlier
inventorSection 273(b)(6) of
title 35, United States Code, is amended to read as follows:
(6)The defense under this section may be
asserted only by the person who performed or caused the performance of the acts
necessary to establish the defense as well as any other entity that controls,
is controlled by, or is under common control with such person and, except for
any transfer to the patent owner, the right to assert the defense shall not be
licensed or assigned or transferred to another person except as an ancillary
and subordinate part of a good faith assignment or transfer for other reasons
of the entire enterprise or line of business to which the defense relates.
Notwithstanding the preceding sentence, any person may, on its own behalf,
assert a defense based on the exhaustion of rights provided under paragraph
(3), including any necessary elements
thereof.
.
(b)Section 287(a) of title 35, United States
Code, is amended by inserting , or by fixing thereon the word
patent
or the abbreviation pat.
together with an
address of a posting on the Internet, accessible to the public without charge
for accessing the address, that associates the patented article with the number
of the patent
before , or when
.
(c)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.
.
(d)The amendments made by
this section shall apply to any civil action commenced on or after the date of
the enactment of this Act.
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.
311.
(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 an inter partes review for 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 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)9 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 there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.
(b)The Director shall determine whether to
institute an inter partes review under this chapter within 3 months after
receiving a preliminary response under section 313 or, if none is filed, within
three months after the expiration of the time for filing such a
response.
(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 list 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)An inter partes review may not be
instituted or maintained if the petitioner or real party in interest has filed
a civil action challenging the validity of a claim of the patent.
(b)An inter partes review may not be
instituted if the petition requesting the proceeding is filed more than 6
months after the date on which the petitioner, real party in interest, or his
privy 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 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 his real party in interest or privy, 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 his real party in interest or
privy, 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 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 be
accompanied by a motion to seal, and such petition or document shall 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)allowing the patent owner to file a
response to the petition 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 Patent and Trademark Office shall make
available to the public data describing the length of time between the
commencement of each inter partes review and the conclusion of that
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.
.
(b)Technical and conforming
amendmentThe 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 on the date that is 1 year after the date of the enactment of this
Act and shall apply to all patents issued before, on, or after the effective
date of subsection (a).
(B)The provisions of chapter 31 of title 35,
United States Code, as amended by paragraph (3), shall continue to apply to
requests for inter partes reexamination that are filed prior to the effective
date of subsection (a) as if subsection (a) had not been enacted.
(C)The Director may impose a limit on the
number of inter partes reviews that may be instituted during each of the first
4 years following the effective date of subsection (a), provided that such
number shall in each year be equivalent to or greater than the number of inter
partes reexaminations that are ordered in the last full fiscal year prior to
the effective date of subsection (a).
(3)
(A)Chapter 31 of title 35, United States Code,
is amended—
(i)in section 312—
(I)in subsection (a)—
- (aa)in the first sentence, by striking
a
substantial new question of patentability affecting any claim of the patent
concerned is raised by the request,
and inserting the
information presented in the request shows that there is a reasonable
likelihood that the requester would prevail with respect to at least 1 of the
claims challenged in the request,
; and
- (bb)in the second sentence, by striking
The existence of a substantial new question of patentability
and
inserting A showing that there is a reasonable likelihood that the
requester would prevail with respect to at least 1 of the claims challenged in
the request
; and
(II)in subsection (c), in the second sentence,
by striking no substantial new question of patentability has been
raised,
and inserting the showing required by subsection (a) has
not been made,
; and
(ii)in section 313, by striking a
substantial new question of patentability affecting a claim of the patent is
raised
and inserting it has been shown that there is a
reasonable likelihood that the requester would prevail with respect to at least
1 of the claims challenged in the request
.
(B)The amendments made by this paragraph shall
apply to requests for inter partes reexamination that are filed on or after the
date of the enactment of this Act, but prior to the effective date of
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.
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 for 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 shall be
filed not later than 9 months after the grant of the patent or issuance of a
reissue patent.
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 within 2 months of the filing of the petition.
(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, 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 within 3 months after
receiving a preliminary response under section 323 or, if none is filed, the
expiration of the time for filing such a response.
