[Congressional Bills 117th Congress]
[From the U.S. Government Publishing Office]
[S. 2891 Introduced in Senate (IS)]

<DOC>






117th CONGRESS
  1st Session
                                S. 2891

 To amend title 35, United States Code, to address matters relating to 
   the Patent Trial and Appeal Board of the United States Patent and 
               Trademark Office, and for other purposes.


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                           September 29, 2021

 Mr. Leahy (for himself and Mr. Cornyn) introduced the following bill; 
  which was read twice and referred to the Committee on the Judiciary

_______________________________________________________________________

                                 A BILL


 
 To amend title 35, United States Code, to address matters relating to 
   the Patent Trial and Appeal Board 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 ``Restoring the America Invents Act''.

SEC. 2. PATENTS.

    Title 35, United States Code, is amended--
            (1) in section 6--
                    (A) in subsection (c)--
                            (i) in the second sentence, by striking 
                        ``Only the'' and inserting ``The''; and
                            (ii) by adding at the end the following: 
                        ``After the constitution of a panel of the 
                        Patent Trial and Appeal Board under this 
                        subsection has been made public, any changes to 
                        the constitution of that panel shall be noted 
                        in the record.'';
                    (B) by redesignating subsection (d) as subsection 
                (e);
                    (C) by inserting after subsection (c) the 
                following:
    ``(d) Review by Director.--
            ``(1) In general.--With respect to a final decision of the 
        Patent Trial and Appeal Board--
                    ``(A) the Director may, on the initiative of the 
                Director, review, and modify or set aside, the 
                decision; and
                    ``(B) if the decision is issued under section 318 
                or 328, a party to the applicable inter partes or post-
                grant review may request that the Director review, and 
                modify or set aside, the decision.
            ``(2) Requirement.--Any review by the Director under 
        paragraph (1) shall be issued in a separate written opinion 
        that--
                    ``(A) is made part of the public record; and
                    ``(B) sets forth the reasons for the review, 
                modification, or setting aside of the final decision of 
                the Patent Trial and Appeal Board.
            ``(3) Timeline and bases for review.--Not later than 18 
        months after the date of enactment of the Restoring the America 
        Invents Act, the Director shall promulgate rules addressing the 
        following issues:
                    ``(A) With respect to review of a decision on the 
                initiative of the Director under paragraph (1)(A)--
                            ``(i) the timeline under which the Director 
                        may review the decision, which shall be 
                        consistent with the requirements under section 
                        318(e) or 328(e), if applicable; and
                            ``(ii) the bases on which the Director may 
                        review the decision.
                    ``(B) With respect to a request by a party under 
                paragraph (1)(B)--
                            ``(i) the timeline for submitting such a 
                        request;
                            ``(ii) the content that the party is 
                        required to include in such a request;
                            ``(iii) the bases on which the party may 
                        submit such a request; and
                            ``(iv) the timeline for any response or 
                        reply to such a request such that the request 
                        can be decided within the deadline imposed 
                        under section 318(e) or 328(e), as applicable.
