II
109th CONGRESS
2d Session
S. 3818
IN THE SENATE OF THE UNITED STATES
August 3, 2006
Mr. Hatch (for himself and Mr. Leahy) introduced the following bill; which was read twice and referred to the Committee on the Judiciary
A BILL
To amend title 35, United States Code, to provide for patent reform.
Short title; table of contents
Short title
This Act may be cited
as the Patent Reform Act of
2006
.
Table of contents
The table of contents of this Act is as follows:
Sec. 1. Short title; table of contents.
Sec. 2. Reference to title
35, United States Code.Sec. 3. Right of the first inventor to file.
Sec. 4. Inventor’s oath or declaration.
Sec. 5. Remedies for infringement and affirmative defenses thereto.
Sec. 6. Post-grant procedures.
Sec. 7. Submissions by third parties and other quality enhancements.
Sec. 8. Venue and jurisdiction.
Sec. 9. Other statutory and conforming amendments.
Sec. 10. Effective date.
Reference to title 35, United States Code
Whenever in this Act a section or other provision is amended or repealed, that amendment or repeal shall be considered to be made to that section or other provision of title 35, United States Code.
Right of the first inventor to file
Definitions
Section 100 is amended by adding at the end the following:
The term inventor means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
The terms joint inventor and coinventor mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.
The effective filing date of a claimed invention is—
the filing date of the patent or the application for patent containing the claim to the invention; or
if the patent or application for patent is entitled to a right of priority of any other application under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c), the filing date of the earliest such application in which the claimed invention is disclosed in the manner provided by the first paragraph of section 112.
The term claimed invention means the subject matter defined by a claim in a patent or an application for a patent.
The term joint invention means an invention resulting from the collaboration of inventive endeavors of 2 or more persons working toward the same end and producing an invention by their collective efforts.
.
Conditions for patentability
In general
Section 102 is amended to read as follows:
Conditions for patentability; novelty
Novelty; prior art
A patent for a claimed invention may not be obtained if—
the claimed invention was patented, described in a printed publication, or otherwise publicly known—
more than 1 year before the effective filing date of the claimed invention; or
1 year or less before the effective filing date of the claimed invention, if the invention was patented or described in a printed publication or otherwise publicly known before the invention thereof by the applicant for a patent; or
the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Limitation on prior art
Derivation and common assignment exceptions
Subject matter that would otherwise qualify as prior art only under subsection (a)(2) shall not be prior art to a claimed invention if—
the subject matter was obtained directly or indirectly from the inventor or a joint inventor; or
the subject matter and the claimed invention were, not later than the effective filing date of the claimed invention, owned by the same person or subject to an obligation of assignment to the same person.
Grace period
Subject matter disclosed in the prior art less than 1 year before the effective filing date of the claimed invention shall not preclude the patenting of a claimed invention under subsection (a) or section 103 if the claimed invention was made prior to the date the subject matter becomes prior art pursuant to section 102(b), if the subject matter disclosed was obtained directly or indirectly from an inventor of the claimed subject matter or the applicant.
Patents and published applications effectively filed
A patent or application for patent is effectively filed under subsection (a)(2) with respect to any subject matter described in the patent or application—
as of the filing date of the patent or the application for patent; or
if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b) or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
.
Conforming amendment
The item relating to section 102 in the table of sections for chapter 10 is amended to read as follows:
102. Conditions for patentability; novelty.
.
Conditions for patentability; nonobvious subject matter
Section 103 is amended—
in subsection (a)—
by striking
A patent may not be obtained through the invention
and inserting
A patent for the claimed invention may not be obtained through the
claimed invention
;
by striking
sought to be patented
and inserting of the claimed
invention
; and
by striking
at the time the invention was made
and inserting before
the effective filing date of the claimed invention
;
by striking subsection (b) and redesignating subsection (c) as subsection (b);
by amending subsection (b)(1), as so redesignated, to read as follows:
Subject matter developed by another person, which is disqualified as prior art under section 102(b), shall not preclude patentability under this section if the subject matter and the claimed invention were owned by the same person, or subject to an obligation of assignment to the same person, on or before the effective filing date of the claimed invention.
