H.R. 3309 — what changed
Innovation Act
From Reported in House to Engrossed in House. 5 sections amended between Reported in House and Engrossed in House.
Sec. 3 Patent infringement actions
Pleading requirements—
Amendment— Chapter 29 of title 35, United States Code, is amended by inserting after section 281 the following:
“281A. Pleading requirements for patent infringement actions
“(a) Pleading requirements—Except as provided in subsection (b), in a civil action in which a party asserts a claim for relief arising under any Act of Congress relating to patents, a party alleging infringement shall include in the initial complaint, counterclaim, or cross-claim for patent infringement, unless the information is not reasonably accessible to such party, the following:
“(1) An identification of each patent allegedly infringed.
“(2) An identification of each claim of each patent identified under paragraph (1) that is allegedly infringed.
“(3) For each claim identified under paragraph (2), an identification of each accused process, machine, manufacture, or composition of matter (referred to in this section as an accused instrumentality) alleged to infringe the claim.
“(4) For each accused instrumentality identified under paragraph (3), an identification with particularity, if known, of—
“(A) the name or model number of each accused instrumentality; or
“(B) if there is no name or model number, a description of each accused instrumentality.
“(5) For each accused instrumentality identified under paragraph (3), a clear and concise statement of—
“(A) where each element of each claim identified under paragraph (2) is found within the accused instrumentality; and
“(B) with detailed specificity, how each limitation of each claim identified under paragraph (2) is met by the accused instrumentality.
“(6) For each claim of indirect infringement, a description of the acts of the alleged indirect infringer that contribute to or are inducing the direct infringement.
“(7) A description of the authority of the party alleging infringement to assert each patent identified under paragraph (1) and of the grounds for the court’s jurisdiction.
“(8) A clear and concise description of the principal business, if any, of the party alleging infringement.
“(9) A list of each complaint filed, of which the party alleging infringement has knowledge, that asserts or asserted any of the patents identified under paragraph (1).
“(10) For each patent identified under paragraph (1), whether a standard-setting body has specifically declared such patent to be essential, potentially essential, or having potential to become essential to that standard-setting body, and whether the United States Government or a foreign government has imposed specific licensing requirements with respect to such patent.
“(b) Information not readily accessible—If information required to be disclosed under subsection (a) is not readily accessible to a party, that information may instead be generally described, along with an explanation of why such undisclosed information was not readily accessible, and of any efforts made by such party to access such information.
“(c) Confidential information—A party required to disclose information described under subsection (a) may file, under seal, information believed to be confidential, with a motion setting forth good cause for such sealing. If such motion is denied by the court, the party may seek to file an amended complaint.
“(d) Exemption—A civil action that includes a claim for relief arising under section 271(e)(2) shall not be subject to the requirements of subsection (a).”
Conforming amendment— The table of sections for chapter 29 of title 35, United States Code, is amended by inserting after the item relating to section 281 the following new item:
Fees and other expenses—
Amendment— Section 285 of title 35, United States Code, is amended to read as follows:
“285. Fees and other expenses
“(a) Award—The court shall award, to a prevailing party, reasonable fees and other expenses incurred by that party in connection with a civil action in which any party asserts a claim for relief arising under any Act of Congress relating to patents, unless the court finds that the position and conduct of the nonprevailing party or parties were reasonably justified in law and fact or that special circumstances (such as severe economic hardship to a named inventor) make an award unjust.
“(b) Certification and recovery—Upon motion of any party to the action, the court shall require another party to the action to certify whether or not the other party will be able to pay an award of fees and other expenses if such an award is made under subsection (a). If a nonprevailing party is unable to pay an award that is made against it under subsection (a), the court may make a party that has been joined under section 299(d) with respect to such party liable for the unsatisfied portion of the award.
“(c) Covenant not to sue—A party to a civil action that asserts a claim for relief arising under any Act of Congress relating to patents against another party, and that subsequently unilaterally extends to such other party a covenant not to sue for infringement with respect to the patent or patents at issue, shall be deemed to be a nonprevailing party (and the other party the prevailing party) for purposes of this section, unless the party asserting such claim would have been entitled, at the time that such covenant was extended, to voluntarily dismiss the action or claim without a court order under Rule 41 of the Federal Rules of Civil Procedure.”
Conforming amendment and amendment—
Conforming amendment— The item relating to section 285 of the table of sections for chapter 29 of title 35, United States Code, is amended to read as follows:
Amendment— Section 273 of title 35, United States Code, is amended by striking subsections (f) and (g).
Effective date— The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after the first day of the 6-month period ending on that effective date.
Joinder of interested parties— Section 299 of title 35, United States Code, is amended by adding at the end the following new subsection:
“(d) Joinder of interested parties
“(1) Joinder—In a civil action arising under any Act of Congress relating to patents in which fees and other expenses have been awarded under section 285 to a prevailing party defending against an allegation of infringement of a patent claim, and in which the nonprevailing party alleging infringement is unable to pay the award of fees and other expenses, the court shall grant a motion by the prevailing party to join an interested party if such prevailing party shows that the nonprevailing party has no substantial interest in the subject matter at issue other than asserting such patent claim in litigation.