            ``(4) Rule of construction.--For the purposes of an appeal 
        permitted under section 141, any decision on review issued by 
        the Director under this subsection shall be deemed a final 
        decision of the Patent Trial and Appeal Board.''; and
                    (D) in subsection (e), as so redesignated--
                            (i) in the first sentence--
                                    (I) by striking ``of this 
                                subsection'' and inserting ``of the 
                                Restoring the America Invents Act'';
                                    (II) by inserting ``or the 
                                Secretary'' after ``appointment by the 
                                Director''; and
                                    (III) by inserting ``or the 
                                Secretary, as applicable,'' after ``on 
                                which the Director''; and
                            (ii) in the second sentence--
                                    (I) by inserting ``, or, before the 
                                date of enactment of the Restoring the 
                                America Invents Act, having performed 
                                duties no longer performed by 
                                administrative patent judges,'' after 
                                ``by the Director''; and
                                    (II) by striking ``that the 
                                administrative patent judge so 
                                appointed'' and inserting ``that the 
                                applicable administrative patent 
                                judge'';
            (2) in section 302, in the first sentence, by inserting ``, 
        including a governmental entity,'' after ``A person'';
            (3) in chapter 31--
                    (A) in section 311--
                            (i) in subsection (a), in the first 
                        sentence, by inserting ``, including a 
                        governmental entity,'' after ``a person''; and
                            (ii) in subsection (b), by striking ``under 
                        section 102'' and all that follows through the 
                        period at the end and inserting the following: 
                        ``under--
            ``(1) section 102 or 103 and only on the basis of--
                    ``(A) prior art consisting of patents or printed 
                publications; or
                    ``(B) admissions in the patent specification, 
                drawings, or claims; or
            ``(2) statutory or obviousness-type double patenting on the 
        basis of--
                    ``(A) patents or printed publications; or
                    ``(B) admissions in the patent specification, 
                drawings, or claims.'';
                    (B) in section 314--
                            (i) in subsection (a), by striking ``The 
                        Director may not authorize an inter partes 
                        review to be instituted unless'' and inserting 
                        the following: ``Subject only to the discretion 
                        of the Director under section 325(d)(4), a 
                        petition that meets the requirements of this 
                        chapter shall be instituted if''; and
                            (ii) in subsection (d)--
                                    (I) by inserting ``or maintain'' 
                                after ``to institute''; and
                                    (II) by striking ``section'' and 
                                inserting ``chapter'';
                    (C) in section 315--
                            (i) in subsection (a)(1)--
                                    (I) by striking ``An inter partes'' 
                                and inserting the following:
                    ``(A) In general.--An inter partes''; and
                                    (II) by adding at the end the 
                                following:
                    ``(B) Rule of construction.--Subparagraph (A) may 
                not be construed to prevent an inter partes review from 
                being instituted if a complaint in a civil action 
                described in that subparagraph has been dismissed 
                without prejudice.'';
                            (ii) by striking subsection (b) and 
                        inserting the following:
    ``(b) Patent Owner's Action.--
            ``(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. The time 
        limitation set forth in the preceding sentence shall be subject 
        to the following limitations:
                    ``(A) The time limitation shall not apply--
                            ``(i) to a request for joinder under 
                        subsection (c); or
                            ``(ii) if the complaint is dismissed 
                        without prejudice.
                    ``(B) If new or amended claims issue from 
                reexamination after the petitioner, real party in 
                interest, or privy of the petitioner is served with the 
                complaint, an inter partes review of those claims may 
                be instituted if the petition requesting the review is 
                filed not later than 1 year after the date on which the 
                challenged claims are asserted in the action.
            ``(2) Request for stay.--
                    ``(A) In general.--If a party seeks a stay of a 
                civil action brought under section 281 alleging 
                infringement of a patent that is also subject to an 
                inter partes review, the court shall decide whether to 
                stay the civil action based on whether--
                            ``(i) the outcome of the inter partes 
                        review will likely simplify the issues in 
                        question in the civil action and streamline the 
                        proceedings in the civil action;
                            ``(ii) as of the date on which the stay is 
                        requested, discovery in the civil action is 
                        complete;
                            ``(iii) a stay, or the denial thereof, 
                        would--
                                    ``(I) unduly prejudice the 
                                nonmoving party; or
                                    ``(II) present a clear tactical 
                                advantage for the moving party; and
                            ``(iv) a stay, or the denial thereof, will 
                        reduce the burden of litigation on the parties 
                        to the civil action and the court.
