[Congressional Bills 117th Congress]
[From the U.S. Government Publishing Office]
[S. 4417 Introduced in Senate (IS)]
<DOC>
117th CONGRESS
2d Session
S. 4417
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
June 16, 2022
Mr. Leahy (for himself, Mr. Cornyn, and Mr. Tillis) 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 ``Patent Trial and Appeal Board Reform
Act of 2022''.
SEC. 2. PATENTS.
(a) In General.--Title 35, United States Code, is amended--
(1) in section 6--
(A) in subsection (a), by inserting after the third
sentence the following: ``Each member of the Patent
Trial and Appeal Board shall comply with the Code of
Conduct for United States Judges, including limitations
on ex parte communications, when performing the duties
enumerated in subsection (b).'';
(B) 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, including
changes that were made before the constitution
of the panel was made public, shall be noted in
the record.'';
(C) by redesignating subsection (d) as subsection
(e);
(D) by inserting after subsection (c) the
following:
``(d) Review by the Director.--
``(1) Opportunities for review.--
``(A) In general.--With respect to a decision of
the Patent Trial and Appeal Board--
``(i) the Director may, on the initiative
of the Director, review, and modify or set
aside, the decision;
``(ii) if the decision is issued under
section 318(a) or 328(a), a party to the
applicable inter partes or post-grant review
may request that the Director review, and
modify or set aside, the decision; and
``(iii) if the decision is issued under
section 314 or 324 under a delegation by the
Director, a party to the applicable inter
partes or post-grant review petition may
request that the Director review, and modify or
set aside, the decision.
``(B) Effect of request for review of determination
to institute review.--A request for review under
subparagraph (A)(iii) shall not be a basis to stay or
delay any proceeding.
``(2) Requirement.--
``(A) In general.--Any review by the Director under
paragraph (1) shall be issued in a separate written
opinion that--
``(i) is made part of the public record;
``(ii) sets forth the reasons for the
review, modification, or setting aside of the
decision of the Patent Trial and Appeal Board;
and
``(iii) may be designated as precedential,
and if it is designated as precedential, shall
be followed by future panels of the Patent
Trial and Appeal Board, unless and until the
opinion is--
``(I) rescinded; or
``(II) superseded by--
``(aa) regulation;
``(bb) a decision of the
Director that is designated as
precedential; or
``(cc) a decision of a
court.
``(B) Effect of precedential designation.--Nothing
in subparagraph (A)(iii) shall be construed to affect
the obligation of the Director to prescribe regulations
under section 316(a) or 326(a).
``(3) Timeline and bases for review.--Not later than 18
months after the date of enactment of the Patent Trial and
Appeal Board Reform Act of 2022, 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)--
``(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
clause (ii) or (iii) of paragraph (1)(A)--
``(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) Determination whether to review final decisions of
board.--Notwithstanding the bases for review promulgated under
paragraph (3), the determination whether to review a final
decision of the Patent Trial and Appeal Board under this
subsection is committed to the discretion of the Director.
``(5) Rule of construction.--For the purposes of an appeal
permitted under section 141, any decision on review of a final
written decision of the Patent Trial and Appeal Board under
section 318(a) or 328(a), that is issued by the Director under
this subsection, shall be deemed a final written decision of
the Patent Trial and Appeal Board.''; and
(E) in subsection (e), as so redesignated--
(i) in the first sentence--
(I) by striking ``of this
subsection'' and inserting ``of the
Patent Trial and Appeal Board Reform
Act of 2022'';
(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 Patent Trial
and Appeal Board Reform Act of 2022,
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 chapter 31--
(A) in section 314(d), by striking ``section'' and
inserting ``chapter'';
(B) in section 315--
(i) in subsection (b), by striking ``shall
not apply to a request for joinder under
subsection (c).'' and inserting the following:
``shall be subject to the following
limitations:
``(1) The time limitation shall not apply--
``(A) to a request for joinder under subsection
(c); or
``(B) if the complaint is dismissed without
prejudice.
``(2) 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, and any dependent claims depending from those
claims, may be instituted if the petition requesting the review
is filed not later than 1 year after the date on which the new
or amended claims are asserted against the petitioner, real
party in interest, or privy of the petitioner.'';
(ii) in subsection (c), by inserting ``a
request to join the inter partes review and''
before ``a petition under section 311'';
(iii) in subsection (d)--
(I) by striking ``Notwithstanding''
and inserting the following:
``(1) In general.--Notwithstanding''; and
(II) by striking ``before the
Office,'' and all that follows and
inserting the following: ``before the
Office--
``(A) the parties shall notify the Director;
``(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; and
``(C) a party may seek review of the decision by
way of petition to the Director.