“(2) Limitation on joinder
“(A) Discretionary denial of motion—The court may deny a motion to join an interested party under paragraph (1) if—
“(i) the interested party is not subject to service of process; or
“(ii) joinder under paragraph (1) would deprive the court of subject matter jurisdiction or make venue improper.
“(B) Required denial of motion—The court shall deny a motion to join an interested party under paragraph (1) if—
“(i) the interested party did not timely receive the notice required by paragraph (3); or
“(ii) within 30 days after receiving the notice required by paragraph (3), the interested party renounces, in writing and with notice to the court and the parties to the action, any ownership, right, or direct financial interest (as described in paragraph (4)) that the interested party has in the patent or patents at issue.
“(3) Notice requirement—An interested party may not be joined under paragraph (1) unless it has been provided actual notice, within 30 days after the date on which it has been identified in the initial disclosure provided under section 290(b), that it has been so identified and that such party may therefore be an interested party subject to joinder under this subsection. Such notice shall be provided by the party who subsequently moves to join the interested party under paragraph (1), and shall include language that—
“(A) identifies the action, the parties thereto, the patent or patents at issue, and the pleading or other paper that identified the party under section 290(b); and
“(B) informs the party that it may be joined in the action and made subject to paying an award of fees and other expenses under section 285(b) if—
“(i) fees and other expenses are awarded in the action against the party alleging infringement of the patent or patents at issue under section 285(a);
“(ii) the party alleging infringement is unable to pay the award of fees and other expenses;
“(iii) the party receiving notice under this paragraph is determined by the court to be an interested party; and
“(iv) the party receiving notice under this paragraph has not, within 30 days after receiving such notice, renounced in writing, and with notice to the court and the parties to the action, any ownership, right, or direct financial interest (as described in paragraph (4)) that the interested party has in the patent or patents at issue.
“(4) Interested party defined—In this subsection, the term interested party means a person, other than the party alleging infringement, that—
“(A) is an assignee of the patent or patents at issue;
“(B) has a right, including a contingent right, to enforce or sublicense the patent or patents at issue; or
“(C) has a direct financial interest in the patent or patents at issue, including the right to any part of an award of damages or any part of licensing revenue, except that a person with a direct financial interest does not include—
“(i) an attorney or law firm providing legal representation in the civil action described in paragraph (1) if the sole basis for the financial interest of the attorney or law firm in the patent or patents at issue arises from the attorney or law firm’s receipt of compensation reasonably related to the provision of the legal representation; or
“(ii) a person whose sole financial interest in the patent or patents at issue is ownership of an equity interest in the party alleging infringement, unless such person also has the right or ability to influence, direct, or control the civil action.”
Discovery limits—
Amendment— Chapter 29 of title 35, United States Code, is amended by adding at the end the following new section:
“299A. Discovery in patent infringement action
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“(a) Discovery in patent infringement action—Except as provided in subsection (b), subsections (b) and (c), in a civil action arising under any Act of Congress relating to patents, if the court determines that a ruling relating to the construction of terms used in a patent claim asserted in the complaint is required, discovery shall be limited, until such ruling is issued, to information necessary for the court to determine the meaning of the terms used in the patent claim, including any interpretation of those terms used to support the claim of infringement.
“(b) Discretion To expand scope of discovery
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“(1) Timely resolution of actions—If, actions—In the case of an action under any provision of Federal law (including the amendments made by the Drug Price Competition and Patent Term Restoration Act of 1984 (Public Law 98–417)), an action that includes a claim for relief arising under section 271(e)), for which resolution within a specified period of time of a civil action arising under any Act of Congress relating to patents will necessarily affect the rights of a party with respect to the patent, the court shall permit discovery, in addition to the discovery authorized under subsection (a), before the ruling described in subsection (a) is issued as necessary to ensure timely resolution of the action.
“(2) Resolution of motions—When necessary to resolve a motion properly raised by a party before a ruling relating to the construction of terms described in subsection (a) is issued, the court may allow limited discovery in addition to the discovery authorized under subsection (a) as necessary to resolve the motion.
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“(3) Special circumstances—In special circumstances that would make denial of discovery a manifest injustice, the court may permit discovery, in addition to the discovery authorized under subsection (a), as necessary to prevent the manifest injustice.”injustice.
added “(4) Actions seeking relief based on competitive harm—The limitation on discovery provided under subsection (a) shall not apply to an action seeking a preliminary injunction to redress harm arising from the use, sale, or offer for sale of any allegedly infringing instrumentality that competes with a product sold or offered for sale, or a process used in manufacture, by a party alleging infringement.
added “(c) Exclusion from discovery limitation—The parties may voluntarily consent to be excluded, in whole or in part, from the limitation on discovery provided under subsection (a) if at least one plaintiff and one defendant enter into a signed stipulation, to be filed with and signed by the court. With regard to any discovery excluded from the requirements of subsection (a) under the signed stipulation, with respect to such parties, such discovery shall proceed according to the Federal Rules of Civil Procedure.”
Conforming amendment— The table of sections for chapter 29 of title 35, United States Code, is amended by adding at the end the following new item:
Sense of Congress— It is the sense of Congress that it is an abuse of the patent system and against public policy for a party to send out purposely evasive demand letters to end users alleging patent infringement. Demand letters sent should, at the least, include basic information about the patent in question, what is being infringed, and how it is being infringed. Any actions or litigation that stem from these types of purposely evasive demand letters to end users should be considered a fraudulent or deceptive practice and an exceptional circumstance when considering whether the litigation is abusive.