(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 list 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)A post-grant review may not be instituted
or maintained if the petitioner or real party in interest has filed a civil
action challenging the validity of a claim of the patent.
(b)If a civil action alleging infringement of a patent
is filed within 3 months of the grant of the patent, 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 or that such a proceeding has been instituted.
(c)If more than 1 petition for a post-grant
review 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, 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 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 his real party in interest or privy, 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 his real party in interest or privy,
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 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
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 be
accompanied by a motion to seal, and such petition or document shall 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 Patent and Trademark Office shall make
available to the public data describing the length of time between the
commencement of each post-grant review and the conclusion of that
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.
.
(e)Technical and conforming
amendmentThe table of
chapters for part III of title 35, United States Code, is amended by adding at
the end the following:
32.Post-Grant
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)The amendments made by subsection (d) shall
take effect on the date that is 1 year after the date of the enactment of this
Act and, except as provided in section 18 and in paragraph (3), shall apply
only to patents that are described in section 2(o)(1). The Director may impose
a limit on the number of post-grant reviews that may be instituted during each
of the 4 years following the effective date of subsection (d).
(3)The Director shall determine the procedures
under which interferences commenced before the effective date of subsection (d)
are to proceed, including whether any such interference is to be dismissed
without prejudice to the filing of a petition for a post-grant review under
chapter 32 of title 35, United States Code, or is to proceed as if this Act had
not been enacted. The Director shall include such procedures in regulations
issued under paragraph (1). For purposes of an interference that is commenced
before the effective date of subsection (d), 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. 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 final decisions in interferences that are commenced before the
effective date of subsection (d) and that are 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 amendment made by
this subsection shall take effect 1 year after the date of the enactment of
this Act and shall apply to patents 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 1 year after the date of the enactment of this
Act and shall apply to patents 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 enactment of this Act and shall
apply to appeals of reexaminations that are 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)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)The Secretary of Commerce may, in his
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.
.
(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
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 on
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 patent applications,
derivation proceedings, reexaminations, post-grant reviews, and inter partes
reviews at the instance of a party who exercised his right to participate in a
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 repealing the second of the two
identical fourth sentences.
(d)The amendments made by
this section shall take effect 1 year after 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, in effect on the day prior to the date of the
enactment of this Act shall continue to apply to inter partes reexaminations
that are requested under section 311 prior to the date that is 1 year after the
date of the enactment of this Act;
(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
prior to the date that is 1 year after the date of the enactment of this Act;
and
(4)the Director’s right under the last
sentence of section 143 of title 35, United States Code, as amended by
subsection (c)(3), 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 prior to the date that is 1
year after the date of the enactment of this Act.
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 1 year after the date of the enactment of this
Act and shall apply to patent applications 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 Act entitled An Act to provide for the registration and protection
of trademarks used in commerce, to carry out the provisions of certain
international conventions, and for other purposes
, approved July 5,
1946 (commonly referred to as the Trademark Act of 1946
or the
Lanham Act
; 15 U.S.C. 1071(b)(4)), are each amended by striking
United States District Court for the District of Columbia
each
place that term appears and inserting United States District Court for
the Eastern District of Virginia
.
(b)The amendments made by
this section shall take effect upon the date of the enactment of this Act and
shall apply to civil actions commenced on or after that date.
9.
(a)
(1)The Director shall have authority to set or adjust by
rule any fee established, authorized, or charged under title 35, United States
Code, and the Trademark Act of 1946 (15 U.S.C. 1051 et seq.), notwithstanding
the fee amounts established, authorized, or charged thereunder, for all
services performed by or materials furnished by, the Office, provided that
patent and trademark fee amounts are in the aggregate set to recover the
estimated cost to the Office for processing, activities, services, and
materials relating to patents and trademarks, respectively, including
proportionate shares of the administrative costs of the Office.
(2)The fees established under paragraph (1)
for filing, searching, examining, issuing, appealing, and maintaining patent
applications and patents shall be reduced by 50 percent with respect to their
application 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 their application to any micro entity as defined in section 123
of that title.
