[House Report 113-283]
[From the U.S. Government Publishing Office]


113th Congress                                                  Report
 1st Session      }   HOUSE OF REPRESENTATIVES  {              113-283
======================================================================

 
PROVIDING FOR CONSIDERATION OF THE BILL (H.R. 3309) TO AMEND TITLE 35, 
  UNITED STATES CODE, AND THE LEAHY-SMITH AMERICA INVENTS ACT TO MAKE 
  IMPROVEMENTS AND TECHNICAL CORRECTIONS, AND FOR OTHER PURPOSES; AND 
   PROVIDING FOR CONSIDERATION OF THE BILL (H.R. 1105) TO AMEND THE 
INVESTMENT ADVISERS ACT OF 1940 TO PROVIDE A REGISTRATION EXEMPTION FOR 
          PRIVATE EQUITY FUND ADVISERS, AND FOR OTHER PURPOSES

                                _______
                                

  December 3, 2013.--Referred to the House Calendar and ordered to be 
                                printed

                                _______
                                

               Mr. Nugent, from the Committee on Rules, 
                        submitted the following

                              R E P O R T

                       [To accompany H. Res. 429]

    The Committee on Rules, having had under consideration 
House Resolution 429, by a vote of 8 to 3, report the same to 
the House with the recommendation that the resolution be 
adopted.

                SUMMARY OF PROVISIONS OF THE RESOLUTION

    The resolution provides for consideration of H.R. 3309, the 
Innovation Act, under a structured rule. The resolution 
provides one hour of general debate equally divided and 
controlled by the chair and ranking minority member of the 
Committee on the Judiciary. The resolution waives all points of 
order against consideration of the bill. The resolution makes 
in order as original text for purpose of amendment an amendment 
in the nature of a substitute consisting of the text of Rules 
Committee Print 113-28 and provides that it shall be considered 
as read. The resolution waives all points of order against that 
amendment in the nature of a substitute. The resolution makes 
in order only those further amendments printed in part A of 
this report. Each such amendment may be offered only in the 
order printed in this report, may be offered only by a Member 
designated in this report, shall be considered as read, shall 
be debatable for the time specified in this report equally 
divided and controlled by the proponent and an opponent, shall 
not be subject to amendment, and shall not be subject to a 
demand for division of the question in the House or in the 
Committee of the Whole. The resolution waives all points of 
order against the amendments printed in part A of this report. 
The rule provides one motion to recommit with or without 
instructions.
    The resolution also provides for consideration of H.R. 
1105, the Small Business Capital Access and Job Preservation 
Act, under a structured rule. The resolution provides one hour 
of debate equally divided and controlled by the chair and 
ranking minority member of the Committee on Financial Services. 
The resolution waives all points of order against consideration 
of the bill. The resolution provides that an amendment in the 
nature of a substitute consisting of the text of Rules 
Committee Print 113-29 shall be considered as adopted and the 
bill, as amended, shall be considered as read. The resolution 
waives all points of order against provisions in the bill, as 
amended. The resolution makes in order only the further 
amendment printed in part B of this report if offered by 
Representative Maloney of New York or her designee. The 
amendment shall be considered as read, shall be separately 
debatable for 10 minutes equally divided and controlled by the 
proponent and an opponent, shall not be subject to amendment, 
and shall not be subject to a demand for division of the 
question. The resolution waives all points of order against the 
amendment printed in part B of this report. The resolution 
provides one motion to recommit with or without instructions.

                         EXPLANATION OF WAIVERS

    Although the resolution waives all points of order against 
consideration of H.R. 3309, the Committee is not aware of any 
points of order. The waiver is prophylactic in nature.
    Although the resolution waives all points of order against 
the amendment in the nature of a substitute to H.R. 3309 made 
in order as original text, the Committee is not aware of any 
points of order. The waiver is prophylactic in nature.
    Although the resolution waives all points of order against 
the amendments to H.R. 3309 printed in Part A of this report, 
the Committee is not aware of any points of order. The waiver 
is prophylactic in nature.
    Although the resolution waives all points of order against 
consideration of H.R. 1105, the Committee is not aware of any 
points of order. The waiver is prophylactic in nature.
    Although the resolution waives all points of order against 
provisions in H.R. 1105, as amended, the Committee is not aware 
of any points of order. The waiver is prophylactic in nature.
    Although the resolution waives all points of order against 
the amendment to H.R. 1105 printed in Part B of this report, 
the Committee is not aware of any points of order. The waiver 
is prophylactic in nature.

