1.Short title; table of
contents
(a)This Act may be cited as the Patent Reform Act of 2011
.
(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. Damages.
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. 1718. Effective
date; rule of
construction.
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.
(2)(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 1
year 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.
(a)Section
284 of title 35, United States Code, is amended—
(1)by striking
Upon finding
and inserting the following: (a)
In
general.—Upon finding
;
(2)by striking
fixed by the court
and all that follows through When the
damages
and inserting the following: fixed by the court. When
the damages
;
(3)by striking
shall assess them.
and all that follows through The court
may receive
and inserting the following: shall assess
them. In either event the court
may increase the damages up to 3 times the amount found or assessed. Increased
damages under this subsection shall not apply to provisional rights under
section 154(d) of this title. The court may receive
;
and
(4)by adding at the
end the following:
(b)Procedure for
determining damages
(1)The court shall identify the methodologies and factors
that are relevant to the determination of damages, and the court or jury shall
consider only those methodologies and factors relevant to making such
determination.
(2)By no later than the entry of the final pretrial order,
unless otherwise ordered by the court, the parties shall state, in writing and
with particularity, the methodologies and factors the parties propose for
instruction to the jury in determining damages under this section, specifying
the relevant underlying legal and factual bases for their assertions.
(3)Prior to the introduction of any evidence concerning the
determination of damages, upon motion of either party or sua sponte, the court
shall consider whether one or more of a party's damages contentions lacks a
legally sufficient evidentiary basis. After providing a nonmovant the
opportunity to be heard, and after any further proffer of evidence, briefing,
or argument that the court may deem appropriate, the court shall identify on
the record those methodologies and factors as to which there is a legally
sufficient evidentiary basis, and the court or jury shall consider only those
methodologies and factors in making the determination of damages under this
section. The court shall only permit the introduction of evidence relating to
the determination of damages that is relevant to the methodologies and factors
that the court determines may be considered in making the damages
determination.
(c)Any
party may request that a patent-infringement trial be sequenced so that the
trier of fact decides questions of the patent's infringement and validity
before the issues of damages and willful infringement are tried to the court or
the jury. The court shall grant such a request absent good cause to reject the
request, such as the absence of issues of significant damages or infringement
and validity. The sequencing of a trial pursuant to this subsection shall not
affect other matters, such as the timing of discovery. This subsection does not
authorize a party to request that the issues of damages and willful
infringement be tried to a jury different than the one that will decide
questions of the patent's infringement and validity.
(d)
(1)The court may increase damages up to 3 times the amount
found or assessed if the court or the jury, as the case may be, determines that
the infringement of the patent was willful. Increased damages under this
subsection shall not apply to provisional rights under section 154(d).
Infringement is not willful unless the claimant proves by clear and convincing
evidence that the accused infringer's conduct with respect to the patent was
objectively reckless. An accused infringer's conduct was objectively reckless
if the infringer was acting despite an objectively high likelihood that his
actions constituted infringement of a valid patent, and this
objectively-defined risk was either known or so obvious that it should have
been known to the accused infringer.
(2)A claimant asserting that a patent was infringed
willfully shall comply with the pleading requirements set forth under Federal
Rule of Civil Procedure 9(b).
(3)Knowledge alone
insufficientInfringement of a patent may not be found to be
willful solely on the basis that the infringer had knowledge of the infringed
patent.
(4)A claimant seeking to establish willful infringement
may not rely on evidence of pre-suit notification of infringement unless that
notification identifies with particularity the asserted patent, identifies the
product or process accused, and explains with particularity, to the extent
possible following a reasonable investigation or inquiry, how the product or
process infringes one or more claims of the patent.
(5)The court shall not increase damages under this subsection
if the court determines that there is a close case as to infringement,
validity, or enforceability. On the motion of either party, the court shall
determine whether a close case as to infringement, validity, or enforceability
exists, and the court shall explain its decision. Once the court determines
that such a close case exists, the issue of willful infringement shall not
thereafter be tried to the jury.
(6)If a court or jury finds that the infringement of patent
was willful, the court may increase only those damages that accrued after the
infringement became
willful.
.
(b)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.
.
(c)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
.
(d)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.
.
(e)The amendments made by this section shall apply to any civil
action commenced on or after the date of the enactment of this Act.
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 3 months after the date
on which the petitioner, real party in interest, or his privy is required to
respond to a civil action alleging infringement of the patent.