Demand letters— Section 284 of title 35, United States Code, is amended—
in the first undesignated paragraph, by striking “Upon finding” and inserting “(a) In general.—Upon finding”;
in the second undesignated paragraph, by striking “When the damages” and inserting “(b) Assessment by court; treble damages.—When the damages”;
by inserting after subsection (b), as designated by paragraph (2) of this subsection, the following:
changed “(c) Willful infringement—A claimant seeking to establish willful infringement may not rely on evidence of pre-suit notification of infringement unless that notification identifies with particularity the asserted patent, identifies the product or process accused, identifies the ultimate parent entity of the claimant, and explains with particularity, to the extent possible following a reasonable investigation or inquiry, how the product or process infringes one or more claims of the patent.”
in the last undesignated paragraph, by striking “The court” and inserting “(d) Expert testimony.—The court”.
Effective date— Except as otherwise provided in this section, the amendments made by this section shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after that date.
Sec. 6 Procedures and practices to implement recommendations of the Judicial Conference
Judicial Conference rules and procedures on discovery burdens and costs—
Rules and procedures— The Judicial Conference of the United States, using existing resources, shall develop rules and procedures to implement the issues and proposals described in paragraph (2) to address the asymmetries in discovery burdens and costs in any civil action arising under any Act of Congress relating to patents. Such rules and procedures shall include how and when payment for document discovery in addition to the discovery of core documentary evidence is to occur, and what information must be presented to demonstrate financial capacity before permitting document discovery in addition to the discovery of core documentary evidence.
Rules and procedures to be considered— The rules and procedures required under paragraph (1) should address each of the following issues and proposals:
Discovery of core documentary evidence— Whether and to what extent each party to the action is entitled to receive core documentary evidence and shall be responsible for the costs of producing core documentary evidence within the possession or control of each such party, and whether and to what extent each party to the action may seek nondocumentary discovery as otherwise provided in the Federal Rules of Civil Procedure.
Electronic communication— If the parties determine that the discovery of electronic communication is appropriate, whether such discovery shall occur after the parties have exchanged initial disclosures and core documentary evidence and whether such discovery shall be in accordance with the following:
Any request for the production of electronic communication shall be specific and may not be a general request for the production of information relating to a product or business.
Each request shall identify the custodian of the information requested, the search terms, and a time frame. The parties shall cooperate to identify the proper custodians, the proper search terms, and the proper time frame.
A party may not submit production requests to more than 5 custodians, unless the parties jointly agree to modify the number of production requests without leave of the court.
The court may consider contested requests for up to 5 additional custodians per producing party, upon a showing of a distinct need based on the size, complexity, and issues of the case.
If a party requests the discovery of electronic communication for additional custodians beyond the limits agreed to by the parties or granted by the court, the requesting party shall bear all reasonable costs caused by such additional discovery.
Additional document discovery— Whether the following should apply:
In general— Each party to the action may seek any additional document discovery otherwise permitted under the Federal Rules of Civil Procedure, if such party bears the reasonable costs, including reasonable attorney’s fees, of the additional document discovery.
Requirements for additional document discovery— Unless the parties mutually agree otherwise, no party may be permitted additional document discovery unless such a party posts a bond, or provides other security, in an amount sufficient to cover the expected costs of such additional document discovery, or makes a showing to the court that such party has the financial capacity to pay the costs of such additional document discovery.
Limits on additional document discovery— A court, upon motion, may determine that a request for additional document discovery is excessive, irrelevant, or otherwise abusive and may set limits on such additional document discovery.
Good cause modification— A court, upon motion and for good cause shown, may modify the requirements of subparagraphs (A) and (B) and any definition under paragraph (3). Not later than 30 days after the pretrial conference under Rule 16 of the Federal Rules of Civil Procedure, the parties shall jointly submit any proposed modifications of the requirements of subparagraphs (A) and (B) and any definition under paragraph (3), unless the parties do not agree, in which case each party shall submit any proposed modification of such party and a summary of the disagreement over the modification.
Computer code— A court, upon motion and for good cause shown, may determine that computer code should be included in the discovery of core documentary evidence. The discovery of computer code shall occur after the parties have exchanged initial disclosures and other core documentary evidence.
Discovery sequence and scope— Whether the parties shall discuss and address in the written report filed pursuant to Rule 26(f) of the Federal Rules of Civil Procedure the views and proposals of each party on the following:
When the discovery of core documentary evidence should be completed.
Whether additional document discovery will be sought under subparagraph (C).
Any issues about infringement, invalidity, or damages that, if resolved before the additional discovery described in subparagraph (C) commences, might simplify or streamline the case, including the identification of any terms or phrases relating to any patent claim at issue to be construed by the court and whether the early construction of any of those terms or phrases would be helpful.
