An amendment numbered 1 printed in Part B of House Report 112-111 to make technical edits and a few necessary changes to more substantive issues, such as prior user rights and an additional oversight requirement for the PTO.
What it does: 71 changes: replaces text in 44 places, inserts text in 17 places, strikes text in 10 places
Rep. Lamar Smith (R-TX)Description
Manager's amendment makes numerous technical and clarifying changes to the bill.
What it changes
71 changes to H.R. 1249 · 12 shown in the bill's text
We couldn't read part of this amendment. That part is shown as written below.
Change 1: Replaces “America Invents Act” with “Leahy-Smith America Invents Act”
In H.R. 1249 · Reported in House
SECTION 1. SHORT TITLE; TABLE OF CONTENTS.
(a) Short Title.--This Act may be cited as the "[inserted: Leahy-Smith ]America Invents Act".
(b) Table of Contents.--The table of contents for this Act is as follows:
Original wording
Page 3, line 5, strike “America Invents Act” and insert “Leahy-Smith America Invents Act”.
Change 2: Replaces “5(a)(1)” with “5(a)”
[struck: 5(a)(1)][inserted: 5(a)]Original wording
Page 4, lines 10 and 22, strike “5(a)(1)” and insert “5(a)”.
Change 3: Inserts “In appropriate circumstances, the Patent Trial and Appeal Board may correct the naming of…” after the period
Inserted: In appropriate circumstances, the Patent Trial and Appeal Board may correct the naming of the inventor in any application or patent at issue.
Original wording
Page 16, line 1, insert after the period the following: “In appropriate circumstances, the Patent Trial and Appeal Board may correct the naming of the inventor in any application or patent at issue.”.
Change 4: Strikes page 25, line 13 through page 27, line 2
StrikesPrinted pageRemoves page 25, line 13 through page 27, line 2 of the printed bill. See that page
Original wording
Page 25, strike line 13 and all that follows through page 27, line 2
Change 5: Strikes “registration”
Struck: registration
Original wording
Page 27, line 4, strike “registration”.
Change 6: Replaces “inventor to use” with “to invent”
[struck: inventor to use][inserted: to invent]Original wording
Page 27, line 5, strike “inventor to use” and insert “to invent”.
Change 7: Inserts “and the useful arts” after “science”
In H.R. 1249 · Reported in House
(3) Report to congress.--The Comptroller General shall, not later than the date that is 1 year after the date of the enactment of this Act, 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 results of the study required under this subsection, including recommendations for any changes to laws and regulations that will minimize any negative impact of patent litigation that was the subject of such study.
(p) Sense of Congress.--It is the sense of the Congress that converting the United States patent registration system from "first inventor to use" to a system of "first inventor to file" will promote the progress of science [inserted: and the useful arts ]by securing for limited times to inventors the exclusive rights to their discoveries and provide inventors with greater certainty regarding the scope of protection granted by the exclusive rights to their discoveries.
(q) Sense of Congress.--It is the sense of the Congress that converting the United States patent registration system from "first inventor to use" to a system of "first inventor to file" will harmonize the United States patent registration system with the patent registration systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote a greater sense of international uniformity and certainty in the procedures used for securing the exclusive rights of inventors to their discoveries.
Original wording
Page 27, line 6, insert “and the useful arts” after “science”.
Change 8: Replaces “granted by the” with “provided by the grant of”
In H.R. 1249 · Reported in House
(3) Report to congress.--The Comptroller General shall, not later than the date that is 1 year after the date of the enactment of this Act, 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 results of the study required under this subsection, including recommendations for any changes to laws and regulations that will minimize any negative impact of patent litigation that was the subject of such study.
(p) Sense of Congress.--It is the sense of the Congress that converting the United States patent registration system from "first inventor to use" to a system of "first inventor to file" will promote the progress of science by securing for limited times to inventors the exclusive rights to their discoveries and provide inventors with greater certainty regarding the scope of protection
[struck: granted][inserted: provided] by the [inserted: grant of ]exclusive rights to their discoveries.(q) Sense of Congress.--It is the sense of the Congress that converting the United States patent registration system from "first inventor to use" to a system of "first inventor to file" will harmonize the United States patent registration system with the patent registration systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote a greater sense of international uniformity and certainty in the procedures used for securing the exclusive rights of inventors to their discoveries.
Original wording
Page 27, line 9, strike “granted by the” and insert “provided by the grant of”.
Change 9: Strikes “registration”
Struck: registration
Original wording
Page 27, line 12, strike “registration”.
Change 10: Replaces “inventor to use” with “to invent”
[struck: inventor to use][inserted: to invent]Original wording
Page 27, line 13, strike “inventor to use” and insert “to invent”.
Change 11: Replaces “harmonize the United States patent registration system with the patent registration syste…” with “improve the United States patent system and promote harmonization of the United States pa…”
In H.R. 1249 · Reported in House
(p) Sense of Congress.--It is the sense of the Congress that converting the United States patent registration system from "first inventor to use" to a system of "first inventor to file" will promote the progress of science by securing for limited times to inventors the exclusive rights to their discoveries and provide inventors with greater certainty regarding the scope of protection granted by the exclusive rights to their discoveries.
(q) Sense of Congress.--It is the sense of the Congress that converting the United States patent registration system from "first inventor to use" to a system of "first inventor to file" will
[struck: harmonize][inserted: improve] the United States patent[struck: registration ][inserted: system and promote harmonization of the United States patent ]system with the patent[struck: registration ]systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote a greater sense of international uniformity and certainty in the procedures used for securing the exclusive rights of inventors to their discoveries.SEC. 4. INVENTOR'S OATH OR DECLARATION.
Original wording
Page 27, lines 14 and 15, strike “harmonize the United States patent registration system with the patent registration systems” and insert “improve the United States patent system and promote harmonization of the United States patent system with the patent systems”.
Change 12: Replaces “a greater sense of” with “greater”
In H.R. 1249 · Reported in House
(p) Sense of Congress.--It is the sense of the Congress that converting the United States patent registration system from "first inventor to use" to a system of "first inventor to file" will promote the progress of science by securing for limited times to inventors the exclusive rights to their discoveries and provide inventors with greater certainty regarding the scope of protection granted by the exclusive rights to their discoveries.
(q) Sense of Congress.--It is the sense of the Congress that converting the United States patent registration system from "first inventor to use" to a system of "first inventor to file" will harmonize the United States patent registration system with the patent registration systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote
[struck: a ]greater[struck: sense of ]international uniformity and certainty in the procedures used for securing the exclusive rights of inventors to their discoveries.SEC. 4. INVENTOR'S OATH OR DECLARATION.
Original wording
Page 27, line 18, strike “a greater sense of” and insert “greater”.
Change 13: Rewrites page 36, line 10 through page 40, line 5
ReplacesPrinted pageRemoves page 36, line 10 through page 40, line 5 of the printed bill. See that page
Inserted: (c) Effective Date.--The amendments made by this section shall apply to any patent issued on or after the date of the enactment of this Act.
Original wording
Page 36, strike line 10 and all that follows through page 40, line 5, and insert the following
Change 14: Replaces “1 year” with “9 months”
[struck: 1 year][inserted: 9 months]Original wording
Page 41, line 5, strike “1 year” and insert “9 months”.
Change 15: Replaces “commence” with “be instituted”
[struck: commence][inserted: be instituted]Original wording
Page 42, line 22, strike “commence” and insert “be instituted”.