(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.
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)A post-grant review may not be instituted if the petition
requesting the proceeding is filed more than 3 months after the date on which
the petitioner, real party in interest, or his privy is required to respond to
a civil action alleging infringement of the patent.
(b)A post-grant 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
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)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.
(g)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.
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
year18
months 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
year18
months after the date of the enactment of this Act and shall
apply only to patents issued on or after that date. 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
year18
months 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
year18
months 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
year18
months 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
year18
months 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
year18
months 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
year18
months 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)Section 1400 of title 28, United States Code, is amended by
adding at the end the following:
(c)For the convenience of parties and witnesses, in the
interest of justice, a district court shall transfer any civil action arising
under any Act of Congress relating to patents upon a showing that the
transferee venue is clearly more convenient than the venue in which the civil
action is
pending.
.
(b)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
.
(c)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 or charged by the Office under sections 41 and 376 of
title 35, United States Code, or under section 31 of the Trademark Act of 1946
(15 U.S.C. 1113), or any other fee established or charged by the Office under
any other provision of law, notwithstanding the fee amounts established or
charged thereunder, for the filing or processing of any submission to, and for
all other 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,
processing, issuing, 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)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)The
second sentence of section 44(c) of title 28, United States Code, is
repealed.
(b)Section
44 of title 28, United States Code, is amended by adding at the end the
following:
(e)(1)The Director of the
Administrative Office of the United States Courts shall provide—
(A)a judge of the
Federal judicial circuit who lives within 50 miles of the District of Columbia
with appropriate facilities and administrative support services in the District
of the District of Columbia; and
(B)a judge of the
Federal judicial circuit who does not live within 50 miles of the District of
Columbia with appropriate facilities and administrative support
services—
(i)in the district
and division in which that judge resides; or
(ii)if appropriate
facilities are not available in the district and division in which that judge
resides, in the district and division closest to the residence of that judge in
which such facilities are available, as determined by the Director.
(2)Nothing in this
subsection may be construed to authorize or require the construction of new
facilities.
.
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)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 under either
subsection (b) or (c).
(b)For an unassigned application, each applicant shall
certify that the applicant—
(1)qualifies as a
small entity, as defined in regulations issued by the Director;
(2)has not been
named on 5 or more previously filed patent applications;
(3)has not assigned,
granted, or conveyed, and is not under an obligation by contract or law to
assign, grant, or convey, a license or any other ownership interest in the
particular application; and
(4)does not have a
gross income, as defined in section 61(a) of the Internal Revenue Code (26
U.S.C. 61(a)), exceeding 2.5 times the average gross income, as reported by the
Department of Labor, in the calendar year immediately preceding the calendar
year in which the examination fee is being paid.
(c)For an assigned application, each applicant shall
certify that the applicant—
(1)qualifies as a
small entity, as defined in regulations issued by the Director, and meets the
requirements of subsection (b)(4);
(2)has not been
named on 5 or more previously filed patent applications; and
(3)has assigned,
granted, conveyed, or is under an obligation by contract or law to assign,
grant, or convey, a license or other ownership interest in the particular
application to an entity that has 5 or fewer employees and that such entity has
a gross income, as defined in section 61(a) of the Internal Revenue Code (26
U.S.C. 61(a)), that does not exceed 2.5 times the average gross income, as
reported by the Department of Labor, in the calendar year immediately preceding
the calendar year in which the examination fee is being paid.
(d)The gross income levels established under subsections
(b) and (c) shall be adjusted by the Director on October 1, 2009, and every
year thereafter, to reflect any fluctuations occurring during the previous 12
months in the Consumer Price Index, as determined by the Secretary of
Labor.
.
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)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.
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(b)(3)
of title 35, United States Code, is amended by striking the section
203(b)
and inserting section 203(b)
.
(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)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.
17.18.Effective
date; rule of
construction
(a)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.
(b)Continuity of
intent under the Create ActThe enactment of section 102(c) of
title 35, United States Code, under section (2)(b) of this Act is done with the
same intent to promote joint research activities that was expressed, including
in the legislative history, through the enactment of the Cooperative Research
and Technology Enhancement Act of 2004 (Public Law 108–453; the CREATE
Act
), the amendments of which are stricken by section 2(c) of this Act.
The United States Patent and Trademark Office shall administer section 102(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.
February 3, 2011
Reported with amendments