[Congressional Bills 115th Congress]
[From the U.S. Government Publishing Office]
[H.R. 7366 Introduced in House (IH)]

<DOC>






115th CONGRESS
  2d Session
                                H. R. 7366

 To reform and improve procedures for amending patents subject to post-
 issuance review proceedings of the United States Patent and Trademark 
                    Office, and for other purposes.


_______________________________________________________________________


                    IN THE HOUSE OF REPRESENTATIVES

                           December 20, 2018

   Mr. Issa introduced the following bill; which was referred to the 
                       Committee on the Judiciary

_______________________________________________________________________

                                 A BILL


 
 To reform and improve procedures for amending patents subject to post-
 issuance review proceedings of the United States Patent and Trademark 
                    Office, 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.

    This Act may be cited as the ``Revitalizing Amendment Motions for 
Patents Act of 2018'' or the ``RAMP Act''.

SEC. 2. REFORM OF PATENT AMENDMENTS IN PTAB PROCEEDINGS.

    (a) Procedures for Motions To Amend.--Section 316(d) of title 35, 
United States Code, is amended by inserting at the end the following 
new paragraphs:
            ``(4) Procedures for motions to amend.--
                    ``(A) In general.--With respect to a motion to 
                amend filed under paragraph (1) or (2) that proposes 1 
                or more substitute claims--
                            ``(i) a substitute claim shall be construed 
                        according to its broadest reasonable 
                        interpretation for the purposes of determining 
                        the patentability of the substitute claim;
                            ``(ii) the petitioner shall be given a 
                        reasonable opportunity to respond to each 
                        substitute claim;
                            ``(iii) the Director shall assign an 
                        examiner to examine each proposed substitute 
                        claim (giving consideration to the evidence and 
                        the arguments presented by the parties) and to 
                        submit to the Patent Trial and Appeal Board an 
                        advisory report, which shall be non-binding, on 
                        the patentability of each such substitute 
                        claim; and
                            ``(iv) the Board shall consider such report 
                        in deciding the motion.
                    ``(B) Rule of construction.--Nothing in 
                subparagraph (A) may be construed as affecting the 
                provisions of subsection (a)(11).
                    ``(C) Matters not considered on appeal.--With 
                respect to an appeal described under section 319, a 
                party to the appeal may not challenge the decision of 
                the Patent Trial and Appeal Board regarding a motion to 
                amend under this paragraph on the basis of--
                            ``(i) the qualifications or expertise of 
                        the examiner assigned by the Director under 
                        subparagraph (A); or
                            ``(ii) any content of the report submitted 
                        pursuant to subparagraph (A) that was not 
                        expressly relied on by the Patent Trial and 
                        Appeal Board in such decision.
            ``(5) Expedited post-review reexamination.--
                    ``(A) Availability of expedited post-review 
                reexamination.--An owner of a patent may file a request 
                for an expedited post-review reexamination by the 
                Office of a challenged patent claim for which a final 
                written decision of the Patent Trial and Appeal Board 
                under section 318(a) was issued if the following 
                requirements are met:
                            ``(i) The challenged patent claim was 
                        determined to be unpatentable in such final 
                        written decision.
                            ``(ii) During the inter partes review for 
                        which such final written decision was issued, 
                        the owner of the patent filed a timely motion 
                        to amend the patent that proposed 1 or more 
                        substitute claims for the challenged patent 
                        claim.
                            ``(iii) The motion to amend was denied as 
                        to each substitute claim proposed for the 
                        challenged patent claim.
                            ``(iv) The request for the expedited post-
                        review reexamination of the challenged patent 
                        claim is made on the basis of the prior art 
                        asserted during such inter partes review 
                        against--
                                    ``(I) the challenged patent claim; 
                                or
                                    ``(II) a substitute claim proposed 
                                for the challenged claim.
                    ``(B) Procedures for request and conduct of 
                reexamination.--A request for expedited post-review 
                reexamination under this paragraph and the conduct of 
                such reexamination under this paragraph shall be 
                subject to section 302 and sections 304 through 307, 
                except that--
                            ``(i) the Director shall establish, by 
                        regulation, a time period (which may not exceed 
                        60 days) after the time for filing an appeal of 
                        a final written decision of the Patent Trial 
                        and Appeal Board under section 318(a) has 
                        expired, or after the final disposition of any 
                        such appeal, during which the owner of the 
                        patent may request an expedited post-review 
                        reexamination under this paragraph;
                            ``(ii) only the owner of the patent may 
                        file a request for an expedited post-review 
                        reexamination under this paragraph;
                            ``(iii) for the purposes of section 304, a 
                        determination that a substantial new question 
                        of unpatentability is raised shall be assumed, 
                        and not later than 14 days after a request for 
                        an expedited post-review reexamination is 
                        filed, the Director shall order the 
                        reexamination of the challenged patent claim 
                        identified in the request if the Director 
                        determines that the request meets the 
                        requirements of subparagraph (A);
                            ``(iv) the owner of the patent may not file 
                        a statement under section 304 and the 
                        reexamination shall begin immediately upon the 
                        order of the reexamination;
                            ``(v) in any expedited post-review 
                        reexamination proceeding under this paragraph, 
                        the owner of the patent may only propose 
                        amended or new claims that are patentably 
                        distinct from the challenged patent claim of 
                        which the expedited post-review reexamination 
                        was requested;
                            ``(vi) the full record of the inter partes 
                        review upon which the post-review reexamination 
                        was requested shall be made available for 
                        consideration during the reexamination; and
                            ``(vii) the reexamination (excluding any 
                        appeal thereof) shall be concluded on the date 
                        that is not later than 180 days after the date 
                        on which the Director orders the 
                        reexamination.''.
    (b) Patent Owner's Actions.--Section 315(b) of title 35, United 
States Code, is amended to read as follows:
    ``(b) Patent Owner's Actions.--
            ``(1) In general.--An inter partes review may not be 
        instituted if the petition requesting the proceeding is filed 
        more than 1 year after the date on which the petitioner, real 
        party in interest, or privy of the petitioner is served with a 
        complaint alleging infringement of the patent.
            ``(2) Exception for joinder.--The time limitation in 
        paragraph (1) shall not apply to a request for joinder under 
        subsection (c).
            ``(3) Exception for amended claims.--The time limitation in 
        paragraph (1) shall not apply to a challenge in a petition for 
        inter partes review against a patent claim that was amended 
        pursuant to section 316(d)(5) unless the complaint was served 
        after the issuance of a certificate under section 307(a) for 
        the patent claim.''.
    (c) Amendment to Procedures for Issuance of Certificate.--Section 
318(b) of title 35, United States Code, is amended--
            (1) by striking ``and the time for appeal'' and inserting 
        ``, the time for appeal''; and
            (2) by inserting ``and the time for filing a request under 
        section 316(d)(5)(A) has expired or any post-review 
        reexamination has been terminated,'' after ``terminated,''.

SEC. 3. CLARIFICATION OF WHICH CLAIMS FOR WHICH THE PTAB SHALL ISSUE A 
              FINAL WRITTEN DECISION.

    Section 318(a) of title 35, United States Code, is amended by 
striking ``challenged by the petitioner'' and inserting ``on which the 
inter partes review was instituted''.
                                 <all>