Change 16: Replaces “petitioner, real party in interest, or privy of the petitioner” with “petitioner or real party in interest”
[struck: petitioner, real party in interest, or privy of the petitioner][inserted: petitioner or real party in interest]Original wording
Page 44, lines 3 and 4, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
Change 17: Replaces “petitioner, real party in interest, or privy of the petitioner” with “petitioner or real party in interest”
[struck: petitioner, real party in interest, or privy of the petitioner][inserted: petitioner or real party in interest]Original wording
Page 44, lines 13 and 14, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
Change 18: Replaces “petitioner, real party in interest, or privy of the petitioner” with “petitioner or real party in interest”
[struck: petitioner, real party in interest, or privy of the petitioner][inserted: petitioner or real party in interest]Original wording
Page 44, lines 16 and 17, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
Change 19: Replaces “Amended or New Claim” with “Intervening Rights”
[struck: Amended or New Claim][inserted: Intervening Rights]Original wording
Page 52, line 10, strike “Amended or New Claim” and insert “Intervening Rights”.
Change 20: Inserts new text on page 54
InsertsPrinted pageInserted: (i) in section 312--
Inserted: (I) in subsection (a)--
Inserted: (aa) in the first sentence, by striking "a substantial new question of patentability affecting any claim of the patent concerned is raised by the request," and inserting "the information presented in the request shows that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request,"; and
Inserted: (bb) in the second sentence, by striking "The existence of a substantial new question of patentability" and inserting "A showing that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request"; and
Inserted: (II) in subsection (c), in the second sentence, by striking "no substantial new question of patentability has been raised," and inserting "the showing required by subsection (a) has not been made,"; and
Inserted: (ii) in section 313, by striking "a substantial new question of patentability affecting a claim of the patent is raised" and inserting "it has been shown that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request".
Inserted: (B) Application.--The amendments made by this paragraph--
Inserted: (i) shall take effect on the date of the enactment of this Act; and
Inserted: (ii) shall apply to requests for inter partes reexamination that are filed on or after such date of enactment, but before the effective date set forth in paragraph (2)(A) of this subsection.
Inserted: (C) Continued applicability of prior provisions.--The provisions of chapter 31 of title 35, United States Code, as amended by this paragraph, shall continue to apply to requests for inter partes reexamination that are filed before the effective date set forth in paragraph (2)(A) as if subsection (a) had not been enacted.
Original wording
Page 54, insert the following
Change 21: Replaces “patent owner” with “owner of a patent”
[struck: patent owner][inserted: owner of a patent]Original wording
Page 54, line 17, strike “patent owner” and insert “owner of a patent”.
Change 22: Replaces “of a” with “of the”
[struck: of a][inserted: of the]Original wording
Page 54, line 18, strike “of a” and insert “of the”.
Change 23: Replaces “1 year” with “9 months”
[struck: 1 year][inserted: 9 months]Original wording
Page 55, line 10, strike “1 year” and insert “9 months”.
Change 24: Replaces “commence” with “be instituted”
[struck: commence][inserted: be instituted]Original wording
Page 57, line 3, strike “commence” and insert “be instituted”.
Change 25: Strikes “The” through “public.”
Struck: The … public.
Original wording
Page 57, line 25, strike “The” and all that follows through “public.” on page 58, line 1.
Change 26: Replaces “petitioner, real party in interest, or privy of the petitioner” with “petitioner or real party in interest”
[struck: petitioner, real party in interest, or privy of the petitioner][inserted: petitioner or real party in interest]Original wording
Page 58, lines 11 and 12, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
Change 27: Replaces “petitioner, real party in interest, or privy of the petitioner” with “petitioner or real party in interest”
[struck: petitioner, real party in interest, or privy of the petitioner][inserted: petitioner or real party in interest]Original wording
Page 58, lines 15 and 16, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
Change 28: Replaces “petitioner, real party in interest, or privy of the petitioner” with “petitioner or real party in interest”
[struck: petitioner, real party in interest, or privy of the petitioner][inserted: petitioner or real party in interest]Original wording
Page 59, lines 3 and 4, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
Change 29: Strikes “and”
Struck: and
Original wording
Page 63, line 15, strike “and”.
Change 30: Replaces the period on page 63, line 23 with “; and”
ReplacesPrinted page…
[struck: .][inserted: ; and]Original wording
Page 63, line 23, strike the period and insert “; and”.
Change 31: Inserts new text on page 63
InsertsPrinted pageOriginal wording
Page 63, insert the following
Change 32: Replaces “Amended or New Claim” with “Intervening Rights”
[struck: Amended or New Claim][inserted: Intervening Rights]Original wording
Page 66, line 24, strike “Amended or New Claim” and insert “Intervening Rights”.
Change 33: Replaces “to any patent that is” with “only to patents”
[struck: to any patent that is][inserted: only to patents]Original wording
Page 68, line 10, strike “to any patent that is” and insert “only to patents”.
Change 34: Inserts new text on page 78
InsertsPrinted pageInserted: (A) by striking "Board of Patent Appeals and Interferences" each place it appears and inserting "Patent Trial and Appeal Board"; and
Inserted: (B) by inserting "and derivation" after "established for interference".
Inserted: (2) Title 51.--Section 20135 of title 51, United States Code, is amended--
Inserted: (A) in subsections (e) and (f), by striking "Board of Patent Appeals and Interferences" each place it appears and inserting "Patent Trial and Appeal Board"; and
Inserted: (B) in subsection (e), by inserting "and derivation" after "established for interference".
Original wording
Page 78, insert the following
Change 35: Replaces “examination fee for the application” with “applicable fee”
[struck: examination fee for the application][inserted: applicable fee]Original wording
Page 86, lines 11 and 12, strike “examination fee for the application” and insert “applicable fee”.
Change 36: Inserts “most recently” after “as”
…as[inserted: most recently]…
Original wording
Page 86, line 15, insert “most recently” after “as”.
Change 37: Replaces “examination fee for the application” with “applicable fee”
[struck: examination fee for the application][inserted: applicable fee]Original wording
Page 86, line 22, strike “examination fee for the application” and insert “applicable fee”.
Change 38: Inserts “most recently” after “as”
…as[inserted: most recently]…
Original wording
Page 87, line 1, insert “most recently” after “as”.
Change 39: Rewrites page 87, line 18 through page 88, line 8
ReplacesPrinted pageRemoves page 87, line 18 through page 88, line 8 of the printed bill. See that page
Inserted: (d) Institutions of Higher Education.--For purposes of this section, a micro entity shall include an applicant who certifies that--
Inserted: (1) the applicant's employer, from which the applicant obtains the majority of the applicant's income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or
Inserted: (2) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular applications to such an institution of higher education.
Original wording
Page 87, strike line 18 and all that follows through page 88, line 8, and insert the following:
Change 40: Replaces “(2) Director's authority.--The Director” with “(e) Director's Authority.--In addition to the limits imposed by this section, the Director”
In H.R. 1249 · Reported in House
"(B) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the particular application to such public institution.
"(
[struck: 2][inserted: e]) Director's[struck: authority][inserted: Authority].--[struck: The ][inserted: In addition to the limits imposed by this section, the ]Director may, in the Director's discretion, impose income limits, annual filing limits, or other limits on who may qualify as a micro entity pursuant to this subsection if the Director determines that such additional limits are reasonably necessary to avoid an undue impact on other patent applicants or owners or are otherwise reasonably necessary and appropriate. At least 3 months before any limits proposed to be imposed pursuant to this paragraph take effect, the Director shall inform the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate of any such proposed limits.".(2) Conforming amendment.--Chapter 11 of title 35, United States Code, is amended by adding at the end the following new item:
Original wording
Page 88, line 9, strike “(2) Director's authority.--The Director” and insert “(e) Director's Authority.--In addition to the limits imposed by this section, the Director”.
Change 41: Replaces “subsection” with “section”
[struck: subsection][inserted: section]Original wording
Page 88, line 12, strike “subsection” and insert “section”.
Change 42: Replaces “paragraph” with “subsection”
[struck: paragraph][inserted: subsection]Original wording
Page 88, line 18, strike “paragraph” and insert “subsection”.
Change 43: Replaces “a fee” with “an additional fee”
[struck: a fee][inserted: an additional fee]Original wording
Page 89, line 2, strike “a fee” and insert “an additional fee”.