                            COMMITTEE VOTES

    The results of each record vote on an amendment or motion 
to report, together with the names of those voting for and 
against, are printed below:

Rules Committee record vote No. 92

    Motion by Ms. Slaughter to make in order and provide the 
appropriate waivers for amendments to H.R. 3309: amendments #10 
by Rep. Jeffries (NY), which would create pleading parity 
between plaintiffs and defendants; amendment #23 by Rep. 
Perlmutter (CO), which delays subsection (a), (b), and (c) of 
section 6 until December 1st, 2015 to conform Congressional 
review of the Federal Rules of Civil Procedure in accordance 
with 28 U.S.C. 2074; amendment #14 by Rep. Conyers Jr. (MI) and 
Rep. Watt (NC), which ensures that the PTO retains all of the 
user fees it collects; amendment #11 by Rep. Jeffries (NY), 
which leaves intact a patent applicant's ability to challenge 
the USPTO's denial of a patent in district court; and amendment 
#2 by Rep. Johnson (GA) and Rep. Conyers Jr. (MI), which 
strikes section 6 of the bill, which would require the Judicial 
Conference to promulgate certain rules and procedures. 
Defeated: 3-8.

----------------------------------------------------------------------------------------------------------------
                Majority Members                      Vote               Minority Members               Vote
----------------------------------------------------------------------------------------------------------------
Ms. Foxx........................................          Nay   Ms. Slaughter.....................          Yea
Mr. Bishop of Utah..............................  ............  Mr. McGovern......................          Yea
Mr. Cole........................................          Nay   Mr. Hastings of Florida...........  ............
Mr. Woodall.....................................          Nay   Mr. Polis.........................          Yea
Mr. Nugent......................................          Nay
Mr. Webster.....................................          Nay
Ms. Ros-Lehtinen................................          Nay
Mr. Burgess.....................................          Nay
Mr. Sessions, Chairman..........................          Nay
----------------------------------------------------------------------------------------------------------------

Rules Committee record vote No. 93

    Motion by Ms. Foxx to report the rule. Adopted: 8-3.

----------------------------------------------------------------------------------------------------------------
                Majority Members                      Vote               Minority Members               Vote
----------------------------------------------------------------------------------------------------------------
Ms. Foxx........................................          Yea   Ms. Slaughter.....................          Nay
Mr. Bishop of Utah..............................  ............  Mr. McGovern......................          Nay
Mr. Cole........................................          Yea   Mr. Hastings of Florida...........  ............
Mr. Woodall.....................................          Yea   Mr. Polis.........................          Nay
Mr. Nugent......................................          Yea
Mr. Webster.....................................          Yea
Ms. Ros-Lehtinen................................          Yea
Mr. Burgess.....................................          Yea
Mr. Sessions, Chairman..........................          Yea
----------------------------------------------------------------------------------------------------------------