(3)Reduction of fees in certain fiscal
yearsIn any fiscal year, the
Director—
(A)shall consult with the Patent Public
Advisory Committee and the Trademark Public Advisory Committee on the
advisability of reducing any fees described in paragraph (1); and
(B)after the consultation required under
subparagraph (A), may reduce such fees.
(4)Role of the public advisory
committeeThe Director
shall—
(A)submit to the Patent Public Advisory
Committee or the Trademark Public Advisory Committee, or both, as appropriate,
any proposed fee under paragraph (1) not less than 45 days before publishing
any proposed fee in the Federal Register;
(B)provide the relevant advisory committee
described in subparagraph (A) a 30-day period following the submission of any
proposed fee, on which to deliberate, consider, and comment on such proposal,
and require that—
(i)during such 30-day period, the relevant
advisory committee hold a public hearing related to such proposal; and
(ii)the Director shall assist the relevant
advisory committee in carrying out such public hearing, including by offering
the use of Office resources to notify and promote the hearing to the public and
interested stakeholders;
(C)require the relevant advisory committee to
make available to the public a written report detailing the comments, advice,
and recommendations of the committee regarding any proposed fee;
(D)consider and analyze any comments, advice,
or recommendations received from the relevant advisory committee before setting
or adjusting any fee; and
(E)notify, through the Chair and Ranking
Member of the Senate and House Judiciary Committees, the Congress of any final
rule setting or adjusting fees under paragraph (1).
(5)Publication in the Federal
register
(A)Any rules prescribed under this subsection
shall be published in the Federal Register.
(B)Any proposal for a change in fees under
this section shall—
(i)be published in the Federal Register;
and
(ii)include, in such publication, the specific
rationale and purpose for the proposal, including the possible expectations or
benefits resulting from the proposed change.
(C)Following the publication of any proposed
fee in the Federal Register pursuant to subparagraph (A), the Director shall
seek public comment for a period of not less than 45 days.
(6)Congressional comment periodFollowing the notification described in
paragraph (3)(E), Congress shall have not more than 45 days to consider and
comment on any final rule setting or adjusting fees under paragraph (1). No fee
set or adjusted under paragraph (1) shall be effective prior to the end of such
45-day comment period.
(7)No rules prescribed under this subsection
may diminish—
(A)an applicant’s rights under title 35,
United States Code, or the Trademark Act of 1946; or
(B)any rights under a ratified treaty.
(b)Division B of Public Law 108–447 is amended
in title VIII of the Departments of Commerce, Justice, and State, the
Judiciary, and Related Agencies Appropriations Act, 2005—
(1)in subsections (a), (b), and (c) of section
801, by—
(A)striking During
and all that
follows through 2006, subsection
and inserting
Subsection
; and
(B)striking shall be administered as
though that subsection reads
and inserting is amended to
read
;
(2)in subsection (d) of section 801, by
striking During
and all that follows through 2006,
subsection
and inserting Subsection
; and
(3)in subsection (e) of section 801,
by—
(A)striking During
and all that
follows through 2006, subsection
and inserting
Subsection
; and
(B)striking shall be administered as
though that subsection
.
(c)Adjustment of trademark feesDivision B of Public Law 108–447 is amended
in title VIII of the Departments of Commerce, Justice and State, the Judiciary
and Related Agencies Appropriations Act, 2005, in section 802(a) by striking
During fiscal years 2005, 2006 and 2007
, and inserting
Until such time as the Director sets or adjusts the fees
otherwise,
.
(d)Effective date, applicability, and
transition provisionsDivision B of Public Law 108–447 is amended
in title VIII of the Departments of Commerce, Justice and State, the Judiciary
and Related Agencies Appropriations Act, 2005, in section 803(a) by striking
and shall apply only with respect to the remaining portion of fiscal
year 2005, 2006 and 2007
.
(e)Section 41(d)(1)(A) of title 35, United
States Code, is amended by striking , and the Director may not increase
any such fee thereafter
.
(f)Nothing in this section shall be construed
to affect any other provision of Division B of Public Law 108–447, including
section 801(c) of title VIII of the Departments of Commerce, Justice and State,
the Judiciary and Related Agencies Appropriations Act, 2005.