Change 44: Replaces “This” with “Except as provided in subsection (h), this”
[struck: This][inserted: Except as provided in subsection (h), this]Original wording
Page 89, line 17, strike “This” and insert “Except as provided in subsection (h), this”.
Change 45: Replaces “6-year” with “7-year”
In H.R. 1249 · Reported in House
(1) Effective date.--This section and the amendments made by this section shall take effect on the date of the enactment of this Act.
(2) Sunset.--The authority of the Director to set or adjust any fee under subsection (a) shall terminate upon the expiration of the
[struck: 6-year][inserted: 7-year] period beginning on the date of the enactment of this Act.SEC. 11. FEES FOR PATENT SERVICES.
Original wording
Page 89, line 22, strike “6-year” and insert “7-year”.
Change 46: Inserts new text on page 89
InsertsPrinted pageOriginal wording
Page 89, add the following
Change 47: Replaces “either” through “patent” with “by Office personnel”
[struck: either … patent][inserted: by Office personnel]Original wording
Page 96, line 15, strike “either” and all that follows through “patent” on line 19 and inserting “by Office personnel”.
Change 48: Strikes page 98, lines 3–14
StrikesPrinted pageRemoves page 98, lines 3–14 of the printed bill. See that page
Original wording
Page 98, strike lines 3 through 14.
Change 49: Inserts new text on page 102
InsertsPrinted pageInserted: (B) shall terminate, with respect to a fee to which paragraph (1)(A) applies, on the effective date of the setting or adjustment of that fee pursuant to the exercise of the authority under section 10 for the first time with respect to that fee.
Original wording
Page 102, insert the following
Change 50: Rewrites page 102, lines 1–7
ReplacesPrinted pageRemoves page 102, lines 1–7 of the printed bill. See that page
Inserted: (h) Prioritized Examination Fee.--
Inserted: (1) In general.--
Inserted: (A) Fee.--
Inserted: (i) Prioritized examination fee.--A fee of $4,800 shall be established for filing a request, pursuant to section 2(b)(2)(G) of title 35, United States Code, for prioritized examination of a nonprovisional application for an original utility or plant patent.
Inserted: (ii) Additional fees.--In addition to the prioritized examination fee under clause (i), the fees due on an application for which prioritized examination is being sought are the filing, search, and examination fees (including any applicable excess claims and application size fees), processing fee, and publication fee for that application.
Inserted: (B) Regulations; limitations.--
Inserted: (i) Regulations.--The Director may by regulation prescribe conditions for acceptance of a request under subparagraph (A) and a limit on the number of filings for prioritized examination that may be accepted.
Inserted: (ii) Limitation on claims.-- Until regulations are prescribed under clause (i), no application for which prioritized examination is requested may contain or be amended to contain more than 4 independent claims or more than 30 total claims.
Inserted: (iii) Limitation on total number of requests.--The Director may not accept in any fiscal year more than 10,000 requests for prioritization until regulations are prescribed under this subparagraph setting another limit.
Inserted: (2) Reduction in fees for small entities.--The Director shall reduce fees for providing prioritized examination of nonprovisional applications for original utility and plant patents by 50 percent for small entities that qualify for reduced fees under section 41(h)(1) of title 35, United States Code.
Inserted: (3) Deposit of fees.--All fees paid under this subsection shall be credited to the United States Patent and Trademark Office Appropriation Account, shall remain available until expended, and may be used only for the purposes specified in section 42(c)(3)(A) of title 35, United States Code.
Inserted: (4) Effective date and termination.--
Show 2 more inserted paragraphsShow less
Inserted: (A) Effective date.--This subsection shall take effect on the date that is 10 days after the date of the enactment of this Act.
Inserted: (B) Termination.--The fee imposed under paragraph (1)(A)(i), and the reduced fee under paragraph (2), shall terminate on the effective date of the setting or adjustment of the fee under paragraph (1)(A)(i) pursuant to the exercise of the authority under section 10 for the first time with respect to that fee.
Original wording
Page 102, strike lines 1 through 7 and insert the following:
Change 51: Replaces “Except as provided in subsection (h),” with “Except as otherwise provided in this section,”
In H.R. 1249 · Reported in House
(h) Reduction in Fees for Small Entity Patents.--The Director shall reduce fees for providing prioritized examination of utility and plant patent applications by 50 percent for small entities that qualify for reduced fees under section 41(h)(1) of title 35, United States Code, so long as the fees of the prioritized examination program are set to recover the estimated cost of the program.
(i) Effective Date.--Except as [inserted: otherwise ]provided in
[struck: subsection (h)][inserted: this section], this section and the amendments made by this section shall take effect on the date of the enactment of this Act.SEC. 12. SUPPLEMENTAL EXAMINATION.
Original wording
Page 102, lines 8 and 9, strike “Except as provided in subsection (h),” and insert “Except as otherwise provided in this section,”.
Change 52: Strikes page 105, lines 1–11
StrikesPrinted pageRemoves page 105, lines 1–11 of the printed bill. See that page
Original wording
Page 105, strike lines 1 through 11.
Change 53: Inserts new text on page 105
InsertsPrinted pageOriginal wording
Page 105, add the following
Change 54: Rewrites page 111, lines 13–24
ReplacesPrinted pageRemoves page 111, lines 13–24 of the printed bill. See that page
Inserted: (c) The marking of a product, in a manner described in subsection (a), with matter relating to a patent that covered that product but has expired is not a violation of this section.
Original wording
Page 111, strike lines 13 through 24 and insert the following:
Change 55: Replaces “any case that is” with “all cases, without exception, that are”
[struck: any case that is][inserted: all cases, without exception, that are]Original wording
Page 112, line 2, strike “any case that is” and insert “all cases, without exception, that are”.
Change 56: Inserts “or privy” after “interest”
…interest[inserted: or privy]…
Original wording
Page 113, line 13, insert “or privy” after “interest”.
Change 57: Replaces “The petitioner in a transitional proceeding,” with “The petitioner in a transitional proceeding that results in a final written decision unde…”
In H.R. 1249 · Reported in House
(II) would be described by section 102(a) of such title (as in effect on the day before the effective date set forth in section 3(n)(1)) if the disclosure had been made by another before the invention thereof by the applicant for patent.
(D) The petitioner in a transitional proceeding
[struck: , ][inserted: that results in a final written decision under section 328(a) of title 35, United States Code, with respect to a claim in a covered business method patent, ]or the petitioner's real party in interest, may not assert, either in a civil action arising in whole or in part under section 1338 of title 28, United States Code, or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), that a claim in a patent is invalid on any ground that the petitioner raised during a transitional proceeding that resulted in a final written decision.(E) The Director may institute a transitional proceeding only for a patent that is a covered business method patent.
Original wording
Page 114, lines 15 and 16, strike “The petitioner in a transitional proceeding,” and insert the following: “The petitioner in a transitional proceeding that results in a final written decision under section 328(a) of title 35, United States Code, with respect to a claim in a covered business method patent,”.
Change 58: Replaces “a claim in a patent” with “the claim”
[struck: a claim in a patent][inserted: the claim]Original wording
Page 114, line 22, strike “a claim in a patent” and insert “the claim”.
Change 59: Replaces “10-” with “8-”
In H.R. 1249 · Reported in House
(3) Sunset.--
(A) In general.--This subsection, and the regulations issued under this subsection, are repealed effective upon the expiration of the
[struck: 10-year][inserted: 8-year] period beginning on the date that the regulations issued under to paragraph (1) take effect.(B) Applicability.--Notwithstanding subparagraph (A), this subsection and the regulations issued under this subsection shall continue to apply, after the date of the repeal under subparagraph (A), to any petition for a transitional proceeding that is filed before the date of such repeal.
Original wording
Page 115, line 18, strike “10-” and insert “8-”.