     SUMMARY OF THE AMENDMENTS TO H.R. 3309 IN PART A MADE IN ORDER

    1. Goodlatte (VA): MANAGERS Makes a few technical and 
clarifying changes. Specifically, under Section 3(d), it 
clarifies that the exception in paragraph one applies to 
biosimilars, it also adds an exception for actions seeking 
relief based on competitive harm, and ensures that the 
provision is not subject to reverse gamesmanship. Under Section 
6(d) it makes clarifying changes that ensure that foreign 
courts cannot terminate licenses to US IP. Extends time 
required by the agencies to complete the various studies and 
reports required in the bill. (10 minutes)
    2. Watt (NC): Brings the fee shifting provision in the 
underlying bill more closely aligned with the Equal Access to 
Justice Act. Allows a judge to consider dilatory or other 
abusive tactics by the prevailing party in determining whether 
to reduce or deny a fee award. (10 minutes)
    3. Polis (CO): Requires claimants to provide additional 
disclosure information in any pre-suit notification to 
establish a willful infringement claim. (10 minutes)
    4. Massie (KY): Strikes section 5, the ``Customer-suit 
exception'' provision. (10 minutes)
    5. Jackson Lee (TX): Expands covered customer definition to 
all small businesses so long as their annual revenue does not 
exceed $25 million. (10 minutes)
    6. Jackson Lee (TX): Requires the Director to conduct a 
study regarding the economic impact of the changes in current 
law resulting from Sections 3, 4, and 5 of the bill on the 
ability of individuals and small businesses owned by women, 
veterans, and minorities to assert, secure, and vindicate their 
constitutionally guaranteed exclusive right to their inventions 
and discoveries. (10 minutes)
    7. Rohrabacher (CA): Strikes 9(a) from the bill and reorder 
the remaining subsections of Section 9. (10 minutes)
    8. Conyers (MI), Watt (NC) SUBSTITUTE: Promotes 
transparency in patent ownership; protects customers who are 
targeted in infringement suits; directs the PTO to develop 
educational resources for small businesses; instructs the PTO 
and others to prepare reports on several issues including the 
use of deceptive demand letters. (20 minutes)

     SUMMARY OF THE AMENDMENT TO H.R. 1105 IN PART B MADE IN ORDER

    1. Maloney, Carolyn (NY): Requires private equity fund 
advisers to register with the SEC, but directs the SEC to 
create a simplified registration and disclosure regime for 
small private equity fund advisers. (10 minutes)

                PART A--TEXT OF AMENDMENTS MADE IN ORDER

 1. An Amendment To Be Offered by Representative Goodlatte of Virginia 
               or His Designee, Debatable for 10 Minutes

  Page 12, line 3, strike ``subsection (b)'' and insert 
``subsections (b) and (c)''.
  Page 12, strike lines 14 through 25 and insert the following:
          ``(1) Timely resolution of actions.--In the case of 
        an action under any provision of Federal law (including 
        an action that includes a claim for relief arising 
        under section 271(e)), for which resolution within a 
        specified period of time of a civil action arising 
        under any Act of Congress relating to patents will 
        necessarily affect the rights of a party with respect 
        to the patent, the court shall permit discovery, in 
        addition to the discovery authorized under subsection 
        (a), before the ruling described in subsection (a) is 
        issued as necessary to ensure timely resolution of the 
        action.''.
  Page 13, insert after line 13 the following:
          ``(4) Actions seeking relief based on competitive 
        harm.--The limitation on discovery provided under 
        subsection (a) shall not apply to an action seeking a 
        preliminary injunction to redress harm arising from the 
        use, sale, or offer for sale of any allegedly 
        infringing instrumentality that competes with a product 
        sold or offered for sale, or a process used in 
        manufacture, by a party alleging infringement.
  ``(c) Exclusion From Discovery Limitation.--The parties may 
voluntarily consent to be excluded, in whole or in part, from 
the limitation on discovery provided under subsection (a) if at 
least one plaintiff and one defendant enter into a signed 
stipulation, to be filed with and signed by the court. With 
regard to any discovery excluded from the requirements of 
subsection (a) under the signed stipulation, with respect to 
such parties, such discovery shall proceed according to the 
Federal Rules of Civil Procedure.''.
  Page 35, strike line 16 and all that follows through page 36, 
line 3, and insert the following:
          (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).''.
  Page 38, line 1, strike ``ombudsman'' and insert 
``outreach''.
  Page 38, strike line 2 and all that follows through 
``programs'' on line 6 and insert ``The existing small business 
patent outreach programs''.
  Page 38, lines 8 and 9, strike ``to provide'' and insert 
``shall provide''.
  Page 40, line 13, strike ``1 year'' and insert ``18 months''.
  Page 41, lines 20 and 21, strike ``6 months'' and insert ``1 
year''.
  Page 42, line 6, strike ``shall conduct a study'' and insert 
``shall, using existing resources, conduct a study''.
  Page 43, lines 9 and 10, strike ``6 months'' and insert ``1 
year''.
  Page 44, line 3, strike ``courts'' and insert ``procedures''.
  Page 44, strike lines 8 through 13 and insert the following:
                          (i) the necessary criteria for using 
                        small claims procedures;
  Page 44, line 14, strike ``(iii)'' and insert ``(ii)''.
  Page 44, line 17, strike ``(iv)'' and insert ``(iii)''.
  Page 44, line 18, strike ``courts'' and insert ``procedures 
used''.
  Page 45, lines 7 and 8, strike ``shall conduct a study'' and 
insert ``shall, using existing resources, conduct a study''.
  Page 46, line 4, strike ``shall conduct a study'' and insert 
``shall, using existing resources, conduct a study''.
  Page 46, lines 13 and 14, strike ``6 months'' and insert ``1 
year''.
   Page 52, line 5, strike ``name the same inventor'' and 
insert ``name the same individual or individuals as the 
inventor''.
  Page 53, line 11, after ``double-patenting ground'' insert 
``based on a patent described in section 3(n)(1) of the Leahy-
Smith America Invents Act (35 U.S.C. 100 note)''.
  Page 53, lines 13-14, after ``shall take effect'' insert 
``upon the expiration of the 1-year period beginning''.
  Page 55, line 10, strike ``or patent''.
  Page 57, strike lines 4 through 13 and insert the following:
                  (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''.
  Page 57, line 14, strike ``amendments'' and insert 
``amendment''.
  Page 59, lines 9 and 10, strike ``2 years'' and insert ``18 
months''.
                              ----------                              


