[Congressional Bills 114th Congress]
[From the U.S. Government Publishing Office]
[H.R. 9 Reported in House (RH)]

                                                 Union Calendar No. 177
114th CONGRESS
  1st Session
                                 H. R. 9

                          [Report No. 114-235]

  To amend title 35, United States Code, and the Leahy-Smith America 
  Invents Act to make improvements and technical corrections, and for 
                            other purposes.


_______________________________________________________________________


                    IN THE HOUSE OF REPRESENTATIVES

                            February 5, 2015

  Mr. Goodlatte (for himself, Mr. DeFazio, Mr. Issa, Mr. Nadler, Mr. 
  Smith of Texas, Ms. Lofgren, Mr. Chabot, Ms. Eshoo, Mr. Forbes, Mr. 
Pierluisi, Mr. Chaffetz, Mr. Jeffries, Mr. Marino, Mr. Farenthold, Mr. 
  Holding, Mr. Johnson of Ohio, Mr. Huffman, Mr. Honda, Mr. Larsen of 
 Washington, and Mr. Thompson of California) introduced the following 
       bill; which was referred to the Committee on the Judiciary

                             July 29, 2015

   Additional sponsors: Mr. Swalwell of California, Mr. Pearce, Mr. 
  Sessions, Mr. Fincher, Mr. Amodei, Mr. Hardy, Mr. Cleaver, and Mr. 
                               Culberson

                             July 29, 2015

  Reported with an amendment, committed to the Committee of the Whole 
       House on the State of the Union, and ordered to be printed
 [Strike out all after the enacting clause and insert the part printed 
                               in italic]
    [For text of introduced bill, see copy of bill as introduced on 
                           February 5, 2015]


_______________________________________________________________________

                                 A BILL


 
  To amend title 35, United States Code, and the Leahy-Smith America 
  Invents Act to make improvements and technical corrections, and for 
                            other purposes.


 


    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled,

SECTION 1. SHORT TITLE; TABLE OF CONTENTS.

    (a) Short Title.--This Act may be cited as the ``Innovation Act''.
    (b) Table of Contents.--The table of contents for this Act is as 
follows:

Sec. 1. Short title; table of contents.
Sec. 2. Definitions.
Sec. 3. Patent infringement actions.
Sec. 4. Transparency of patent ownership.
Sec. 5. Customer-suit exception.
Sec. 6. Procedures and practices to implement recommendations of the 
                            Judicial Conference.
Sec. 7. Small business education, outreach, and information access.
Sec. 8. Studies on patent transactions, quality, and examination.
Sec. 9. Improvements and technical corrections to the Leahy-Smith 
                            America Invents Act.
Sec. 10. Effective date.

SEC. 2. DEFINITIONS.

    In this Act:
            (1) Director.--The term ``Director'' means the Under 
        Secretary of Commerce for Intellectual Property and Director of 
        the United States Patent and Trademark Office.
            (2) Office.--The term ``Office'' means the United States 
        Patent and Trademark Office.

SEC. 3. PATENT INFRINGEMENT ACTIONS.

    (a) Pleading Requirements.--
            (1) Amendment.--Chapter 29 of title 35, United States Code, 
        is amended by inserting after section 281 the following:
``Sec. 281A. Pleading requirements for patent infringement actions
    ``(a) Pleading Requirements.--Except as provided in subsection (b), 
in a civil action in which a party asserts a claim for relief arising 
under any Act of Congress relating to patents, a party alleging 
infringement shall include in the initial complaint, counterclaim, or 
cross-claim for patent infringement, unless the information is not 
reasonably accessible to such party, the following:
            ``(1) An identification of each patent allegedly infringed.
            ``(2) An identification of all claims necessary to produce 
        the identification (under paragraph (3)) of each process, 
        machine, manufacture, or composition of matter (referred to in 
        this section as an `accused instrumentality') that is alleged 
        to infringe any claim of each patent that is identified under 
        paragraph (1).
            ``(3) For each claim identified under paragraph (2), an 
        identification of each accused instrumentality alleged to 
        infringe the claim.
            ``(4) For each accused instrumentality identified under 
        paragraph (3), an identification with particularity, if known, 
        of--
                    ``(A) the name or model number (or a representative 
                model number) of each accused instrumentality; or
                    ``(B) if there is no name or model number, a 
                description of each accused instrumentality.
            ``(5) For each accused instrumentality identified under 
        paragraph (3), a clear and concise statement of--
                    ``(A) where each element of each claim identified 
                under paragraph (2) is found within the accused 
                instrumentality; and
                    ``(B) with detailed specificity, how each 
                limitation of each claim identified under paragraph (2) 
                is met by the accused instrumentality.
            ``(6) For each claim of indirect infringement, a 
        description of the acts of the alleged indirect infringer that 
        contribute to or are inducing the direct infringement.
            ``(7) A description of the authority of the party alleging 
        infringement to assert each patent identified under paragraph 
        (1) and of the grounds for the court's jurisdiction.
    ``(b) Information Not Readily Accessible.--If information required 
to be disclosed under subsection (a) is not readily accessible to a 
party after an inquiry reasonable under the circumstances, as required 
by Rule 11 of the Federal Rules of Civil Procedure, that information 
may instead be generally described, along with an explanation of why 
such undisclosed information was not readily accessible, and of any 
efforts made by such party to access such information.
    ``(c) Amendment of Pleadings.--Nothing in this section shall be 
construed to affect a party's ability to amend pleadings as specified 
in the Federal Rules of Civil Procedure. Amendments permitted by the 
court are subject to the pleading requirements set forth in this 
section.
    ``(d) Confidential Information.--A party required to disclose 
information described under subsection (a) may file, under seal, 
information believed to be confidential, with a motion setting forth 
good cause for such sealing. If such motion is denied by the court, the 
party may seek to file an amended complaint.
    ``(e) Exemption.--A civil action that includes a claim for relief 
arising under section 271(e)(2) shall not be subject to the 
requirements of subsection (a).''.
            (2) Conforming amendment.--The table of sections for 
        chapter 29 of title 35, United States Code, is amended by 
        inserting after the item relating to section 281 the following 
        new item:

        ``281A. Pleading requirements for patent infringement 
                            actions.''.
    (b) Fees and Other Expenses.--
            (1) Amendment.--Section 285 of title 35, United States 
        Code, is amended to read as follows:
``Sec. 285. Fees and other expenses
    ``(a) Award.--The court shall award, to a prevailing party, 
reasonable fees and other expenses incurred by that party in connection 
with a civil action in which any party asserts a claim for relief 
arising under any Act of Congress relating to patents, unless the court 
finds that the position and conduct of the nonprevailing party or 
parties were reasonably justified in law and fact or that special 
circumstances (such as severe economic hardship to a named inventor) 
make an award unjust.
    ``(b) Certification and Recovery.--Upon motion of any party to the 
action, the court shall require another party to the action to certify 
whether or not the other party will be able to pay an award of fees and 
other expenses if such an award is made under subsection (a). If a 
nonprevailing party is unable to pay an award that is made against it 
under subsection (a), the court may make a party that has been joined 
under section 299(d) with respect to such party liable for the 
unsatisfied portion of the award.
    ``(c) Covenant Not to Sue.--A party to a civil action who asserts a 
claim for relief arising under any Act of Congress relating to patents 
against another party, and who subsequently unilaterally (i) seeks 
dismissal of the action without consent of the other party and (ii) 
extends to such other party a covenant not to sue for infringement with 
respect to the patent or patents at issue, may be the subject of a 
motion for attorneys fees under subsection (a) as if it were a non-
prevailing party, unless the party asserting such claim would have been 
entitled, at the time that such covenant was extended, to dismiss 
voluntarily the action without a court order under Rule 41 of the 
Federal Rules of Civil Procedure, or the interests of justice require 
otherwise.''.
            (2) Conforming amendment and amendment.--
                    (A) Conforming amendment.--The item relating to 
                section 285 of the table of sections for chapter 29 of 
                title 35, United States Code, is amended to read as 
                follows:

        ``285. Fees and other expenses.''.
                    (B) Amendment.--Section 273 of title 35, United 
                States Code, is amended by striking subsection (f).
                    (C) Amendment.--
                            (i) In general.--Section 273 of title 35, 
                        United States Code, as amended by subparagraph 
                        (B), is further amended by striking subsection 
                        (g).
                            (ii) Effective date.--The amendment made by 
                        this subparagraph shall be effective as if 
                        included in the amendment made by section 
                        3(b)(1) of the Leahy-Smith America Invents Act 
                        (Public Law 112-29).
            (3) Effective date.--Except as otherwise provided in this 
        subsection, the amendments made by this subsection shall take 
        effect on the date of the enactment of this Act and shall apply 
        to any action for which a complaint is filed on or after the 
        first day of the 6-month period ending on that effective date.
    (c) Joinder of Interested Parties.--Section 299 of title 35, United 
States Code, is amended by adding at the end the following new 
subsection:
    ``(d) Joinder of Interested Parties.--
            ``(1) Joinder.--Except as otherwise provided under this 
        subsection, in a civil action arising under any Act of Congress 
        relating to patents in which fees and other expenses have been 
        awarded under section 285 to a prevailing party defending 
        against an allegation of infringement of a patent claim, and in 
        which the nonprevailing party alleging infringement is unable 
        to pay the award of fees and other expenses, the court shall 
        grant a motion by the prevailing party to join an interested 
        party if such prevailing party shows that the nonprevailing 
        party has no substantial interest in the subject matter at 
        issue other than asserting such patent claim in litigation.
            ``(2) Limitation on joinder.--
                    ``(A) Discretionary denial of motion.--The court 
                may deny a motion to join an interested party under 
                paragraph (1) if--
                            ``(i) the interested party is not subject 
                        to service of process; or
                            ``(ii) joinder under paragraph (1) would 
                        deprive the court of subject matter 
                        jurisdiction or make venue improper.
                    ``(B) Required denial of motion.--The court shall 
                deny a motion to join an interested party under 
                paragraph (1) if--
                            ``(i) the interested party did not timely 
                        receive the notice required by paragraph (3); 
                        or
                            ``(ii) within 30 days after receiving the 
                        notice required by paragraph (3), the 
                        interested party renounces, in writing and with 
                        notice to the court and the parties to the 
                        action, any ownership, right, or direct 
                        financial interest (as described in paragraph 
                        (4)) that the interested party has in the 
                        patent or patents at issue.
            ``(3) Notice requirement.--An interested party may not be 
        joined under paragraph (1) unless it has been provided actual 
        notice, within 30 days after the expiration of the time period 
        during which a certification under paragraph (4)(B) is required 
        to be filed, that the interested party has been identified in 
        the initial disclosure under section 290(b) and that such party 
        may therefore be an interested party subject to joinder under 
        this subsection. Such notice shall be provided by the party who 
        subsequently moves to join the interested party under paragraph 
        (1), and shall include language that--
                    ``(A) identifies the action, the parties thereto, 
                the patent or patents at issue, and the pleading or 
                other paper that identified the party under section 
                290(b); and
                    ``(B) informs the party that it may be joined in 
                the action and made subject to paying an award of fees 
                and other expenses under section 285(b) if--
                            ``(i) fees and other expenses are awarded 
                        in the action against the party alleging 
                        infringement of the patent or patents at issue 
                        under section 285(a);
                            ``(ii) the party alleging infringement is 
                        unable to pay the award of fees and other 
                        expenses;
                            ``(iii) the party receiving notice under 
                        this paragraph is determined by the court to be 
                        an interested party; and
                            ``(iv) the party receiving notice under 
                        this paragraph has not, within 30 days after 
                        receiving such notice, renounced in writing, 
                        and with notice to the court and the parties to 
                        the action, any ownership, right, or direct 
                        financial interest (as described in paragraph 
                        (4)) that the interested party has in the 
                        patent or patents at issue.
            ``(4) Additional requirements for joinder.--
                    ``(A) Initial statement.--This subsection shall not 
                apply to an action unless a party defending against an 
                allegation of infringement of a patent claim files, not 
                later than 14 days before the date on which a 
                scheduling conference is held or the date on which a 
                scheduling order is due under Rule 16(b) of the Federal 
                Rules of Civil Procedure, a statement that such party 
                holds a good faith belief, based on publicly available 
                information and any other information known to such 
                party, that the party alleging infringement has no 
                substantial interest in the subject matter at issue 
                other than asserting the patent in litigation.
                    ``(B) Certification.--This subsection shall not 
                apply to an action if the party alleging infringement 
                files, not later than 45 days after the date on which 
                such party is served with the initial statement 
                described under subparagraph (A), a certification 
                that--
                            ``(i) establishes and certifies to the 
                        court, under oath, that such party will have 
                        sufficient funds available to satisfy any award 
                        of reasonable attorney's fees and expenses 
                        under section 285 if an award is assessed;
                            ``(ii) demonstrates that such party has a 
                        substantial interest in the subject matter at 
                        issue other than asserting the patent in 
                        litigation; or
                            ``(iii) is made under oath that there are 
                        no other interested parties.
            ``(5) Exception for university technology transfer 
        organizations.--This subsection shall not apply to a technology 
        transfer organization whose primary purpose is to facilitate 
        the commercialization of technologies developed by one or more 
        institutions of higher education (as defined in section 101(a) 
        of the Higher Education Act of 1965 (20 U.S.C. 1001(a))) if 
        such technology transfer organization is alleging infringement 
        on behalf of an entity that would not be subject to this 
        subsection.
            ``(6) Interested party defined.--In this subsection, the 
        term `interested party' means a person, other than the party 
        alleging infringement, that--
                    ``(A) is an assignee of the patent or patents at 
                issue;
                    ``(B) has a right, including a contingent right, to 
                enforce or sublicense the patent or patents at issue; 
                or
                    ``(C) has a direct financial interest in the patent 
                or patents at issue, including the right to any part of 
                an award of damages or any part of licensing revenue, 
                except that a person with a direct financial interest 
                does not include--
                            ``(i) an employee of the party alleging 
                        infringement--
                                    ``(I) whose principal source of 
                                income or employment is employment with 
                                the party alleging infringement; or
                                    ``(II) whose sole financial 
                                interest in the patent or patents at 
                                issue is a salary or hourly wage paid 
                                by the party alleging infringement;
                            ``(ii) an attorney or law firm providing 
                        legal representation in the civil action 
                        described in paragraph (1) if the sole basis 
                        for the financial interest of the attorney or 
                        law firm in the patent or patents at issue 
                        arises from the attorney or law firm's receipt 
                        of compensation reasonably related to the 
                        provision of the legal representation; or
                            ``(iii) a person whose sole financial 
                        interest in the patent or patents at issue is 
                        ownership of an equity or security interest in 
                        the party alleging infringement, unless such 
                        person also has the right or ability to direct 
                        or control (membership on the board of 
                        directors alone is not sufficient to 
                        demonstrate such right or ability) the civil 
                        action.
            ``(7) Substantial interest.--In this subsection, the term 
        `substantial interest' includes an interest in the subject 
        matter of a patent at issue if the party--
                    ``(A) invented the subject matter; or
                    ``(B) commercially practices or implements, made 
                substantial preparations directed particularly to 
                commercially practicing or implementing, or is engaged 
                in research and development in, technology in the field 
                of the subject matter.''.
    (d) Discovery Stay.--
            (1) Amendment.--Chapter 29 of title 35, United States Code, 
        as amended by subsection (a), is further amended by inserting 
        after section 281A (as added by such subsection) the following 
        new section:
``Sec. 281B. Stay of discovery pending a preliminary motion.
    ``(a) In General.--Except as provided in subsection (d), in an 
action for patent infringement under section 271 or an action for a 
declaratory judgement that a patent is invalid or not infringed, 
discovery shall be stayed if--
            ``(1) the defendant moves to--
                    ``(A) sever a claim or drop a party for misjoinder 
                under Rule 21 of the Federal Rules of Civil Procedure;
                    ``(B) transfer the action under section 1404(a) of 
                title 28;
                    ``(C) transfer or dismiss the action under section 
                1406(a) of title 28; or
                    ``(D) dismiss the action pursuant to Federal Rule 
                of Civil Procedure 12(b); and
            ``(2) such motion is filed within 90 days after service of 
        the complaint and includes a declaration or other evidence in 
        support of the motion.
    ``(b) Expiration of Stay.--A stay entered under subsection (a) 
shall expire when all motions that are the basis for the stay are 
decided by the court.
    ``(c) Priority of Decision.--In an action described in subsection 
(a), the court shall decide a motion to sever a claim or drop a party 
for misjoinder under Rule 21 of the Federal Rules of Civil Procedure, 
to transfer under section 1404(a) to title 28, to transfer or dismiss 
under 1406(a) of title 28, or to dismiss the action pursuant to Federal 
Rule of Civil Procedure 12(b) before the earlier of the date on which 
the court--
            ``(1) decides any other substantive motion, provided 
        however that the court may decide a question of its own 
        jurisdiction at any time; or
            ``(2) issues a scheduling order under Rule 16(b) of the 
        Federal Rules of Civil Procedure.
    ``(d) Exception.--
            ``(1) Discovery necessary to decide motion.--
        Notwithstanding subsection (a), the court may allow such 
        discovery as the court determines to be necessary to decide a 
        motion to sever, drop a party, dismiss, or transfer.
            ``(2) Competitive harm.--Subsections (a) and (c) shall not 
        apply to an action in which the patentee is granted a 
        preliminary injunction to prevent harm arising from the 
        manufacture, use, sale, offer for sale, or importation of an 
        allegedly infringing product or process that competes with a 
        product or process made, sold, or offered for sale by the 
        patentee.
            ``(3) Consent of the parties.--The patentee and an opposing 
        party shall be excluded, in whole or in part, from the 
        limitations of subsections (a) and (c) upon such parties' 
        filing with the court a signed stipulation agreeing to such 
        exclusion.
            ``(4) FDA and biological product application.--Subsections 
        (a) and (c) shall not apply to an action that includes a cause 
        of action described under section 271(e)(2).''.
            (2) Conforming amendment.--The table of sections for 
        chapter 29 of title 35, United States Code, is amended by 
        inserting after the item relating to section 281A, as added by 
        subsection (a), the following new item:

``281B. Stay of discovery pending a preliminary motion.''.
    (e) Sense of Congress.--It is the sense of Congress that it is an 
abuse of the patent system and against public policy for a party to 
send out purposely evasive demand letters to end users alleging patent 
infringement. Demand letters sent should, at the least, include basic 
information about the patent in question, what is being infringed, and 
how it is being infringed. Any actions or litigation that stem from 
these types of purposely evasive demand letters to end users should be 
considered a fraudulent or deceptive practice and an exceptional 
circumstance when considering whether the litigation is abusive.
    (f) Demand Letters.--Section 284 of title 35, United States Code, 
is amended--
            (1) in the first undesignated paragraph, by striking ``Upon 
        finding'' and inserting ``(a) In General.--Upon finding'';
            (2) in the second undesignated paragraph, by striking 
        ``When the damages'' and inserting ``(b) Assessment by Court; 
        Treble Damages.--When the damages'';
            (3) by inserting after subsection (b), as designated by 
        paragraph (2) of this subsection, the following:
    ``(c) Willful Infringement.--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, 
identifies the ultimate parent entity of the claimant, 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.''; and
            (4) in the last undesignated paragraph, by striking ``The 
        court'' and inserting ``(d) Expert Testimony.--The court''.
    (g) Venue.--
            (1) Amendment.--Subsection (b) of section 1400 of title 28, 
        United States Code, is amended to read as follows:
    ``(b) Venue for Action Relating to Patents.--Notwithstanding 
subsections (b) and (c) of section 1391 of this title, any civil action 
for patent infringement or any action for a declaratory judgment that a 
patent is invalid or not infringed may be brought only in a judicial 
district--
            ``(1) where the defendant has its principal place of 
        business or is incorporated;
            ``(2) where the defendant has committed an act of 
        infringement of a patent in suit and has a regular and 
        established physical facility that gives rise to the act of 
        infringement;
            ``(3) where the defendant has agreed or consented to be 
        sued in the instant action;
            ``(4) where an inventor named on the patent in suit 
        conducted research or development that led to the application 
        for the patent in suit;
            ``(5) where a party has a regular and established physical 
        facility that such party controls and operates, not primarily 
        for the purpose of creating venue, and has--
                    ``(A) engaged in management of significant research 
                and development of an invention claimed in a patent in 
                suit prior to the effective filing date of the patent;
                    ``(B) manufactured a tangible product that is 
                alleged to embody an invention claimed in a patent in 
                suit; or
                    ``(C) implemented a manufacturing process for a 
                tangible good in which the process is alleged to embody 
                an invention claimed in a patent in suit; or
            ``(6) for foreign defendants that do not meet the 
        requirements of paragraphs (1) or (2), according to section 
        1391(d) of this title.''.
            (2) Mandamus relief.--For the purpose of determining 
        whether relief may issue under section 1651 of title 28, United 
        States Code, a clearly and indisputably erroneous denial of a 
        motion under section 1406(a) of such title to dismiss or 
        transfer a case on the basis of section 1400(b) of such title 
        shall be deemed to cause irremediable interim harm.
            (3) Retailers not eligible for customer stay.--If a 
        defendant does not meet the definition of a retailer under 
        section 296(a)(6) of title 35, United States Code, as added by 
        section 5, solely because the defendant manufacturers or causes 
        the manufacture of the covered product or process in suit, the 
        retail facilities of such defendant shall not constitute a 
        regular and established physical facility for purposes of 
        section 1400(b)(2) of title 28, United Code, as added by 
        paragraph (1).
            (4) Teleworkers.--The dwelling or residence of an employee 
        or contractor of a defendant who works at such dwelling or 
        residence shall not constitute a regular and established 
        physical facility of the defendant for purposes of section 
        1400(b)(2) of title 28, United Code, as added by paragraph (1).
    (h) Effective Date.--Except as otherwise provided in this section, 
the amendments made by this section shall take effect on the date of 
the enactment of this Act and shall apply to any action for which a 
complaint is filed on or after that date.

SEC. 4. TRANSPARENCY OF PATENT OWNERSHIP.

    (a) Amendments.--Section 290 of title 35, United States Code, is 
amended--
            (1) in the heading, by striking ``suits'' and inserting 
        ``suits; disclosure of interests'';
            (2) by striking ``The clerks'' and inserting ``(a) Notice 
        of Patent Suits.--The clerks''; and
            (3) by adding at the end the following new subsections:
    ``(b) Initial Disclosure.--
            ``(1) In general.--Except as provided in paragraph (2), 
        upon the filing of an initial complaint for patent 
        infringement, the plaintiff shall disclose to the Patent and 
        Trademark Office, the court, and each adverse party the 
        identity of each of the following:
                    ``(A) The assignee of the patent or patents at 
                issue.
                    ``(B) Any entity with a right to sublicense or 
                enforce the patent or patents at issue.
                    ``(C) Any entity, other than the plaintiff, that 
                the plaintiff knows to have a financial interest in the 
                patent or patents at issue or the plaintiff.
                    ``(D) The ultimate parent entity of any assignee 
                identified under subparagraph (A) and any entity 
                identified under subparagraph (B) or (C).
                    ``(E) A clear and concise description of the 
                principal business, if any, of the party alleging 
                infringement.
                    ``(F) A list of each complaint filed, of which the 
                party alleging infringement has knowledge, that asserts 
                or asserted any of the patents identified under 
                subparagraph (A).
                    ``(G) For each patent identified under subparagraph 
                (A), whether a standard-setting body has specifically 
                declared such patent to be essential, potentially 
                essential, or having potential to become essential to 
                that standard-setting body, and whether the United 
                States Government or a foreign government has imposed 
                specific licensing requirements with respect to such 
                patent.
            ``(2) Exemption.--The requirements of paragraph (1) shall 
        not apply with respect to a civil action filed under subsection 
        (a) that includes a cause of action described under section 
        271(e)(2).
    ``(c) Disclosure Compliance.--
            ``(1) Publicly traded.--For purposes of subsection 
        (b)(1)(C), if the financial interest is held by a corporation 
        traded on a public stock exchange, an identification of the 
        name of the corporation and the public exchange listing shall 
        satisfy the disclosure requirement.
            ``(2) Not publicly traded.--For purposes of subsection 
        (b)(1)(C), if the financial interest is not held by a publicly 
        traded corporation, the disclosure shall satisfy the disclosure 
        requirement if the information identifies--
                    ``(A) in the case of a partnership, the name of the 
                partnership and the name and correspondence address of 
                each partner or other entity that holds more than a 5-
                percent share of that partnership;
                    ``(B) in the case of a corporation, the name of the 
                corporation, the location of incorporation, the address 
                of the principal place of business, and the name of 
                each officer of the corporation; and
                    ``(C) for each individual, the name and 
                correspondence address of that individual.
    ``(d) Ongoing Duty of Disclosure to the Patent and Trademark 
Office.--
            ``(1) In general.--A plaintiff required to submit 
        information under subsection (b) or a subsequent owner of the 
        patent or patents at issue shall, not later than 90 days after 
        any change in the assignee of the patent or patents at issue or 
        an entity described under subparagraph (B) or (D) of subsection 
        (b)(1), submit to the Patent and Trademark Office the updated 
        identification of such assignee or entity.
            ``(2) Failure to comply.--With respect to a patent for 
        which the requirement of paragraph (1) has not been met--
                    ``(A) the plaintiff or subsequent owner shall not 
                be entitled to recover reasonable fees and other 
                expenses under section 285 or increased damages under 
                section 284 with respect to infringing activities 
                taking place during any period of noncompliance with 
                paragraph (1), unless the denial of such damages or 
                fees would be manifestly unjust; and
                    ``(B) the court shall award to a prevailing party 
                accused of infringement reasonable fees and other 
                expenses under section 285 that are incurred to 
                discover the updated assignee or entity described under 
                paragraph (1), unless such sanctions would be unjust.
    ``(e) Definitions.--In this section:
            ``(1) Financial interest.--The term `financial interest'--
                    ``(A) means--
                            ``(i) with regard to a patent or patents, 
                        the right of a person to receive proceeds 
                        related to the assertion of the patent or 
                        patents, including a fixed or variable portion 
                        of such proceeds; and
                            ``(ii) with regard to the plaintiff, direct 
                        or indirect ownership or control by a person of 
                        more than 5 percent of such plaintiff; and
                    ``(B) does not mean--
                            ``(i) ownership of shares or other 
                        interests in a mutual or common investment 
                        fund, unless the owner of such interest 
                        participates in the management of such fund; or
                            ``(ii) the proprietary interest of a 
                        policyholder in a mutual insurance company or 
                        of a depositor in a mutual savings association, 
                        or a similar proprietary interest, unless the 
                        outcome of the proceeding could substantially 
                        affect the value of such interest.
            ``(2) Proceeding.--The term `proceeding' means all stages 
        of a civil action, including pretrial and trial proceedings and 
        appellate review.
            ``(3) Ultimate parent entity.--
                    ``(A) In general.--Except as provided in 
                subparagraph (B), the term `ultimate parent entity' has 
                the meaning given such term in section 801.1(a)(3) of 
                title 16, Code of Federal Regulations, or any successor 
                regulation.
                    ``(B) Modification of definition.--The Director may 
                modify the definition of `ultimate parent entity' by 
                regulation.''.
    (b) Technical and Conforming Amendment.--The item relating to 
section 290 in the table of sections for chapter 29 of title 35, United 
States Code, is amended to read as follows:

        ``290. Notice of patent suits; disclosure of interests.''.
    (c) Regulations.--The Director may promulgate such regulations as 
are necessary to establish a registration fee in an amount sufficient 
to recover the estimated costs of administering subsections (b) through 
(e) of section 290 of title 35, United States Code, as added by 
subsection (a), to facilitate the collection and maintenance of the 
information required by such subsections, and to ensure the timely 
disclosure of such information to the public.
    (d) Effective Date.--The amendments made by this section shall take 
effect upon the expiration of the 6-month period beginning on the date 
of the enactment of this Act and shall apply to any action for which a 
complaint is filed on or after such effective date.

SEC. 5. CUSTOMER-SUIT EXCEPTION.