                    ``(B) Review.--A party may take an immediate 
                interlocutory appeal from the decision of a district 
                court of the United States under subparagraph (A). The 
                United States Court of Appeals for the Federal Circuit 
                shall review the district court's decision to ensure 
                consistent application of established precedent, and 
                such review shall be de novo.'';
                            (iii) in subsection (c)--
                                    (I) by striking ``If the Director'' 
                                and inserting the following:
            ``(1) In general.--If the Director''; and
                                    (II) by adding at the end the 
                                following:
            ``(2) Estoppel.--Any person joined as a party to an inter 
        partes review, and any real party in interest or privy of such 
        person, shall be estopped under subsection (e) to the same 
        extent as if that person, real party in interest, or privy had 
        been the first petitioner in that inter partes review.'';
                            (iv) by striking subsection (d) and 
                        inserting the following:
    ``(d) Multiple Proceedings.--
            ``(1) In general.--Notwithstanding sections 135(a), 251, 
        and 252, and chapter 30, during the pendency of an inter partes 
        review, if another proceeding or matter involving the patent is 
        before the Office, or if there is a pending application 
        claiming the benefit of a common filing date to the patent 
        under section 120 or 121--
                    ``(A) the parties shall notify the Director; and
                    ``(B) the Director shall issue a decision 
                determining the manner in which the other proceeding or 
                matter may proceed, including providing for stay, 
                transfer, consolidation, or termination of any such 
                proceeding or matter.
            ``(2) No extension.--A decision of the Director under 
        paragraph (1)(B) may not--
                    ``(A) extend any statutory deadline under this 
                chapter; or
                    ``(B) terminate an inter partes proceeding in favor 
                of an ex parte proceeding.
            ``(3) Presumption.--For the purposes of this subsection, if 
        the multiple proceedings described in paragraph (1) are of like 
        type and are filed reasonably close in time, there shall be a 
        rebuttable presumption that the Director shall consolidate the 
        proceedings under that paragraph.''; and
                            (v) in subsection (e)--
                                    (I) in paragraph (1)--
                                            (aa) by striking ``The 
                                        petitioner in'' and inserting 
                                        the following:
                    ``(A) Estoppel against petitioner.--The petitioner 
                in'';
                                            (bb) in subparagraph (A), 
                                        as so designated, by inserting 
                                        ``, after the time for appeal 
                                        of the decision has expired or 
                                        any such appeal has 
                                        terminated,'' after ``may 
                                        not''; and
                                            (cc) by adding at the end 
                                        the following:
                    ``(B) Estoppel against patent owner.--The Office 
                may not issue to a patent owner any claim that is not 
                patentably distinct from a claim that was issued and 
                was subsequently--
                            ``(i) found to be unpatentable; or
                            ``(ii) canceled in any proceeding before 
                        the Office, including under section 135, 251, 
                        253, 301, 311, or 321.''; and
                                    (II) in paragraph (2)--
                                            (aa) by inserting ``that 
                                        the claim is not unpatentable'' 
                                        after ``section 318(a)'';
                                            (bb) by inserting ``, after 
                                        the time for appeal of the 
                                        decision has expired or any 
                                        such appeal has terminated,'' 
                                        after ``may not''; and
                                            (cc) by inserting ``or 
                                        1498'' after ``section 1338'';
                    (D) in section 316--
                            (i) in subsection (a)(11), by inserting 
                        ``or consolidation under section 315(d)'' after 
                        ``under section 315(c)'';
                            (ii) in subsection (c)--
                                    (I) by striking ``The Patent'' and 
                                inserting the following:
            ``(1) In general.--The Patent''; and
                                    (II) by adding at the end the 
                                following:
            ``(2) Ex parte communication.--An officer who has review 
        authority, supervisory authority, or disciplinary authority 
        with respect to an administrative patent judge of the Patent 
        Trial and Appeal Board (or a delegate of such an officer), and 
        who is not a member of a panel described in section 6(c), shall 
        refrain from ex parte communication with such a judge who is a 
        member of that panel concerning any pending matter before that 
        panel, except as allowed under the Code of Conduct for United 
        States Judges.''; and
                            (iii) in subsection (e)--
                                    (I) by striking ``In an'' and 
                                inserting the following:
            ``(1) In general.--In an'';
                                    (II) in paragraph (1), as so 
                                designated, by inserting ``of 