; and
in subsection
(b)(2)(A), as so redesignated, by striking the date the claimed
invention was made
and inserting the effective filing date of
the claimed invention
.
Repeal of requirements for inventions made abroad
Section 104, and the item relating to that section in the table of sections for chapter 10, are repealed.
Repeal of statutory invention registration
In general
Section 157, and the item relating to that section in the table of sections for chapter 14, are repealed.
Removal of cross references
Section 111(b)(8) is amended by striking
sections 115, 131, 135, and 157
and inserting sections
131 and 135
.
Earlier filing date for inventor and joint inventor
Section 120 is amended by
striking which is filed by an inventor or inventors named
and
inserting which names an inventor or joint inventor
.
Conforming amendments
Right of priority
Section 172 is amended by striking and the time
specified in section 102(d)
.
Limitation on remedies
Section 287(c)(4) is amended by striking the
earliest effective filing date of which is prior to
and inserting
which has an effective filing date before
.
International application designating the United States: effect
Section 363 is
amended by striking except as otherwise provided in section 102(e) of
this title
.
Publication of International application: effect
Section 374 is amended by
striking sections 102(e) and 154(d)
and inserting section
154(d)
.
Patent issued on international application: effect
The second sentence of
section 375(a) is amended by striking Subject to section 102(e) of this
title, such
and inserting Such
.
Limit on right of priority
Section 119(a) is amended by striking ; but no
patent shall be granted
and all that follows through one year
prior to such filing
.
Inventions made with Federal assistance
Section 202(c) is amended—
in paragraph (2)—
by
striking publication, on sale, or public use,
and all that
follows through obtained in the United States
and inserting
the 1-year period referred to in section 102(a) would end before the end
of such 2-year period
; and
by
striking the statutory
and inserting the 1-year
;
and
in paragraph (3),
by striking any statutory bar date that may occur under this title due
to publication, on sale, or public use
and inserting the
expiration of the 1-year period referred to in section 102(a)
.
Repeal of interfering patent remedies
Section 291, and the item relating to that section in the table of sections for chapter 29, are repealed.
Action for claim to patent on derived invention
Section 135(a) is amended to read as follows:
Dispute over right to patent
Institution of inventor’s rights contest
An applicant may request initiation of a derivation proceeding to determine the right of the applicant to a patent by filing a request which sets forth with particularity the basis for finding that an earlier applicant derived the claimed invention and without authorization filed an application claiming such invention. Any such request shall be made within 12 months of the date of first publication of an application containing a claim that is the same or is substantially the same as the claimed invention, under oath and supported by substantial evidence. Whenever patents or applications for patent naming different individuals as the inventor are determined by the Director to interfere because of a dispute over the right to patent under section 101, the Director shall institute an inventor’s rights contest for the purpose of determining which applicant is entitled to a patent.
Requirements
No proceeding shall be commenced under this subsection unless the party requesting the proceeding has filed an application that—
was filed not later than 18 months after the effective filing date of the application or patent deemed to interfere with the subsequent application or patent; and
did not, within 1 year of the earliest effective filing date of the application, contain a claim that is the same or substantially the same as the invention claimed in the earlier filed application;
Determination by Patent Trial and Appeal Board
In any proceeding under this subsection, the Patent Trial and Appeal Board—
shall determine the question of the right to patent;
in appropriate circumstances, may correct the naming of the inventor in any application or patent at issue; and
shall issue a final decision on the right to patent.
Derivative proceeding
The Board may defer action on a request to initiate a derivation proceeding until 3 months after the date on which the Director issues a patent to the applicant that filed the earlier application.
Effect of final decision
The final decision of the Patent Trials and Appeal Board, if adverse to the claim of an applicant, shall constitute the final refusal by the Patent and Trademark Office on the claims involved. The Director may issue a patent to an applicant who is judged to have the right to patent. The final decision of the Board, if adverse to a patentee, shall, if no appeal or other review of the decision has been or can be taken or had, constitute cancellation of the claims involved in the patent, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation by the Patent and Trademark Office.
.