(g)In this section, the following definitions
shall apply:
(1)The term Director
means the
Director of the United States Patent and Trademark Office.
(2)The term Office
means the
United States Patent and Trademark Office.
(3)The term Trademark Act of
1946
means an Act entitled Act to provide for the registration
and protection of trademarks used in commerce, to carry out the provisions of
certain international conventions, and for other purposes
, approved
July 5, 1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the Trademark
Act of 1946 or the Lanham Act).
(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 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
become effective 60 days after 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), the provisions of this section shall take effect upon the date
of the enactment of this Act.
10.
(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)A 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. Within 3 months of 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 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 therein relating to patents and printed
publication or any other provision of chapter 30.
(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)This subsection 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,
this subsection 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)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 pursuant to subsection (a), fees established and
applicable to ex parte reexamination proceedings under chapter 30 shall be paid
in addition to fees applicable to supplemental examination. The Director shall
promulgate regulations governing the form, content, and other requirements of
requests for supplemental examination, and establishing procedures for
conducting review of 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
promulgate regulations under chapter 3 relating to sanctions for misconduct by
representatives practicing before the
Office.
.
(b)This section shall take
effect 1 year after the date of the enactment of this Act and shall apply to
patents issued before, on, or after that date.
11.Residency of Federal Circuit
judges
(a)Section 44(c) of title 28, United States
Code, is amended—
(1)by repealing the second sentence;
and
(2)in the third sentence, by striking
state
and inserting State
.
(b)No provision of
facilities authorizedThe repeal made by the amendment in
subsection (a)(1) shall not be construed to authorize the provision of any
court facilities or administrative support services outside of the District of
Columbia.
(c)This section shall take
effect on the date of enactment of this Act.
12.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 on 5 or more previously
filed patent applications, not including 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 prior calendar year have a
gross income, as defined in section 61(a) of the Internal Revenue Code (26
U.S.C. 61(a)), exceeding 3 times the most recently reported median household
income, as reported by the Bureau of Census; and
(4)has not assigned, granted, conveyed, and is
not under an obligation by contract or law to assign, grant, or convey, a
license or other ownership interest in the particular application to an entity
that had a gross income, as defined in section 61(a) of the Internal Revenue
Code (26 U.S.C. 61(a)), exceeding 3 times the most recently reported median
household income, as reported by the Bureau of the Census, in the calendar year
preceding the calendar year in which the fee is being paid, other than an
entity of higher education where the applicant is not an employee, a relative
of an employee, or have any affiliation with the entity of higher
education.
(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)State
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 a State public
institution of higher education, as defined in section 102 of the Higher
Education Act of 1965 (20 U.S.C. 1002); 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.
.
13.
(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 patents issued before, on, or after that date.
14.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)Nothing in this section shall be construed to imply
that other business methods are patentable or that other business-method
patents are valid.
(d)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.
(e)This
section does not apply to that part of an invention that is a method,
apparatus, 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.
15.
(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.
16.
(a)Section 116 of title 35, United States
Code, is amended—
(1)in the first paragraph, by striking
When
and inserting (a)
Joint
Inventions.—When
;
(2)in the second paragraph, by striking
If a joint inventor
and inserting (b)
Omitted
Inventor.—If a joint inventor
; and
(3)in the third paragraph—
(A)by striking Whenever
and
inserting (c) Correction
of Errors in Application.—Whenever
; and
(B)by striking and such error arose
without any deceptive intent on his part,
.
(b)Filing of application in foreign
countrySection 184 of title
35, United States Code, is amended—
(1)in the first paragraph—
(A)by striking Except when
and
inserting (a) Filing in
Foreign Country.—Except when
; and
(B)by striking and without deceptive
intent
;
(2)in the second paragraph, by striking
The term
and inserting (b)
Application.—The term
; and
(3)in the third paragraph, by striking
The scope
and inserting (c)
Subsequent modifications,
amendments, and supplements.—The scope
.
(c)Section 185 of title 35, United States
Code, is amended by striking and without deceptive
intent
.
