S. 3600 (110th): Patent Reform Act of 2008

110th Congress, 2007–2009. Text as of Sep 25, 2008 (Introduced).

Status & Summary | PDF | Source: GPO

II

110th CONGRESS

2d Session

S. 3600

IN THE SENATE OF THE UNITED STATES

September 25 (legislative day, September 17), 2008

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.

1.

Short title; table of contents

(a)

Short title

This Act may be cited as the Patent Reform Act of 2008.

(b)

Table of contents

The table of contents for this Act is as follows:

Sec. 1. Short title; table of contents.

Sec. 2. Right of the first inventor to file.

Sec. 3. Inventor’s oath or declaration.

Sec. 4. Damages.

Sec. 5. Post-grant review proceedings.

Sec. 6. Definition; patent trial and appeal board.

Sec. 7. Submissions by third parties and other quality enhancements.

Sec. 8. Venue.

Sec. 9. Patent and trademark office regulatory authority.

Sec. 10. Applicant quality submissions.

Sec. 11. Inequitable conduct and civil sanctions for misconduct before the Office.

Sec. 12. Authority of the Director of the Patent and Trademark Office to accept late filings.

Sec. 13. Limitation on damages and other remedies with respect to patents for methods in compliance with check imaging methods.

Sec. 14. Patent and trademark office funding.

Sec. 15. Technical amendments.

Sec. 16. Effective date; rule of construction.

2.

Right of the first inventor to file

(a)

Definitions

Section 100 of title 35, United States Code, is amended by adding at the end the following:

(f)

The term inventor means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.

(g)

The terms joint inventor and coinventor mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.

(h)

The effective filing date of a claimed invention is—

(1)

the filing date of the patent or the application for patent containing the claim to the invention; or

(2)

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.

(i)

The term claimed invention means the subject matter defined by a claim in a patent or an application for a patent.

.

(b)

Conditions for patentability

(1)

In general

Section 102 of title 35, United States Code, is amended to read as follows:

102.

Conditions for patentability; novelty

(a)

Novelty; Prior Art

A patent for a claimed invention may not be obtained if—

(1)

the claimed invention was patented, described in a printed publication, or otherwise made available to the public (other than through testing undertaken to reduce the invention to practice)—

(A)

more than 1 year before the effective filing date of the claimed invention; or

(B)

1 year or less before the effective filing date of the claimed invention, other than through disclosures made by the inventor or a joint inventor or by others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(2)

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.

(b)

Exceptions

(1)

Prior Inventor Disclosure Exception

Subject matter that would otherwise qualify as prior art based upon a disclosure under subparagraph (B) of subsection (a)(1) shall not be prior art to a claimed invention under that subparagraph if the subject matter had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2)

Derivation, prior disclosure, and common assignment exceptions

Subject matter that would otherwise qualify as prior art only under subsection (a)(2), after taking into account the exception under paragraph (1), shall not be prior art to a claimed invention if—

(A)

the subject matter was obtained directly or indirectly from the inventor or a joint inventor;

(B)

the subject matter had been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed, directly or indirectly, from the inventor or a joint inventor before the effective filing date of the application or patent set forth under subsection (a)(2); or

(C)

the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

(3)

Joint research agreement exception

(A)

In general

Subject matter and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of paragraph (2) if—

(i)

the subject matter and the claimed invention were made by or on behalf of 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;

(ii)

the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(iii)

the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(B)

For purposes of subparagraph (A), the term joint research agreement means a written contract, grant, or cooperative agreement entered into by 2 or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

(4)

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—

(A)

as of the filing date of the patent or the application for patent; or

(B)

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.

.

(2)

Conforming amendment

The item relating to section 102 in the table of sections for chapter 10 of title 35, United States Code, is amended to read as follows:

102. Conditions for patentability; novelty.

.

(c)

Conditions for patentability; nonobvious subject matter

Section 103 of title 35, United States Code, is amended to read as follows:

103.

Conditions for patentability; nonobvious subject matter

A patent for a claimed invention may not be obtained though the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

.

(d)

Repeal of requirements for inventions made abroad

Section 104 of title 35, United States Code, and the item relating to that section in the table of sections for chapter 10 of title 35, United States Code, are repealed.

(e)

Repeal of statutory invention registration

(1)

In general

Section 157 of title 35, United States Code, and the item relating to that section in the table of sections for chapter 14 of title 35, United States Code, are repealed.

(2)

Removal of cross references

Section 111(b)(8) of title 35, United States Code, is amended by striking sections 115, 131, 135, and 157 and inserting sections 131 and 135.

(f)

Earlier filing date for inventor and joint inventor

Section 120 of title 35, United States Code, is amended by striking which is filed by an inventor or inventors named and inserting which names an inventor or joint inventor.

(g)

Conforming amendments

(1)

Right of priority

Section 172 of title 35, United States Code, is amended by striking and the time specified in section 102(d).

(2)

Limitation on remedies

Section 287(c)(4) of title 35, United States Code, is amended by striking the earliest effective filing date of which is prior to and inserting which has an effective filing date before.

(3)

International application designating the United States: effect

Section 363 of title 35, United States Code, is amended by striking except as otherwise provided in section 102(e) of this title.

(4)

Publication of International application: effect

Section 374 of title 35, United States Code, is amended by striking sections 102(e) and 154(d) and inserting section 154(d).

(5)

Patent issued on international application: effect

The second sentence of section 375(a) of title 35, United States Code, is amended by striking Subject to section 102(e) of this title, such and inserting Such.

(6)

Limit on right of priority

Section 119(a) of title 35, United States Code, is amended by striking ; but no patent shall be granted and all that follows through one year prior to such filing.

(7)

Inventions made with Federal assistance

Section 202(c) of title 35, United States Code, is amended—

(A)

in paragraph (2)—

(i)

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 that 2-year period; and

(ii)

by striking the statutory and inserting that 1-year; and

(B)

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).

(h)

Repeal of interfering patent remedies

Section 291 of title 35, United States Code, and the item relating to that section in the table of sections for chapter 29 of title 35, United States Code, are repealed.

(i)

Action for claim to patent on derived invention

Section 135(a) of title 35, United States Code, is amended to read as follows:

(a)

Dispute over right to patent

(1)

Institution of derivation proceeding

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 from the applicant requesting the proceeding and, without authorization, filed an application claiming such invention. Any such request may only be made within 1 year after the date of first publication of an application or of the issuance of a patent, whichever is earlier, containing a claim that is the same or is substantially the same as the claimed invention, must be made under oath, and must be supported by substantial evidence. Whenever the Director determines that patents or applications for patent naming different individuals as the inventor interfere with one another because of a dispute over the right to patent under section 101, the Director shall institute a derivation proceeding for the purpose of determining which applicant is entitled to a patent.

(2)

Determination by Patent Trial and Appeal Board

In any proceeding under this subsection, the Patent Trial and Appeal Board—

(A)

shall determine the question of the right to patent;

(B)

in appropriate circumstances, may correct the naming of the inventor in any application or patent at issue; and

(C)

shall issue a final decision on the right to patent.

(3)

Derivation 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 whose application has the earlier effective filing date of the commonly claimed invention.

(4)

Effect of final decision

The final decision of the Patent Trial and Appeal Board, if adverse to the claim of an applicant, shall constitute the final refusal by the United States Patent and Trademark Office on the claims involved. The Director may issue a patent to an applicant who is determined by the Patent Trial and Appeal Board 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 United States Patent and Trademark Office.

.

(j)

Elimination of references to interferences

(1)

Sections 6, 41, 134, 141, 145, 146, 154, 305, and 314 of title 35, United States Code, are each amended by striking Board of Patent Appeals and Interferences each place it appears and inserting Patent Trial and Appeal Board.

(2)

Sections 141, 146, and 154 of title 35, United States Code, are each amended—

(A)

by striking an interference each place it appears and inserting a derivation proceeding; and

(B)

by striking interference each additional place it appears and inserting derivation proceeding.