Patent Trial and Appeal Board
Elimination of references to interferences
Sections 6, 41,
134, 141, 145, 146, 154, 305, and 314 are each amended by striking Board
of Patent Appeals
each place it appears and inserting Patent
Trial and Appeal Board
.
Sections 135,
141, 146, and 154 are each amended by striking interference
each
place it appears and inserting inventor's rights contest
.
The item relating to section 146 in the table of sections for chapter 13 is amended to read as follows:
146. Civil action in
case of inventor's rights contest.
.
Technical and conforming amendments
Section 135(c) is amended—
by striking
(c) Any
and inserting (c)(1) Any
;
in the second
paragraph, by striking The Director
and inserting (2) The
Director
; and
in the third
paragraph, by striking Any discretionary
and inserting
(3) Any discretionary
.
Inventor’s oath or declaration
Inventor’s oath or declaration
In general
Section 115 is amended to read as follows:
Inventor’s oath or declaration
Naming the inventor; inventor’s oath or declaration
An application for patent that is filed under section 111(a), that commences the national stage under section 363, or that is filed by an inventor for an invention for which an application has previously been filed under this title by that inventor shall include, or be amended to include, the name of the inventor of any claimed invention in the application. Except as otherwise provided in this section, an individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application.
Required statements
An oath or declaration under subsection (a) shall contain statements that—
the application was made or was authorized to be made by the affiant or declarant; and
such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.
Additional requirements
The Director may specify additional information relating to the inventor and the invention that is required to be included in an oath or declaration under subsection (a).
Substitute statement
In general
In lieu of executing an oath or declaration under subsection (a), the applicant for patent may provide a substitute statement under the circumstances described in paragraph (2) and such additional circumstances that the Director may specify by regulation.
Permitted circumstances
A substitute statement under paragraph (1) shall be permitted with respect to any individual who, at the time the substitute statement is filed—
is deceased;
is under legal incapacity;
is under an obligation to assign the invention, but has refused to make the oath or declaration required under subsection (a); or
cannot be found or reached after diligent effort.
Contents
A substitute statement under this subsection shall—
identify the individual with respect to whom the statement applies;
set forth the circumstances representing the permitted basis for the filing of the substitute statement in lieu of the oath or declaration under subsection (a); and
contain any additional information, including any showing, required by the Director.
Making required statements in assignment of record
An individual who is under an obligation of assignment of an application for patent may include the required statements under subsections (b) and (c) in the assignment executed by the individual, in lieu of filing such statements separately.
Time for filing
A notice of allowance under section 151 may be provided to an applicant for patent only if the applicant for patent has filed each required oath or declaration under subsection (a) or has filed a substitute statement under subsection (d) or recorded an assignment meeting the requirements of subsection (e).
Earlier-filed application containing required statements or substitute statement
The requirements under this section shall not apply to an individual with respect to an application for patent in which the individual is named as the inventor or a joint inventor and that claims the benefit under section 120 or 365(c) of the filing of an earlier-filed application, if—
an oath or declaration meeting the requirements of subsection (a) was executed by the individual and was filed in connection with the earlier-filed application;
a substitute statement meeting the requirements of subsection (d) was filed in the earlier filed application with respect to the individual; or
an assignment meeting the requirements of subsection (e) was executed with respect to the earlier-filed application by the individual and was recorded in connection with the earlier-filed application.
Supplemental and corrected statements; filing additional statements
In general
A statement made under this section may be withdrawn, replaced, or otherwise corrected at any time. If a change is made in the naming of the inventor requiring the filing of 1 or more additional statements under this section, the Director shall establish regulations under which such additional statements may be filed.
Supplemental statements not required
If an individual has executed an oath or declaration under subsection (a) or an assignment meeting the requirements of subsection (e) with respect to an application for patent, no supplemental oath or declaration or further substitute statement shall thereafter be required in connection with the application for patent or any patent issuing thereon.
Savings clause
No patent shall be invalid or unenforceable based upon the failure to comply with a requirement under this section if the failure is remedied as provided under paragraph (1).
.
Relationship to divisional applications
Section 121 is amended by striking
If a 3 divisional application
and all that follows through
inventor.
.
Conforming amendment
The item relating to section 115 in the table of sections for chapter 10 is amended to read as follows:
115. Inventor's oath or
declaration.