(d)Reissue of defective patentsSection 251 of title 35, United States
Code, is amended—
(1)in the first paragraph—
(A)by striking Whenever
and
inserting (a) In
general.—Whenever
; and
(B)by striking without any deceptive
intention
;
(2)in the second paragraph, by striking
The Director
and inserting (b)
Multiple reissued
patents.—The Director
;
(3)in the third paragraph, by striking
The provisions
and inserting (c)
Applicability of this
title.—The provisions
; and
(4)in the last paragraph, by striking
No reissued patent
and inserting (d)
Reissue patent enlarging scope
of claims.—No reissued patent
.
(e)Section 253 of title 35, United States
Code, is amended—
(1)in the first paragraph, by striking
Whenever, without any deceptive intention
and inserting
(a) In
general.—Whenever
; and
(2)in the second paragraph, by striking
in like manner
and inserting (b)
Additional disclaimer or
dedication.—In the manner set forth in subsection
(a),
.
(f)Correction of named inventorSection 256 of title 35, United States
Code, is amended—
(1)in the first paragraph—
(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 paragraph, by striking
The error
and inserting (b)
Patent valid if error
corrected.—The error
.
(g)Section 282 of title 35, United States
Code, is amended—
(1)in the first undesignated paragraph—
(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, by
striking In actions
and inserting (c)
Notice of actions; actions
during extension of patent term.—In actions
.
(h)Section 288 of title 35, United States
Code, is amended by striking , without deceptive
intention,
.
(i)
(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 ;
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.
.
(j)
(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 101.
(C)Subsections (a) and (b) of section
105.
(D)The first instance of the use of such term
in section 111(b)(8).
(E)Section 157(a).
(F)Section 161.
(G)Section 164.
(H)Section 171.
(I)Section 251(c), as so designated by this
section.
(J)Section 261.
(K)Subsections (g) and (h) of section
271.
(L)Section 287(b)(1).
(M)Section 289.
(N)The first instance of the use of such term
in section 375(a).
(k)The amendments made by
this section shall take effect 1 year after the date of the enactment of this
Act and shall apply to proceedings commenced on or after that effective
date.
17.Clarification of jurisdiction
(a)This section may be cited as the
Intellectual Property Jurisdiction Clarification Act of
2011
.
(b)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.
.
(c)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;
.
(d)
(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 such
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)Derivative jurisdiction not
requiredThe court to which a
civil action is removed under this section is not precluded from hearing and
determining any claim in such civil action because the State court from which
such 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.
.
(e)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.
.
(f)The amendments made by
this section shall apply to any civil action commenced on or after the date of
the enactment of this Act.
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 1 year after the date of 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 exceptions and
qualifications:
(A)Section 321(c)
and subsections (e)(2), (f), and (g) 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 his 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 prior to the date of 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 prior to the date of
enactment of this Act); or
(ii)prior art
that—
(I)discloses the
invention more than 1 year prior to 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 prior to the date of
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 his 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 pursuant to paragraph (1) shall take
effect on the date that is 1 year after the date of enactment of this Act and
shall apply to all covered business-method patents issued before, on, or after
such date of enactment, 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 pursuant to
this subsection, are repealed effective on the date that is 4 years after the
date that the regulations issued pursuant to paragraph (1) take effect.
(B)Notwithstanding
subparagraph (A), this subsection and the regulations implemented pursuant to
this subsection shall continue to apply to any petition for a transitional
proceeding that is filed prior to the date that this subsection is repealed
pursuant to subparagraph (A).
(c)
(1)If a party seeks a stay of a civil action alleging
infringement of a patent under section 281 in relation 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 the district court’s decision to ensure consistent
application of established precedent, and such review may be de novo.
(d)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 operations utilized in the practice,
administration, or management of a financial product or service, except that
the term shall not include patents for technological inventions. Solely for the
purpose of implementing the transitional proceeding authorized by this
subsection, the Director shall prescribe regulations for determining whether a
patent is for a technological invention.
(e)Nothing in this section shall be construed as
amending or interpreting categories of patent-eligible subject matter set forth
under section 101.
19.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.
.