Definitions— In this subsection:
Core documentary evidence— The term core documentary evidence—
includes—
documents relating to the conception of, reduction to practice of, and application for, the patent or patents at issue;
documents sufficient to show the technical operation of the product or process identified in the complaint as infringing the patent or patents at issue;
documents relating to potentially invalidating prior art;
documents relating to any licensing of, or other transfer of rights to, the patent or patents at issue before the date on which the complaint is filed;
documents sufficient to show profit attributable to the claimed invention of the patent or patents at issue;
documents relating to any knowledge by the accused infringer of the patent or patents at issue before the date on which the complaint is filed;
documents relating to any knowledge by the patentee of infringement of the patent or patents at issue before the date on which the complaint is filed;
documents relating to any licensing term or pricing commitment to which the patent or patents may be subject through any agency or standard-setting body; and
documents sufficient to show any marking or other notice provided of the patent or patents at issue; and
does not include computer code, except as specified in paragraph (2)(C)(v).
Electronic communication— The term electronic communication means any form of electronic communication, including email, text message, or instant message.
Implementation by the District Courts— Not later than 6 months after the date on which the Judicial Conference has developed the rules and procedures required by this subsection, each United States district court and the United States Court of Federal Claims shall revise the applicable local rules for such court to implement such rules and procedures.
Authority for Judicial Conference to review and modify—
Study of efficacy of rules and procedures— The Judicial Conference shall study the efficacy of the rules and procedures required by this subsection during the 4-year period beginning on the date on which such rules and procedures by the district courts and the United States Court of Federal Claims are first implemented. The Judicial Conference may modify such rules and procedures following such 4-year period.
Initial modifications— Before the expiration of the 4-year period described in subparagraph (A), the Judicial Conference may modify the requirements under this subsection—
by designating categories of “core documentary evidence”, in addition to those designated under paragraph (3)(A), as the Judicial Conference determines to be appropriate and necessary; and
as otherwise necessary to prevent a manifest injustice, the imposition of a requirement the costs of which clearly outweigh its benefits, or a result that could not reasonably have been intended by the Congress.
Judicial Conference patent case management— The Judicial Conference of the United States, using existing resources, shall develop case management procedures to be implemented by the United States district courts and the United States Court of Federal Claims for any civil action arising under any Act of Congress relating to patents, including initial disclosure and early case management conference practices that—
will identify any potential dispositive issues of the case; and
focus on early summary judgment motions when resolution of issues may lead to expedited disposition of the case.
Revision of form for patent infringement—
Elimination of form— The Supreme Court, using existing resources, shall eliminate Form 18 in the Appendix to the Federal Rules of Civil Procedure (relating to Complaint for Patent Infringement), effective on the date of the enactment of this Act.
Revised form— The Supreme Court may prescribe a new form or forms setting out model allegations of patent infringement that, at a minimum, notify accused infringers of the asserted claim or claims, the products or services accused of infringement, and the plaintiff’s theory for how each accused product or service meets each limitation of each asserted claim. The Judicial Conference should exercise the authority under section 2073 of title 28, United States Code, to make recommendations with respect to such new form or forms.
Protection of intellectual-Property licenses in bankruptcy—
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In general— Section 1520(a) 1522 of title 11, United States Code, is amended—amended by adding at the end the following:
added “(e) Section 365(n) shall apply to cases under this chapter. If the foreign representative rejects or repudiates a contract under which the debtor is a licensor of intellectual property, the licensee under such contract shall be entitled to make the election and exercise the rights described in section 365(n).”
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in paragraph (3), by striking “; and” and inserting a semicolon;
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in paragraph (4), by striking the period at the end and inserting “; and”; and
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by inserting at the end the following new paragraph:
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“(5) section 365(n) applies to intellectual property of which the debtor is a licensor or which the debtor has transferred.”
Trademarks—
In general— Section 101(35A) of title 11, United States Code, is amended—
in subparagraph (E), by striking “or”;
in subparagraph (F), by striking “title 17;” and inserting “title 17; or”; and
by adding after subparagraph (F) the following new subparagraph:
“(G) a trademark, service mark, or trade name, as those terms are defined in section 45 of the Act of July 5, 1946 (commonly referred to as the “Trademark Act of 1946”) (15 U.S.C. 1127);”
Conforming amendment— Section 365(n)(2) of title 11, United States Code, is amended—
in subparagraph (B)—
by striking “royalty payments” and inserting “royalty or other payments”; and
by striking “and” after the semicolon;
in subparagraph (C), by striking the period at the end of clause (ii) and inserting “; and”; and
by adding at the end the following new subparagraph:
“(D) in the case of a trademark, service mark, or trade name, the trustee shall not be relieved of a contractual obligation to monitor and control the quality of a licensed product or service.”
Effective date— The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to any case that is pending on, or for which a petition or complaint is filed on or after, such date of enactment.
Sec. 7 Small business education, outreach, and information access
Small business education and outreach—
Resources for small business— Using existing resources, the Director shall develop educational resources for small businesses to address concerns arising from patent infringement.
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Small Business Patent Ombudsman—outreach— The Patent Ombudsman Program established under section 28 of the Leahy-Smith America Invents Act (Public Law 112–29; 125 Stat. 339; 35 U.S.C. 2 note) shall coordinate with the existing small business patent outreach programs of the Office, and the relevant offices at the Small Business Administration and the Minority Business Development Agency, to shall provide education and awareness on abusive patent litigation practices. The Director may give special consideration to the unique needs of small firms owned by disabled veterans, service-disabled veterans, women, and minority entrepreneurs in planning and executing the outreach efforts by the Office.