                                challenged patent claims'' after 
                                ``unpatentability''; and
                                    (III) by adding at the end the 
                                following:
            ``(2) Claim amendment.--For any substitute claim proposed 
        under subsection (d)--
                    ``(A) the patent owner shall have the burden of 
                proving patentability, including under sections 101, 
                102, 103, and 112, by a preponderance of the evidence;
                    ``(B) the Patent Trial and Appeal Board shall--
                            ``(i) examine the substitute claim; or
                            ``(ii) notwithstanding subsection (c)(2), 
                        refer the substitute claim to the Director, who 
                        shall cause an examination of the substitute 
                        claim to be made within the time limits for the 
                        applicable inter partes review; and
                    ``(C) the Director may establish, by regulation, 
                fees for examination of the substitute claim in such 
                amounts as the Director determines to be reasonable, 
                taking into consideration the aggregate costs of 
                examination.'';
                    (E) in section 318--
                            (i) in subsection (b), by inserting ``, not 
                        later than 60 days after the date on which the 
                        parties to the inter partes review have 
                        informed the Director that the time for appeal 
                        has expired or any appeal has terminated,'' 
                        after ``the Director shall''; and
                            (ii) by adding at the end the following:
    ``(e) Rehearing.--Not later than 120 days after the date on which 
the Patent Trial and Appeal Board issues a final written decision under 
subsection (a), the Board or the Director shall finally decide any 
request for reconsideration, rehearing, or review that is submitted 
with respect to the decision, except that the Director may, for good 
cause shown, extend that 120-day period by not more than 60 days.''; 
and
                    (F) in section 319--
                            (i) in the first sentence, by striking ``A 
                        party'' and inserting the following:
    ``(a) In General.--A party''; and
                            (ii) by adding at the end the following:
    ``(b) Standing.--
            ``(1) Injury in fact.--For the purposes of an appeal 
        described in subsection (a), injury in fact shall be presumed 
        if the party appealing the decision--
                    ``(A) reasonably expects that another person will 
                assert estoppel against the party under section 315(e) 
                as a result of the final written decision that is the 
                subject of the appeal; or
                    ``(B) suffers any other concrete and particularized 
                injury that--
                            ``(i) is fairly traceable to the final 
                        written decision that is the subject of the 
                        appeal; and
                            ``(ii) could be redressed through appellate 
                        review.
            ``(2) Estoppel.--If a court finds that a party lacks 
        standing to bring an appeal described in subsection (a) under 
        article III of the Constitution of the United States, that 
        party shall not be estopped under section 315(e) with respect 
        to the underlying inter partes review.''; and
            (4) in chapter 32--
                    (A) in section 321(a), by inserting ``, including a 
                governmental entity,'' after ``a person'';
                    (B) in section 324--
                            (i) in subsection (a), by striking ``The 
                        Director may not authorize a post-grant review 
                        to be instituted unless'' and inserting the 
                        following: ``Subject only to the discretion of 
                        the Director under section 325(d)(4), a 
                        petition filed under section 321 that meets the 
                        requirements of this chapter shall be 
                        instituted if''; and
                            (ii) in subsection (e)--
                                    (I) by inserting ``or maintain'' 
                                after ``to institute''; and
                                    (II) by striking ``section'' and 
                                inserting ``chapter'';
                    (C) in section 325--
                            (i) in subsection (a)--
                                    (I) in the subsection heading, by 
                                striking ``Infringer's Civil Action'' 
                                and inserting ``Civil Action''; and
                                    (II) by adding at the end the 
                                following:
            ``(4) Request for stay.--
                    ``(A) In general.--If a party seeks a stay of a 
                civil action brought under section 281 alleging 
                infringement of a patent that is also subject to a 
                post-grant review, the court shall decide whether to 
                stay the civil action based on whether--
                            ``(i) the outcome of the post-grant review 
                        will likely simplify the issues in question in 
                        the civil action and streamline the proceedings 
                        in the civil action;
                            ``(ii) as of the date on which the stay is 
                        requested, discovery in the civil action is 
                        complete;
                            ``(iii) a stay, or the denial thereof, 
                        would--
                                    ``(I) unduly prejudice the 
                                nonmoving party; or
                                    ``(II) present a clear tactical 
                                advantage for the moving party; and
                            ``(iv) a stay, or the denial thereof, will 
                        reduce the burden of litigation on the parties 
                        to the civil action and the court.