.
Filing by other than inventor
Section 118 is amended to read as follows:
Filing by other than inventor
A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties. If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.
.
Specification
Section 112 is amended—
in the first
paragraph by striking The specification
and inserting (a)
In general.—The
specification
;
in the second paragraph—
by striking
The specifications
and inserting (b)
Conclusion.—The
specifications
; and
by striking
applicant regards as his invention
and inserting inventor
or a joint inventor regards as the invention
;
in the third
paragraph, by striking A claim
and inserting (c)
Form.—A
claim
;
in the fourth
paragraph, by striking Subject to the following paragraph,
and
inserting (d) Reference
in dependent forms.—Subject to subsection (e),
;
in the fifth
paragraph, by striking A claim
and inserting (e)
Reference in multiple dependent
form.—A claim
; and
in the last
paragraph, by striking An element
and inserting (f)
Element in claim for a
combination.—An element
.
Remedies for infringement and affirmative defenses thereto
Damages
Section 284 is amended by—
in the first paragraph—
by striking
Upon
and inserting (a)
Award of
damages.—(1) Upon
; and
by adding at the end the following:
In determining a reasonable royalty consideration shall be given to—
the economic value that should be attributed to the novel and non-obvious feature or features of the invention, as distinguished from the economic value attributable to other features, improvements added by the infringer, and the business risks the infringer undertook in commercialization;
the terms of non-exclusive marketplace licensing of the invention; and
other relevant factors in applicable law.
;
by amending the second paragraph to read as follows:
Willful infringement
Increased damages
A court that has determined that the infringer has willfully infringed a patent or patents may increase the damages up to 3 times the amount of damages found or assessed under subsection (a), except that increased damages under this paragraph shall not apply to provisional rights under section 154(d).
Permitted grounds for willfulness
A court may find that an infringer has willfully infringed a patent only if the patent owner presents clear and convincing evidence that—
the infringer, having received adequate written notice from the patentee, after a reasonable opportunity to investigate, thereafter performed 1 or more of the alleged acts of infringement;
the infringer intentionally copied the patented invention with knowledge that it was patented; or
after having been found by a court to have infringed that patent, the infringer engaged in conduct that was not colorably different from the conduct previously found to have infringed the patent, and which resulted in a separate finding of infringement of the same patent.
Written notice
For purposes of paragraph (2), written notice shall be adequate only if such notice—
alleges acts of infringement in a manner sufficient to give the infringer an objectively reasonable apprehension of suit on such patent, and
identifies with particularity each claim of the patent, each product or process that the patent owner alleges infringes the patent, and the relationship of such product or process to such claim, the infringer.
Limitations on willfulness
In general
A court shall not find that an infringer has willfully infringed a patent under paragraph (2) for any period of time during which the infringer had an informed good faith belief that the patent was invalid or unenforceable, or would not be infringed by the conduct later shown to constitute infringement of the patent.
Informed good faith belief
For purposes of this paragraph, an informed good faith belief may be established by—
reasonable reliance on advice of counsel;
evidence that the infringer sought to modify its conduct to avoid infringement once it had discovered the patent; or
other evidence a court may find sufficient to establish such good faith belief.
Evidence
The decision of the infringer not to present evidence of advice of counsel shall have no relevance to a determination of willful infringement under paragraph (2).
Limitation on pleading
Before the date on which a determination has been made that the patent in suit is not invalid, is enforceable, and has been infringed by the infringer, a patentee may not plead, and a court may not determine, that an infringer has willfully infringed the patent. The court’s determination of an infringer’s willfulness shall be made without a jury.
; and
in the third
paragraph, by striking The court
and inserting (c)
Expert
testimony.—The court
.
Attorney's fees
Section 285 is amended to read:
The court shall award, to a prevailing party, fees and other expenses incurred by that party in connection with that proceeding, unless the court finds that the position of the nonprevailing party or parties was substantially justified or that special circumstances make an award unjust.
.
Unenforceability
Section 282 of title 35, United States Code, is amended—
by inserting
(a) In
general.—
before A patent shall be presumed
valid.