2. An Amendment To Be Offered by Representative Watt of North Carolina 
               or His Designee, Debatable for 10 Minutes

  Page 5, insert the following after line 23 and redesignate 
succeeding subsections, and references thereto, accordingly:
  ``(b) Reduction or Denial of Awards.--The court, in its 
discretion, may reduce the amount to be awarded under 
subsection (a), or deny an award, to the extent that the 
prevailing party during the course of the proceedings engaged 
in conduct that unduly and unreasonably protracted the final 
resolution of the matter in controversy.
                              ----------                              


 3. An Amendment To Be Offered by Representative Polis of Colorado or 
                 His Designee, Debatable for 10 Minutes

  Page 14, line 20, insert after ``accused,'' the following: 
``identifies the ultimate parent entity of the claimant,''.
                              ----------                              


 4. An Amendment To Be Offered by Representative Massie of Kentucky or 
                 His Designee, Debatable for 10 Minutes

  Strike section 5, redesignate subsequent sections, and amend 
the table of contents accordingly.
                              ----------                              


5. An Amendment To Be Offered by Representative Jackson Lee of Texas or 
                 Her Designee, Debatable for 10 Minutes

  Page 24, strike lines 7 through 10 and insert the following:
          ``(1) Covered customer.--The term `covered customer' 
        means a party that--
                  ``(A) is accused of infringing a patent or 
                patents in dispute based on a covered product 
                or process; and
                  ``(B) is a small business concern as defined 
                under section 3 of the Small Business Act (15 
                U.S.C. 632) that has an annual revenue of 
                $25,000,000 or less.''.
                              ----------                              


6. An Amendment To Be Offered by Representative Jackson Lee of Texas or 
                 Her Designee, Debatable for 10 Minutes

  Page 46, after line 22, insert the following:
  (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).
                              ----------                              


    7. An Amendment To Be Offered by Representative Rohrabacher of 
          California or His Designee, Debatable for 10 Minutes

  Page 47, strike line 3 and all that follows through page 48, 
line 20, and redesignate succeeding subsections, and references 
thereto, accordingly.
                              ----------                              


8. An Amendment To Be Offered by Representative Conyers Jr. of Michigan 
               or His Designee, Debatable for 20 Minutes

  Strike all after the enacting clause and insert the 
following:

SECTION 1. SHORT TITLE; TABLE OF CONTENTS.