                    ``(B) Review.--A party may take an immediate 
                interlocutory appeal from the decision of a district 
                court of the United States under subparagraph (A). The 
                United States Court of Appeals for the Federal Circuit 
                shall review the district court's decision to ensure 
                consistent application of established precedent, and 
                such review shall be de novo.'';
                            (ii) in subsection (c)--
                                    (I) by striking ``If more'' and 
                                inserting the following:
            ``(1) In general.--If more''; and
                                    (II) by adding at the end the 
                                following:
            ``(2) Estoppel.--Any person joined as a party to a post-
        grant review, and any real party in interest or privy of such 
        person, shall be estopped under subsection (e) to the same 
        extent as if that person, real party in interest, or privy had 
        been the first petitioner in that post-grant review.'';
                            (iii) by striking subsection (d) and 
                        inserting the following:
    ``(d) Multiple Proceedings.--
            ``(1) In general.--Notwithstanding sections 135(a), 251, 
        and 252, and chapter 30, during the pendency of any post-grant 
        review under this chapter, if another proceeding or matter 
        involving the patent is before the Office, or if there is a 
        pending application claiming the benefit of a common filing 
        date to the patent under section 120 or 121--
                    ``(A) the parties shall notify the Director; and
                    ``(B) the Director shall issue a decision 
                determining the manner in which the other proceeding or 
                matter may proceed, including providing for stay, 
                transfer, consolidation, or termination of any such 
                proceeding or matter.
            ``(2) No extension.--A decision of the Director under 
        paragraph (1)(B) may not--
                    ``(A) extend any statutory deadline under this 
                chapter; or
                    ``(B) terminate an inter partes proceeding in favor 
                of an ex parte proceeding.
            ``(3) Presumption.--For the purposes of this subsection, if 
        the multiple proceedings described in paragraph (1) are of like 
        type and are filed reasonably close in time, there shall be a 
        rebuttable presumption that the Director shall consolidate the 
        proceedings under that paragraph.
            ``(4) Considerations.--In determining whether to institute 
        or order a proceeding under this chapter, chapter 30, or 
        chapter 31, the Director may take into account whether, and 
        reject the petition or request because, the same or 
        substantially the same prior art or arguments previously were 
        presented to the Office.''; and
                            (iv) in subsection (e)--
                                    (I) in paragraph (1)--
                                            (aa) by striking ``The 
                                        petitioner in'' and inserting 
                                        the following:
                    ``(A) Estoppel against petitioner.--The petitioner 
                in'';
                                            (bb) in subparagraph (A), 
                                        as so designated, by inserting 
                                        ``, after the time for appeal 
                                        of the decision has expired or 
                                        any such appeal has 
                                        terminated,'' after ``may 
                                        not''; and
                                            (cc) by adding at the end 
                                        the following:
                    ``(B) Estoppel against patent owner.--The Office 
                may not issue to a patent owner any claim that is not 
                patentably distinct from a claim that was issued and 
                was subsequently--
                            ``(i) found to be unpatentable; or
                            ``(ii) canceled in any proceeding before 
                        the Office, including under section 135, 251, 
                        253, 301, 311, or 321.''; and
                                    (II) in paragraph (2)--
                                            (aa) by inserting ``that 
                                        the claim is not unpatentable'' 
                                        after ``section 328(a)'';
                                            (bb) by inserting ``, after 
                                        the time for appeal of the 
                                        decision has expired or any 
                                        such appeal has terminated,'' 
                                        after ``may not''; and
                                            (cc) by inserting ``or 
                                        1498'' after ``section 1338'';