Improving Information Transparency for Small Business and the United States Patent and Trademark Office users—
Web site— Using existing resources, the Director shall create a user-friendly section on the official Web site of the Office to notify the public when a patent case is brought in Federal court and, with respect to each patent at issue in such case, the Director shall include—
information disclosed under subsections (b) and (d) of section 290 of title 35, United States Code, as added by section 4(a) of this Act; and
any other information the Director determines to be relevant.
Format— In order to promote accessibility for the public, the information described in paragraph (1) shall be searchable by patent number, patent art area, and entity.
Sec. 8 Studies on patent transactions, quality, and examination
Study on Secondary Market Oversight for Patent Transactions To Promote Transparency and Ethical Business Practices—
Study required— The Director, in consultation with the Secretary of Commerce, the Secretary of the Treasury, the Chairman of the Securities and Exchange Commission, the heads of other relevant agencies, and interested parties, shall, using existing resources of the Office, conduct a study—
to develop legislative recommendations to ensure greater transparency and accountability in patent transactions occurring on the secondary market;
to examine the economic impact that the patent secondary market has on the United States;
to examine licensing and other oversight requirements that may be placed on the patent secondary market, including on the participants in such markets, to ensure that the market is a level playing field and that brokers in the market have the requisite expertise and adhere to ethical business practices; and
to examine the requirements placed on other markets.
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Report on study— Not later than 1 year 18 months after the date of the enactment of this Act, the Director shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director from the study required under paragraph (1).
Study on patents owned by the United States Government—
Study required— The Director, in consultation with the heads of relevant agencies and interested parties, shall, using existing resources of the Office, conduct a study on patents owned by the United States Government that—
examines how such patents are licensed and sold, and any litigation relating to the licensing or sale of such patents;
provides legislative and administrative recommendations on whether there should be restrictions placed on patents acquired from the United States Government;
examines whether or not each relevant agency maintains adequate records on the patents owned by such agency, specifically whether such agency addresses licensing, assignment, and Government grants for technology related to such patents; and
provides recommendations to ensure that each relevant agency has an adequate point of contact that is responsible for managing the patent portfolio of the agency.
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Report on study— Not later than 6 months 1 year after the date of the enactment of this Act, the Director shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations of the Director from the study required under paragraph (1).
Study on Patent Quality and Access to the Best Information during Examination—
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GAO study— The Comptroller General of the United States shall shall, using existing resources, conduct a study on patent examination at the Office and the technologies available to improve examination and improve patent quality.
Contents of the study— The study required under paragraph (1) shall include the following:
An examination of patent quality at the Office.
An examination of ways to improve patent quality, specifically through technology, that shall include examining best practices at foreign patent offices and the use of existing off-the-shelf technologies to improve patent examination.
A description of how patents are classified.
An examination of procedures in place to prevent double patenting through filing by applicants in multiple art areas.
An examination of the types of off-the-shelf prior art databases and search software used by foreign patent offices and governments, particularly in Europe and Asia, and whether those databases and search tools could be used by the Office to improve patent examination.
An examination of any other areas the Comptroller General determines to be relevant.
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Report on study— Not later than 6 months 1 year after the date of the enactment of this Act, the Comptroller General shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations from the study required by this subsection, including recommendations for any changes to laws and regulations that will improve the examination of patent applications and patent quality.
Study on Patent Small Claims Court—
Study Required—
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In general— The Director of the Administrative Office of the United States Courts, in consultation with the Director of the Federal Judicial Center and the United States Patent and Trademark Office, shall, using existing resources, conduct a study to examine the idea of developing a pilot program for patent small claims courts procedures in certain judicial districts within the existing patent pilot program mandated by Public Law 111–349.
Contents of study— The study under subparagraph (A) shall examine—
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the number of and qualifications necessary criteria for judges that could serve on such using small claims courts;procedures;
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how such small claims courts would be designated and the necessary criteria for such designation;
renumbered
was (5)(2)(3)(5)
the costs that would be incurred for establishing, maintaining, and operating such a pilot program; and
added
the steps that would be taken to ensure that the procedures used in the pilot program are not misused for abusive patent litigation.
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the steps that would be taken to ensure that the courts in the pilot program are not misused for abusive patent litigation.
Report on study— Not later than 1 year after the date of the enactment of this Act, the Director of the Administrative Office of the United States Courts shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director of the Administrative Office from the study required under paragraph (1).
Study on demand letters—
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Study— The Director, in consultation with the heads of other appropriate agencies, shall shall, using existing resources, conduct a study of the prevalence of the practice of sending patent demand letters in bad faith and the extent to which that practice may, through fraudulent or deceptive practices, impose a negative impact on the marketplace.
Report to congress— Not later than 1 year after the date of the enactment of this Act, the Director shall submit a report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the findings and recommendations of the Director from the study required under paragraph (1).
Patent demand letter defined— In this subsection, the term “patent demand letter” means a written communication relating to a patent that states or indicates, directly or indirectly, that the recipient or anyone affiliated with the recipient is or may be infringing the patent.