    (a) Amendment.--Section 296 of title 35, United States Code, is 
amended to read as follows:
``Sec. 296. Stay of action against customer
    ``(a) Definitions.--In this section:
            ``(1) Covered customer.--The term `covered customer' means 
        a retailer or end user that is accused of infringing a patent 
        or patents in dispute based on--
                    ``(A) the sale, or offer for sale, of a covered 
                product or covered process without material 
                modification of the product or process in a manner that 
                is alleged to infringe a patent or patents in dispute; 
                or
                    ``(B) the use by such retailer, the retailer's end 
                user customer, or an end user of a covered product or 
                covered process without material modification of the 
                product or process in a manner that is alleged to 
                infringe a patent or patents in dispute.
            ``(2) Covered manufacturer.--The term `covered 
        manufacturer' means a person that manufactures or supplies, or 
        causes the manufacture or supply of, a covered product or 
        covered process, or a relevant part thereof.
            ``(3) Covered process.--The term `covered process' means a 
        process, method, or a relevant part thereof, that is alleged to 
        infringe a patent or patents in dispute where such process, 
        method, or relevant part thereof is implemented by an 
        apparatus, material, system, software, or other instrumentality 
        that is provided by the covered manufacturer.
            ``(4) Covered product.--The term `covered product' means a 
        product, system, service, component, material, or apparatus, or 
        relevant part thereof, that--
                    ``(A) is alleged to infringe a patent or patents in 
                dispute; or
                    ``(B) implements a process alleged to infringe the 
                patent or patents in dispute.
            ``(5) End user.--The term `end user' includes an affiliate 
        of an end user, but does not include an entity that 
        manufacturers or causes the manufacture of a covered product or 
        covered process, or a relevant part thereof.
            ``(6) Retailer.--The term `retailer' means an entity that 
        generates revenues predominately through the sale to the public 
        of consumer goods or services, or an affiliate of such entity, 
        but does not include an entity that manufacturers or causes the 
        manufacturer of a covered product or covered process, or a 
        relevant part thereof.
    ``(b) Stay of Action Against Customer.--Except as provided in 
subsection (d), in any civil action in which a party asserts a claim 
for relief arising under any Act of Congress relating to patents, the 
court shall grant a motion to stay at least the portion of the action 
against a covered customer related to infringement of a patent 
involving a covered product or covered process if the following 
requirements are met:
            ``(1) Party to the action.--The covered manufacturer is a 
        party to the action or to a separate action (in which a party 
        asserts a claim for relief arising under any Act of Congress 
        relating to patents) involving the same patent or patents 
        related to the same covered product or covered process.
            ``(2) Agreement to be bound by issues determined.--The 
        covered customer agrees to be bound as to issues determined in 
        an action described in paragraph (1) without a full and fair 
        opportunity to separately litigate any such issue, but only as 
        to those issues for which all other elements of the common law 
        doctrine of issue preclusion are met.
            ``(3) Deadline to file motion.--The motion is filed after 
        the first pleading in the action but not later than the later 
        of--
                    ``(A) the 120th day after the date on which the 
                first pleading or paper in the action is served that 
                specifically identifies the covered product or covered 
                process as a basis for the covered customer's alleged 
                infringement of the patent and that specifically 
                identifies how the covered product or covered process 
                is alleged to infringe the patent; or
                    ``(B) the date on which the first scheduling order 
                in the case is entered.
            ``(4) Manufacturer consent in certain cases.--In a case in 
        which the covered manufacturer has been made a party to the 
        action on motion by the covered customer, the covered 
        manufacturer and the covered customer consent in writing to the 
        stay.
    ``(c) Lift of Stay.--
            ``(1) In general.--A stay entered under this section may be 
        lifted upon grant of a motion based on a showing that--
                    ``(A) the action involving the covered manufacturer 
                will not resolve a major issue in the suit against the 
                covered customer (such as a covered product or covered 
                process identified in the motion to lift the stay is 
                not a material part of the claimed invention or 
                inventions in the patent or patents in dispute); or
                    ``(B) the stay unreasonably prejudices or would be 
                manifestly unjust to the party seeking to lift the 
                stay.
            ``(2) Separate manufacturer action involved.--In the case 
        of a stay entered under this section based on the participation 
        of the covered manufacturer in a separate action described in 
        subsection (b)(1), a motion under paragraph (1) may only be 
        granted if the court in such separate action determines that 
        the showing required under paragraph (1) has been made.
    ``(d) Exemption.--This section shall not apply to an action that 
includes a cause of action described under section 271(e)(2).
    ``(e) Waiver of Estoppel Effect.--The court may, upon motion, 
determine that a consent judgment or an unappealed final order shall 
not be binding on the covered customer with respect to one or more of 
the issues that gave rise to the stay based on a showing that such 
consent judgment or unappealed final order would unreasonably prejudice 
or be manifestly unjust to the covered customer in light of the 
circumstances of the case if, following the grant of a motion to stay 
under this section, the covered manufacturer described in subsection 
(b)(1)--
            ``(1) obtains or consents to entry of a consent judgment 
        relating to such issue that gave rise to the stay; or
            ``(2) fails to prosecute to a final, non-appealable 
        judgment such issue that gave rise to the stay.
    ``(f) Rule of Construction.--Nothing in this section shall be 
construed to limit the ability of a court to grant any stay, expand any 
stay granted under this section, or grant any motion to intervene, if 
otherwise permitted by law.''.
    (b) Conforming Amendment.--The table of sections for chapter 29 of 
title 35, United States Code, is amended by striking the item relating 
to section 296 and inserting the following:

        ``296. Stay of action against customer.''.
    (c) Effective Date.--The amendments made by this section shall take 
effect on the date of the enactment of this Act and shall apply to any 
action for which a complaint is filed on or after the first day of the 
30-day period that ends on that date.

SEC. 6. PROCEDURES AND PRACTICES TO IMPLEMENT RECOMMENDATIONS OF THE 
              JUDICIAL CONFERENCE.

    (a) Pilot Program for Rules and Procedures on Discovery Burdens and 
Costs and Case Management.--
            (1) Definitions.--In this subsection, the term ``electronic 
        communication'' means any form of electronic communication, 
        including email, text message, and instant message.
            (2) Development of rules and procedures.--Not later than 3 
        months after the date of the enactment of this Act, the 
        Director of the Administrative Office of the United States 
        Courts shall designate not fewer than 6 of the district courts 
        of the United States that are participating in the patent cases 
        pilot program established under section 1 of Public Law 111-349 
        (28 U.S.C.137 note) to develop rules and procedures to 
        implement the proposals described in paragraphs (3) through (5) 
        to address the asymmetries in discovery burdens and costs, and 
        to establish case management procedures, in any civil action 
        arising under any Act of Congress relating to patents.
            (3) Types of discovery rules and procedures to be 
        considered.--The discovery rules and procedures required under 
        paragraph (2) shall address each of the following:
                    (A) Discovery of core documentary evidence.--
                Whether and to what extent each party to the action is 
                entitled to receive core documentary evidence and 
                should be responsible for the costs of producing core 
                documentary evidence within the possession or control 
                of each such party, and whether and to what extent each 
                party may seek non-core documentary discovery as 
                otherwise provided in the Federal Rules of Civil 
                Procedure.
                    (B) Electronic communication.--If the parties 
                request discovery of electronic communication, how such 
                discovery should be phased to occur relative to the 
                exchange of initial disclosures and core documentary 
                evidence, and appropriate limitations to apply to such 
                discovery.
                    (C) Scope of documentary evidence.--The kinds of 
                evidence that should constitute ``core documentary 
                evidence''.
            (4) Specific discovery rules and procedures to be 
        considered for additional document discovery.--The discovery 
        rules and procedures required under paragraph (2) shall address 
        whether the following provisions, or variations on the 
        following provisions, should apply:
                    (A) In general.--Whether each party to the action 
                may seek any additional document discovery otherwise 
                permitted under the Federal Rules of Civil Procedure 
                beyond core documentary evidence, if such party bears 
                the reasonable costs, including reasonable attorney's 
                fees, of the additional document discovery.
                    (B) Requirements for additional document 
                discovery.--Whether, unless the parties mutually agree 
                otherwise, no party may be permitted additional 
                document discovery unless such a party posts a bond, or 
                provides other security, in an amount sufficient to 
                cover the expected costs of such additional document 
                discovery, or makes a showing to the court that such 
                party has the financial capacity to pay the costs of 
                such additional document discovery.
                    (C) Good cause modification.--Whether a court, upon 
                motion and for good cause shown, may modify the 
                requirements of subparagraphs (A) and (B) and any 
                definition of core documentary evidence.
                    (D) Computer code.--Whether a court, upon motion 
                and for good cause shown, may determine that computer 
                code should be included in the discovery of core 
                documentary evidence, and whether the discovery of 
                computer code shall occur after the parties have 
                exchanged initial disclosures and other core 
                documentary evidence.
                    (E) Discovery sequence and scope.--Whether the 
                parties shall discuss and address in the written report 
                filed pursuant to rule 26(f) of the Federal Rules of 
                Civil Procedure the views and proposals of each party 
                on the following:
                            (i) When the discovery of core documentary 
                        evidence should be completed.
                            (ii) Whether additional document discovery 
                        described in subparagraphs (A) and (B) will be 
                        sought.
                            (iii) Any issues about infringement, 
                        invalidity, or damages that, if resolved before 
                        the additional document discovery described in 
                        subparagraphs (A) and (B) commences, might 
                        simplify or streamline the case.
            (5) Case management rules and procedures to be 
        considered.--The rules and procedures required under paragraph 
        (2) shall also address case management procedures for any civil 
        action arising under any Act of Congress relating to patents, 
        including initial disclosure and early case management 
        conference practices that--
                    (A) will identify any potential dispositive issues 
                of the case; and
                    (B) focus on early summary judgment motions when 
                resolution of issues may lead to expedited disposition 
                of the case.
    (b) Implementation of Rules and Procedures.--Within 18 months after 
the designation by the Director of the Administrative Office of the 6 
district courts to develop the rules and procedures pursuant to 
subsection (a), the 6 district courts shall complete the development of 
the rules and procedures, and begin to implement them.
    (c) Expansion of Pilot Program for Rules and Procedures on 
Discovery Burdens and Costs and Case Management.--After the rules and 
procedures developed by the pilot program pursuant to subsection (a) 
have been in effect for at least 2 years, the Judicial Conference of 
the United States, using existing resources, may expand the application 
of some or all of those rules and procedures to be implemented by all 
the district courts, and the United States Court of Federal Claims, for 
any civil action arising under any Act of Congress relating to patents.
    (d) Revision of Form for Patent Infringement.--
            (1) Elimination of form.--The Supreme Court, using existing 
        resources, shall eliminate Form 18 in the Appendix to the 
        Federal Rules of Civil Procedure (relating to Complaint for 
        Patent Infringement), effective on the date of the enactment of 
        this Act.
            (2) Revised form.--The Supreme Court may prescribe a new 
        form or forms setting out model allegations of patent 
        infringement that, at a minimum, notify accused infringers of 
        the asserted claim or claims, the products or services accused 
        of infringement, and the plaintiff's theory for how each 
        accused product or service meets each limitation of each 
        asserted claim. The Judicial Conference should exercise the 
        authority under section 2073 of title 28, United States Code, 
        to make recommendations with respect to such new form or forms.
    (e) Protection of Intellectual-Property Licenses in Bankruptcy.--
            (1) In general.--Section 1522 of title 11, United States 
        Code, is amended by adding at the end the following:
    ``(e) Section 365(n) shall apply to cases under this chapter. If 
the foreign representative rejects or repudiates a contract under which 
the debtor is a licensor of intellectual property, the licensee under 
such contract shall be entitled to make the election and exercise the 
rights described in section 365(n).''.
            (2) Trademarks.--
                    (A) In general.--Section 101(35A) of title 11, 
                United States Code, is amended--
                            (i) in subparagraph (E), by striking 
                        ``or'';
                            (ii) in subparagraph (F), by striking 
                        ``title 17;'' and inserting ``title 17; or''; 
                        and
                            (iii) by adding after subparagraph (F) the 
                        following new subparagraph:
                    ``(G) a trademark, service mark, or trade name, as 
                those terms are defined in section 45 of the Act of 
                July 5, 1946 (commonly referred to as the `Trademark 
                Act of 1946') (15 U.S.C. 1127);''.
                    (B) Conforming amendment.--Section 365(n)(2) of 
                title 11, United States Code, is amended--
                            (i) in subparagraph (B)--
                                    (I) by striking ``royalty 
                                payments'' and inserting ``royalty or 
                                other payments''; and
                                    (II) by striking ``and'' after the 
                                semicolon;
                            (ii) in subparagraph (C), by striking the 
                        period at the end of clause (ii) and inserting 
                        ``; and''; and
                            (iii) by adding at the end the following 
                        new subparagraph:
                    ``(D) in the case of a trademark, service mark, or 
                trade name, the licensee shall not be relieved of any 
                of its obligations to maintain the quality of the 
                products and services offered under or in connection 
                with the licensed trademark, service mark, or trade 
                name, and the trustee shall retain the right to oversee 
                and enforce quality control for such products or 
                services, or both.''.
            (3) Effective date.--The amendments made by this subsection 
        shall take effect on the date of the enactment of this Act and 
        shall apply to any case that is pending on, or for which a 
        petition or complaint is filed on or after, such date of 
        enactment.
    (f) In General.--Not later than 12 months after the date of the 
enactment of this Act, the Judicial Conference of the United States, 
with the assistance of the Director of the Federal Judicial Center and 
the Director of the Administrative Office of the United States Courts, 
shall prepare and transmit to the Committees on the Judiciary of the 
Senate and the House of Representatives a report on discovery 
proceedings in cases pertaining to litigation involving patent laws of 
the United States. The report shall contain, after looking at data 
compiled for the previous two years before the date of the enactment of 
this Act, the following:
            (1) The percentage of courts that have distinct phases of 
        discovery in the court rules.
            (2) A description of at least two of the definitions of 
        such phases.
            (3) Identify by name any court that does not have such 
        distinct phases and a description of why such courts have not 
        implemented such phases.
            (4) With regard to proceedings in courts that have phases, 
        in the case of a discovery proceeding that extends beyond the 
        core documents phase, a description of--
                    (A) what additional discovery was requested and any 
                consistent pattern or trend in the reasons or 
                justifications for the request;
                    (B) how much longer, on average, the proceedings 
                lasted than those settled within the first phase; and
                    (C) any patterns for the courts that repeatedly 
                have extended requests.
            (5) Looking at proceedings in the courts that do not have 
        phase rules, a description of--
                    (A) how long, on average, the discovery proceedings 
                last; and
                    (B) the scope of the requests.