(3)

The section heading for section 134 of title 35, United States Code, is amended to read as follows:

134.

Appeal to the Patent Trial and Appeal Board

.

(4)

The section heading for section 135 of title 35, United States Code, is amended to read as follows:

135.

Derivation proceedings

.

(5)

The section heading for section 146 of title 35, United States Code, is amended to read as follows:

146.

Civil action in case of derivation proceeding

.

(6)

Section 154(b)(1)(C) of title 35, United States Code, is amended by striking interferences and inserting derivation proceedings.

(7)

The item relating to section 6 in the table of sections for chapter 1 of title 35, United States Code, is amended to read as follows:

6. Patent Trial and Appeal Board.

.

(8)

The items relating to sections 134 and 135 in the table of sections for chapter 12 of title 35, United States Code, are amended to read as follows:

134. Appeal to the Patent Trial and Appeal Board.

135. Derivation proceedings.

.

(9)

The item relating to section 146 in the table of sections for chapter 13 of title 35, United States Code, is amended to read as follows:

146. Civil action in case of derivation proceeding.

.

(10)

Certain appeals

Section 1295(a)(4)(A) of title 28, United States Code, is amended to read as follows:

(A)

the Patent Trial and Appeal Board of the United States Patent and Trademark Office with respect to patent applications, derivation proceedings, and post-grant review proceedings, at the instance of an applicant for a patent or any party to a patent interference (commenced before the effective date of the Patent Reform Act of 2008), derivation proceeding, 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;

.

3.

Inventor’s oath or declaration

(a)

Inventor’s oath or declaration

(1)

In general

Section 115 of title 35, United States Code, is amended to read as follows:

115.

Inventor’s oath or declaration

(a)

Naming the inventor; inventor’s oath or declaration

An application for patent that is filed under section 111(a) or that commences the national stage under section 371 (including an application under section 111 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.

(b)

Required statements

An oath or declaration under subsection (a) shall contain statements that—

(1)

the application was made or was authorized to be made by the affiant or declarant; and

(2)

such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.

(c)

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).

(d)

Substitute statement

(1)

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.

(2)

Permitted circumstances

A substitute statement under paragraph (1) is permitted with respect to any individual who—

(A)

is unable to file the oath or declaration under subsection (a) because the individual—

(i)

is deceased;

(ii)

is under legal incapacity; or

(iii)

cannot be found or reached after diligent effort; or

(B)

is under an obligation to assign the invention but has refused to make the oath or declaration required under subsection (a).

(3)

Contents

A substitute statement under this subsection shall—

(A)

identify the individual with respect to whom the statement applies;

(B)

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

(C)

contain any additional information, including any showing, required by the Director.

(e)

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.

(f)

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).

(g)

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—

(1)

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;

(2)

a substitute statement meeting the requirements of subsection (d) was filed in the earlier filed application with respect to the individual; or

(3)

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.

(h)

Supplemental and corrected statements; filing additional statements

(1)

In general

Any person making a statement required under this section may withdraw, replace, or otherwise correct the statement 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.

(2)

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, the Director may not thereafter require that individual to make any additional oath, declaration, or other statement equivalent to those required by this section in connection with the application for patent or any patent issuing thereon.

(3)

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).

(i)

Acknowledgment of penalties

Any declaration or statement filed pursuant to this section shall contain an acknowledgment that any willful false statement made in such declaration or statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.

.

(2)

Relationship to divisional applications

Section 121 of title 35, United States Code, is amended by striking If a divisional application and all that follows through inventor..

(3)

Requirements for nonprovisional applications

Section 111(a) of title 35, United States Code, is amended—

(A)

in paragraph (2)(C), by striking by the applicant and inserting or declaration;

(B)

in the heading for paragraph (3), by striking and oath; and

(C)

by striking and oath each place it appears.

(4)

Conforming amendment

The item relating to section 115 in the table of sections for chapter 10 of title 35, United States Code, is amended to read as follows:

115. Inventor's oath or declaration..

(b)

Filing by other than inventor

Section 118 of title 35, United States Code, is amended to read as follows:

118.

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.

.

(c)

Specification

Section 112 of title 35, United States Code, is amended—

(1)

in the first paragraph—

(A)

by striking The specification and inserting (a) In general.—The specification; and

(B)

by striking , and shall set forth and all that follows through his invention; and

(2)

in the second paragraph—

(A)

by striking The specifications and inserting (b) Conclusion.—The specifications; and

(B)

by striking applicant regards as his invention and inserting inventor or a joint inventor regards as the invention;

(3)

in the third paragraph, by striking A claim and inserting (c) Form.—A claim;

(4)

in the fourth paragraph, by striking Subject to the following paragraph, and inserting (d) Reference in dependent forms.—Subject to subsection (e),;

(5)

in the fifth paragraph, by striking A claim and inserting (e) Reference in multiple dependent form.—A claim; and

(6)

in the last paragraph, by striking An element and inserting (f) Element in claim for a combination.—An element.

4.

Damages

(a)

Damages

Section 284 of title 35, United States Code, is amended to read as follows:

284.

Damages

(a)

In general

(1)

Compensatory damages

Upon finding for a claimant, the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as determined by the court.

(2)

Increased damages

When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to 3 times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154(d) of this title.

(3)

Limitation

Subsections (b) through (i) of this section apply only to the determination of the amount of reasonable royalty and shall not apply to the determination of other types of damages.

(b)

Hypothetical negotiation

For purposes of this section, the term reasonable royalty means the amount that the infringer would have agreed to pay and the claimant would have agreed to accept if the infringer and claimant had voluntarily negotiated a license for use of the invention at the time just prior to when the infringement began. The court or the jury, as the case may be, shall assume that the infringer and claimant would have agreed that the patent is valid, enforceable, and infringed.

(c)

Appropriate factors

The court or the jury, as the case may be, may consider any factors that are relevant to the determination of the amount of a reasonable royalty.

(d)

Standardized measures

The amount of a reasonable royalty shall not be determined by the use of a standard or average ratio for the division of profits, an industry average rate for royalties, or other methods that are not based on the particular benefits or advantages of the use of the invention, unless the party asserting the propriety of such a method demonstrates that—

(1)

the use made of the invention is the primary reason for demand for the infringing product or process;

(2)

the method consists of the use of an established royalty;

(3)

the method consists of the use of an industry average range to confirm that an estimate of the amount of a reasonable royalty that is produced by an independently allowable method falls within a reasonable range; or

(4)

no other method is reasonably available to determine the amount of a reasonable royalty and the use of the method is otherwise appropriate.

(e)

Comparable patents

(1)

In general

The amount of a reasonable royalty shall not be determined by comparison to royalties paid for patents other than the patent in suit unless—

(A)

such other patents are used in the same or an analogous technological field;

(B)

such other patents are found to be economically comparable to the patent in suit; and

(C)

evidence of the value of such other patents is presented in conjunction with or as confirmation of other evidence for determining the amount of a reasonable royalty.

(2)

Factors

Factors that may be considered to determine whether another patent is economically comparable to the patent in suit under paragraph (1)(A) include whether—

(A)

the other patent is comparable to the patent in suit in terms of the overall significance of the other patent to the product or process licensed under such other patent; and

(B)

the product or process that uses the other patent is comparable to the infringing product or process based upon its profitability or a like measure of value.

(f)

Financial condition

The financial condition of the infringer as of the time of the trial shall not be relevant to the determination of the amount of a reasonable royalty.

(g)

Sequencing

Either party may request that a patent-infringement trial be sequenced so that the court or the jury, as the case may be, decides questions of the patent's infringement and validity before the issue of the amount of a reasonable royalty is presented to the court or the jury, as the case may be. The court shall grant such a request absent good cause to reject the request, such as the absence of issues of significant damages or infringement and validity. The sequencing of a trial pursuant to this subsection shall not affect other matters, such as the timing of discovery.