                    (D) in section 326--
                            (i) in subsection (a)(11), by inserting 
                        ``or consolidation under section 325(d)'' after 
                        ``under section 325(c)'';
                            (ii) in subsection (c)--
                                    (I) by striking ``The Patent'' and 
                                inserting the following:
            ``(1) In general.--The Patent''; and
                                    (II) by adding at the end the 
                                following:
            ``(2) Ex parte communication.--An officer who has review 
        authority, supervisory authority, or disciplinary authority 
        with respect to an administrative patent judge of the Patent 
        Trial and Appeal Board (or a delegate of such an officer), and 
        who is not a member of a panel described in section 6(c), shall 
        refrain from ex parte communication with such a judge who is a 
        member of that panel concerning any pending matter before that 
        panel, except as allowed under the Code of Conduct for United 
        States Judges.''; and
                            (iii) in subsection (e)--
                                    (I) by striking ``In a'' and 
                                inserting the following:
            ``(1) In general.--In a'';
                                    (II) in paragraph (1), as so 
                                designated, by inserting ``of 
                                challenged patent claims'' after 
                                ``unpatentability''; and
                                    (III) by adding at the end the 
                                following:
            ``(2) Claim amendment.--For any substitute claim proposed 
        under subsection (d)--
                    ``(A) the patent owner shall have the burden of 
                proving patentability, including under sections 101, 
                102, 103, and 112, by a preponderance of the evidence;
                    ``(B) the Patent Trial and Appeal Board shall--
                            ``(i) examine the substitute claim; or
                            ``(ii) notwithstanding subsection (c)(2), 
                        refer the substitute claim to the Director, who 
                        shall cause an examination of the substitute 
                        claim to be made within the time limits for the 
                        applicable inter partes review; and
                    ``(C) the Director may establish, by regulation, 
                fees for examination of the substitute claim in such 
                amounts as the Director determines to be reasonable, 
                taking into consideration the aggregate costs of 
                examination.'';
                    (E) in section 328--
                            (i) in subsection (b), by inserting ``not 
                        later than 60 days after the date on which the 
                        parties to the post-grant review have informed 
                        the Director that the time for appeal has 
                        expired or any appeal has terminated,'' after 
                        ``the Director shall''; and
                            (ii) by adding at the end the following:
    ``(e) Rehearing.--Not later than 120 days after the date on which 
the Patent Trial and Appeal Board issues a final written decision under 
subsection (a), the Board or the Director shall finally decide any 
request for reconsideration, rehearing, or review that is submitted 
with respect to the decision, except that the Director may, for good 
cause shown, extend that 120-day period by not more than 60 days.''; 
and
                    (F) in section 329--
                            (i) in the first sentence, by striking ``A 
                        party'' and inserting the following:
    ``(a) In General.--A party''; and
                            (ii) by adding at the end the following:
    ``(b) Standing.--
            ``(1) Injury in fact.--For the purposes of an appeal 
        described in subsection (a), injury in fact shall be presumed 
        if the party appealing the decision--
                    ``(A) reasonably expects that another person will 
                assert estoppel against the party under section 325(e) 
                as a result of the final written decision that is the 
                subject of the appeal; or
                    ``(B) suffers any other concrete and particularized 
                injury that--
                            ``(i) is fairly traceable to the final 
                        written decision that is the subject of the 
                        appeal; and
                            ``(ii) could be redressed through appellate 
                        review.
            ``(2) Estoppel.--If a court finds that a party lacks 
        standing to bring an appeal described in subsection (a) under 
        article III of the Constitution of the United States, that 
        party shall not be estopped under section 325(e) with respect 
        to the underlying post-grant review.''.
                                 <all>