Change 60: Replaces “In any” with “With respect to any”
In H.R. 1249 · Reported in House
"Sec. 299. Joinder of parties
"(a) Joinder of Accused Infringers.--
[struck: In ][inserted: With respect to ]any civil action arising under any Act of Congress relating to patents, other than an action or trial in which an act of infringement under section 271(e)(2) has been pled, parties that are accused infringers may be joined in one action as defendants or counterclaim defendants only if--"(1) any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process; and
Original wording
Page 121, line 17, strike “In any” and insert “With respect to any”.
Change 61: Inserts “, or have their actions consolidated for trial,” after “defendants”
…defendants[inserted: , or have their actions consolidated for trial,]…
Original wording
Page 121, line 22, insert “, or have their actions consolidated for trial,” after “defendants”.
Change 62: Strikes “or trial”
Struck: or trial
Original wording
Page 122, line 9, strike “or trial”.
Change 63: Inserts “, or have their actions consolidated for trial,” after “defendants”
…defendants[inserted: , or have their actions consolidated for trial,]…
Original wording
Page 122, line 10, insert “, or have their actions consolidated for trial,” after “defendants”.
Change 64: Inserts new text on page 122
InsertsPrinted pageOriginal wording
Page 122, insert the following
Change 65: Inserts new text on page 128
InsertsPrinted pageOriginal wording
Page 128, insert the following
Change 66: Rewrites page 130, line 3 through page 134, line 17
ReplacesPrinted pageRemoves page 130, line 3 through page 134, line 17 of the printed bill. See that page
Inserted: SEC. 22. PATENT AND TRADEMARK OFFICE FUNDING.
Inserted: (a) In General.--Section 42(c) of title 35, United States Code, is amended--
Inserted: (1) by striking "(c)" and inserting "(c)(1)";
Inserted: (2) in the first sentence, by striking "shall be available" and inserting "shall, subject to paragraph (3), be available";
Inserted: (3) by striking the second sentence; and
Inserted: (4) by adding at the end the following:
Inserted: "(2) There is established in the Treasury a Patent and Trademark Fee Reserve Fund. If fee collections by the Patent and Trademark Office for a fiscal year exceed the amount appropriated to the Office for that fiscal year, fees collected in excess of the appropriated amount shall be deposited in the Patent and Trademark Fee Reserve Fund. To the extent and in the amounts provided in appropriations Acts, amounts in the Fund shall be made available until expended only for obligation and expenditure by the Office in accordance with paragraph (3).
Inserted: "(3)(A) Any fees that are collected under sections 41, 42, and 376, and any surcharges on such fees, may only be used for expenses of the Office relating to the processing of patent applications and for other activities, services, and materials relating to patents and to cover a share of the administrative costs of the Office relating to patents.
Inserted: "(B) Any fees that are collected under section 31 of the Trademark Act of 1946, and any surcharges on such fees, may only be used for expenses of the Office relating to the processing of trademark registrations and for other activities, services, and materials relating to trademarks and to cover a share of the administrative costs of the Office relating to trademarks.".
Inserted: (b) Effective Date.--The amendments made by this section shall take effect on October 1, 2011.
Original wording
Page 130, strike line 3 and all that follows through page 134, line 17, and insert the following:
Change 67: Strikes page 137, lines 1–7
StrikesPrinted pageRemoves page 137, lines 1–7 of the printed bill. See that page
Original wording
Page 137, strike lines 1 through 7
Change 68: Replaces “TECHNOLOGIES IMPORTANT TO AMERICAN COMPETITIVENESS” with “IMPORTANT TECHNOLOGIES”
In H.R. 1249 · Reported in House
Using available resources, the Director shall establish and maintain in the Office a Patent Ombudsman Program. The duties of the Program's staff shall include providing support and services relating to patent filings to small business concerns.
SEC. 26. PRIORITY EXAMINATION FOR
[struck: TECHNOLOGIES ]IMPORTANT[struck: TO AMERICAN COMPETITIVENESS][inserted: TECHNOLOGIES].Section 2(b)(2) of title 35, United States Code, is amended--
Original wording
Page 137, lines 8 and 9, strike “TECHNOLOGIES IMPORTANT TO AMERICAN COMPETITIVENESS” and insert “IMPORTANT TECHNOLOGIES”
Change 69: Strikes page 138, lines 1–21
StrikesPrinted pageRemoves page 138, lines 1–21 of the printed bill. See that page
Original wording
Page 138, strike lines 1 through 21
Change 70: Inserts new text on page 139
InsertsPrinted pageOriginal wording
Page 139, insert the following
Change 71: Inserts new text on page 139
InsertsPrinted pageOriginal wording
Page 139, insert the following
Shown as written
redesignate the succeeding subsections accordingly.
(and conform the table of contents) accordingly: SEC. 5. DEFENSE TO INFRINGEMENT BASED ON PRIOR COMMERCIAL USE. (a) In General.--Section 273 of title 35, United States Code, is amended to read as follows: “Sec. 273. Defense to infringement based on prior commercial use “(a) In General.--A person shall be entitled to a defense under section 282(b) with respect to subject matter consisting of a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process, that would otherwise infringe a claimed invention being asserted against the person if--“(1) such person, acting in good faith, commercially used the subject matter in the United States, either in connection with an internal commercial use or an actual arm's length sale or other arm's length commercial transfer of a useful end result of such commercial use; and “(2) such commercial use occurred at least 1 year before the earlier of either--“(A) the effective filing date of the claimed invention; or “(B) the date on which the claimed invention was disclosed to the public in a manner that qualified for the exception from prior art under section 102(b). “(b) Burden of Proof.--A person asserting a defense under this section shall have the burden of establishing the defense by clear and convincing evidence. “(c) Additional Commercial Uses.--“(1) Premarketing regulatory review.--Subject matter for which commercial marketing or use is subject to a premarketing regulatory review period during which the safety or efficacy of the subject matter is established, including any period specified in section 156(g), shall be deemed to be commercially used for purposes of subsection (a)(1) during such regulatory review period. “(2) Nonprofit laboratory use.--A use of subject matter by a nonprofit research laboratory or other nonprofit entity, such as a university or hospital, for which the public is the intended beneficiary, shall be deemed to be a commercial use for purposes of subsection (a)(1), except that a defense under this section may be asserted pursuant to this paragraph only for continued and noncommercial use by and in the laboratory or other nonprofit entity. “(d) Exhaustion of Rights.--Notwithstanding subsection (e)(1), the sale or other disposition of a useful end result by a person entitled to assert a defense under this section in connection with a patent with respect to that useful end result shall exhaust the patent owner's rights under the patent to the extent that such rights would have been exhausted had such sale or other disposition been made by the patent owner. “(e) Limitations and Exceptions.--“(1) Personal defense.--“(A) In general.--A defense under this section may be asserted only by the person who performed or directed the performance of the commercial use described in subsection (a), or by an entity that controls, is controlled by, or is under common control with such person. “(B) Transfer of right.--Except for any transfer to the patent owner, the right to assert a defense under this section shall not be licensed or assigned or transferred to another person except as an ancillary and subordinate part of a good-faith assignment or transfer for other reasons of the entire enterprise or line of business to which the defense relates. “(C) Restriction on sites.--A defense under this section, when acquired by a person as part of an assignment or transfer described in subparagraph (B), may only be asserted for uses at sites where the subject matter that would otherwise infringe a claimed invention is in use before the later of the effective filing date of the claimed invention or the date of the assignment or transfer of such enterprise or line of business. “(2) Derivation.--A person may not assert a defense under this section if the subject matter on which the defense is based was derived from the patentee or persons in privity with the patentee. “(3) Not a general license.--The defense asserted by a person under this section is not a general license under all claims of the patent at issue, but extends only to the specific subject matter for which it has been established that a commercial use that qualifies under this section occurred, except that the defense shall also extend to variations in the quantity or volume of use of the claimed subject matter, and to improvements in the claimed subject matter that do not infringe additional specifically claimed subject matter of the patent. “(4) Abandonment of use.--A person who has abandoned commercial use (that qualifies under this section) of subject matter may not rely on activities performed before the date of such abandonment in establishing a defense under this section with respect to actions taken on or after the date of such abandonment. “(5) University exception.--“(A) In general.--A person commercially using subject matter to which subsection (a) applies may not assert a defense under this section if the claimed invention with respect to which the defense is asserted was, at the time the invention was made, owned or subject to an obligation of assignment to either an institution of higher education (as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)), or a technology transfer organization whose primary purpose is to facilitate the commercialization of technologies developed by one or more such institutions of higher education. “(B) Exception.--Subparagraph (A) shall not apply if any of the activities required to reduce to practice the subject matter of the claimed invention could not have been undertaken using funds provided by the Federal Government. “(f) Unreasonable Assertion of Defense.--If the defense under this section is pleaded by a person who is found to infringe the patent and who subsequently fails to demonstrate a reasonable basis for asserting the defense, the court shall find the case exceptional for the purpose of awarding attorney fees under section 285. “(g) Invalidity.--A patent shall not be deemed to be invalid under section 102 or 103 solely because a defense is raised or established under this section.”. (b) Conforming Amendment.--The item relating to section 273 in the table of sections for chapter 28 of title 35, United States Code, is amended to read as follows: “273. Defense to infringement based on prior commercial use.”.