(h)

Experts

In addition to the expert disclosure requirements under rule 26(a)(2) of the Federal Rules of Civil Procedure, a party that intends to present the testimony of an expert relating to the amount of a reasonable royalty shall provide—

(1)

to the other parties to that civil action, the expert report relating to damages, including all data and other information considered by the expert in forming the opinions of the expert; and

(2)

to the court, at the same time as to the other parties, the complete statement of all opinions that the expert will express and the basis and reasons for those opinions.

(i)

Jury instructions

On the motion of any party and after allowing any other party to the civil action a reasonable opportunity to be heard, the court shall determine whether there is no legally sufficient evidence to support 1 or more of the contentions of a party relating to the amount of a reasonable royalty. The court shall identify for the record those factors that are supported by legally sufficient evidence, and shall instruct the jury to consider only those factors when determining the amount of a reasonable royalty. The jury may not consider any factor for which legally sufficient evidence has not been admitted at trial.

.

(b)

Testimony by experts

Chapter 29 of title 35, United States Code, as amended by section 11, is further amended by adding at the end the following:

299A.

Testimony by experts

(a)

Federal rule

In a patent case, the court shall ensure that the testimony of a witness qualified as an expert by knowledge, skill, experience, training, or education meets the requirements set forth in rule 702 of the Federal Rules of Evidence.

(b)

Determination of reliability

To determine whether an expert's principles and methods are reliable, the court may consider, among other factors—

(1)

whether the expert's theory or technique can be or has been tested;

(2)

whether the theory or technique has been subjected to peer review and publication;

(3)

the known or potential error rate of the theory or technique, and the existence and maintenance of standards controlling the technique's operation;

(4)

the degree of acceptance of the theory or technique within the relevant scientific or specialized community;

(5)

whether the theory or technique is employed independently of litigation; or

(6)

whether the expert has adequately considered or accounted for readily available alternative theories or techniques.

(c)

Required explanation

The court shall explain its reasons for allowing or barring the introduction of an expert's proposed testimony under this section.

.

5.

Post-grant review proceedings

(a)

Reexamination

Section 303(a) of title 35, United States Code, is amended to read as follows:

(a)

Within 3 months after the owner of a patent files a request for reexamination under section 302, 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. 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.

.

(b)

Repeal of optional inter partes reexamination procedures

(1)

In general

Sections 311, 312, 313, 314, 315, 316, 317, and 318 of title 35, United States Code, and the items relating to those sections in the table of sections, are repealed.

(2)

Effective date

Notwithstanding paragraph (1), the provisions of sections 311, 312, 313, 314, 315, 316, 317, and 318 of title 35, United States Code, shall continue to apply to any inter partes reexamination determination request filed on or before the effective date of subsection (c).

(c)

Post-grant review proceedings

Part III of title 35, United States Code, is amended by adding at the end the following:

32

Post-grant review proceedings

Sec.

321. Petition for post-grant review.

322. Relation to other proceedings or actions.

323. Requirements of petition.

324. Publication and public availability of petition.

325. Consolidation or stay of proceedings.

326. Submission of additional information.

327. Institution of post-grant review proceedings.

328. Determination not appealable.

329. Conduct of post-grant review proceedings.

330. Patent owner response.

331. Proof and evidentiary standards.

332. Amendment of the patent.

333. Settlement.

334. Decision of the board.

335. Effect of decision.

336. Appeal.

321.

Petition for post-grant review

(a)

In general

Subject to the provisions of this chapter, a person who has a substantial economic interest adverse to a patent may file with the Office a petition to institute a post-grant review proceeding for that patent. If instituted, such a proceeding shall be deemed to be either a first-period proceeding or a second-period proceeding. The Director shall establish, by regulation, fees to be paid by the person requesting the proceeding, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the post-grant review proceeding and the status of the petitioner.

(b)

First-period proceeding

(1)

Scope

A petitioner in a first-period proceeding may request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim).

(2)

Filing deadline

A petition for a first-period proceeding shall be filed not later than 9 months after the grant of the patent or issuance of a reissue patent.

(c)

Second-period proceeding

(1)

Scope

A petitioner in a second-period proceeding may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

(2)

Filing deadline

A petition for a second-period proceeding shall be filed after the later of either—

(A)

9 months after the grant of a patent or issuance of a reissue of a patent; or

(B)

if a first-period proceeding is instituted under section 327, the date of the termination of such first-period proceeding.

322.

Relation to other proceedings or actions

(a)

Early actions

A first-period proceeding may not be instituted until after a civil action alleging infringement of the patent is finally concluded if—

(1)

the infringement action is filed within 3 months after the grant of the patent;

(2)

a stay of the proceeding is requested by the patent owner;

(3)

the Director determines that the infringement action is likely to address the same or substantially the same questions of patentability that would be addressed in the proceeding; and

(4)

the Director determines that a stay of the proceeding would not be contrary to the interests of justice.

(b)

Pending civil actions

(1)

Infringer's action

A post-grant review proceeding may not be instituted or maintained if the petitioner or real party in interest has filed a civil action challenging the validity of a claim of the patent.

(2)

Patent owner's action

A second-period proceeding may not be instituted if the petition requesting the proceeding is filed more than 3 months after the date on which the petitioner, real party in interest, or his privy is required to respond to a civil action alleging infringement of the patent.

(3)

Stay or dismissal

The Director may stay or dismiss a second-period proceeding if the petitioner or real party in interest challenges the validity of a claim of the patent in a civil action.

(c)

Duplicative proceedings

A post-grant review or reexamination proceeding may not be instituted if—

(1)

the petition requesting the proceeding identifies the same petitioner or real party in interest and the same patent as a previous petition requesting a post-grant review proceeding; or

(2)

the petition requests cancellation of a claim in a reissue patent that is identical to a claim in the original patent from which the reissue patent was issued, and the time limitations in section 321 would bar filing a post-grant review petition for such original patent.

(d)

Estoppel

The petitioner in any post-grant review proceeding under this chapter may not request or maintain a proceeding before the Office with respect to a claim, or assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission that a claim in a patent is invalid, on any ground that—

(1)

the petitioner, real party in interest, or his privy raised during a post-grant review proceeding resulting in a final decision under section 334; or

(2)

the petitioner, real party in interest, or his privy could have raised during a second-period proceeding resulting in a final decision under section 334.

323.

Requirements of petition

A petition filed under section 321 may be considered only if—

(1)

the petition is accompanied by payment of the fee established by the Director under section 321;

(2)

the petition identifies all real parties in interest;

(3)

the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for each challenged claim, including—

(A)

copies of patents and printed publications that the petitioner relies upon in support of the petition; and

(B)

affidavits or declarations of supporting evidence and opinions, if the petitioner relies on other factual evidence or on expert opinions;

(4)

the petition provides such other information as the Director may require by regulation; and

(5)

the petitioner provides copies of any of the documents required under paragraphs (3) and (4) to the patent owner or, if applicable, the designated representative of the patent owner.

324.

Publication and public availability of petition

(a)

In general

As soon as practicable after the receipt of a petition under section 321, the Director shall—

(1)

publish the petition in the Federal Register; and

(2)

make that petition available on the website of the United States Patent and Trademark Office.

(b)

Public availability

The file of any proceeding under this chapter shall be made available to the public except that any petition or document filed with the intent that it be sealed shall be accompanied by a motion to seal. Such petition or document shall be treated as sealed, pending the outcome of the ruling on the motion. Failure to file a motion to seal will result in the pleadings being placed in the public record.

325.

Consolidation or stay of proceedings

(a)

First-period proceedings

If more than 1 petition for a first-period proceeding is properly filed against the same patent and the Director determines that more than 1 of these petitions warrants the instituting of a first-period proceeding under section 327, the Director shall consolidate such proceedings into a single first-period proceeding.

(b)

Second-period proceedings

If the Director institutes a second-period proceeding, the Director, in his discretion, may join as a party to that second-period proceeding any person who properly files a petition under section 321 that the Director, after receiving a preliminary response under section 330 or the expiration of the time for filing such a response, determines warrants the instituting of a second-period proceeding under section 327.