  (a) Short Title.--This Act may be cited as the ``Deceptive 
Patent Practices Reduction 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. Transparency of patent ownership.
Sec. 4. Customer stay.
Sec. 5. Small business education, outreach, and information access.
Sec. 6. Codification of the double-patenting doctrine for first-
          inventor-to-file patents.
Sec. 7. Technical corrections to the Leahy-Smith America Invents Act.
Sec. 8. Reports.
Sec. 9. 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. TRANSPARENCY OF PATENT OWNERSHIP.

  (a) Judicial Proceedings.--
          (1) In general.--Section 281 of title 35, United 
        States Code, is amended--
                  (A) by striking ``A patentee'' and inserting 
                ``(a) In General.--A patentee''; and
                  (B) by adding at the end the following:
  ``(b) Initial Disclosure.--A patentee who has filed a civil 
action under subsection (a) is required to disclose to the 
court and to all adverse parties, any persons, associations of 
persons, firms, partnerships, corporations (including parent 
corporations), or other entities other than the patentee itself 
known by the patentee to have--
          ``(1) a financial interest (of any kind) in the 
        subject matter in controversy or in a party to the 
        proceeding; or
          ``(2) any other kind of interest that could be 
        substantially affected by the outcome of the 
        proceeding.
  ``(c) Enforcement.--The court may enforce the requirement 
under subsection (b) upon a motion by an opposing party or sua 
sponte.
  ``(d) Definitions.--For purposes of this section, the terms 
`proceeding' and `financial interest' have the meaning given 
those terms in section 455(d) of title 28.''.
          (2) Technical and conforming amendment.--Section 290 
        of title 35, United States Code, is amended in the 
        first sentence by inserting after ``inventor,'' the 
        following: ``any information that a patentee has 
        publicly disclosed under section 281(b),''.
  (b) Patent and Trademark Office Proceedings.--
          (1) In general.--Chapter 26 of title 35, United 
        States Code, is amended by adding at the end the 
        following:

``Sec. 263. Disclosure of information relating to patent ownership

  ``(a) Definitions.--In this section--
          ``(1) the term `period of noncompliance' refers to a 
        period of time during which the ultimate parent entity 
        of an assignee of a patent has not been disclosed to 
        the United States Patent and Trademark Office in 
        accordance with this section; and
          ``(2) the term `ultimate parent entity' has the 
        meaning given the term in section 801.1(a)(3) of title 
        16, Code of Federal Regulations, or any successor 
        regulation.
  ``(b) Requirement to Disclose Assignment.--An assignment of 
all substantial rights in an issued patent that results in a 
change to the ultimate parent entity shall be recorded in the 
Patent and Trademark Office within 3 months of the assignment.
  ``(c) Disclosure Requirements.--A disclosure under subsection 
(b) shall include the name of the assignee and the ultimate 
parent entity of the assignee.
  ``(d) Failure to Comply.--If a party required to make a 
disclosure under subsection (b) fails to comply with such 
requirement, in a civil action in which that party asserts a 
claim for infringement of the patent, that party may not 
recover increased damages under section 284 or attorney fees 
under section 285 with respect to infringing activities taking 
place during any period of noncompliance.''.
          (2) Applicability.--The amendment made by paragraph 
        (1) shall apply to any patent issued on or after the 
        date of enactment of this Act.
          (3) Conforming amendment.--The table of sections for 
        chapter 26 of title 35, United States Code, is amended 
        by adding at the end the following new item:

``263. Disclosure of information relating to patent ownership.''.

SEC. 4. CUSTOMER STAY.

  (a) In General.--Chapter 29 of title 35, United States Code, 
is amended by adding at the end the following new section:

``Sec. 299A. Customer stay

  ``(a) Definitions.--In this section--
          ``(1) the term `covered customer' means a party 
        accused of infringing a patent or patents in dispute 
        based on a covered product or process;
          ``(2) the term `covered manufacturer' means a person 
        who manufactures or supplies, or causes the manufacture 
        or supply of, a covered product or process, or a 
        relevant part thereof; and
          ``(3) the term `covered product or process' means a 
        component, product, process, system, service, method, 
        or a relevant part thereof, that--
                  ``(A) is alleged to infringe the patent or 
                patents in dispute, or
                  ``(B) implements a process alleged to 
                infringe the patent or patents in dispute.
  ``(b) Motion for Stay.--In a civil action in which a party 
asserts a claim for relief arising under any Act of Congress 
relating to patents (other than an action that includes a cause 
of action described in section 271(e) of this title), the court 
shall grant a motion to stay at least the portion of the action 
against a covered customer that relates to infringement of a 
patent involving a covered product or process if--
          ``(1) the covered manufacturer and the covered 
        customer consent in writing to the stay;
          ``(2) the covered manufacturer is a party to the 
        action or a separate action involving the same patent 
        or patents relating to the same covered product or 
        process;
          ``(3) the covered customer agrees to be bound under 
        the principles of collateral estoppel by any issues 
        finally decided as to the covered manufacturer in an 
        action described in paragraph (2) that the covered 
        customer has in common with the covered manufacturer; 
        and
          ``(4) the motion is filed after the first pleading in 
        the action but not later than the later of--
                  ``(A) 120 days after service of the first 
                pleading in the action that specifically 
                identifies the covered product or process as a 
                basis for the alleged infringement of the 
                patent by the covered customer, and 
                specifically identifies how the covered product 
                or process is alleged to infringe the patent; 
                or
                  ``(B) the date on which the first scheduling 
                order in the case is entered.
  ``(c) Applicability.--A stay issued under subsection (b) 
shall apply only to those asserted patents and products, 
systems, methods, or components accused of infringement in the 
action.
  ``(d) Vacating Stay.--
          ``(1) In general.--A stay entered under this section 
        may be vacated upon grant of a motion based on a 
        showing that--
                  ``(A) the action involving the covered 
                manufacturer will not resolve a major issue in 
                suit against the covered customer; or
                  ``(B) the stay unreasonably prejudices or 
                would be manifestly unjust to the party seeking 
                to vacate the stay.
          ``(2) Separate actions.--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)(2), 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.
  ``(e) Waiver of Estoppel Effect.--If, following the grant of 
a motion to stay under this section, the covered manufacturer 
in an action described in subsection (b)(2)--
          ``(1) seeks or consents to entry of a consent 
        judgment involving one or more of the common issues 
        that gave rise to the stay; or
          ``(2) fails to prosecute, to a final, non-appealable 
        judgment, a final decision as to one or more of the 
        common issues that gave rise to the stay,
the court may, upon motion, determine that such consent 
judgment or unappealed final decision shall not be binding on 
the covered customer with respect to one or more of such common 
issues based on a showing that such an outcome would 
unreasonably prejudice or be manifestly unjust to the covered 
customer in light of the circumstances of the case.
  ``(f) Rule of Construction.--Nothing in this section shall be 
construed to limit the ability of a court to grant, expand, or 
modify any stay granted pursuant to 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 adding at the 
end the following new item:

``299A. Customer stay.''.

SEC. 5. 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 ombudsman.--The Patent 
        Ombudsman Program established under section 28 of the 
        Leahy-Smith America Invents Act (35 U.S.C. 2 note) 
        shall coordinate with the existing small business 
        outreach programs of the Office to provide education 
        and awareness on abusive patent litigation practices.
  (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 pursuant to section 
                290 of title 35, United States Code, as amended 
                by section 4(a)(2) of this Act; and
                  (B) any 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. 6. CODIFICATION OF THE DOUBLE-PATENTING DOCTRINE FOR FIRST-
                    INVENTOR-TO-FILE PATENTS.

  (a) Amendment.--Chapter 10 of title 35, United States Code, 
is amended by adding at the end the following new section:

``Sec. 106. Prior art in cases of double patenting

  ``A claimed invention of a patent issued under section 151 
(referred to in this section as the `first patent') that is not 
prior art to a claimed invention of another patent (referred to 
in this section as the `second patent') shall be considered 
prior art to the claimed invention of the second patent for the 
purpose of determining the nonobviousness of the claimed 
invention of the second patent under section 103 if--
          ``(1) the claimed invention of the first patent was 
        effectively filed under section 102(d) on or before the 
        effective filing date of the claimed invention of the 
        second patent;
          ``(2) either--
                  ``(A) the first patent and the second patent 
                name the same inventor; or
                  ``(B) the claimed invention of the first 
                patent would constitute prior art to the 
                claimed invention of the second patent under 
                section 102(a)(2) if an exception under section 
                102(b)(2) were deemed to be inapplicable and 
                the claimed invention of the first patent was, 
                or were deemed to be, effectively filed under 
                section 102(d) before the effective filing date 
                of the claimed invention of the second patent; 
                and
          ``(3) the patentee of the second patent has not 
        disclaimed the rights to enforce the second patent 
        independently from, and beyond the statutory term of, 
        the first patent.''.
  (b) Regulations.--The Director shall promulgate regulations 
setting forth the form and content of any disclaimer required 
for a patent to be issued in compliance with section 106 of 
title 35, United States Code, as added by subsection (a). Such 
regulations shall apply to any disclaimer filed after a patent 
has issued. A disclaimer, when filed, shall be considered for 
the purpose of determining the validity of the patent under 
section 106 of title 35, United States Code.
  (c) Conforming Amendment.--The table of sections for chapter 
10 of title 35, United States Code, is amended by adding at the 
end the following new item:

``106. Prior art in cases of double patenting.''.

  (d) Exclusive Rule.--A patent subject to section 106 of title 
35, United States Code, as added by subsection (a), shall not 
be held invalid on any nonstatutory, double-patenting ground.
  (e) Effective Date.--The amendments made by this section 
shall take effect on the date of the enactment of this Act and 
shall apply to a patent or patent application only if both the 
first and second patents described in section 106 of title 35, 
United States Code, as added by subsection (a), are patents or 
patent applications that are described in section 3(n)(1) of 
the Leahy-Smith America Invents Act (35 U.S.C. 100 note).

SEC. 7. TECHNICAL CORRECTIONS TO THE LEAHY-SMITH AMERICA INVENTS ACT.

  (a) Technical Corrections.--
          (1) Inventor's oath or declaration.--
                  (A) Amendment.--Section 115(g)(1) of title 
                35, United States Code, is amended--
                          (i) in the matter preceding 
                        subparagraph (A), by striking ``claims 
                        the benefit'' and inserting ``is 
                        entitled, as to each invention claimed 
                        in the application, to the benefit''; 
                        and
                          (ii) in subparagraph (A), by striking 
                        ``meeting the requirements of 
                        subsection (a) was executed by the 
                        individual and was filed in connection 
                        with the earlier-filed application'' 
                        and inserting the following: ``executed 
                        by or on behalf of the individual was 
                        filed in connection with the earlier-
                        filed application and meets the 
                        requirements of this section as 
                        effective on the date such oath or 
                        declaration was filed''.
                  (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; 125 Stat. 293).
          (2) 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; 125 Stat. 285).
          (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; 125 Stat. 288).
          (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) Patent owner response.--
                  (A) Conduct of inter partes review.--Section 
                316(a)(8) 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.--Section 
                326(a)(8) 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.
          (7) Time limit for commencing misconduct 
        proceedings.--
                  (A) Amendment.--The fourth sentence of 
                section 32 of title 35, United States Code, is 
                amended by striking ``1 year'' and inserting 
                ``2 years''.
                  (B) Effective date.--The amendment made by 
                this paragraph shall apply to any action in 
                which the Office files a complaint on or after 
                the date of enactment of this Act.
  (b) Post-grant Review Amendment.--Section 325(e)(2) of title 
35, United States Code, is amended by striking ``or reasonably 
could have raised''.
  (c) Clarification of Jurisdiction.--Section 1338 of title 28, 
United States Code, is amended by adding at the end the 
following:
  ``(d) For purposes of this section, section 1454, and section 
1295(a), a claim of legal malpractice that necessarily raises a 
disputed question of patent law shall be deemed to arise under 
an Act of Congress relating to patents.''.

SEC. 8. REPORTS.