; and
by adding at the end the following:
Unenforceability
Permitted grounds for unenforceability
A court may find that a patent is unenforceable only if the patent owner presents clear and convincing evidence that, with respect to the patent at issue the patentee, or a patentee’s agent, or privy before issuance of the patent—
failed to disclose material information, or submitted false material information or statements; and
did so with an intent to mislead or deceive the United States Patent and Trademark Office.
Limitations on unenforceability
A court shall not find that a patent in unenforceable under paragraph (1) if—
the patentee, agent, or privy had an informed good faith belief that the specific information that was not disclosed was not material;
the patentee had no actual or constructive knowledge of the misconduct of an agent or privy, exercised due care in selecting and supervising such agent or privy, and reasonably relied on counsel in obtaining the patent;
establishes good faith by other evidence a court may find sufficient; or
the court has not determined 1 or more claims in the patent at issue in the action to be invalid.
Limitation on pleading
Before the date on which a determination has been made that the patent in suit is not invalid in whole and has been infringed by the infringer, a defendant may not plead, and a court may not determine, that the patent in question is unenforceable.
.
Defense to infringement based on earlier inventor
Section 273 of title 35, United States Code, is amended—
in subsection (a)—
in paragraph (1)—
by
striking of a method
; and
by
striking review period;
and inserting review period;
and
;
in paragraph (2)(B), by striking the semicolon at the end and inserting a period; and
by striking paragraphs (3) and (4);
in subsection (b)—
in paragraph (1)—
by
striking for a method
; and
by
striking at least 1 year before the effective filing date of such
patent, and
and all that follows through the period and inserting
and commercially used, or made substantial preparations for commercial
use of, the subject matter before the effective filing date of the claimed
invention.
;
in paragraph (2)—
by
striking The sale or other disposition of a useful end result produced
by a patented method
and inserting The sale or other disposition
of subject matter that qualifies for the defense set forth in this
section
; and
by
striking a defense under this section with respect to that useful end
result
and inserting such defense
; and
in paragraph (3)—
by striking subparagraph (A); and
by redesignating subparagraphs (B) and (C) as subparagraphs (A) and (B), respectively;
in paragraph (7),
by striking of the patent
and inserting of the claimed
invention
; and
by amending the heading to read as follows:
Special defenses to and exemptions from infringement
.
Table of sections
The item related to section 273 in the table of sections for chapter 28 is amended to read as follows:
.
Effect of extraterritorial infringement
Section 271(f) is repealed.
Post-grant procedures
Post-grant opposition procedures
In general
Chapter 31 is amended to read as follows:
Post-grant review proceedings
Sec.
311. Petition for post-grant review.
312. Timing of petition.
313. Submission of petition.
314. Prohibited filings.
315. Conduct of post-grant review proceedings.
316. Proof and evidentiary standards.
317. Showing of sufficient grounds; institution of post-grant review proceedings.
318. Amendment of the patent.
319. Decision of the Patent Trial and Appeal Board.
320. Effect of decision.
321. Relationship to other pending proceedings.
322. Effect of decisions rendered in civil action on future post-grant review proceedings.
323. Effect of final decision on future proceedings.
Petition for post-grant review
Any person who is not the patent owner may file a petition for cancellation seeking to institute a post-grant review proceeding before the Patent Trial and Appeal Board to cancel as unpatentable any claim of a patent on any ground which might be raised under section 282(a) (2) and (3) (relating to invalidity of the patent or any claim).
Timing of petition
A post-grant review proceeding may be instituted only if the petition for cancellation is filed by a cancellation petitioner—
not later than 12 months after the date the patent was issued or reissued; or
who establishes a substantial reason to believe that the continued existence of the challenged claim causes or is likely to cause the petitioner significant economic harm.
Submission of petition
The petition for cancellation shall—
be accompanied by payment of the post-grant review fee set forth in subsection 41(a);
identify the cancellation petitioner; and
set forth in writing the basis for the cancellation, identifying each claim challenged and providing such information as the Director may require by regulation.