(c)

Other proceedings

Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of any post-grant review proceeding the Director may determine the manner in which any proceeding or matter involving the patent that is before the Office may proceed, including providing for stay, transfer, consolidation, or termination of any such proceeding or matter.

326.

Submission of additional information

A petitioner under this chapter shall file such additional information with respect to the petition as the Director may require by regulation.

327.

Institution of post-grant review proceedings

(a)

Threshold

The Director may not authorize a post-grant review proceeding to commence unless the Director determines that the information presented in the petition, if such information is not rebutted, would provide a sufficient basis to conclude that at least 1 of the claims challenged in the petition is unpatentable.

(b)

Additional grounds

In the case of a petition for a first-period proceeding, the determination required under subsection (a) may be satisfied by a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.

(c)

Successive petitions

The Director may not institute an additional second-period proceeding if a prior second-period proceeding has been instituted and the time period established under section 329(b)(2) for requesting joinder under section 325(b) has expired, unless the Director determines that—

(1)

the additional petition satisfies the requirements under subsection (a); and

(2)

either—

(A)

the additional petition presents exceptional circumstances; or

(B)

such an additional proceeding is reasonably required in the interests of justice.

(d)

Timing

The Director shall determine whether to institute a post-grant review proceeding under this chapter within 3 months after receiving a preliminary response under section 330 or the expiration of the time for filing such a response.

(e)

Notice

The Director shall notify the petitioner and patent owner, in writing, of the Director's determination under subsection (a). The Director shall publish each notice of institution of a post-grant review proceeding in the Federal Register and make such notice available on the website of the United States Patent and Trademark Office. Such notice shall list the date on which the proceeding shall commence.

328.

Determination not appealable

The determination by the Director regarding whether to institute a post-grant review proceeding under section 327 shall not be appealable.

329.

Conduct of post-grant review proceedings

(a)

In general

The Director shall prescribe regulations—

(1)

in accordance with section 2(b)(2), establishing and governing post-grant review proceedings under this chapter and their relationship to other proceedings under this title;

(2)

for setting forth the standards for showings of sufficient grounds to institute a proceeding under section 321(a) and subsections (a), (b), and (c) of section 327;

(3)

providing for the publication in the Federal Register all requests for the institution of post-grant proceedings;

(4)

establishing procedures for the submission of supplemental information after the petition is filed; and

(5)

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.

(b)

Post-grant review regulations

The regulations required under subsection (a)(1) shall—

(1)

require that the final determination in any post-grant review proceeding be issued not later than 1 year after the date on which the Director notices the institution of a post-grant proceeding under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 325(b);

(2)

set a time period for requesting joinder under section 325(b);

(3)

allow for discovery upon order of the Director, provided that in a second-period proceeding discovery shall be limited to—

(A)

the deposition of witnesses submitting affidavits or declarations; and

(B)

what is otherwise necessary in the interest of justice;

(4)

prescribe sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding, such as to harass or to cause unnecessary delay or unnecessary increase in the cost of the proceeding;

(5)

provide for protective orders governing the exchange and submission of confidential information;

(6)

ensure that any information submitted by the patent owner in support of any amendment entered under section 332 is made available to the public as part of the prosecution history of the patent; and

(7)

provide either party with the right to an oral hearing as part of the proceeding.

(c)

Considerations

In prescribing regulations under this section, the Director shall consider the effect on the economy, the integrity of the patent system, and the efficient administration of the Office.

(d)

Conduct of proceeding

The Patent Trial and Appeal Board shall, in accordance with section 6(b), conduct each proceeding authorized by the Director.

330.

Patent owner response

(a)

Preliminary response

If a post-grant review petition is filed under section 321, the patent owner shall have the right to file a preliminary response—

(1)

in the case of a first-period proceeding, within 2 months of the expiration of the time for filing a petition for a first-period proceeding; and

(2)

in the case of a second-period proceeding, within a time period set by the Director.

(b)

Content of response

A preliminary response to a petition for a post-grant review proceeding shall set forth reasons why no post-grant review proceeding should be instituted based upon the failure of the petition to meet any requirement of this chapter.

(c)

Additional response

After a post-grant review proceeding under this chapter has been instituted with respect to a patent, the patent owner shall have the right to file, within a time period set by the Director, a response to the petition. The patent owner shall file with the response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response.

331.

Proof and evidentiary standards

(a)

In general

The presumption of validity set forth in section 282 of this title shall apply in post-grant review proceedings instituted under this chapter.

(b)

Burden of proof

The petitioner shall have the burden of proving a proposition of invalidity by a preponderance of the evidence in a first-period proceeding and by clear and convincing evidence in a second-period proceeding.

332.

Amendment of the patent

(a)

In general

During a post-grant review proceeding instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways:

(1)

Cancel any challenged patent claim.

(2)

For each challenged claim, propose a reasonable number of substitute claims.

(b)

Additional motions

Additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 333, or upon the request of the patent owner for good cause shown.

(c)

Scope of claims

An amendment under this section may not enlarge the scope of the claims of the patent or introduce new matter.

333.

Settlement

(a)

In general

A post-grant review proceeding instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the matter before the request for termination is filed. If the post-grant review proceeding is terminated with respect to a petitioner under this section, no estoppel under this chapter shall apply to that petitioner. If no petitioner remains in the post-grant review proceeding, the Office may terminate the post-grant review proceeding or proceed to a final written decision under section 334.

(b)

Agreements in writing

Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of a post-grant review proceeding under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the United States Patent and Trademark Office before the termination of the post-grant review proceeding as between the parties to the agreement or understanding. If any party filing such agreement or understanding so requests, the copy shall be kept separate from the file of the post-grant review proceeding, and shall be made available only to Federal Government agencies upon written request, or to any other person on a showing of good cause.

334.

Decision of the board

If the post-grant review proceeding is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged and any new claim added under section 332.

335.

Effect of decision

If the Patent Trial and Appeal Board issues a final decision under section 334 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.

336.

Appeal

A party dissatisfied with the final determination of the Patent Trial and Appeal Board in a post-grant review proceeding instituted under this chapter may appeal the determination under sections 141 through 144. Any party to the post-grant review proceeding shall have the right to be a party to the appeal.

.

(d)

Technical and conforming amendment

The table of chapters for part III of title 35, United States Code, is amended by adding at the end the following:

32. Post-Grant Review Proceedings...........................................321.

.

(e)

Regulations and effective date

(1)

Regulations

The Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office (in this subsection referred to as the Director) shall, not later than the date that is 1 year after the date of the enactment of this Act, issue regulations to carry out chapter 32 of title 35, United States Code, as added by subsection (c) of this section.

(2)

Applicability

The amendments made by subsection (c) shall take effect on the date that is 1 year after the date of the enactment of this Act and shall apply only to patents issued on or after that date, except that, in the case of a patent issued before the effective date of subsection (c) on an application filed between September 15, 1999 and the effective date of subsection (c), a petition for second-period review may be filed.

(3)

Pending interferences

The Director shall determine the procedures under which interferences commenced before the effective date under paragraph (2) are to proceed, including whether any such interference is to be dismissed without prejudice to the filing of a petition for a post-grant review proceeding under chapter 32 of title 35, United States Code, or is to proceed as if this Act had not been enacted. The Director shall include such procedures in regulations issued under paragraph (1).

6.

Definition; patent trial and appeal board

(a)

Definition

Section 100 of title 35, United States Code, as amended by section 2 of this Act, is further amended in subsection (e), by striking or inter partes reexamination under section 311.

(b)

Patent trial and appeal board

Section 6 of title 35, United States Code, is amended to read as follows:

6.

Patent trial and appeal board

(a)

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 Secretary. 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.