20.Patent and
Trademark Office funding
(a)In this section, the following definitions
shall apply:
(1)The
term Director
means the Director of the United States Patent and
Trademark Office.
(2)The
term Fund
means the public enterprise revolving fund established
under subsection (c).
(3)The
term Office
means the United States Patent and Trademark
Office.
(4)The term Trademark Act of 1946
means an
Act entitled Act to provide for the registration and protection of
trademarks used in commerce, to carry out the provisions of certain
international conventions, and for other purposes
, approved July 5,
1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the Trademark Act
of 1946
or the Lanham Act
).
(5)The term Under Secretary
means the Under
Secretary of Commerce for Intellectual Property.
(b)
(1)Section 42 of title 35, United States Code, is
amended—
(A)in subsection
(b), by striking Patent and Trademark Office Appropriation
Account
and inserting United States Patent and Trademark Office
Public Enterprise Fund
; and
(B)in subsection
(c), in the first sentence—
(i)by
striking To the extent
and all that follows through
fees
and inserting Fees
; and
(ii)by
striking shall be collected by and shall be available to the
Director
and inserting shall be collected by the Director and
shall be available until expended
.
(2)The amendments made by paragraph (1) shall take effect on
the later of—
(A)October 1, 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
. Any amounts in the Fund shall be available for use by the
Director without fiscal year limitation.
(2)There shall be deposited into the Fund on or after the
effective date of subsection (b)(1)—
(A)any fees
collected under sections 41, 42, and 376 of title 35, United States Code,
provided that notwithstanding any other provision of law, if such fees are
collected by, and payable to, the Director, the Director shall transfer such
amounts to the Fund, provided, however, that 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 Under Secretary to be
ordinary and reasonable, incurred by the Under Secretary and the Director for
the continued operation of all services, programs, activities, and duties of
the Office 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 Under Secretary and the Director shall submit a report to Congress which
shall—
(1)summarize the
operations of the Office for the preceding fiscal year, including financial
details and staff levels broken down by each major activity of the
Office;
(2)detail the
operating plan of the Office, including specific expense and staff needs for
the upcoming fiscal year;
(3)describe the long
term modernization plans of the Office;
(4)set forth details
of any progress towards such modernization plans made in the previous fiscal
year; and
(5)include the
results of the most recent audit carried out under subsection (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
Under Secretary shall, on an annual basis, provide for an independent audit of
the financial statements of the Office. Such audit shall be conducted in
accordance with generally acceptable accounting procedures.
(g)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.
21.
(a)Subject
to available resources, the Director may 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)In selecting the locale of each satellite office
to be established under subsection (a), the Director—
(1)shall ensure
geographic diversity among the offices, including by ensuring that such offices
are established in different States and regions throughout the Nation;
(2)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 Patent
and Trademark Office's Nationwide Workforce Program that resulted in the 2010
selection of Detroit, Michigan as the first ever satellite office of the Patent
and Trademark Office; and
(3)nothing in the
preceding paragraph shall constrain the Patent and Trademark Office to only
consider its prior work from 2010. The process for site selection shall be
open.
(d)The
Director shall satisfy the requirements of subsection (a) over the 3-year
period beginning on the date of enactment of this Act.
(e)Not later than the end of the first fiscal year that
occurs after the date of the enactment of this Act, and each fiscal year
thereafter, the Director shall submit a report to Congress on—
(1)the rationale of
the Director in selecting the locale 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).
(f)In this section, the following definitions
shall apply:
(1)The
term Director
means the Director of the United States Patent and
Trademark Office.
(2)Patent and
Trademark OfficeThe term Patent and Trademark
Office
means the United States Patent and Trademark Office.
22.Patent
Ombudsman Program for small business concernsSubject to available resources, the Director
may establish in the United States Patent and Trademark 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.
23.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
and inserting a semicolon;
(2)in subparagraph
(F), by striking the semicolon and inserting ; and
; 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;
.
24.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
.
25.
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.
26.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 Senate Budget
Committee, provided that such statement has been submitted prior to the vote on
passage.
Passed the Senate March 8, 2011.
Secretary