``(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) Limit on repeated petitions.--The Director may not
authorize an inter partes review to be instituted if the
Director has previously instituted an inter partes review or
post-grant review that includes one or more of the same claims
based on a petition that was filed on a different day by the
same petitioner, or a real party in interest or privy of the
same petitioner.'';
(iv) in subsection (e)--
(I) in paragraph (2), by inserting
``that the claim is not unpatentable''
after ``decision under section
318(a)''; and
(II) by adding at the end the
following:
``(3) Applicability.--The prohibitions under this
subsection shall apply to the petitioner in an inter partes
review upon the issuance of the final written decision for that
review.''; and
(v) by adding at the end the following:
``(f) Institution Not To Be Denied Based on Parallel Proceedings.--
In deciding whether to institute an inter partes review proceeding, the
Director shall not in any respect consider an ongoing civil action or a
proceeding before the International Trade Commission under section 337
of the Tariff Act of 1930 (19 U.S.C. 1337), other than with respect
to--
``(1) the bars specified in subsections (a) and (b); or
``(2) the determination under section 314(a) that there is
a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the
petition.'';
(C) in section 316--
(i) in subsection (a)--
(I) in paragraph (5)--
(aa) in subparagraph (A),
by striking ``and'' at the end;
(bb) by redesignating
subparagraph (B) as
subparagraph (C); and
(cc) by inserting after
subparagraph (A) the following:
``(B) evidence identifying real parties in interest
of the petitioner who would be statutorily prohibited
from filing a petition under section 311; and'';
(II) in paragraph (6)--
(aa) by inserting after
``abuse of process,'' the
following: ``including a
petitioner deliberately
delaying or losing, or offering
to deliberately delay or lose,
an instituted proceeding in
exchange for consideration,'';
and
(bb) by inserting before
the semicolon at the end the
following: ``, which sanctions
shall be equally applicable to
petitioners and patent owners
and may include, among other
things--
``(A) shifting costs, expert witness fees, or
attorney fees;
``(B) referring counsel to the Office of Enrollment
and Discipline;
``(C) a bar preventing a party from filing certain
documents; and
``(D) a bar preventing a party from filing any
inter partes review or post-grant review petition for a
period of 1 year'';
(III) in paragraph (11), by
inserting ``or consolidation under
section 315(d)'' after ``under section
315(c)'';
(IV) in paragraph (12), by striking
``and'' at the end;
(V) in paragraph (13), by striking
the period at the end and inserting ``;
and''; and
(VI) by adding at the end the
following:
``(14) providing that for all purposes under this chapter--
``(A) each term in a challenged claim of a patent
shall be construed using the same claim construction
standard that would be used to construe the term in a
civil action under chapter 29; and
``(B) if a court has previously construed a term in
a civil action involving the patent under chapter 29,
the Office--
``(i) shall make that construction of
record in the proceeding; and
``(ii) shall consider but shall not be
bound by that construction.'';
(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
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), the burden of proving patentability,
including under sections 101, 102, 103, and 112, shall be the
same as in examination under section 131.'';
(D) 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.'';
(E) in section 319--
(i) by striking ``A party'' and inserting
the following:
``(a) In General.--A party''; and
(ii) by adding at the end the following:
``(b) Standing To Appeal.--For the purposes of an appeal described
in subsection (a), the right to appeal shall extend at least to any
dissatisfied party that reasonably expects that another person will
assert estoppel against the party under section 315(e) as a result of
the decision.
``(c) Timing on Remand After Appeal.--Not later than 120 days after
the date on which a mandate issues from the court remanding to the
Patent Trial and Appeal Board after an appeal under subsection (a), the
Board or the Director shall finally decide any issue on remand, except
that the Director may, for good cause shown, extend that 120-day period
by not more than 60 days.''; and
(F) by adding at the end the following:
``Sec. 320. Support for small and micro entities in inter partes review
and post-grant review
``(a) Covered Patent Defined.--In this section, the term `covered
patent' means a patent--
``(1) that is the subject of a petition for inter partes
review under chapter 31 or post-grant review under chapter 32;
``(2) whose owner at the time of the patent application
qualified for small entity or micro entity status;
``(3) whose owner, on the date on which the petition is
filed, would qualify for small entity or micro entity status if
that owner were to file a patent application;
``(4) whose owner has not asserted the patent in
litigation;
``(5) that has not been licensed to any other party that
would not qualify for small entity or micro entity status if
that party were to file a patent application; and
``(6) the owner or exclusive licensee of which makes or
uses the claimed invention in a commercial enterprise, or has
made substantial preparations to do so.
``(b) Expenses Covered.--
``(1) In general.--The Office shall pay to the owner of a
covered patent all of the reasonable expenses of the proceeding
actually incurred by the patent owner (and not expenses
incurred by a third party funding the proceeding), including
reasonable expert witness fees and reasonable attorney fees,
for defending the inter partes review or post-grant review.
``(2) Expenses included.--The expenses to be paid under
paragraph (1) shall include expenses of--
``(A) a preliminary response under section 313 or
323;
``(B) a response under section 316(a)(8) or
326(a)(8);
``(C) any discovery under section 316(a)(5) or
326(a)(5);
``(D) motions filed at the Patent Trial and Appeal
Board;
``(E) any requests for reconsideration, rehearing,
or review; and
``(F) any proceedings after a remand from the Court
of Appeals for the Federal Circuit.