SEC. 7. SMALL BUSINESS EDUCATION, OUTREACH, AND INFORMATION ACCESS.

    (a) Small Business Education and Outreach.--
            (1) Resources for small business.--Using existing 
        resources, the Director shall develop educational resources for 
        small businesses to address concerns arising from patent 
        infringement.
            (2) Small business patent outreach.--The existing small 
        business patent outreach programs of the Office, and the 
        relevant offices at the Small Business Administration and the 
        Minority Business Development Agency, shall provide education 
        and awareness on abusive patent litigation practices. The 
        Director may give special consideration to the unique needs of 
        small firms owned by disabled veterans, service-disabled 
        veterans, women, and minority entrepreneurs in planning and 
        executing the outreach efforts by the Office.
    (b) Improving Information Transparency for Small Business and the 
United States Patent and Trademark Office Users.--
            (1) Web site.--Using existing resources, the Director shall 
        create a user-friendly section on the official Web site of the 
        Office to notify the public when a patent case is brought in 
        Federal court and, with respect to each patent at issue in such 
        case, the Director shall include--
                    (A) information disclosed under subsections (b) and 
                (d) of section 290 of title 35, United States Code, as 
                added by section 4(a) of this Act; and
                    (B) any other information the Director determines 
                to be relevant.
            (2) Format.--In order to promote accessibility for the 
        public, the information described in paragraph (1) shall be 
        searchable by patent number, patent art area, and entity.

SEC. 8. STUDIES ON PATENT TRANSACTIONS, QUALITY, AND EXAMINATION.

    (a) Study on Secondary Market Oversight for Patent Transactions To 
Promote Transparency and Ethical Business Practices.--
            (1) Study required.--The Director, in consultation with the 
        Secretary of Commerce, the Secretary of the Treasury, the 
        Chairman of the Securities and Exchange Commission, the heads 
        of other relevant agencies, and interested parties, shall, 
        using existing resources of the Office, conduct a study--
                    (A) to develop legislative recommendations to 
                ensure greater transparency and accountability in 
                patent transactions occurring on the secondary market;
                    (B) to examine the economic impact that the patent 
                secondary market has on the United States;
                    (C) to examine licensing and other oversight 
                requirements that may be placed on the patent secondary 
                market, including on the participants in such markets, 
                to ensure that the market is a level playing field and 
                that brokers in the market have the requisite expertise 
                and adhere to ethical business practices; and
                    (D) to examine the requirements placed on other 
                markets.
            (2) Report on study.--Not later than 18 months after the 
        date of the enactment of this Act, the Director shall submit a 
        report to the Committee on the Judiciary of the House of 
        Representatives and the Committee on the Judiciary of the 
        Senate on the findings and recommendations of the Director from 
        the study required under paragraph (1).
    (b) Study on Patents Owned by the United States Government.--
            (1) Study required.--The Director, in consultation with the 
        heads of relevant agencies and interested parties, shall, using 
        existing resources of the Office, conduct a study on patents 
        owned by the United States Government that--
                    (A) examines how such patents are licensed and 
                sold, and any litigation relating to the licensing or 
                sale of such patents;
                    (B) provides legislative and administrative 
                recommendations on whether there should be restrictions 
                placed on patents acquired from the United States 
                Government;
                    (C) examines whether or not each relevant agency 
                maintains adequate records on the patents owned by such 
                agency, specifically whether such agency addresses 
                licensing, assignment, and Government grants for 
                technology related to such patents; and
                    (D) provides recommendations to ensure that each 
                relevant agency has an adequate point of contact that 
                is responsible for managing the patent portfolio of the 
                agency.
            (2) Report on study.--Not later than 1 year after the date 
        of the enactment of this Act, the Director shall submit to the 
        Committee on the Judiciary of the House of Representatives and 
        the Committee on the Judiciary of the Senate a report on the 
        findings and recommendations of the Director from the study 
        required under paragraph (1).
    (c) Study on Patent Quality and Access to the Best Information 
During Examination.--
            (1) GAO study.--The Comptroller General of the United 
        States shall, using existing resources, conduct a study on 
        patent examination at the Office and the technologies available 
        to improve examination and improve patent quality.
            (2) Contents of the study.--The study required under 
        paragraph (1) shall include the following:
                    (A) An examination of patent quality at the Office.
                    (B) An examination of ways to improve patent 
                quality, specifically through technology, that shall 
                include examining best practices at foreign patent 
                offices and the use of existing off-the-shelf 
                technologies to improve patent examination.
                    (C) A description of how patents are classified.
                    (D) An examination of procedures in place to 
                prevent double patenting through filing by applicants 
                in multiple art areas.
                    (E) An examination of the types of off-the-shelf 
                prior art databases and search software used by foreign 
                patent offices and governments, particularly in Europe 
                and Asia, and whether those databases and search tools 
                could be used by the Office to improve patent 
                examination.
                    (F) An examination of any other areas the 
                Comptroller General determines to be relevant.
            (3) Report on study.--Not later than 1 year after the date 
        of the enactment of this Act, the Comptroller General shall 
        submit to the Committee on the Judiciary of the House of 
        Representatives and the Committee on the Judiciary of the 
        Senate a report on the findings and recommendations from the 
        study required by this subsection, including recommendations 
        for any changes to laws and regulations that will improve the 
        examination of patent applications and patent quality.
    (d) Study on Patent Small Claims Court.--
            (1) Study required.--
                    (A) In general.--The Director of the Administrative 
                Office of the United States Courts, in consultation 
                with the Director of the Federal Judicial Center and 
                the United States Patent and Trademark Office, shall, 
                using existing resources, conduct a study to examine 
                the idea of developing a pilot program for patent small 
                claims procedures in certain judicial districts within 
                the existing patent pilot program mandated by Public 
                Law 111-349.
                    (B) Contents of study.--The study under 
                subparagraph (A) shall examine--
                            (i) the necessary criteria for using small 
                        claims procedures;
                            (ii) the costs that would be incurred for 
                        establishing, maintaining, and operating such a 
                        pilot program; and
                            (iii) the steps that would be taken to 
                        ensure that the procedures used in the pilot 
                        program are not misused for abusive patent 
                        litigation.
            (2) Report on study.--Not later than 1 year after the date 
        of the enactment of this Act, the Director of the 
        Administrative Office of the United States Courts shall submit 
        a report to the Committee on the Judiciary of the House of 
        Representatives and the Committee on the Judiciary of the 
        Senate on the findings and recommendations of the Director of 
        the Administrative Office from the study required under 
        paragraph (1).
    (e) Study on Demand Letters.--
            (1) Study.--The Director, in consultation with the heads of 
        other appropriate agencies, shall, using existing resources, 
        conduct a study of the prevalence of the practice of sending 
        patent demand letters in bad faith and the extent to which that 
        practice may, through fraudulent or deceptive practices, impose 
        a negative impact on the marketplace.
            (2) Report to congress.--Not later than 1 year after the 
        date of the enactment of this Act, the Director shall submit a 
        report to the Committee on the Judiciary of the House of 
        Representatives and the Committee on the Judiciary of the 
        Senate on the findings and recommendations of the Director from 
        the study required under paragraph (1).
            (3) Patent demand letter defined.--In this subsection, the 
        term ``patent demand letter'' means a written communication 
        relating to a patent that states or indicates, directly or 
        indirectly, that the recipient or anyone affiliated with the 
        recipient is or may be infringing the patent.
    (f) Study on Business Method Patent Quality.--
            (1) GAO study.--The Comptroller General of the United 
        States shall, using existing resources, conduct a study on the 
        volume and nature of litigation involving business method 
        patents.
            (2) Contents of study.--The study required under paragraph 
        (1) shall focus on examining the quality of business method 
        patents asserted in suits alleging patent infringement, and may 
        include an examination of any other areas that the Comptroller 
        General determines to be relevant.
            (3) Report to congress.--Not later than 1 year after the 
        date of the enactment of this Act, the Comptroller General 
        shall submit to the Committee on the Judiciary of the House of 
        Representatives and the Committee on the Judiciary of the 
        Senate a report on the findings and recommendations from the 
        study required by this subsection, including recommendations 
        for any changes to laws or regulations that the Comptroller 
        General considers appropriate on the basis of the study.
    (g) Study on Impact of Legislation on Ability of Individuals and 
Small Businesses To Protect Exclusive Rights to Inventions and 
Discoveries.--
            (1) Study required.--The Director, in consultation with the 
        Secretary of Commerce, the Director of the Administrative 
        Office of the United States Courts, the Director of the Federal 
        Judicial Center, the heads of other relevant agencies, and 
        interested parties, shall, using existing resources of the 
        Office, conduct a study to examine the economic impact of 
        sections 3, 4, and 5 of this Act, and any amendments made by 
        such sections, on the ability of individuals and small 
        businesses owned by women, veterans, and minorities to assert, 
        secure, and vindicate the constitutionally guaranteed exclusive 
        right to inventions and discoveries by such individuals and 
        small business.
            (2) Report on study.--Not later than 2 years after the date 
        of the enactment of this Act, the Director shall submit to the 
        Committee on the Judiciary of the House of Representatives and 
        the Committee on the Judiciary of the Senate a report on the 
        findings and recommendations of the Director from the study 
        required under paragraph (1).