Page 43, line 24, and page 44, line 1, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
after line 10: (3) Transition.--(A) In general.--Chapter 31 of title 35, United States Code, is amended--
Page 58, line 25 and page 59, line 1, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
after line 23: “(12) providing the petitioner with at least 1 opportunity to file written comments within a time period established by the Director.”.
after line 1 and redesignate the succeeding subsection accordingly: (d) Conforming Amendments.--(1) Atomic energy act of 1954.--Section 152 of the Atomic Energy Act of 1954 (42 U.S.C. 2182) is amended in the third undesignated paragraph--
Page 88, move the text of lines 9 through 21 2 ems to the left.
after line 23: (3) Prior regulations not affected.--The termination of authority under this subsection shall not affect any regulations issued under this section before the effective date of such termination or any rulemaking proceeding for the issuance of regulations under this section that is pending on such date.
after line 7 and redesignate the succeeding subsection accordingly: (i) Appropriation Account Transition Fees.--(1) Surcharge.--(A) In general.--There shall be a surcharge of 15 percent, rounded by standard arithmetic rules, on all fees charged or authorized by subsections (a), (b), and (d)(1) of section 41, and section 132(b), of title 35, United States Code. Any surcharge imposed under this subsection is, and shall be construed to be, separate from and in addition to any other surcharge imposed under this Act or any other provision of law. (B) Deposit of amounts.--Amounts collected pursuant to the surcharge imposed under subparagraph (A) shall be credited to the United States Patent and Trademark Appropriation Account, shall remain available until expended, and may be used only for the purposes specified in section 42(c)(3)(A) of title 35, United States Code. (2) Effective date and termination of surcharge.--The surcharge provided for in paragraph (1)--(A) shall take effect on the date that is 10 days after the date of the enactment of this Act; and
after line 25 and redesignate the succeeding subsection accordingly: “(e) Fraud.--If the Director becomes aware, during the course of a supplemental examination or reexamination proceeding ordered under this section, that a material fraud on the Office may have been committed in connection with the patent that is the subject of the supplemental examination, then in addition to any other actions the Director is authorized to take, including the cancellation of any claims found to be invalid under section 307 as a result of a reexamination ordered under this section, the Director shall also refer the matter to the Attorney General for such further action as the Attorney General may deem appropriate. Any such referral shall be treated as confidential, shall not be included in the file of the patent, and shall not be disclosed to the public unless the United States charges a person with a criminal offense in connection with such referral.
Page 114, lines 23-25, strike “a transitional proceeding that resulted in a final decision” and insert “that transitional proceeding”.
Page 120, strike line 17 and all that follows through the matter following line 10 on page 121 and redesignate succeeding subsections accordingly.
Page 122, line 11, strike the quotation marks and second period.
after line 11: “(c) Waiver.--A party that is an accused infringer may waive the limitations set forth in this section with respect to that party.”.
Page 126, line 13, strike “patent,” and all that follows through the first appearance of “and” on line 17 and insert “a patent,”.
after line 23 and redesignate the succeeding subsection accordingly: (k) Additional Technical Amendments.--Sections 155 and 155A of title 35, United States Code, and the items relating to those sections in the table of sections for chapter 14 of such title, are repealed.
redesignate the succeeding sections (and conform the table of contents) accordingly.
(and conform the table of contents accordingly).
redesignate succeeding sections (and conform the table of contents) accordingly.
after line 12 and redesignate the succeeding sections (and conform the table of contents) accordingly: SEC. 27. STUDY ON GENETIC TESTING. (a) In General.--The Director shall conduct a study on effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist. (b) Items Included in Study.--The study shall include an examination of at least the following: (1) The impact that the current lack of independent second opinion testing has had on the ability to provide the highest level of medical care to patients and recipients of genetic diagnostic testing, and on inhibiting innovation to existing testing and diagnoses. (2) The effect that providing independent second opinion genetic diagnostic testing would have on the existing patent and license holders of an exclusive genetic test. (3) The impact that current exclusive licensing and patents on genetic testing activity has on the practice of medicine, including but not limited to: the interpretation of testing results and performance of testing procedures. (4) The role that cost and insurance coverage have on access to and provision of genetic diagnostic tests. (c) Confirming Genetic Diagnostic Test Activity Defined.--For purposes of this section, the term “confirming genetic diagnostic test activity” means the performance of a genetic diagnostic test, by a genetic diagnostic test provider, on an individual solely for the purpose of providing the individual with an independent confirmation of results obtained from another test provider's prior performance of the test on the individual. (d) Report.--Not later than 9 months after the date of enactment of this Act, the Director shall report to the Committee on the Judiciary of the Senate and the Committee on the Judiciary of the House of Representatives on the findings of the study and provide recommendations for establishing the availability of such independent confirming genetic diagnostic test activity. SEC. 28. PATENT OMBUDSMAN PROGRAM FOR SMALL BUSINESS CONCERNS. Using available resources, the Director shall establish and maintain in the Office a Patent Ombudsman Program. The duties of the Program's staff shall include providing support and services relating to patent filings to small business concerns and independent inventors.
after line 20 and redesignate the succeeding sections (and conform the table of contents) accordingly: SEC. 30. LIMITATION ON ISSUANCE OF PATENTS. (a) Limitation.--Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism. (b) Effective Date.--(1) In general.--Subsection (a) shall apply to any application for patent that is pending on, or filed on or after, the date of the enactment of this Act. (2) Prior applications.--Subsection (a) shall not affect the validity of any patent issued on an application to which paragraph (1) does not apply. SEC. 31. STUDY OF PATENT LITIGATION. (a) GAO Study.--The Comptroller General of the United States shall conduct a study of the consequences of litigation by non-practicing entities, or by patent assertion entities, related to patent claims made under title 35, United States Code, and regulations authorized by that title. (b) Contents of Study.--The study conducted under this section shall include the following: (1) The annual volume of litigation described in subsection (a) over the 20-year period ending on the date of the enactment of this Act. (2) The volume of cases comprising such litigation that are found to be without merit after judicial review. (3) The impacts of such litigation on the time required to resolve patent claims. (4) The estimated costs, including the estimated cost of defense, associated with such litigation for patent holders, patent licensors, patent licensees, and inventors, and for users of alternate or competing innovations. (5) The economic impact of such litigation on the economy of the United States, including the impact on inventors, job creation, employers, employees, and consumers. (6) The benefit to commerce, if any, supplied by non-practicing entities or patent assertion entities that prosecute such litigation. (c) Report to Congress.--The Comptroller General shall, not later than the date that is 1 year after the date of the enactment of this Act, 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 results of the study required under this section, including recommendations for any changes to laws and regulations that will minimize any negative impact of patent litigation that was the subject of such study.