Prohibited filings
No post-grant review proceeding shall be instituted—
under subsection (a) of section 312 if the petition for cancellation identifies the same cancellation petitioner and the same patent as a previous petition for cancellation filed under subsection (a) of section 312; or
under subsection (b) of section 312 if the petition for cancellation identifies the same cancellation petitioner and the same patent as a previous petition for cancellation filed under subsection (b) of section 312.
Conduct of post-grant review proceedings
In general
The Director shall—
establish regulations, in accordance with section 2(b)(2), to govern post-grant review proceedings and their relationship to other proceedings;
prescribe regulations setting forth the standards for showings of substantial reason to believe and significant economic harm under section 312(b) and sufficient grounds in section 317; and
prescribe regulations setting forth procedures for discovery of relevant evidence, including that such discovery shall be limited to evidence directly related to factual assertions advanced by either party in the proceeding, and the procedures for obtaining such evidence shall be consistent with the purpose and nature of the proceeding.
Post-grant regulations
Regulations under subsection (a)(1)—
shall be designed to result in a final decision on a petition for cancellation within 12 months of the institution of the post-grant review proceeding;
shall provide for discovery upon order of the Board;
may prescribe sanctions for abuse of discovery or abuse of process to the extent authorized in United States district courts by rule 11 and rule 37 of the Federal Rules of Civil Procedure;
may provide for protective orders governing the exchange and submission of confidential information; and
shall ensure that any information submitted by the patent owner in support of any amendment entered under section 318 shall be made available to the public as part of the prosecution history of the patent.
considerations
In prescribing regulations under this section, the Director shall take into consideration the effect on the economy, the integrity of the patent system, and the efficient administration of the Office.
Proof and evidentiary standards
In general
The presumption of validity set forth in section 282 shall not apply in a challenge to any patent claim under this chapter.
Burden of proof
The party advancing a proposition under this chapter shall have the burden of proving that proposition.
Showing of sufficient grounds; institution of post-grant review proceedings
Within such time as may be prescribed by regulation, the cancellation petitioner shall file any information known to it that supports its allegation of the unpatentability of any challenged claim. The Patent Trial and Appeal Board shall not institute a post-grant review proceeding unless it determines that the information presented provides sufficient grounds to proceed. If the Patent Trial and Appeal Board does not institute a post-grant review proceeding under this section then the cancellation petitioner may not assert the same grounds against the same claims in any other proceeding within the Office.
Amendment of the patent
In general
In response to a challenge in a petition for cancellation, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways:
Cancel any challenged patent claim.
For each challenged claim, propose a substitute claim that includes all the limitations of the challenged claim.
Amend the patent drawings or otherwise amend the patent other than the claims.
Additional motions
Additional motions to amend may be permitted only for good cause shown.
Scope of claims
No amendment shall enlarge the scope of the claims of the patent. No amendment shall introduce new matter.
Decision of the Patent Trial and Appeal Board
If the post-grant review proceeding is instituted under section 317 and not dismissed under section 320 or subsection (b) of section 323, the Patent Trial and Appeal Board shall issue a final decision with respect to patentability of any patent claim challenged and any new claim added under this section 318.
Effect of decision
In general
Where a final decision of the Patent Trial and Appeal Board is issued under section 319 and the time for appeal has expired or any appeal proceeding has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable and incorporating in the patent by operation of the certificate any new claim determined to be patentable.
New claims
Any new claim held to be patentable and incorporated into a patent in a post-grant review proceeding shall have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by such new claim, or who made substantial preparations therefore, prior to issuance of a certificate under the provisions of subsection (a) of this section.
Relationship to other pending proceedings
Notwithstanding subsection 135(a), sections 251 and 252, and chapter 30, the Director may determine the manner in which any reexamination proceeding, reissue proceeding, interference proceeding, or post-grant review proceeding that is pending during a post-grant review proceeding, may proceed, including providing for stay, transfer, consolidation, or termination of such proceedings.
Effect of decisions rendered in civil action on future post-grant review proceedings
If a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28 establishing that the party has not sustained its burden of proving the invalidity of any patent claim—
that party to the civil action and the privies of that party may not thereafter request a post-grant review proceeding on such patent claim on the basis of any grounds, under the provisions of section 311, which that party or the privies of that party raised or could have raised in such civil action; and
the Office may not thereafter maintain a post-grant review proceeding previously requested by that party or the privies of that party on the basis of such grounds.