(b)

Duties

The Patent Trial and Appeal Board shall—

(1)

on written appeal of an applicant, review adverse decisions of examiners upon application for patents;

(2)

on written appeal of a patent owner, review adverse decisions of examiners upon patents in reexamination proceedings under chapter 30;

(3)

determine priority and patentability of invention in derivation proceedings under subsection 135(a); and

(4)

conduct post-grant review proceedings under chapter 32.

Each appeal, derivation, 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.

.

7.

Submissions by third parties and other quality enhancements

Section 122 of title 35, United States Code, is amended by adding at the end the following:

(e)

Preissuance submissions by third parties

(1)

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—

(A)

the date a notice of allowance under section 151 is mailed in the application for patent; or

(B)

either—

(i)

6 months after the date on which the application for patent is published under section 122, or

(ii)

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.
(2)

Other requirements

Any submission under paragraph (1) shall—

(A)

set forth a concise description of the asserted relevance of each submitted document;

(B)

be accompanied by such fee as the Director may prescribe; and

(C)

include a statement by the person making such submission affirming that the submission was made in compliance with this section.

.

8.

Venue

(a)

Venue for patent cases

Section 1400 of title 28, United States Code, is amended by striking subsection (b) and inserting the following:

(b)

Notwithstanding subsections (b) and (c) of section 1391 of this title, any civil action for patent infringement or any action for declaratory judgment arising under any Act of Congress relating to patents may be brought only in a judicial district—

(1)

where the defendant has its principal place of business or is incorporated;

(2)

where the defendant has committed acts of infringement and has a regular and established physical facility;

(3)

where the defendant has agreed or consented to be sued;

(4)

where the invention claimed in a patent in suit was conceived or actually reduced to practice;

(5)

where significant research and development of an invention claimed in a patent in suit occurred at a regular and established physical facility;

(6)

where a party has a regular and established physical facility that such party controls and operates and has—

(A)

engaged in management of significant research and development of an invention claimed in a patent in suit;

(B)

manufactured a product that embodies an invention claimed in a patent in suit; or

(C)

implemented a manufacturing process that embodies an invention claimed in a patent in suit;

(7)

where a nonprofit organization whose function is the management of inventions on behalf of an institution of higher education (as that term is defined under section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a))), including the patent in suit, has its principal place of business; or

(8)

for foreign defendants that do not meet the requirements of paragraphs (1) or (2), according to section 1391(d) of this title.

.

(b)

Technical amendments relating to venue

Sections 32, 145, 146, 154(b)(4)(A), and 293 of title 35, United States Code, and section 1071(b)(4) of an Act entitled Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes, approved July 5, 1946 (commonly referred to as the Trademark Act of 1946 or the Lanham Act) are each amended by striking United States District Court for the District of Columbia each place that term appears and inserting United States District Court for the Eastern District of Virginia.

9.

Patent and trademark office regulatory authority

(a)

Fee setting

(1)

In general

The Director shall have authority to set or adjust by rule any fee established or charged by the Office under sections 41 and 376 of title 35, United States Code or under section 31 of the Trademark Act of 1946 (15 U.S.C. 1113) for the filing or processing of any submission to, and for all other services performed by or materials furnished by, the Office, provided that such fee amounts are set to reasonably compensate the Office for the services performed.

(2)

Reduction of fees in certain fiscal years

In any fiscal year, the Director—

(A)

shall consult with the Patent Public Advisory Committee and the Trademark Public Advisory Committee on the advisability of reducing any fees described in paragraph (1); and

(B)

after that consultation may reduce such fees.

(3)

Role of the Public Advisory Committee

The Director shall—

(A)

submit to the Patent or Trademark Public Advisory Committee, or both, as appropriate, any proposed fee under paragraph (1) not less than 45 days before publishing any proposed fee in the Federal Register;

(B)

provide the relevant advisory committee described in subparagraph (A) a 30-day period following the submission of any proposed fee, on which to deliberate, consider, and comment on such proposal, and require that—

(i)

during such 30-day period, the relevant advisory committee hold a public hearing related to such proposal; and

(ii)

the Director shall assist the relevant advisory committee in carrying out such public hearing, including by offering the use of Office resources to notify and promote the hearing to the public and interested stakeholders;

(C)

require the relevant advisory committee to make available to the public a written report detailing the comments, advice, and recommendations of the committee regarding any proposed fee;

(D)

consider and analyze any comments, advice, or recommendations received from the relevant advisory committee before setting or adjusting any fee; and

(E)

notify, through the Chair and Ranking Member of the Senate and House Judiciary Committees, the Congress of any final decision regarding proposed fees.

(4)

Publication in the Federal Register

(A)

In general

Any rules prescribed under this subsection shall be published in the Federal Register.

(B)

Rationale

Any proposal for a change in fees under this section shall—

(i)

be published in the Federal Register; and

(ii)

include, in such publication, the specific rationale and purpose for the proposal, including the possible expectations or benefits resulting from the proposed change.

(C)

Public comment period

Following the publication of any proposed fee in the Federal Register pursuant to subparagraph (A), the Director shall seek public comment for a period of not less than 45 days.

(5)

Congressional comment period

Following the notification described in paragraph (3)(E), Congress shall have not more than 45 days to consider and comment on any proposed fee under paragraph (1). No proposed fee shall be effective prior to the end of such 45-day comment period.

(6)

Rule of construction

No rules prescribed under this subsection may diminish—

(A)

an applicant's rights under this title or the Trademark Act of 1946; or

(B)

any rights under a ratified treaty.

(b)

Fees for patent services

Division B of Public Law 108–447 is amended in title VIII of the Departments of Commerce, Justice and State, the Judiciary, and Related Agencies Appropriations Act, 2005, in section 801(a) by striking During fiscal years 2005, 2006, and 2007,, and inserting Until such time as the Director sets or adjusts the fees otherwise,.

(c)

Adjustment of Trademark fees

Division B of Public Law 108–447 is amended in title VIII of the Departments of Commerce, Justice and State, the Judiciary and Related Agencies Appropriations Act, 2005, in section 802(a) by striking During fiscal years 2005, 2006, and 2007,, and inserting Until such time as the Director sets or adjusts the fees otherwise,.

(d)

Effective date, applicability, and transitional provision

Division B of Public Law 108–447 is amended in title VIII of the Departments of Commerce, Justice and State, the Judiciary and Related Agencies Appropriations Act, 2005, in section 803(a) by striking and shall apply only with respect to the remaining portion of fiscal year 2005 and fiscal year 2006..

(e)

Rule of construction

Nothing in this section shall be construed to affect any other provision of Division B of Public Law 108–447, including section 801(c) of title VII of the Departments of Commerce, Justice and State, the Judiciary and Related Agencies Appropriations Act, 2005.

(f)

Definitions

In this section:

(1)

Director

The term Director means the Director of the United States Patent and Trademark Office.

(2)

Office

The term Office means the United States Patent and Trademark Office.

(3)

Trademark Act of 1946

The term Trademark Act of 1946 means an Act entitled Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes, approved July 5, 1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the Trademark Act of 1946 or the Lanham Act).

10.

Applicant quality submissions

(a)

In general

Chapter 11 of title 35, United States Code, is amended by adding at the end the following new section:

123.

Additional information

(a)

Incentives

The Director may, by regulation, offer incentives to applicants who submit a search report, a patentability analysis, or other information relevant to patentability. Such incentives may include prosecution flexibility, modifications to requirements for adjustment of a patent term pursuant to section 154(b) of this title, or modifications to fees imposed pursuant to section 9 of the Patent Reform Act of 2008.

(b)

Admissibility of record

If the Director certifies that an applicant has satisfied the requirements of the regulations issued pursuant to this section with regard to a patent, the record made in a matter or proceeding before the Office involving that patent or efforts to obtain the patent shall not be admissible to construe the patent in a civil action or in a proceeding before the International Trade Commission, except that such record may be introduced to demonstrate that the patent owner is estopped from asserting that the patent is infringed under the doctrine of equivalents. The Director may, by regulation, identify any material submitted in an attempt to satisfy the requirements of any regulations issued pursuant to this section that also shall not be admissible to construe the patent in a civil action or in a proceeding before the International Trade Commission.