Read automatically from the Congressional Record. Check the original before relying on it.
As printed
Page 3, line 5, strike “America Invents Act” and insert “Leahy-Smith America Invents Act”.
Page 4, lines 10 and 22, strike “5(a)(1)” and insert “5(a)”.
Page 16, line 1, insert after the period the following: “In appropriate circumstances, the Patent Trial and Appeal Board may correct the naming of the inventor in any application or patent at issue.”.
Page 25, strike line 13 and all that follows through page 27, line 2, and redesignate the succeeding subsections accordingly.
Page 27, line 4, strike “registration”.
Page 27, line 5, strike “inventor to use” and insert “to invent”.
Page 27, line 6, insert “and the useful arts” after “science”.
Page 27, line 9, strike “granted by the” and insert “provided by the grant of”.
Page 27, line 12, strike “registration”.
Page 27, line 13, strike “inventor to use” and insert “to invent”.
Page 27, lines 14 and 15, strike “harmonize the United States patent registration system with the patent registration systems” and insert “improve the United States patent system and promote harmonization of the United States patent system with the patent systems”.
Page 27, line 18, strike “a greater sense of” and insert “greater”.
Page 36, strike line 10 and all that follows through page 40, line 5, and insert the following (and conform the table of contents) accordingly:
SEC. 5. DEFENSE TO INFRINGEMENT BASED ON PRIOR COMMERCIAL USE.
(a) In General.--Section 273 of title 35, United States Code, is amended to read as follows:
“Sec. 273. Defense to infringement based on prior commercial
use
“(a) In General.--A person shall be entitled to a defense under section 282(b) with respect to subject matter consisting of a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process, that would otherwise infringe a claimed invention being asserted against the person if--
“(1) such person, acting in good faith, commercially used the subject matter in the United States, either in connection with an internal commercial use or an actual arm's length sale or other arm's length commercial transfer of a useful end result of such commercial use; and
“(2) such commercial use occurred at least 1 year before the earlier of either--
“(A) the effective filing date of the claimed invention; or
“(B) the date on which the claimed invention was disclosed to the public in a manner that qualified for the exception from prior art under section 102(b).
“(b) Burden of Proof.--A person asserting a defense under this section shall have the burden of establishing the defense by clear and convincing evidence.
“(c) Additional Commercial Uses.--
“(1) Premarketing regulatory review.--Subject matter for which commercial marketing or use is subject to a premarketing regulatory review period during which the safety or efficacy of the subject matter is established, including any period specified in section 156(g), shall be deemed to be commercially used for purposes of subsection (a)(1) during such regulatory review period.
“(2) Nonprofit laboratory use.--A use of subject matter by a nonprofit research laboratory or other nonprofit entity, such as a university or hospital, for which the public is the intended beneficiary, shall be deemed to be a commercial use for purposes of subsection (a)(1), except that a defense under this section may be asserted pursuant to this paragraph only for continued and noncommercial use by and in the laboratory or other nonprofit entity.
“(d) Exhaustion of Rights.--Notwithstanding subsection (e)(1), the sale or other disposition of a useful end result by a person entitled to assert a defense under this section in connection with a patent with respect to that useful end result shall exhaust the patent owner's rights under the patent to the extent that such rights would have been exhausted had such sale or other disposition been made by the patent owner.
“(e) Limitations and Exceptions.--
“(1) Personal defense.--
“(A) In general.--A defense under this section may be asserted only by the person who performed or directed the performance of the commercial use described in subsection (a), or by an entity that controls, is controlled by, or is under common control with such person.
“(B) Transfer of right.--Except for any transfer to the patent owner, the right to assert a defense under this section shall not be licensed or assigned or transferred to another person except as an ancillary and subordinate part of a good-faith assignment or transfer for other reasons of the entire enterprise or line of business to which the defense relates.
“(C) Restriction on sites.--A defense under this section, when acquired by a person as part of an assignment or transfer described in subparagraph (B), may only be asserted for uses at sites where the subject matter that would otherwise infringe a claimed invention is in use before the later of the effective filing date of the claimed invention or the date of the assignment or transfer of such enterprise or line of business.
“(2) Derivation.--A person may not assert a defense under this section if the subject matter on which the defense is based was derived from the patentee or persons in privity with the patentee.
“(3) Not a general license.--The defense asserted by a person under this section is not a general license under all claims of the patent at issue, but extends only to the specific subject matter for which it has been established that a commercial use that qualifies under this section occurred, except that the defense shall also extend to variations in the quantity or volume of use of the claimed subject matter, and to improvements in the claimed subject matter that do not infringe additional specifically claimed subject matter of the patent.
“(4) Abandonment of use.--A person who has abandoned commercial use (that qualifies under this section) of subject matter may not rely on activities performed before the date of such abandonment in establishing a defense under this section with respect to actions taken on or after the date of such abandonment.
“(5) University exception.--
“(A) In general.--A person commercially using subject matter to which subsection (a) applies may not assert a defense under this section if the claimed invention with respect to which the defense is asserted was, at the time the invention was made, owned or subject to an obligation of assignment to either an institution of higher education (as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)), or a technology transfer organization whose primary purpose is to facilitate the commercialization of technologies developed by one or more such institutions of higher education.
“(B) Exception.--Subparagraph (A) shall not apply if any of the activities required to reduce to practice the subject matter of the claimed invention could not have been undertaken using funds provided by the Federal Government.
“(f) Unreasonable Assertion of Defense.--If the defense under this section is pleaded by a person who is found to infringe the patent and who subsequently fails to demonstrate a reasonable basis for asserting the defense, the court shall find the case exceptional for the purpose of awarding attorney fees under section 285.
“(g) Invalidity.--A patent shall not be deemed to be invalid under section 102 or 103 solely because a defense is raised or established under this section.”.
(b) Conforming Amendment.--The item relating to section 273 in the table of sections for chapter 28 of title 35, United States Code, is amended to read as follows:
“273. Defense to infringement based on prior commercial use.”.
(c) Effective Date.--The amendments made by this section shall apply to any patent issued on or after the date of the enactment of this Act.
Page 41, line 5, strike “1 year” and insert “9 months”.
Page 42, line 22, strike “commence” and insert “be instituted”.
Page 43, line 24, and page 44, line 1, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
Page 44, lines 3 and 4, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
Page 44, lines 13 and 14, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
Page 44, lines 16 and 17, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
Page 52, line 10, strike “Amended or New Claim” and insert “Intervening Rights”.
Page 54, insert the following after line 10:
(3) Transition.--
(A) In general.--Chapter 31 of title 35, United States Code, is amended--
(i) in section 312--
(I) in subsection (a)--
(aa) in the first sentence, by striking “a substantial new question of patentability affecting any claim of the patent concerned is raised by the request,” and inserting “the information presented in the request shows that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request,”; and
(bb) in the second sentence, by striking “The existence of a substantial new question of patentability” and inserting “A showing that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request”; and
(II) in subsection (c), in the second sentence, by striking “no substantial new question of patentability has been raised,” and inserting “the showing required by subsection (a) has not been made,”; and
(ii) in section 313, by striking “a substantial new question of patentability affecting a claim of the patent is raised” and inserting “it has been shown that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request”.
(B) Application.--The amendments made by this paragraph--
(i) shall take effect on the date of the enactment of this Act; and
(ii) shall apply to requests for inter partes reexamination that are filed on or after such date of enactment, but before the effective date set forth in paragraph (2)(A) of this subsection.
(C) Continued applicability of prior provisions.--The provisions of chapter 31 of title 35, United States Code, as amended by this paragraph, shall continue to apply to requests for inter partes reexamination that are filed before the effective date set forth in paragraph (2)(A) as if subsection (a) had not been enacted.