Effect of final decision on future proceedings
In general
If a final decision under section 319 is favorable to the patentability of any original or new claim of the patent, the cancellation petitioner may not thereafter, based on any ground which the cancellation petitioner raised during the post-grant review proceeding—
request or pursue a reexamination of such claims;
request or pursue an interference of such claims;
request or pursue a post-grant review proceeding of such claims; or
assert the invalidity of any such claims, in any civil action arising in whole or in part under section 1338 of title 28.
Extension of prohibition
If the final decision is the result of a petition for cancellation under section 312(b), the prohibition under this section shall extend to any ground which the cancellation petitioner raised or could have raised during the post-grant review proceeding.
.
Technical and conforming amendment
The table of chapters is amended to read as follows:
31. Post-grant review proceedings.
.
Submissions by third parties and other quality enhancements
Publication
Section 122(b)(2) is amended—
by striking subparagraph (B); and
in subparagraph (A)—
by striking
(A) An application
and inserting An application
;
and
by redesignating clauses (i) through (iv) as subparagraphs (A) through (D), respectively.
Reexamination
Subsection 303(a) is amended to read as follows:
Within 3 months following the filing of a request for reexamination under the provisions of section 302, by the owner of the patent, the Director shall determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. On his own initiative, and at any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him, cited under the provisions of section 301, or cited by any person other than the owner of the patent under the provisions of section 302 or section 311. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.
.
Preissuance submissions by third parties
Section 122 is amended by adding at the end the following:
Preissuance submissions by third parties
In general
Any person may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of—
the date a notice of allowance under section 151 is mailed in the application for patent; or
either—
6 months after the date on which the application for patent is published under section 122; or
the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent, whichever occurs later.
Other requirements
Any submission under paragraph (1) shall—
set forth a concise description of the asserted relevance of each submitted document;
be accompanied by such fee as the Director may prescribe; and
include a statement by the submitter affirming that the submission was made in compliance with this section.
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Effective dates
Notwithstanding any other provision of law, sections 311 through 318 of title 35, United States Code, as amended by this Act, shall apply to any patent that issues from an original application filed on any date.
Venue and jurisdiction
Venue for patent cases
Section 1400 of title 28, United States Code, is amended by striking subsection (b) and inserting the following:
Any civil action arising under any Act of Congress relating to patents, other than an action for declaratory judgment or an action seeking review of a decision of the Patent Trial and Appeal Board under chapter 13 of title 35, may be brought only—
in the judicial district where either party resides; or
in the judicial district where the defendant has committed acts of infringement and has a regular and established place of business.
Notwithstanding section 1391(c) of this title, for purposes of venue under subsection (b), a corporation shall be deemed to reside in the judicial district in which the corporation has its principal place of business or in the State in which the corporation is incorporated.
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Interlocutory appeals
Subsection (c)(2) of section 1292 of title 28, United States Code, is amended by adding at the end:
of an appeal from an interlocutory order or decree determining construction of claims in a civil action for patent infringement under section 271 of title 35.
Application for an appeal hereunder shall be made to the court within 10 days after entry of the order or decree.
Proceedings in the district court shall be stayed during pendency of the appeal.
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Other statutory and conforming amendments
Fees
Section 41(a) of title 35, United States Code is amended—
by redesignating paragraphs (8), (9), (10), (11), (12), (13), (14), and (15) as paragraphs (10), (11), (12), (13), (14), (15), (16), and (17) respectively; and
by inserting after paragraph (7) the following:
On filing a petition for cancellation under subsection (a) of section 312, a fee established by the Director to recover ½ the estimated average cost to the Office of a post-grant review proceeding.
On filing a petition for cancellation under subsection (b) of section 312, a fee established by the Director to recover the estimated average cost to the Office of a post-grant review proceeding.
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Definitions
Section 100 (as amended by this Act) is further amended—
in subsection
(e), by striking or inter partes reexamination under section
311
;
by inserting the following:
The term cancellation petitioner means the real party in interest requesting cancellation of any claim of a patent under chapter 31 of this title and the privies of the real party in interest.