  (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) Submission of 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, with reference to 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 9 months after 
        the date of completion of the study required by 
        subsection (a)(1), 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 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 
                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 to congress.--Not later than 6 months 
        after the date of the completion of the study required 
        by subsection (b)(1), 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, shall, using 
                existing resources, conduct a study to examine 
                the idea of developing a pilot program for 
                patent small claims courts in certain judicial 
                districts within the existing patent pilot 
                program mandated by Public Law 111-349 (28 
                U.S.C. 137 note).
                  (B) Contents of study.--The study conducted 
                under subparagraph (A) shall examine--
                          (i) the number and qualifications for 
                        judges that could serve on the courts 
                        described in subparagraph (A);
                          (ii) how the courts described in 
                        subparagraph (A) would be designated 
                        and the necessary criteria;
                          (iii) the costs that would be 
                        incurred for establishing, maintaining 
                        and operating the pilot program 
                        described in subparagraph (A); and
                          (iv) the steps that would be taken to 
                        ensure that the pilot small claims 
                        courts are not misused for abusive 
                        patent litigation.
          (2) Report.--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 from the study required under paragraph 
        (1).
  (e) Study on Bad-faith Demand Letters.--
          (1) Study.--The Intellectual Property Enforcement 
        Coordinator, in consultation with the Director, shall 
        conduct a study of the practice by a person, in 
        connection with the assertion of a United States 
        patent, of sending written communications that state 
        that the intended recipients or any affiliated persons 
        of such recipients are infringing or have infringed the 
        patent and bear liability or owe compensation to 
        another, whereby--
                  (A) the communications falsely threaten that 
                administrative or judicial relief will be 
                sought if compensation is not paid or the 
                infringement issue is not otherwise resolved;
                  (B) the assertions contained in the 
                communications lack a reasonable basis in fact 
                or law, including, for example, because--
                          (i) the person asserting the patent 
                        is not a person, or does not represent 
                        a person, with the current right to 
                        license the patent to, or to enforce 
                        the patent against, the intended 
                        recipients or any such affiliated 
                        persons; or
                          (ii) the communications seek 
                        compensation on account of activities 
                        undertaken after the patent has 
                        expired; or
                  (C) the content of the written communications 
                is likely to materially mislead a reasonable 
                recipient, including, for example, because the 
                content fails to include such facts reasonably 
                necessary to inform the recipient of--
                          (i) the identity of the person 
                        asserting a right to license the patent 
                        to, or enforce the patent against, the 
                        intended recipient or any affiliated 
                        person of the recipient;
                          (ii) the patent issued by the United 
                        States Patent and Trademark Office 
                        alleged to have been infringed; and
                          (iii) the reasons for the assertion 
                        that the patent may be or may have been 
                        infringed.
          (2) Report to congress.--Not later than 18 months 
        after the date of the enactment of this Act, the 
        Intellectual Property Enforcement Coordinator 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 study conducted under 
        paragraph (1), including recommendations for any 
        changes to laws and regulations that will deter any 
        abuses found in the practice described in paragraph 
        (1).

SEC. 9. 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.
                              ----------                              


                PART B--TEXT OF AMENDMENT MADE IN ORDER

1. An Amendment To Be Offered by Representative Carolyn Maloney of New 
             York or Her Designee, Debatable for 10 Minutes

  Page 1, strike line 10 and all that follows through page 2, 
line 17, and insert the following:
  ``(o) Simplified Registration and Disclosure for Small 
Private Equity Fund Advisers.--
          ``(1) In general.--Subject to paragraph (2), the 
        Commission shall promulgate rules providing for a 
        simplified procedure for registration and disclosure 
        under this section for any investment adviser acting as 
        an investment adviser to a private equity fund or funds 
        that, in the aggregate, have assets under management in 
        the United States of between $150,000,000 and 
        $1,000,000,000.
          ``(2) Tailored application.--The rules promulgated 
        under paragraph (1) shall take into account compliance 
        costs, fund size, governance, and any other factors 
        that the Commission determines necessary.
          ``(3) Private equity fund defined.--Not later than 6 
        months after the date of enactment of this subsection, 
        the Commission shall issue final rules to define the 
        term `private equity fund' for purposes of this 
        subsection.''.

                                  
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