Page 54, line 17, strike “patent owner” and insert “owner of a patent”.
Page 54, line 18, strike “of a” and insert “of the”.
Page 55, line 10, strike “1 year” and insert “9 months”.
Page 57, line 3, strike “commence” and insert “be instituted”.
Page 57, line 25, strike “The” and all that follows through “public.” on page 58, line 1.
Page 58, lines 11 and 12, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
Page 58, lines 15 and 16, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
Page 58, line 25 and page 59, line 1, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
Page 59, lines 3 and 4, strike “petitioner, real party in interest, or privy of the petitioner” and insert “petitioner or real party in interest”.
Page 63, line 15, strike “and”.
Page 63, line 23, strike the period and insert “; and”.
Page 63, insert the following after line 23:
“(12) providing the petitioner with at least 1 opportunity to file written comments within a time period established by the Director.”.
Page 66, line 24, strike “Amended or New Claim” and insert “Intervening Rights”.
Page 68, line 10, strike “to any patent that is” and insert “only to patents”.
Page 78, insert the following after line 1 and redesignate the succeeding subsection accordingly:
(d) Conforming Amendments.--
(1) Atomic energy act of 1954.--Section 152 of the Atomic Energy Act of 1954 (42 U.S.C. 2182) is amended in the third undesignated paragraph--
(A) by striking “Board of Patent Appeals and Interferences” each place it appears and inserting “Patent Trial and Appeal Board”; and
(B) by inserting “and derivation” after “established for interference”.
(2) Title 51.--Section 20135 of title 51, United States Code, is amended--
(A) in subsections (e) and (f), by striking “Board of Patent Appeals and Interferences” each place it appears and inserting “Patent Trial and Appeal Board”; and
(B) in subsection (e), by inserting “and derivation” after “established for interference”.
Page 86, lines 11 and 12, strike “examination fee for the application” and insert “applicable fee”.
Page 86, line 15, insert “most recently” after “as”.
Page 86, line 22, strike “examination fee for the application” and insert “applicable fee”.
Page 87, line 1, insert “most recently” after “as”.
Page 87, strike line 18 and all that follows through page 88, line 8, and insert the following:
“(d) Institutions of Higher Education.--For purposes of this section, a micro entity shall include an applicant who certifies that--
“(1) the applicant's employer, from which the applicant obtains the majority of the applicant's income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or
“(2) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular applications to such an institution of higher education.
Page 88, line 9, strike “(2) Director's authority.--The Director” and insert “(e) Director's Authority.--In addition to the limits imposed by this section, the Director”.
Page 88, move the text of lines 9 through 21 2 ems to the left.
Page 88, line 12, strike “subsection” and insert “section”.
Page 88, line 18, strike “paragraph” and insert “subsection”.
Page 89, line 2, strike “a fee” and insert “an additional fee”.
Page 89, line 17, strike “This” and insert “Except as provided in subsection (h), this”.
Page 89, line 22, strike “6-year” and insert “7-year”.
Page 89, add the following after line 23:
(3) Prior regulations not affected.--The termination of authority under this subsection shall not affect any regulations issued under this section before the effective date of such termination or any rulemaking proceeding for the issuance of regulations under this section that is pending on such date.
Page 96, line 15, strike “either” and all that follows through “patent” on line 19 and inserting “by Office personnel”.
Page 98, strike lines 3 through 14.
Page 102, insert the following after line 7 and redesignate the succeeding subsection accordingly:
(i) Appropriation Account Transition Fees.--
(1) Surcharge.--
(A) In general.--There shall be a surcharge of 15 percent, rounded by standard arithmetic rules, on all fees charged or authorized by subsections (a), (b), and (d)(1) of section 41, and section 132(b), of title 35, United States Code. Any surcharge imposed under this subsection is, and shall be construed to be, separate from and in addition to any other surcharge imposed under this Act or any other provision of law.
(B) Deposit of amounts.--Amounts collected pursuant to the surcharge imposed under subparagraph (A) shall be credited to the United States Patent and Trademark Appropriation Account, shall remain available until expended, and may be used only for the purposes specified in section 42(c)(3)(A) of title 35, United States Code.
(2) Effective date and termination of surcharge.--The surcharge provided for in paragraph (1)--
(A) shall take effect on the date that is 10 days after the date of the enactment of this Act; and
(B) shall terminate, with respect to a fee to which paragraph (1)(A) applies, on the effective date of the setting or adjustment of that fee pursuant to the exercise of the authority under section 10 for the first time with respect to that fee.
Page 102, strike lines 1 through 7 and insert the following:
(h) Prioritized Examination Fee.--
(1) In general.--
(A) Fee.--
(i) Prioritized examination fee.--A fee of $4,800 shall be established for filing a request, pursuant to section 2(b)(2)(G) of title 35, United States Code, for prioritized examination of a nonprovisional application for an original utility or plant patent.
(ii) Additional fees.--In addition to the prioritized examination fee under clause (i), the fees due on an application for which prioritized examination is being sought are the filing, search, and examination fees (including any applicable excess claims and application size fees), processing fee, and publication fee for that application.
(B) Regulations; limitations.--
(i) Regulations.--The Director may by regulation prescribe conditions for acceptance of a request under subparagraph (A) and a limit on the number of filings for prioritized examination that may be accepted.
(ii) Limitation on claims.-- Until regulations are prescribed under clause (i), no application for which prioritized examination is requested may contain or be amended to contain more than 4 independent claims or more than 30 total claims.
(iii) Limitation on total number of requests.--The Director may not accept in any fiscal year more than 10,000 requests for prioritization until regulations are prescribed under this subparagraph setting another limit.
(2) Reduction in fees for small entities.--The Director shall reduce fees for providing prioritized examination of nonprovisional applications for original utility and plant patents by 50 percent for small entities that qualify for reduced fees under section 41(h)(1) of title 35, United States Code.
(3) Deposit of fees.--All fees paid under this subsection shall be credited to the United States Patent and Trademark Office Appropriation Account, shall remain available until expended, and may be used only for the purposes specified in section 42(c)(3)(A) of title 35, United States Code.
(4) Effective date and termination.--
(A) Effective date.--This subsection shall take effect on the date that is 10 days after the date of the enactment of this Act.
(B) Termination.--The fee imposed under paragraph (1)(A)(i), and the reduced fee under paragraph (2), shall terminate on the effective date of the setting or adjustment of the fee under paragraph (1)(A)(i) pursuant to the exercise of the authority under section 10 for the first time with respect to that fee.
Page 102, lines 8 and 9, strike “Except as provided in subsection (h),” and insert “Except as otherwise provided in this section,”.
Page 105, strike lines 1 through 11.
Page 105, add the following after line 25 and redesignate the succeeding subsection accordingly:
“(e) Fraud.--If the Director becomes aware, during the course of a supplemental examination or reexamination proceeding ordered under this section, that a material fraud on the Office may have been committed in connection with the patent that is the subject of the supplemental examination, then in addition to any other actions the Director is authorized to take, including the cancellation of any claims found to be invalid under section 307 as a result of a reexamination ordered under this section, the Director shall also refer the matter to the Attorney General for such further action as the Attorney General may deem appropriate. Any such referral shall be treated as confidential, shall not be included in the file of the patent, and shall not be disclosed to the public unless the United States charges a person with a criminal offense in connection with such referral.
Page 111, strike lines 13 through 24 and insert the following:
“(c) The marking of a product, in a manner described in subsection (a), with matter relating to a patent that covered that product but has expired is not a violation of this section.”.
Page 112, line 2, strike “any case that is” and insert “all cases, without exception, that are”.
Page 113, line 13, insert “or privy” after “interest”.
Page 114, lines 15 and 16, strike “The petitioner in a transitional proceeding,” and insert the following: “The petitioner in a transitional proceeding that results in a final written decision under section 328(a) of title 35, United States Code, with respect to a claim in a covered business method patent,”.