SEC. 9. IMPROVEMENTS AND TECHNICAL CORRECTIONS TO THE LEAHY-SMITH 
              AMERICA INVENTS ACT.

    (a) Post-Grant Review Amendment.--Section 325(e)(2) of title 35, 
United States Code is amended by striking ``or reasonably could have 
raised''.
    (b) Reform of Patent Trial and Appeal Board Proceedings.--
            (1) Inter partes review.--Section 316(a) of title 35, 
        United States Code, is amended--
                    (A) in paragraph (12), by striking ``; and'' and 
                inserting a semicolon;
                    (B) in paragraph (13), by striking the period at 
                the end and inserting a semicolon; and
                    (C) by adding at the end the following new 
                paragraphs:
            ``(14) providing that for all purposes under this chapter--
                    ``(A) each claim of a patent shall be construed as 
                such claim would be in a civil action to invalidate a 
                patent under section 282(b), including construing each 
                claim of the patent in accordance with the ordinary and 
                customary meaning of such claim as understood by one of 
                ordinary skill in the art and the prosecution history 
                pertaining to the patent; and
                    ``(B) if a court has previously construed the claim 
                or a claim term in a civil action in which the patent 
                owner was a party, the Office shall consider such claim 
                construction; and
            ``(15) providing that a review may not be instituted unless 
        the petitioner certifies that the petitioner and the real 
        parties in interest of the petitioner--
                    ``(A) do not own and will not acquire a financial 
                instrument (including a prepaid variable forward 
                contract, equity swap, collar, or exchange fund) that 
                is designed to hedge or offset any decrease in the 
                market value of an equity security of the patent owner 
                or an affiliate of the patent owner, during a period 
                following the filing of the petition to be determined 
                by the Director; and
                    ``(B) have not demanded payment, monetary or 
                otherwise, from the patent owner or an affiliate of the 
                patent owner in exchange for a commitment not to file a 
                petition under section 311 with respect to the patent 
                that is the subject of the petition, unless the 
                petitioner or the real party in interest of the 
                petitioner has been sued for or charged with 
                infringement of the patent, during a period to be 
                determined by the Director.''.
            (2) Post-grant review.--Section 326(a) of title 35, United 
        States Code, is amended--
                    (A) in paragraph (11), by striking ``; and'' and 
                inserting a semicolon;
                    (B) in paragraph (12), by striking the period at 
                the end and inserting a semicolon; and
                    (C) by adding at the end the following new 
                paragraphs:
            ``(13) providing that for all purposes under this chapter--
                    ``(A) each claim of a patent shall be construed as 
                such claim would be in a civil action to invalidate a 
                patent under section 282(b), including construing each 
                claim of the patent in accordance with the ordinary and 
                customary meaning of such claim as understood by one of 
                ordinary skill in the art and the prosecution history 
                pertaining to the patent; and
                    ``(B) if a court has previously construed the claim 
                or a claim term in a civil action in which the patent 
                owner was a party, the Office shall consider such claim 
                construction; and
            ``(14) providing that a review may not be instituted unless 
        the petitioner certifies that the petitioner and the real 
        parties in interest of the petitioner--
                    ``(A) do not own and will not acquire a financial 
                instrument (including a prepaid variable forward 
                contract, equity swap, collar, or exchange fund) that 
                is designed to hedge or offset any decrease in the 
                market value of an equity security of the patent owner 
                or an affiliate of the patent owner, during a period 
                following the filing of the petition to be determined 
                by the Director; and
                    ``(B) have not demanded payment, monetary or 
                otherwise, from the patent owner or an affiliate of the 
                patent owner in exchange for a commitment not to file a 
                petition under section 311 with respect to the patent 
                that is the subject of the petition, unless the 
                petitioner or the real party in interest of the 
                petitioner has been sued for or charged with 
                infringement of the patent, during a period to be 
                determined by the Director.''.
            (3) Technical and conforming amendment.--Section 
        18(a)(1)(A) of the Leahy-Smith America Invents Act (Public Law 
        112-29; 126 Stat. 329; 35 U.S.C. 321 note) is amended by 
        striking ``Section 321(c)'' and inserting ``Sections 321(c) and 
        326(a)(13)''.
            (4) Declaration evidence.--
                    (A) Preliminary response to petition for inter 
                partes review.--Section 313 of title 35, United States 
                Code, is amended by striking the period at the end and 
                inserting ``, including affidavits or declarations of 
                supporting evidence and opinions.''.
                    (B) Preliminary response to petition for post-grant 
                review.--Section 323 of title 35, United States Code, 
                is amended by striking the period at the end and 
                inserting ``, including affidavits or declarations of 
                supporting evidence and opinions.''.
            (5) Right of due process.--
                    (A) Inter partes review.--Section 316(b) of title 
                35, United States Code, is amended by striking ``and 
                the ability'' and inserting ``the rights to due process 
                of the patent owner and the petitioner, and the 
                ability''.
                    (B) Post-grant review.--Section 326(b) of title 35, 
                United States Code, is amended by striking ``and the 
                ability'' and inserting ``the rights to due process of 
                the patent owner and the petitioner, and the ability''.
            (6) Serial or redundant petitions.--The Director shall 
        designate as precedential (and may change the designation as 
        the Director determines to be appropriate), with respect to the 
        application of subsections (d) and (e) of section 325 of title 
        35, United States Code, the decisions of the Patent Trial and 
        Appeal Board in each of the following decisions:
                    (A) Dell Inc. v. Electronics and Telecomms. 
                Research Inst., IPR2015-00549, Paper 10 (PTAB Mar. 26, 
                2015).
                    (B) Zimmer Holdings, Inc. v. Bonutti Skeletal 
                Innovations LLC, IPR2014-01080, Paper 17 (PTAB Oct. 31, 
                2014).
                    (C) Prism Pharma Co., Ltd. v. Choongwae Pharma 
                Corp., IPR2014-00315, Paper 14 (PTAB July 8, 2014).
                    (D) Unilever, Inc. v. The Procter & Gamble Co., 
                IPR2014-00506, Paper 17 (PTAB July 7, 2014).
            (7) Preliminary response to inter partes review 
        amendment.--
                    (A) Amendment.--Section 313 of title 35, United 
                States Code, is amended by adding at the end the 
                following new sentence: ``The Director may accept a 
                reply by the petitioner to new issues raised in the 
                preliminary response, upon request by the petitioner to 
                file such reply, within a time period set by the 
                Director.''
                    (B) Conforming amendments.--Section 314 of title 
                35, United States Code, is amended--
                            (i) in subsection (a), by striking ``any 
                        response'' and inserting ``any response or 
                        reply''; and
                            (ii) in subsection (b)--
                                    (I) in paragraph (1), by striking 
                                ``receiving a preliminary response to 
                                the petition'' and inserting 
                                ``receiving the later of a preliminary 
                                response to the petition or a reply to 
                                such preliminary response''; and
                                    (II) by amending paragraph (2) to 
                                read as follows:
            ``(2) if--
                    ``(A) no such preliminary response is filed, the 
                last date on which such response may be filed; and
                    ``(B) such preliminary response is filed and no 
                such reply is requested, the last day on which such 
                reply may be requested.''.
            (8) Effective date, regulations, and transition for short 
        sales.--
                    (A) Effective date.--Sections 316(a)(15) and 
                326(a)(14) of title 35, United States Code, as added by 
                paragraphs (1) and (2) shall take effect on the date of 
                the enactment of this Act.
                    (B) Regulations required.--Not later than one year 
                after the date of the enactment of this Act, the 
                Director shall issue regulations to carry out sections 
                316(a)(15) and 326(a)(14) of title 35, United States 
                Code, as added by paragraphs (1) and (2).
                    (C) Transition.--During the period that begins on 
                the date of the enactment of this Act and ends on the 
                date of the issuance of the regulations required 
                pursuant to subparagraph (B), a petition filed under 
                chapter 31 or 32 of title 35, United States Code, on or 
                after the date of the enactment of this Act may not be 
                instituted unless the petitioner certifies that the 
                petitioner and the real parties in interest of such 
                petitioner--
                            (i) do not own a financial instrument 
                        described in sections 316(a)(15) and 326(a)(14) 
                        of title 35, United States Code, as added by 
                        paragraphs (1) and (2), during the one-week 
                        period following the date on which the petition 
                        is filed; and
                            (ii) have not demanded anything of value 
                        from the patent owner or an affiliate of the 
                        patent owner during the period between 
                        September 16, 2012, and the date of the filing 
                        of the petition.
            (9) Effective date.--Except as otherwise provided, the 
        amendments made by this subsection shall take effect upon the 
        expiration of the 90-day period beginning on the date of the 
        enactment of this Act, and shall apply to any proceeding under 
        chapter 31 or 32 of title 35, United States Code, as the case 
        may be, for which the petition for review is filed on or after 
        such effective date.
    (c) Codification of the Double-patenting Doctrine.--
            (1) Amendments.--
                    (A) Conditions for patentability; novelty.--Section 
                102 of title 35, United States Code, is amended by 
                inserting at the end the following new subsection:
    ``(e) Double-patenting Prior Art.--If a first claimed invention in 
a first patent was effectively filed on or before the effective filing 
date of a second claimed invention in a second patent or in the 
application on which the second patent issues, and the first claimed 
invention is not otherwise prior art to the second claimed invention 
under this section, then the first claimed invention shall, 
notwithstanding the other subsections of this section, constitute prior 
art to the second claimed invention under this subsection unless--