Study on business method patent quality—
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GAO study— The Comptroller General of the United States shall shall, using existing resources, conduct a study on the volume and nature of litigation involving business method patents.
Contents of study— The study required under paragraph (1) shall focus on examining the quality of business method patents asserted in suits alleging patent infringement, and may include an examination of any other areas that the Comptroller General determines to be relevant.
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Report to congress— Not later than 6 months 1 year after the date of the enactment of this Act, the Comptroller General shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations from the study required by this subsection, including recommendations for any changes to laws or regulations that the Comptroller General considers appropriate on the basis of the study.
added
Study on impact of legislation on ability of individuals and small businesses to protect exclusive rights to inventions and discoveries—
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Study required— The Director, in consultation with the Secretary of Commerce, the Director of the Administrative Office of the United States Courts, the Director of the Federal Judicial Center, the heads of other relevant agencies, and interested parties, shall, using existing resources of the Office, conduct a study to examine the economic impact of sections 3, 4, and 5 of this Act, and any amendments made by such sections, on the ability of individuals and small businesses owned by women, veterans, and minorities to assert, secure, and vindicate the constitutionally guaranteed exclusive right to inventions and discoveries by such individuals and small business.
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Report on study— Not later than 2 years after the date of the enactment of this Act, the Director shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the findings and recommendations of the Director from the study required under paragraph (1).
Sec. 9 Improvements and technical corrections to the Leahy-Smith America Invents Act
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Repeal of civil action To obtain a patent—
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Repeal— Section 145 of title 35, United States Code, is repealed.
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Conforming amendments—
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Federal Circuit jurisdiction— Section 1295(a)(4) of title 28, United States Code, is amended—
removed
in subparagraph (A), by striking “except that an applicant or a party” and all that follows through the end of the subparagraph and inserting the following: “except that a party to a derivation proceeding may also have remedy by civil action under section 146 of title 35; an appeal under this subparagraph of a decision of the Board with respect to a derivation proceeding shall waive the right of such party to proceed under section 146 of title 35;”; and
removed
in subparagraph (C), by striking “section 145, 146, or” and inserting “section 146 or”.
removed
Federal Circuit appeal— Section 141(a) of title 35, United States Code, is amended—
removed
by striking “may appeal the Board’s decision to” and inserting “may appeal the Board’s decision only to”; and
removed
by striking the second sentence.
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Adjustment of patent term— Section 154(b)(1)(A)(iii) of title 35, United States Code, is amended by striking “section 141, 145, or 146” and inserting “section 141 or 146”.
removed
Clerical amendment— The table of sections for chapter 13 of title 35, United States Code, is amended by repealing the item relating to section 145.
removed
Effective date— The amendments made by this subsection shall take effect on the date of the enactment of this Act and apply to any proceeding in which a decision is made by the Patent Trial and Appeal Board on or after such date of enactment.
renumbered
was (3)
Post-Grant review amendment— Section 325(e)(2) of title 35, United States Code is amended by striking “or reasonably could have raised”.
added
Use of district-Court claim construction in post-Grant and inter partes reviews—
removed
Use of district-Court claim construction in post-Grant and inter partes reviews—
renumbered
was (4)(2)
Inter partes review— Section 316(a) of title 35, United States Code, is amended—
renumbered
was (4)(2)(3)
in paragraph (12), by striking “; and” and inserting a semicolon;
renumbered
was (4)(2)(4)
in paragraph (13), by striking the period at the end and inserting “; and”; and
renumbered
was (4)(2)(5)
by adding at the end the following new paragraph:
“(14) providing that for all purposes under this chapter—
“(A) each claim of a patent shall be construed as such claim would be in a civil action to invalidate a patent under section 282(b), including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent; and
“(B) if a court has previously construed the claim or a claim term in a civil action in which the patent owner was a party, the Office shall consider such claim construction.”
renumbered
was (4)(3)
Post-grant review— Section 326(a) of title 35, United States Code, is amended—
renumbered
was (4)(3)(3)
in paragraph (11), by striking “; and” and inserting a semicolon;
renumbered
was (4)(3)(4)
in paragraph (12), by striking the period at the end and inserting “; and”; and
renumbered
was (4)(3)(5)
by adding at the end the following new paragraph:
“(13) providing that for all purposes under this chapter—
“(A) each claim of a patent shall be construed as such claim would be in a civil action to invalidate a patent under section 282(b), including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent; and
“(B) if a court has previously construed the claim or a claim term in a civil action in which the patent owner was a party, the Office shall consider such claim construction.”
renumbered
was (4)(4)
Technical and conforming amendment— Section 18(a)(1)(A) of the Leahy-Smith America Invents Act (Public Law 112–29; 126 Stat. 329; 35 U.S.C. 321 note) is amended by striking “Section 321(c)” and inserting “Sections 321(c) and 326(a)(13)”.
renumbered
was (4)(5)
Effective date— The amendments made by this subsection shall take effect upon the expiration of the 90-day period beginning on the date of the enactment of this Act, and shall apply to any proceeding under chapter 31 or 32 of title 35, United States Code, as the case may be, for which the petition for review is filed on or after such effective date.