.

(b)

Rule of construction

Nothing in this section shall be construed to imply that, prior to the date of enactment of this section, the Director either lacked or possessed the authority to offer incentives to applicants who submit a search report, a patentability analysis, or other information relevant to patentability.

11.

Inequitable conduct and civil sanctions for misconduct before the Office

(a)

In general

Chapter 29 of title 35, United States Code, is amended by adding at the end the following new sections:

298.

Inequitable conduct

(a)

In general

Except as provided under this section or section 299, a patent shall not be held invalid or unenforceable based upon misconduct before the Office. Nothing in this section shall be construed to create a cause of action or a defense in a civil action.

(b)

Order To reissue patent

(1)

Finding of the court

(A)

In general

If a court in a civil action, upon motion of a party to the action, finds that it is more likely than not that a person who participated in a matter or proceeding before the Office knowingly and intentionally deceived the Office by concealing material information or by submitting false material information in such matter or proceeding, the court shall order the patent to be made the subject of a reissue application under section 251. The motion shall set forth any basis upon which the moving party contends 1 or more claims of the patent are invalid in view of information relating to the conduct at issue not previously considered by the Director. The decision on a motion filed under this paragraph shall not be subject to appellate review.

(B)

Material information

For purposes of this paragraph, information is material if it is not part of the record or cumulative to information in the record and either establishes that a patent claim is not patentable or refutes a position that the applicant or patent owner took in response to a rejection of the claim as unpatentable.

(2)

Timing of motion

A motion described under paragraph (1) shall be filed promptly after discovery of the conduct at issue by the moving party.

(3)

Required specificity in court order

An order issued by a court under paragraph (1) shall contain findings of fact setting out with specificity the information relating to the conduct at issue not previously considered by the Director and upon which the court based its order. The findings of fact shall not be used by a court except as provided under this paragraph.

(4)

Stays

A court shall not stay a civil action by reason of commencement of a reissue proceeding that was authorized to be filed under this section unless—

(A)

the Director in a notification under section 132 makes a rejection of 1 or more claims of the patent;

(B)

an allegation of infringement remains in the civil action for at least 1 of the claims rejected; and

(C)

the court determines that the interests of justice require a stay of the action.

(5)

Judgment that patent is unenforceable

If a patentee involved in a civil action in which an order under this subsection is issued does not seek reissue of the patent within 2 months of such order, the court shall enter judgment that the patent is unenforceable.

(c)

Permitted reissue by patentee

A patentee may request reissue of a patent on the basis of information not previously considered by the Director in connection with a patent, or the efforts to obtain such patent, by filing an application for reissue under section 251.

(d)

Required statement, amended claims

In any application for reissue of a patent authorized to be filed under this section, the patentee shall provide a statement to the Director containing the information described in subsections (b) and (c). The reissue application may be filed with the omission of 1 or more claims of the original patent and with a single substitute claim of equivalent or narrower scope replacing any omitted claim of the original patent. For a reissue application authorized to be filed under subsection (c), the statement shall identify with specificity the issues of patentability arising from the information and the basis upon which the claims in the reissue application are believed by the applicant to be patentable notwithstanding the information.

(e)

Conduct of reissue proceeding

(1)

Initial action

The Director shall provide at least 1 of the notifications under section 132 or a notice of allowance under section 151 not later than 3 months after the filing date of an application for reissue authorized to be filed under this section.

(2)

Scope of proceeding

(A)

In general

A reissue proceeding authorized to be filed under this section shall, unless substitute claims are submitted, address only whether original claims continue to be patentable after consideration of the additional information provided by the applicant for reissue pursuant to subsection (d) in combination with information already of record in the original patent.

(B)

Issues of patentability

If the Director determines during a reissue proceeding authorized to be filed under this section that 1 or more of the original claims of the patent cannot be reissued and the time for appeal of such determination has expired or any appeal proceeding related to such determination has terminated, the Director shall notify the patentee of the surrender of the patent in connection with the termination of the reissue proceeding, subject to the patentee’s right to obtain a reissue for claims the Director determines to be patentable.

(3)

Duration of proceeding

For a reissue application authorized to be filed under subsection (b), a final decision on all issues of patentability shall be made by the Director within 1 year from the date of the initial notification under paragraph (1), subject to the right of the patentee to appeal under section 134.

(4)

Termination of proceeding

If the Director determines that all of the original claims continue to be patentable, the Director shall terminate the proceeding without the surrender of the original patent.

(5)

Procedure and appeals

(A)

In general

A reissue application authorized to be filed under this section may not be abandoned by the applicant or otherwise terminated without surrender of the original patent, except as provided under this section, and shall be conducted as an ex parte matter before the Office.

(B)

Special procedures

Subject to subsection (d), no amendments other than an amendment presenting a single substitute claim of equivalent or narrower scope for each canceled claim in the first reply to the first action under section 132 may be made during the examination of a reissue application authorized to be filed under this section. The Director may amend pending claims at any time on agreement to a change proposed by the Director to the applicant. The Director may refuse to admit any paper filed after a second notification under section 132.

(C)

Continuing applications barred

No application shall be entitled to the benefit of the filing date of an application authorized to be filed under this section.

(D)

Expanded examination

The Director may consider additional information introduced by the Director if substitute claims are presented.

(E)

Appeal

An applicant in a reissue application authorized to be filed by this section dissatisfied with a decision by the Patent Trial and Appeal Board may appeal only under the provisions of sections 141 though 144.

(f)

Limitation on enlarging scope of claims

No patent may be reissued based upon the filing of a reissue application authorized to be filed under this section that enlarges the scope of the claims of the original patent.

(g)

Sanctions

Except as provided under subsection (h), if a reissue proceeding authorized under this section concludes without the surrender of the original patent or with the grant of 1 or more reissued patents, no further sanctions may be imposed against the patentee in connection with the original patent or the reissued patents based upon misconduct arising from the concealment of information subsequently provided, or the misrepresentation of information subsequently corrected in the statement provided under subsection (d).

(h)

Rule of construction

Nothing in this section shall be construed—

(1)

to preclude the imposition of sanctions based upon criminal or antitrust laws (including section 1001(a) of title 18, the first section of the Clayton Act, and section 5 of the Federal Trade Commission Act to the extent that section relates to unfair methods of competition);

(2)

to limit the authority of the Director to investigate issues of possible misconduct and impose sanctions for misconduct in connection with matters or proceedings before the Office; or

(3)

to limit the authority of the Director to promulgate regulations under chapter 3 relating to sanctions for misconduct by representatives practicing before the Office.

299.

Civil sanctions for misconduct before the Office

(a)

Information relating to possible misconduct

The Director shall provide by regulation procedures for receiving and reviewing information indicating that parties to a matter or proceeding before the Office may have engaged in misconduct in connection with such matter or proceeding.

(b)

Administrative proceeding

(1)

Probable cause

The Director shall determine, based on information received and reviewed under subsection (a), if there is probable cause to believe that 1 or more individuals or parties engaged in misconduct consisting of intentionally deceptive conduct of a material nature in connection with a matter or proceeding before the Office. A determination of probable cause by the Director under this paragraph shall be final and shall not be reviewable on appeal or otherwise.

(2)

Determination

If the Director finds probable cause under paragraph (1), the Director shall, after notice and an opportunity for a hearing, and not later than 1 year after the date of such finding, determine whether misconduct consisting of intentionally deceptive conduct of a material nature in connection with the applicable matter or proceeding before the Office has occurred. The proceeding to determine whether such misconduct occurred shall be before an individual designated by the Director.

(3)

Civil sanctions

(A)

In general

If the Director determines under paragraph (2) that misconduct has occurred, the Director may levy a civil penalty against the party that committed such misconduct.