            ``(1) the second claimed invention is consonant with a 
        requirement for restriction under the first sentence of section 
        121 with respect to the claims issued in the first patent; or
            ``(2) an election has been recorded in the Office by the 
        owner of the second patent or the application on which the 
        second patent issues disclaiming the right to bring or maintain 
        a civil action under section 281 to enforce the second patent, 
        except that such disclaimer shall not apply if--
                    ``(A) the relief being sought in the civil action 
                would not constitute a cause of action barred by res 
                judicata had the asserted claims of the second patent 
                been issued in the first patent; and
                    ``(B) the owner of the first patent or the 
                application on which the first patent issues has 
                recorded an election limiting the enforcement of the 
                first patent relative to the second patent in the 
                manner described in this paragraph, the owner of the 
                first patent is a party to the civil action, or a 
                separate action under section 281 to enforce the first 
                patent can no longer be brought or maintained.''.
                    (B) Divisional applications.--Section 121 of title 
                35, United States Code, is amended by striking the 
                third sentence.
                    (C) Limitations.--Paragraph (2) of section 154(b) 
                of title 35, United States Code, is amended by 
                inserting at the end the following new subparagraph:
                    ``(D) Patents subject to election.--If a patent is 
                subject to an election as described in section 
                102(e)(2) with respect to one or more other patents, 
                the adjusted term of the patent under this subsection 
                may not exceed a period of 17 years from the date of 
                issuance of any of such other patents and the portion 
                of any adjustment of the term of the patent under this 
                subsection that extends beyond the expiration of such 
                17-year period years shall be void.''.
            (2) Effective date, implementation, and other transition 
        provisions.--
                    (A) In general.--The amendments made by paragraph 
                (1) shall be effective as if included in the amendment 
                made by section 3(b)(1) of the Leahy-Smith America 
                Invents Act (Public Law 112-29).
                    (B) Savings clause.--If a second claimed invention 
                in a second patent issued before the date of the 
                enactment of this Act is subject to the amendments made 
                by paragraph (1) and would not have been invalid had 
                the amendments made by paragraph (1) and the provisions 
                of this paragraph not been enacted, then, 
                notwithstanding section 102(e) of title 35, United 
                States Code, as added by paragraph (1), prior art under 
                such section 102(e) may not be considered in 
                determining the validity of such second claimed 
                invention.
                    (C) Provisional rejections to continue.--If a first 
                claimed invention in a first application for patent 
                subject to the amendments under paragraph (1) would, if 
                issued as a patent, constitute prior art under section 
                102(e) of title 35, United States Code, as added by 
                paragraph (1), with respect to a second claimed 
                invention in a second application, the first claimed 
                invention may be provisionally cited by the Office as 
                prior art in a notice under section 132 of title 35, 
                United States Code, in connection with the examination 
                of the second claimed invention.
                    (D) Patent term; rule of construction.--
                            (i) In general.--If the term of a patent is 
                        based upon the amendments made to subsection 
                        (a) of section 154, title 35, United States 
                        Code, by the Uruguay Round Agreements Act 
                        (Public Law 103-465; 108 Stat. 4809)--
                                    (I) the patent term as provided 
                                under subsection (a) of such section 
                                154, any adjustment to said term as 
                                provided under subsection (b) of such 
                                section 154, and any extension of such 
                                term as provided under section 156 of 
                                title 35, United States Code, shall not 
                                constitute, nor be deemed by the Office 
                                or the courts to constitute, an 
                                unjustified period of protection under 
                                the patent or an unjustified extension 
                                of the right to exclude under the 
                                patent relative to an earlier-expiring 
                                patent;
                                    (II) the Office shall not condition 
                                the issuance of such a patent on a 
                                disclaimer of any portion of the term 
                                of the patent; and
                                    (III) the Office may condition the 
                                issuance of such a patent on the making 
                                of an election as described in section 
                                102(e)(2) of title 35, United States 
                                Code, as added by paragraph (1) in lieu 
                                of the filing of a disclaimer with 
                                respect to the ownership or separate 
                                enforcement of the patent that would 
                                otherwise be required by the Office in 
                                cases of non-statutory double 
                                patenting.
                            (ii) Disclaimers in pending applications.--
                        A terminal disclaimer made in connection with 
                        an application for patent with respect to one 
                        or more other applications or patents shall be 
                        given no effect and shall be treated as having 
                        never been made if--
                                    (I) within one year after the date 
                                of the enactment of this Act, an 
                                election as described in section 
                                102(e)(2) of title 35, United State 
                                Code, as added by paragraph (1), has 
                                been made in connection with the 
                                application or any patent issuing 
                                thereon and has effect with respect to 
                                each such other application or patent 
                                with respect to which the disclaimer 
                                was made;
                                    (II) the application was pending 
                                before the Office on or after July 1, 
                                2015; and
                                    (III) the term of a patent issued 
                                on the application would be based upon 
                                the amendments made to subsection (a) 
                                of section 154 of title 35, United 
                                States Code, by the Uruguay Round 
                                Agreements Act.
                            (iii) Disclaimers otherwise unaffected.--
                        Except as provided in clause (ii), nothing in 
                        this subsection shall be construed to negate 
                        the effect of a terminal disclaimer limiting 
                        the enforcement of a patent issued on or before 
                        the date of the enactment of this Act.
                            (iv) Terminal disclaimer defined.--In this 
                        subparagraph, the term ``terminal disclaimer'' 
                        has the meaning as such term is described in 
                        section 1.321 of title 37, Code of Federal 
                        Regulations.
                    (E) Exclusive rules.--
                            (i) First-inventor-to-file patents.--A 
                        claimed invention of a patent described in 
                        section 3(n)(1) of the Leahy-Smith America 
                        Invents Act (35 U.S.C. 100 note) and issued 
                        before, on, or after the date of the enactment 
                        of this Act may not be held invalid on any 
                        nonstatutory double-patenting ground.
                            (ii) First-to-invent patents.--A claimed 
                        invention of a patent not described in section 
                        3(n)(1) of the Leahy-Smith America Invents Act 
                        and issued before, on, or after the date of the 
                        enactment of this Act may not be held invalid 
                        with respect to a claimed invention of another 
                        patent based on any nonstatutory double 
                        patenting ground if one of the claimed 
                        inventions is prior art to the other claimed 
                        invention under section 102 of title 35, United 
                        States Code, as in effect on the day prior to 
                        the effective date of the amendments made by 
                        section 3(b)(1) of the Leahy-Smith America 
                        Invents Act.
                    (F) Effect of rule of construction and exclusive 
                rules.--Subparagraphs (D) and (E) shall take effect on 
                the date of the enactment of this Act, except that they 
                shall not apply to any defense raised in a civil action 
                brought before such date.
    (d) PTO Patent Reviews.--
            (1) Clarification.--
                    (A) Scope of prior art.--Section 18(a)(1)(C)(i) of 
                the Leahy-Smith America Invents Act (35 U.S.C. 321 
                note) is amended by striking ``section 102(a)'' and 
                inserting ``subsection (a) or (e) of section 102''.
                    (B) Effective date.--The amendment made by 
                subparagraph (A) shall take effect on the date of the 
                enactment of this Act and shall apply to any proceeding 
                pending on, or filed on or after, such date of 
                enactment.
            (2) Authority to waive fee.--Subject to available 
        resources, the Director may waive payment of a filing fee for a 
        transitional proceeding described under section 18(a) of the 
        Leahy-Smith America Invents Act (35 U.S.C. 321 note).
            (3) Proceeding consolidation clarification.--Section 315(c) 
        of title 35, United States Code, is amended to read as follows:
    ``(c) Joinder.--
            ``(1) Joinder of party.--If the Director institutes an 
        inter partes review, the Director, in his or her discretion, 
        may join as a party to that inter partes review any person who 
        meets the requirement of properly filing 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.
            ``(2) Joinder of later filed petition.--For good cause 
        shown, the Director may allow a party who files a petition that 
        meets the requirement described in paragraph (1) and concerns 
        the patent of a pending inter partes review to join the 
        petition to the pending review.''.
    (e) Clarification of Jurisdiction.--
            (1) In general.--An action or claim arises under an Act of 
        Congress relating to patents if such action or claim--
                    (A) necessarily requires resolution of a disputed 
                question as to the validity of a patent or the scope of 
                a patent claim; or
                    (B) is an action or claim for legal malpractice 
                that arises from an attorney's conduct in relation to 