``(3) Payment not dependent on outcome.--The Office shall
pay reasonable expenses under paragraph (1) regardless of the
outcome of the proceeding.
``(4) Expenses not included.--The expenses to be paid under
paragraph (1) shall not include expenses incurred--
``(A) in a proceeding at the Court of Appeals for
the Federal Circuit or any tribunal outside the Office;
or
``(B) in moving to amend any patent claim under--
``(i) subsection (a)(9), (d), or (e) of
section 316; or
``(ii) subsection (a)(9), (d), or (e) of
section 326.
``(c) Source of Funds.--The total estimated expenses paid to owners
of covered patents under this section--
``(1) shall be considered part of the aggregate costs under
section 311(a) or 321(a); and
``(2) shall be recovered through fees paid by
petitioners.''; and
(3) in chapter 32--
(A) in section 324(e), by striking ``section'' and
inserting ``chapter'';
(B) in section 325--
(i) in subsection (c), by inserting ``, the
petitioner files a request to join the post-
grant review,'' before ``and the Director'';
(ii) 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--
``(A) the parties shall notify the Director;
``(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; and
``(C) a party may seek review of the decision by
way of petition to the Director.
``(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) Limit on repeated petitions.--The Director shall not
authorize a post-grant review to be instituted if the Director
has previously instituted an inter partes review or post-grant
review that includes one or more of the same claims based on a
petition that was filed on a different day by the same
petitioner, or a real party in interest or privy of the same
petitioner.
``(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.'';
(iii) in subsection (e)--
(I) in paragraph (2), by inserting
``that the claim is not unpatentable''
after ``decision under section
328(a)''; and
(II) by adding at the end the
following:
``(3) Applicability.--The prohibitions under this
subsection shall apply to the petitioner in a post-grant review
upon the issuance of the final written decision for that
review.''; and
(iv) by adding at the end the following:
``(g) Institution Not To Be Denied Based on Parallel Proceedings.--
In deciding whether to institute a post-grant review proceeding, the
Director shall not in any respect consider an ongoing civil action or a
proceeding before the International Trade Commission under section 337
of the Tariff Act of 1930 (19 U.S.C. 1337), other than with respect to
the determination under section 324(a) that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1
of the claims challenged in the petition.'';
(C) in section 326--
(i) in subsection (a)--
(I) in paragraph (5)--
(aa) by striking ``shall be
limited to evidence'' and
inserting the following:
``shall be limited to--
``(A) evidence''; and
(bb) by adding at the end
the following: ``and
``(B) evidence identifying real parties in interest
of the petitioner who would be statutorily prohibited
from filing a petition under section 321;'';
(II) in paragraph (6)--
(aa) by inserting after
``abuse of process,'' the
following: ``including a
petitioner deliberately
delaying or losing, or offering
to deliberately delay or lose,
an instituted proceeding in
exchange for consideration,'';
and
(bb) by inserting before
the semicolon at the end the
following: ``, which sanctions
shall be equally applicable to
petitioners and patent owners
and may include, among other
things--
``(A) shifting costs, expert witness fees, or
attorney fees;
``(B) referring counsel to the Office of Enrollment
and Discipline;
``(C) a bar preventing a party from filing certain
documents; and
``(D) a bar preventing a party from filing any
inter partes review or post-grant review petition for a
period of 1 year'';
(III) in paragraph (11)--
(aa) by inserting ``or
consolidation under section
325(d)'' after ``under section
325(c)''; and
(bb) by striking ``and'' at
the end;
(IV) in paragraph (12), by striking
the period at the end and inserting ``;
and''; and
(V) by adding at the end the
following:
``(13) providing that for all purposes under this chapter--
``(A) each term in a challenged claim of a patent
shall be construed using the same claim construction
standard that would be used to construe the term in a
civil action under chapter 29; and
``(B) if a court has previously construed a term in
a civil action involving the patent under chapter 29,
the Office--
``(i) shall make that construction of
record in the proceeding; and
``(ii) shall consider but shall not be
bound by that construction.'';
(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
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), the burden of proving patentability,
including under sections 101, 102, 103, and 112, shall be the
same as in examination under section 131.'';
(D) 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
(E) in section 329--
(i) by striking ``A party'' and inserting
the following:
``(a) In General.--A party''; and
(ii) by adding at the end the following:
``(b) Standing To Appeal.--For the purposes of an appeal described
in subsection (a), the right to appeal shall extend at least to any
dissatisfied party that reasonably expects that another person will
assert estoppel against the party under section 325(e) as a result of
the decision.
``(c) Timing on Remand After Appeal.--Not later than 120 days after
the date on which a mandate issues from the court remanding to the
Patent Trial and Appeal Board after an appeal under subsection (a), the
Board or the Director shall finally decide any issue on remand, except
that the Director may, for good cause shown, extend that 120-day period
by not more than 60 days.''.
(b) Technical and Conforming Amendment.--The table of sections for
chapter 31 of title 35, United States Code, is amended by adding at the
end the following:
``320. Support for small and micro entities in inter partes review and
post-grant review.''.
<all>