(B)

Factors

In establishing the amount of any civil penalty to be levied under subparagraph (A), the Director shall consider—

(i)

the materiality of the misconduct;

(ii)

the impact of the misconduct on a decision of the Director regarding a patent, proceeding, or application; and

(iii)

the impact of the misconduct on the integrity of matters or proceedings before the Office.

(C)

Sanctions

A civil penalty levied under subparagraph (A) may consist of—

(i)

a penalty of up to $150,000 for each act of misconduct;

(ii)

in the case of a finding of a pattern of misconduct, a penalty of up to $1,000,000; or

(iii)

in the case of a finding of exceptional misconduct establishing that an application for a patent amounted to a fraud practiced by or at the behest of a real party in interest of the application—

(I)

a determination that 1 or more claims of the patent is unenforceable; or

(II)

a penalty of up to $10,000,000.

(D)

Joint and several liability

Any party found to have been responsible for misconduct in connection with any matter or proceeding before the Office under this section may be jointly and severally liable for any civil penalty levied under subparagraph (A).

(E)

Deposit with the Treasury

Any civil penalty levied under subparagraph (A) shall—

(i)

accrue to the benefit of the United States Government; and

(ii)

be deposited under Miscellaneous Receipts in the United States Treasury.

(F)

Authority to bring action for recovery of penalties

(i)

In general

If any party refuses to pay or remit to the United States Government a civil penalty levied under this paragraph, the United States may recover such amounts in a civil action brought by the United States Attorney General on behalf of the Director in the United States District Court for the Eastern District of Virginia.

(ii)

Injunctions

In any action brought under clause (i), the United States District Court for the Eastern District of Virginia may, as the court determines appropriate, issue a mandatory injunction incorporating the relief sought by the Director.

(4)

Combined proceedings

If the misconduct that is the subject of a proceeding under this subsection is attributed to a practitioner who practices before the Office, the Director may combine such proceeding with any other disciplinary proceeding under section 32 of this title.

(c)

Obtaining evidence

(1)

In general

During the period in which an investigation for a finding of probable cause or for a determination of whether misconduct occurred in connection with any matter or proceeding before the Office is being conducted, the Director may require, by subpoena issued by the Director, persons to produce any relevant information, documents, reports, answers, records, accounts, papers, and other documentary or testimonial evidence.

(2)

Additional authority

For the purposes of carrying out this section, the Director—

(A)

shall have access to, and the right to copy, any document, paper, or record, the Director determines pertinent to any investigation or determination under this section, in the possession of any person;

(B)

may summon witnesses, take testimony, and administer oaths;

(C)

may require any person to produce books or papers relating to any matter pertaining to such investigation or determination; and

(D)

may require any person to furnish in writing, in such detail and in such form as the Director may prescribe, information in their possession pertaining to such investigation or determination.

(3)

Witnesses and evidence

(A)

In general

The Director may require the attendance of any witness and the production of any documentary evidence from any place in the United States at any designated place of hearing.

(B)

Contumacy

(i)

Orders of the court

In the case of contumacy or failure to obey a subpoena issued under this subsection, any appropriate United States district court or territorial court of the United States may issue an order requiring such person—

(I)

to appear before the Director;

(II)

to appear at any other designated place to testify; and

(III)

to produce documentary or other evidence.

(ii)

Failure to obey

Any failure to obey an order issued under this subparagraph court may be punished by the court as a contempt of that court.

(4)

Depositions

(A)

In general

In any proceeding or investigation under this section, the Director may order a person to give testimony by deposition.

(B)

Requirements of deposition

(i)

Oath

A deposition may be taken before an individual designated by the Director and having the power to administer oaths.

(ii)

Notice

Before taking a deposition, the Director shall give reasonable notice in writing to the person ordered to give testimony by deposition under this paragraph. The notice shall state the name of the witness and the time and place of taking the deposition.

(iii)

Written transcript

The testimony of a person deposed under this paragraph shall be under oath. The person taking the deposition shall prepare, or cause to be prepared, a written transcript of the testimony taken. The transcript shall be subscribed by the deponent. Each deposition shall be filed promptly with the Director.

(d)

Appeal

(1)

In general

A party may appeal a determination under subsection (b)(2) that misconduct occurred in connection with any matter or proceeding before the Office to the United States Court of Appeals for the Federal Circuit.

(2)

Notice to USPTO

A party appealing under this subsection shall file in the Office a written notice of appeal directed to the Director, within such time after the date of the determination from which the appeal is taken as the Director prescribes, but in no case less than 60 days after such date.

(3)

Required actions of the Director

In any appeal under this subsection, the Director shall transmit to the United States Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the determination proceeding. The court may request that the Director forward the original or certified copies of such documents during the pendency of the appeal. The court shall, before hearing the appeal, give notice of the time and place of the hearing to the Director and the parties in the appeal.

(4)

Authority of the court

The United States Court of Appeals for the Federal Circuit shall have power to enter, upon the pleadings and evidence of record at the time the determination was made, a judgment affirming, modifying, or setting aside, in whole or in part, the determination, with or without remanding the case for a rehearing. The court shall not set aside or remand the determination made under subsection (b)(2) unless there is not substantial evidence on the record to support the findings or the determination is not in accordance with law. Any sanction levied under subsection (b)(3) shall not be set aside or remanded by the court, unless the court determines that such sanction constitutes an abuse of discretion of the Director.

(e)

Definition

For purposes of this section, the term person means any individual, partnership, corporation, company, association, firm, partnership, society, trust, estate, cooperative, association, or any other entity capable of suing and being sued in a court of law.

.

(b)

Suspension or exclusion from practice

Section 32 of title 35, United States Code, is amended—

(1)

by striking The Director may and inserting the following:

(a)

In general

The Director may

; and

(2)

by adding at the end the following:

(b)

Tolling of time period

The time period for instituting a proceeding under subsection (a), as provided in section 2462 of title 28, shall not begin to run where fraud, concealment, or misconduct is involved until the information regarding fraud, concealment, or misconduct is made known in the manner set forth by regulation under section 2(b)(2)(D) to an officer or employee of the United States Patent and Trademark Office designated by the Director to receive such information.

.

(c)

Effective date

(1)

In general

Except as otherwise provided under paragraph (2), the amendments made by this section shall take effect on the date of enactment of this Act.

(2)

Inapplicability to pending litigation

Subsections (a) and (b) of section 298 of title 35, United States Code (as added by the amendment made by subsection (a) of this section), shall apply to any civil action filed on or after the date of the enactment of this Act.

12.

Authority of the Director of the Patent and Trademark Office to accept late filings

(a)

Authority

Section 2 of title 35, United States Code, is amended by adding at the end the following:

(e)

Discretion To accept late filings in certain cases of unintentional delay

(1)

In general

The Director may accept any application or other filing made by—

(A)

an applicant for, or owner of, a patent after the applicable deadline set forth in this title with respect to the application or patent; or

(B)

an applicant for, or owner of, a mark after the applicable deadline under the Trademark Act of 1946 with respect to the registration or other filing of the mark,

to the extent that the Director considers appropriate, if the applicant or owner files a petition within 30 days after such deadline showing, to the satisfaction of the Director, that the delay was unintentional.
(2)

Treatment of director's actions on petition

If the Director has not made a determination on a petition filed under paragraph (1) within 60 days after the date on which the petition is filed, the petition shall be deemed to be denied. A decision by the Director not to exercise, or a failure to exercise, the discretion provided by this subsection shall not be subject to judicial review.

(3)

Other provisions not affected

This subsection shall not apply to any other provision of this title, or to any provision of the Trademark Act of 1946, that authorizes the Director to accept, under certain circumstances, applications or other filings made after a statutory deadline or to statutory deadlines that are required by reason of the obligations of the United States under any treaty.

(4)

Definition

In this subsection, the term Trademark Act of 1946 means the Act entitled An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes, approved July 5, 1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the Trademark Act of 1946 or the Lanham Act).

.