                an action or claim arising under an Act of Congress 
                relating to patents (including as described in 
                paragraph (1)).
            (2) Applicability.--Paragraph (1)--
                    (A) shall apply to all cases filed on or after, or 
                pending on, the date of the enactment of this Act; and
                    (B) shall not apply to a case in which a Federal 
                court has issued a ruling on whether the case or a 
                claim arises under any Act of Congress relating to 
                patents or plant variety protection before the date of 
                the enactment of this Act.
    (f) Patent Pilot Program in Certain District Courts Duration.--
            (1) Duration.--Section 1(c) of Public Law 111-349 (124 
        Stat. 3674; 28 U.S.C. 137 note) is amended to read as follows:
    ``(c) Duration.--The program established under subsection (a) shall 
be maintained using existing resources, and shall terminate 20 years 
after the end of the 6-month period described in subsection (b).''.
            (2) Effective date.--The amendment made by paragraph (1) 
        shall take effect on the date of the enactment of this Act.
    (g) Management of the United States Patent and Trademark Office.--
            (1) In general.--Section 3(b)(1) of title 35, United States 
        Code, is amended in the first sentence--
                    (A) by striking ``be vested with the authority to 
                act in the capacity of the'' and inserting ``serve as 
                Acting,''; and
                    (B) by inserting before the period ``or in the 
                event of a vacancy in the office of the Director''.
            (2) Effective date.--The amendments made by paragraph (1) 
        shall take effect on the date of the enactment of this Act and 
        shall apply with respect to appointments and vacancies 
        occurring before, on, or after the date of the enactment of 
        this Act.
    (h) Technical Corrections.--
            (1) Novelty.--
                    (A) Amendment.--Section 102(b)(1)(A) of title 35, 
                United States Code, is amended by striking ``the 
                inventor or joint inventor or by another'' and 
                inserting ``the inventor or a joint inventor or 
                another''.
                    (B) Effective date.--The amendment made by 
                subparagraph (A) shall be effective as if included in 
                the amendment made by section 3(b)(1) of the Leahy-
                Smith America Invents Act (Public Law 112-29).
            (2) Inventor's oath or declaration.--
                    (A) Amendment.--The second sentence of section 
                115(a) of title 35, United States Code, is amended by 
                striking ``shall execute'' and inserting ``may be 
                required to execute''.
                    (B) Effective date.--The amendment made by 
                subparagraph (A) shall be effective as if included in 
                the amendment made by section 4(a)(1) of the Leahy-
                Smith America Invents Act (Public Law 112-29).
            (3) Assignee filers.--
                    (A) Benefit of earlier filing date; right of 
                priority.--Section 119(e)(1) of title 35, United States 
                Code, is amended, in the first sentence, by striking 
                ``by an inventor or inventors named'' and inserting 
                ``that names the inventor or a joint inventor''.
                    (B) Benefit of earlier filing date in the united 
                states.--Section 120 of title 35, United States Code, 
                is amended, in the first sentence, by striking ``names 
                an inventor or joint inventor'' and inserting ``names 
                the inventor or a joint inventor''.
                    (C) Effective date.--The amendments made by this 
                paragraph shall take effect on the date of the 
                enactment of this Act and shall apply to any patent 
                application, and any patent issuing from such 
                application, that is filed on or after September 16, 
                2012.
            (4) Derived patents.--
                    (A) Amendment.--Section 291(b) of title 35, United 
                States Code, is amended by striking ``or joint 
                inventor'' and inserting ``or a joint inventor''.
                    (B) Effective date.--The amendment made by 
                subparagraph (A) shall be effective as if included in 
                the amendment made by section 3(h)(1) of the Leahy-
                Smith America Invents Act (Public Law 112-29).
            (5) Specification.--Notwithstanding section 4(e) of the 
        Leahy-Smith America Invents Act (Public Law 112-29; 125 Stat. 
        297), the amendments made by subsections (c) and (d) of section 
        4 of such Act shall apply to any proceeding or matter that is 
        pending on, or filed on or after, the date of the enactment of 
        this Act.
            (6) Time limit for commencing misconduct proceedings.--
                    (A) Amendment.--Section 32 of title 35, United 
                States Code, is amended by striking the fourth sentence 
                and inserting the following new sentences: ``A 
                proceeding under this section shall be commenced not 
                later than the earlier of either the date that is 10 
                years after the date on which the misconduct forming 
                the basis for the proceeding occurred, or 18 months 
                after the date on which the Director of the Office of 
                Enrollment and Discipline received a written grievance 
                (as prescribed in the regulations established under 
                section 2(b)(2)(D)) about a specified individual that 
                describes the misconduct forming the basis for the 
                proceeding. If the misconduct that forms the basis for 
                the proceeding under this section is at issue in a 
                court or administrative-agency proceeding, the 18-month 
                period for commencing the proceeding under this section 
                shall be tolled until the court or agency's decision 
                regarding the misconduct becomes final and non-
                appealable. The 18-month period for commencing a 
                proceeding under this section also may be tolled by 
                agreement between the parties.''
                    (B) Effective date.--The amendment made by this 
                paragraph shall take effect on the date of the 
                enactment of this Act and shall apply to any action in 
                which the Office files a complaint on or after such 
                date of enactment.
            (7) Patent owner response.--
                    (A) Conduct of inter partes review.--Paragraph (8) 
                of section 316(a) of title 35, United States Code, is 
                amended by striking ``the petition under section 313'' 
                and inserting ``the petition under section 311''.
                    (B) Conduct of post-grant review.--Paragraph (8) of 
                section 326(a) of title 35, United States Code, is 
                amended by striking ``the petition under section 323'' 
                and inserting ``the petition under section 321''.
                    (C) Effective date.--The amendments made by this 
                paragraph shall take effect on the date of the 
                enactment of this Act.
            (8) International applications.--
                    (A) Amendments.--Section 202(b) of the Patent Law 
                Treaties Implementation Act of 2012 (Public Law 112-
                211; 126 Stat. 1536) is amended--
                            (i) by striking paragraph (7); and
                            (ii) by redesignating paragraphs (8) and 
                        (9) as paragraphs (7) and (8), respectively.
                    (B) Effective date.--The amendments made by 
                subparagraph (A) shall be effective as if included in 
                title II of the Patent Law Treaties Implementation Act 
                of 2012 (Public Law 112-21).
            (9) Global worksharing.--
                    (A) Amendment.--Section 122 of title 35, United 
                States Code, is amended by adding at the end the 
                following new subsection:
    ``(f) Foreign or International Filing.--
            ``(1) Provision of information.--The Director may provide 
        information concerning an application for patent to a foreign 
        or international intellectual property office if a 
        corresponding application is filed with such foreign or 
        international intellectual property office. If the 
        corresponding application is an international application, such 
        information may also be provided to an International Searching 
        Authority, an International Preliminary Examining Authority, or 
        the International Bureau.
            ``(2) Definitions.--For purposes of this subsection, the 
        terms `international application', `International Searching 
        Authority', `International Preliminary Examining Authority', 
        and `International Bureau' have the same meaning given those 
        terms under section 351.''.
                    (B) Conforming amendment.--Section 122(a) of title 
                35, United States Code, is amended by striking 
                ``subsection (b)'' and inserting ``subsections (b) and 
                (f)''.
                    (C) Effective date.--The amendments made by this 
                paragraph shall take effect on the date of the 
                enactment of this Act and shall apply to applications 
                for patent that are pending on, or filed on or after, 
                such effective date.
            (10) Jurisdiction for appeals of trademark cases.--
                    (A) Court of appeals.--Section 1295(a)(4)(C) of 
                title 28, United States Code, is amended by striking 
                ``title 35'' and inserting ``title 35 or section 21(b) 
                of the Act of July 5, 1946 (commonly referred to as the 
                `Trademark Act of 1946') (15 U.S.C. 1071(b))'';
                    (B) Conforming amendment.--Section 39(a) of the Act 
                of July 5, 1946 (commonly referred to as the 
                ``Trademark Act of 1946'') (15 U.S.C. 1121(a)) is 
                amended by striking ``under this Act'' and inserting 
                ``under this Act (except as provided in section 
                1295(a)(4) of title 28, United States Code)''.
                    (C) Effective date.--The amendment made by 
                subparagraph (A) shall apply in any case in which a 
                final judgment is entered by the district court on or 
                after the date of enactment of this Act.
            (11) Officers and employees amendment.--
                    (A) Amendment.--Section 3(b)(3)(A) of title 35, 
                United States Code, is amended by striking ``appoint'' 
                and inserting ``appoint, or nominate for appointment by 
                the Secretary of Commerce,''.
                    (B) Applicability.--Section 3(b)(3)(B) of title 35, 
                United States Code, as added by subparagraph (A) shall 
                apply to all officers nominated for appointment by the 
                Secretary of Commerce before, on, or after the date of 
                the enactment of this Act.
    (i) Extension of Fee-setting Authority.--Section 10(i)(2) of the 
Leahy-Smith America Invents Act (Public Law 112-29; 125 Stat. 319; 35 
U.S.C. 41 note) is amended by striking ``7-year'' and inserting ``17-
year''.

SEC. 10. EFFECTIVE DATE.

    Except as otherwise provided in this Act, the provisions of this 
Act shall take effect on the date of the enactment of this Act, and 
shall apply to any patent issued, or any action filed, on or after that 
date.
                                                 Union Calendar No. 177

114th CONGRESS

  1st Session

                                H. R. 9

                          [Report No. 114-235]

_______________________________________________________________________

                                 A BILL

  To amend title 35, United States Code, and the Leahy-Smith America 
  Invents Act to make improvements and technical corrections, and for 
                            other purposes.

_______________________________________________________________________

                             July 29, 2015

  Reported with an amendment, committed to the Committee of the Whole 
       House on the State of the Union, and ordered to be printed