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Patent Trial and Appeal Board
Section 6 is amended to read as follows:
Patent Trial and Appeal Board
Establishment and composition
There shall be in the Office a Patent Trial and Appeal Board. The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Patent Trial and Appeal Board. The administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Director. Any reference in any Federal law, Executive order, rule, regulation, or delegation of authority, or any document of or pertaining to the Board of Patent Appeals and Interferences is deemed to refer to the Patent Trial and Appeal Board.
Duties
The Patent Trial and Appeal Board shall, on written appeal of an applicant, review adverse decisions of examiners upon application for patents; shall, on written appeal of a patent owner, review adverse decisions of examiners upon patents in reexamination proceedings under chapter 30; shall determine priority and patentability of invention in inventor’s rights contests declared under subsection 135(a); and shall preside over post-grant review proceedings under chapter 31. Each appeal, inventor’s rights contest, and post-grant review proceeding shall be heard by at least 3 members of the Patent Trial and Appeal Board, who shall be designated by the Director. Only the Patent Trial and Appeal Board may grant rehearings.
.
Title 35, United
States Code, is amended by striking Board of Patent Appeals
each
place it appears and inserting in its place Patent Trial and Appeal
Board
.
Authority of panels of administrative patent judges
Section 6 (as amended by this section) is further amended by adding at the end the following:
Additional responsibilities of administrative patent judges
Panels of administrative patent judges, once assigned by the Director, shall have the responsibilities under chapter 32 in connection with post-grant opposition proceedings.
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Rulemaking authority
Section 3(a) is amended by adding at the end the following:
Rulemaking authority
In addition to the authority conferred by other provisions of this title, the Director may promulgate such rules, regulations, and orders as the Director determines appropriate to carry out the provisions of this title or any other law applicable to the United States Patent and Trademark Office or that the Director determines necessary to govern the operation and organization of the Office.
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Reexamination
Section 304 is amended by striking the final 3 sentences.
Section 305 is
amended by striking, in the first sentence, “and reply” and also striking
have
and inserting has
in its place.
Section 315(c) is
amended by striking or could have raised
.
Section 4607 of the Intellectual Property and Communications Omnibus Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law 106–113, is repealed.
Appeal to the court of appeals for the Federal circuit
In general
Section 141 is amended to read as follows:
Appeal to the Court of Appeals for the Federal Circuit
Examinations
An applicant dissatisfied with the final decision in an appeal to the Patent Trial and Appeal Board under section 134 may appeal the decision to the United States Court of Appeals for the Federal Circuit. By filing such an appeal, the applicant waives his right to proceed under section 145.
Reexaminations
A patent owner in any reexamination proceeding who is dissatisfied with the final decision in an appeal to the Patent Trial and Appeal Board under section 134 may appeal the decision to the United States Court of Appeals for the Federal Circuit.
Inventor’s rights contest
A party to an inventor’s rights contest dissatisfied with the final decision of the Patent Trial and Appeal Board on the interference may appeal the decision to the United States Court of Appeals for the Federal Circuit.
Post-grant review
A party to a post-grant review proceeding dissatisfied with the final decision of the Patent Trial and Appeal Board under section 319 may appeal the decision only to the United States Court of Appeals for the Federal Circuit. Any decision of the Patent Trial and Appeal Board under subsection 312(b) or section 317 shall be final and nonappealable. A decision by the Board under section 320 not to issue a final decision under subsection 319 as a result of settlement shall also be final and nonappealable.
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Certain appeals
Subsection 1295(a)(4)(A) of title 28, United States Code, is amended to read as follows:
the Patent Trial and Appeal Board of the United States Patent and Trademark Office with respect to patent applications, reexaminations, and inventor’s rights contests, at the instance of an applicant for a patent or any party to a patent interference, reexamination, or post-grant review proceeding, and any such appeal shall waive any right of such applicant or party to proceed under section 145 or 146 of title 35;
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Effective date
Except as otherwise provided in this Act, the provisions of this Act shall take effect 12 months after the date of enactment of this Act and shall apply to any patent issued on or after that effective date.