Page 114, line 22, strike “a claim in a patent” and insert “the claim”.
Page 114, lines 23-25, strike “a transitional proceeding that resulted in a final decision” and insert “that transitional proceeding”.
Page 115, line 18, strike “10-” and insert “8-”.
Page 120, strike line 17 and all that follows through the matter following line 10 on page 121 and redesignate succeeding subsections accordingly.
Page 121, line 17, strike “In any” and insert “With respect to any”.
Page 121, line 22, insert “, or have their actions consolidated for trial,” after “defendants”.
Page 122, line 9, strike “or trial”.
Page 122, line 10, insert “, or have their actions consolidated for trial,” after “defendants”.
Page 122, line 11, strike the quotation marks and second period.
Page 122, insert the following after line 11:
“(c) Waiver.--A party that is an accused infringer may waive the limitations set forth in this section with respect to that party.”.
Page 126, line 13, strike “patent,” and all that follows through the first appearance of “and” on line 17 and insert “a patent,”.
Page 128, insert the following after line 23 and redesignate the succeeding subsection accordingly:
(k) Additional Technical Amendments.--Sections 155 and 155A of title 35, United States Code, and the items relating to those sections in the table of sections for chapter 14 of such title, are repealed.
Page 130, strike line 3 and all that follows through page 134, line 17, and insert the following:
SEC. 22. PATENT AND TRADEMARK OFFICE FUNDING.
(a) In General.--Section 42(c) of title 35, United States Code, is amended--
(1) by striking “(c)” and inserting “(c)(1)”;
(2) in the first sentence, by striking “shall be available” and inserting “shall, subject to paragraph (3), be available”;
(3) by striking the second sentence; and
(4) by adding at the end the following:
“(2) There is established in the Treasury a Patent and Trademark Fee Reserve Fund. If fee collections by the Patent and Trademark Office for a fiscal year exceed the amount appropriated to the Office for that fiscal year, fees collected in excess of the appropriated amount shall be deposited in the Patent and Trademark Fee Reserve Fund. To the extent and in the amounts provided in appropriations Acts, amounts in the Fund shall be made available until expended only for obligation and expenditure by the Office in accordance with paragraph (3).
“(3)(A) Any fees that are collected under sections 41, 42, and 376, and any surcharges on such fees, may only be used for expenses of the Office relating to the processing of patent applications and for other activities, services, and materials relating to patents and to cover a share of the administrative costs of the Office relating to patents.
“(B) Any fees that are collected under section 31 of the Trademark Act of 1946, and any surcharges on such fees, may only be used for expenses of the Office relating to the processing of trademark registrations and for other activities, services, and materials relating to trademarks and to cover a share of the administrative costs of the Office relating to trademarks.”.
(b) Effective Date.--The amendments made by this section shall take effect on October 1, 2011.
Page 137, strike lines 1 through 7 and redesignate the succeeding sections (and conform the table of contents) accordingly.
Page 137, lines 8 and 9, strike “TECHNOLOGIES IMPORTANT TO AMERICAN COMPETITIVENESS” and insert “IMPORTANT TECHNOLOGIES” (and conform the table of contents accordingly).
Page 138, strike lines 1 through 21 and redesignate succeeding sections (and conform the table of contents) accordingly.
Page 139, insert the following after line 12 and redesignate the succeeding sections (and conform the table of contents) accordingly:
SEC. 27. STUDY ON GENETIC TESTING.
(a) In General.--The Director shall conduct a study on effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist.
(b) Items Included in Study.--The study shall include an examination of at least the following:
(1) The impact that the current lack of independent second opinion testing has had on the ability to provide the highest level of medical care to patients and recipients of genetic diagnostic testing, and on inhibiting innovation to existing testing and diagnoses.
(2) The effect that providing independent second opinion genetic diagnostic testing would have on the existing patent and license holders of an exclusive genetic test.
(3) The impact that current exclusive licensing and patents on genetic testing activity has on the practice of medicine, including but not limited to: the interpretation of testing results and performance of testing procedures.
(4) The role that cost and insurance coverage have on access to and provision of genetic diagnostic tests.
(c) Confirming Genetic Diagnostic Test Activity Defined.--For purposes of this section, the term “confirming genetic diagnostic test activity” means the performance of a genetic diagnostic test, by a genetic diagnostic test provider, on an individual solely for the purpose of providing the individual with an independent confirmation of results obtained from another test provider's prior performance of the test on the individual.
(d) Report.--Not later than 9 months after the date of enactment of this Act, the Director shall report to the Committee on the Judiciary of the Senate and the Committee on the Judiciary of the House of Representatives on the findings of the study and provide recommendations for establishing the availability of such independent confirming genetic diagnostic test activity.
SEC. 28. PATENT OMBUDSMAN PROGRAM FOR SMALL BUSINESS CONCERNS.
Using available resources, the Director shall establish and maintain in the Office a Patent Ombudsman Program. The duties of the Program's staff shall include providing support and services relating to patent filings to small business concerns and independent inventors.
Page 139, insert the following after line 20 and redesignate the succeeding sections (and conform the table of contents) accordingly:
SEC. 30. LIMITATION ON ISSUANCE OF PATENTS.
(a) Limitation.--Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
(b) Effective Date.--
(1) In general.--Subsection (a) shall apply to any application for patent that is pending on, or filed on or after, the date of the enactment of this Act.
(2) Prior applications.--Subsection (a) shall not affect the validity of any patent issued on an application to which paragraph (1) does not apply.
SEC. 31. STUDY OF PATENT LITIGATION.
(a) GAO Study.--The Comptroller General of the United States shall conduct a study of the consequences of litigation by non-practicing entities, or by patent assertion entities, related to patent claims made under title 35, United States Code, and regulations authorized by that title.
(b) Contents of Study.--The study conducted under this section shall include the following:
(1) The annual volume of litigation described in subsection (a) over the 20-year period ending on the date of the enactment of this Act.
(2) The volume of cases comprising such litigation that are found to be without merit after judicial review.
(3) The impacts of such litigation on the time required to resolve patent claims.
(4) The estimated costs, including the estimated cost of defense, associated with such litigation for patent holders, patent licensors, patent licensees, and inventors, and for users of alternate or competing innovations.
(5) The economic impact of such litigation on the economy of the United States, including the impact on inventors, job creation, employers, employees, and consumers.
(6) The benefit to commerce, if any, supplied by non-practicing entities or patent assertion entities that prosecute such litigation.
(c) Report to Congress.--The Comptroller General shall, not later than the date that is 1 year after the date of the enactment of this Act, 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 results of the study required under this section, including recommendations for any changes to laws and regulations that will minimize any negative impact of patent litigation that was the subject of such study.
Legislative Activity
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House amendment agreed to: On agreeing to the Smith (TX) amendment (A001) Agreed to by recorded vote: 283 - 140 (Roll no. 481).
June 23, 2011 • 2:09 PM
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House amendment agreed to: On agreeing to the Smith (TX) amendment (A001) Agreed to by recorded vote: 283 - 140 (Roll no. 481).
June 23, 2011 • 2:09 PM
Amendment agreed to Committee of the Whole
June 23, 2011 • 2:09 PM
Roll call votes on amendments in House
June 23, 2011 • 2:09 PM
On agreeing to the Smith (TX) amendment (A001) Agreed to by recorded vote: 283 - 140 (Roll no. 481).
June 23, 2011 • 2:09 PM
House amendment offered
June 22, 2011
House amendment offered/reported by: Amendment (A001) offered by Mr. Smith (TX).(consideration: CR H4448-4452; text: CR H4448-4450)
June 22, 2011 • 9:06 PM
Amendment (A001) offered by Mr. Smith (TX). (consideration: CR H4448-4452; text: CR H4448-4450)
June 22, 2011 • 9:06 PM
Votes
1 roll call on this amendment