added
Codification of the double-Patenting doctrine for first-Inventor-To-File patents—
removed
Codification of the double-Patenting doctrine for first-Inventor-To-File patents—
renumbered
was (5)(2)
Amendment— Chapter 10 of title 35, United States Code, is amended by adding at the end the following new section:
“106. Prior art in cases of double patenting
“A claimed invention of a patent issued under section 151 (referred to as the first patent) that is not prior art to a claimed invention of another patent (referred to as the second patent) shall be considered prior art to the claimed invention of the second patent for the purpose of determining the nonobviousness of the claimed invention of the second patent under section 103 if—
“(1) the claimed invention of the first patent was effectively filed under section 102(d) on or before the effective filing date of the claimed invention of the second patent;
“(2) either—
added “(A) the first patent and second patent name the same individual or individuals as the inventor; or
removed
“(A) the first patent and second patent name the same inventor; or
“(B) the claimed invention of the first patent would constitute prior art to the claimed invention of the second patent under section 102(a)(2) if an exception under section 102(b)(2) were deemed to be inapplicable and the claimed invention of the first patent was, or were deemed to be, effectively filed under section 102(d) before the effective filing date of the claimed invention of the second patent; and
“(3) the patentee of the second patent has not disclaimed the rights to enforce the second patent independently from, and beyond the statutory term of, the first patent.”
renumbered
was (5)(3)
Regulations— The Director shall promulgate regulations setting forth the form and content of any disclaimer required for a patent to be issued in compliance with section 106 of title 35, United States Code, as added by paragraph (1). Such regulations shall apply to any disclaimer filed after a patent has issued. A disclaimer, when filed, shall be considered for the purpose of determining the validity of the patent under section 106 of title 35, United States Code.
renumbered
was (5)(4)
Conforming amendment— The table of sections for chapter 10 of title 35, United States Code, is amended by adding at the end the following new item:
added
Exclusive rule— A patent subject to section 106 of title 35, United States Code, as added by paragraph (1), shall not be held invalid on any nonstatutory, double-patenting ground based on a patent described in section 3(n)(1) of the Leahy-Smith America Invents Act (35 U.S.C. 100 note).
added
Effective date— The amendments made by this subsection shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to a patent or patent application only if both the first and second patents described in section 106 of title 35, United States Code, as added by paragraph (1), are patents or patent applications that are described in section 3(n)(1) of the Leahy-Smith America Invents Act (35 U.S.C. 100 note).
added
PTO patent reviews—
added
Clarification—
removed
Exclusive rule— A patent subject to section 106 of title 35, United States Code, as added by paragraph (1), shall not be held invalid on any nonstatutory, double-patenting ground.
removed
Effective date— The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to a patent or patent application only if both the first and second patents described in section 106 of title 35, United States Code, as added by paragraph (1), are patents or patent applications that are described in section 3(n)(1) of the Leahy-Smith America Invents Act (35 U.S.C. 100 note).
removed
PTO patent reviews—
removed
Clarification—
renumbered
was (6)(2)(2)
Scope of prior art— Section 18(a)(1)(C)(i) of the Leahy-Smith America Invents Act (35 U.S.C. 321 note) is amended by striking “section 102(a)” and inserting “subsection (a) or (e) of section 102”.
renumbered
was (6)(2)(3)
Effective date— The amendment made by subparagraph (A) shall take effect on the date of the enactment of this Act and shall apply to any proceeding pending on, or filed on or after, such date of enactment.
renumbered
was (6)(3)
Authority to waive fee— Subject to available resources, the Director may waive payment of a filing fee for a transitional proceeding described under section 18(a) of the Leahy-Smith America Invents Act (35 U.S.C. 321 note).
added
Clarification of limits on patent term adjustment—
removed
Clarification of limits on patent term adjustment—
renumbered
was (7)(2)
Amendments— Section 154(b)(1)(B) of title 35, United States Code, is amended—
renumbered
was (7)(2)(3)
in the matter preceding clause (i), by striking “not including—” and inserting “the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued, not including—”;
renumbered
was (7)(2)(4)
in clause (i), by striking “consumed by continued examination of the application requested by the applicant” and inserting “consumed after continued examination of the application is requested by the applicant”;
renumbered
was (7)(2)(5)
in clause (iii), by striking the comma at the end and inserting a period; and
renumbered
was (7)(2)(6)
by striking the matter following clause (iii).
added
Effective date— The amendments made by this subsection shall take effect on the date of the enactment of this Act and apply to any patent application that is pending on, or filed on or after, such date of enactment.
added
Clarification of jurisdiction—
removed
Effective date— The amendments made by this subsection shall take effect on the date of the enactment of this Act and apply to any patent application or patent that is pending on, or filed on or after, such date of enactment.
removed
Clarification of jurisdiction—
renumbered
was (8)(2)
In general— The Federal interest in preventing inconsistent final judicial determinations as to the legal force or effect of the claims in a patent presents a substantial Federal issue that is important to the Federal system as a whole.
renumbered
was (8)(3)
Applicability— Paragraph (1)—
renumbered
was (8)(3)(3)
shall apply to all cases filed on or after, or pending on, the date of the enactment of this Act; and
renumbered
was (8)(3)(4)
shall not apply to a case in which a Federal court has issued a ruling on whether the case or a claim arises under any Act of Congress relating to patents or plant variety protection before the date of the enactment of this Act.
added
Patent Pilot Program in Certain District Courts Duration—
removed
Patent Pilot Program in Certain District Courts Duration—
renumbered
was (9)(2)
Duration— Section 1(c) of Public Law 111–349 (124 Stat. 3674; 28 U.S.C. 137 note) is amended to read as follows:
“(c) Duration—The program established under subsection (a) shall be maintained using existing resources, and shall terminate 20 years after the end of the 6-month period described in subsection (b).”
renumbered
was (9)(3)
Effective date— The amendment made by paragraph (1) shall take effect on the date of the enactment of this Act.
added
Technical corrections—
added
Novelty—
removed
Technical corrections—
removed
Novelty—
renumbered
was (10)(2)(2)
Amendment— Section 102(b)(1)(A) of title 35, United States Code, is amended by striking “the inventor or joint inventor or by another” and inserting “the inventor or a joint inventor or another”.
renumbered
was (10)(2)(3)
Effective date— The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 3(b)(1) of the Leahy-Smith America Invents Act (Public Law 112–29).
added
Inventor’s oath or declaration—
added
Amendment— The second sentence of section 115(a) of title 35, United States Code, is amended by striking “shall execute” and inserting “may be required to execute”.
added
Effective date— The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 4(a)(1) of the Leahy-Smith America Invents Act (Public Law 112–29).
added
Assignee filers—
removed
Inventor’s oath or declaration—
removed
Amendment— The second sentence of section 115(a) of title 35, United States Code, is amended—
removed
by striking “Except as otherwise provided” and inserting “Except for an application filed under section 118 or as otherwise provided”; and
removed
by striking “shall execute” and inserting “may be required by the Director to execute”.
removed
Effective date— The amendments made by subparagraph (A) shall be effective as if included in the amendment made by section 4(a)(1) of the Leahy-Smith America Invents Act (Public Law 112–29).
removed
Assignee filers—
renumbered
was (10)(4)(2)
Benefit of earlier filing date; right of priority— Section 119(e)(1) of title 35, United States Code, is amended, in the first sentence, by striking “by an inventor or inventors named” and inserting “that names the inventor or a joint inventor”.
renumbered
was (10)(4)(3)
Benefit of earlier filing date in the United States— Section 120 of title 35, United States Code, is amended, in the first sentence, by striking “names an inventor or joint inventor” and inserting “names the inventor or a joint inventor”.
renumbered
was (10)(4)(4)
Effective date— The amendments made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any patent application, and any patent issuing from such application, that is filed on or after September 16, 2012.
added
Derived patents—
removed
Derived patents—
renumbered
was (10)(5)(2)
Amendment— Section 291(b) of title 35, United States Code, is amended by striking “or joint inventor” and inserting “or a joint inventor”.
added
Effective date— The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 3(h)(1) of the Leahy-Smith America Invents Act (Public Law 112–29).
removed
Effective date— The amendment made by subparagraph (A) shall be effective as if included in the amendment made by section 3(h)(1) of the Leahy-Smith America Invents Act (Public Law No. 112–29).
renumbered
was (10)(6)
Specification— Notwithstanding section 4(e) of the Leahy-Smith America Invents Act (Public Law 112–29; 125 Stat. 297), the amendments made by subsections (c) and (d) of section 4 of such Act shall apply to any proceeding or matter that is pending on, or filed on or after, the date of the enactment of this Act.
added
Time limit for commencing misconduct proceedings—
added
Amendment— The fourth sentence of section 32 of title 35, United States Code, is amended by striking “1 year” and inserting “18 months”.
removed
Time limit for commencing misconduct proceedings—
removed
Amendment— The fourth sentence of section 32 of title 35, United States Code, is amended by striking “1 year” and inserting “2 years”.
renumbered
was (10)(7)(3)
Effective date— The amendment made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any action in which the Office files a complaint on or after such date of enactment.
added
Patent owner response—
removed
Patent owner response—
renumbered
was (10)(8)(2)
Conduct of inter partes review— Paragraph (8) of section 316(a) of title 35, United States Code, is amended by striking “the petition under section 313” and inserting “the petition under section 311”.
renumbered
was (10)(8)(3)
Conduct of post-grant review— Paragraph (8) of section 326(a) of title 35, United States Code, is amended by striking “the petition under section 323” and inserting “the petition under section 321”.
renumbered
was (10)(8)(4)
Effective date— The amendments made by this paragraph shall take effect on the date of the enactment of this Act.
added
International applications—
removed
International applications—
renumbered
was (10)(9)(2)
Amendments— Section 202(b) of the Patent Law Treaties Implementation Act of 2012 (Public Law 112–211; 126 Stat. 1536) is amended—
renumbered
was (10)(9)(2)(3)
by striking paragraph (7); and
renumbered
was (10)(9)(2)(4)
by redesignating paragraphs (8) and (9) as paragraphs (7) and (8), respectively.
renumbered
was (10)(9)(3)
Effective date— The amendments made by subparagraph (A) shall be effective as if included in title II of the Patent Law Treaties Implementation Act of 2012 (Public Law 112–21).