(b)

Applicability

(1)

In general

The amendment made by subsection (a) shall apply to any application or other filing that—

(A)

is filed on or after the date of the enactment of this Act; or

(B)

on such date of enactment, is pending before the Director or is subject to judicial review.

(2)

Treatment of pending applications and filings

In the case of any application or filing described in paragraph (1)(B), the 30-day period prescribed in section 2(e)(1) of title 35, United States Code, as added by subsection (a) of this section, shall be deemed to be the 30-day period beginning on the date of the enactment of this Act.

(c)

Conversion of day-based deadlines into month-based deadlines

(1)

Sections 141, 156(d)(2)(A), 156(d)(2)(B)(ii), 156(d)(5)(C), and 282 of title 35, United States Code, are each amended by striking 30 days or thirty days each place that term appears and inserting 1 month.

(2)

Sections 135(c), 142, 145, 146, 156(d)(2)(B)(ii), 156(d)(5)(C), and the matter preceding clause (i) of section 156(d)(2)(A) of title 35, United States Code, are each amended by striking 60 days or sixty days each place that term appears and inserting 2 months.

(3)

The matter preceding subparagraph (A) of section 156(d)(1) and sections 156(d)(2)(B)(ii) and 156(d)(5)(E) of title 35, United States Code, are each amended by striking 60-day or sixty-day each place that term appears and inserting 2-month.

(4)

Sections 155 and 156(d)(2)(B)(i) of title 35, United States Code, are each amended by striking 90 days or ninety days each place that term appears and inserting 3 months.

(5)

Sections 154(b)(4)(A) and 156(d)(2)(B)(i) of title 35, United States Code, are each amended by striking 180 days each place that term appears and inserting 6 months.

13.

Limitation on damages and other remedies with respect to patents for methods in compliance with check imaging methods

(a)

Limitation

Section 287 of title 35, United States Code, is amended by adding at the end the following:

(d)
(1)

With respect to the use by a financial institution of a check collection system that constitutes an infringement under subsection (a) or (b) of section 271, the provisions of sections 281, 283, 284, and 285 shall not apply against the financial institution with respect to such a check collection system.

(2)

For the purposes of this subsection—

(A)

the term check has the meaning given under section 3(6) of the Check Clearing for the 21st Century Act (12 U.S.C. 5002(6));

(B)

the term check collection system means the use, creation, transmission, receipt, storing, settling, or archiving of truncated checks, substitute checks, check images, or electronic check data associated with or related to any method, system, or process that furthers or effectuates, in whole or in part, any of the purposes of the Check Clearing for the 21st Century Act (12 U.S.C. 5001 et seq.);

(C)

the term financial institution has the meaning given under section 509 of the Gramm-Leach-Bliley Act (15 U.S.C. 6809);

(D)

the term substitute check has the meaning given under section 3(16) of the Check Clearing for the 21st Century Act (12 U.S.C. 5002(16)); and

(E)

the term truncate has the meaning given under section 3(18) of the Check Clearing for the 21st Century Act (12 U.S.C. 5002(18)).

(3)

This subsection shall not limit or affect the enforcement rights of the original owner of a patent where such original owner—

(A)

is directly engaged in the commercial manufacture and distribution of machinery or the commercial development of software; and

(B)

has operated as a subsidiary of a bank holding company, as such term is defined under section 2(a) of the Bank Holding Company Act of 1956 (12 U.S.C. 1841(a)), prior to July 19, 2007.

(4)

A party shall not manipulate its activities, or conspire with others to manipulate its activities, for purposes of establishing compliance with the requirements of this subsection, including, without limitation, by granting or conveying any rights in the patent, enforcement of the patent, or the result of any such enforcement.

.

(b)

Takings

If this section is found to establish a taking of private property for public use without just compensation, this section shall be null and void. The exclusive remedy for such a finding shall be invalidation of this section. In the event of such invalidation, for purposes of application of the time limitation on damages in section 286 of title 35, United States Code, any action for patent infringement or counterclaim for infringement that could have been filed or continued but for this section, shall be considered to have been filed on the date of enactment of this Act or continued from such date of enactment.

(c)

Effective date

The amendment made by subsection (a) shall apply to any civil action for patent infringement pending or filed on or after the date of enactment of this Act.

14.

Patent and trademark office funding

(a)

Definitions

In this section:

(1)

Director

The term Director means the Director of the United States Patent and Trademark Office.

(2)

Fund

The term Fund means the public enterprise revolving fund established under subsection (c).

(3)

Office

The term Office means the United States Patent and Trademark Office.

(4)

Trademark Act of 1946

The term Trademark Act of 1946 means an Act entitled Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes, approved July 5, 1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the Trademark Act of 1946 or the Lanham Act).

(5)

Undersecretary

The term Undersecretary means the Under Secretary of Commerce for Intellectual Property.

(b)

Funding

(1)

In general

Section 42 of title 35, United States Code, is amended—

(A)

in subsection (b), by striking Patent and Trademark Office Appropriation Account and inserting United States Patent and Trademark Office Public Enterprise Fund; and

(B)

in subsection (c), in the first sentence—

(i)

by striking To the extent and all that follows through fees and inserting Fees; and

(ii)

by striking shall be collected by and shall be available to the Director and inserting shall be collected by the Director and shall be available until expended.

(2)

Effective date

The amendments made by paragraph (1) shall take effect on the later of—

(A)

October 1, 2008; or

(B)

the date of enactment of this Act.

(c)

USPTO revolving fund

(1)

Establishment

There is established in the Treasury of the United States a revolving fund to be known as the United States Patent and Trademark Office Public Enterprise Fund. Any amounts in the Fund shall be available for use by the Director without fiscal year limitation.

(2)

Derivation of resources

There shall be deposited into the Fund—

(A)

any fees collected under sections 41, 42, and 376 of title 35, United States Code, provided that notwithstanding any other provision of law, if such fees are collected by, and payable to, the Director, the Director shall transfer such amounts to the Fund; and

(B)

any fees collected under section 31 of the Trademark Act of 1946 (15 U.S.C. 1113).

(3)

Expenses

Amounts deposited into the Fund under paragraph (2) shall be available, without fiscal year limitation, to cover—

(A)

all expenses to the extent consistent with the limitation on the use of fees set forth in section 42(c) of title 35, United States Code, including all administrative and operating expenses, determined in the discretion of the Under Secretary to be ordinary and reasonable, incurred by the Under Secretary and the Director for the continued operation of all services, programs, activities, and duties of the Office, as such services, programs, activities, and duties are described under—

(i)

title 35, United States Code; and

(ii)

the Trademark Act of 1946; and

(B)

all expenses incurred pursuant to any obligation, representation, or other commitment of the Office.

(4)

Custodians of money

Notwithstanding section 3302 of title 31, United States Code, any funds received by the Director and transferred to Fund, or any amounts directly deposited into the Fund, may be used—

(A)

to cover the expenses described in paragraph (3); and

(B)

to purchase obligations of the United States, or any obligations guaranteed by the United States.

(d)

Annual report

Not later than 60 days after the end of each fiscal year, the Under Secretary and the Director shall submit a report to Congress which shall—

(1)

summarize the operations of the Office for the preceding fiscal year, including financial details and staff levels broken down by each major activity of the Office;

(2)

detail the operating plan of the Office, including specific expense and staff needs for the upcoming fiscal year;

(3)

describe the long term modernization plans of the Office;

(4)

set forth details of any progress towards such modernization plans made in the previous fiscal year; and

(5)

include the results of the most recent audit carried out under subsection (e).

(e)

Annual spending plan

(1)

In general

Not later than 30 days after the beginning of each fiscal year, the Director shall notify the Committees on Appropriations of both Houses of Congress of the plan for the obligation and expenditure of the total amount of the funds for that fiscal year in accordance with section 605 of the Science, State, Justice, Commerce, and Related Agencies Appropriations Act, 2006 (Public Law 109–108; 119 Stat. 2334).

(2)

Contents

Each plan under paragraph (1) shall—

(A)

summarize the operations of the Office for the current fiscal year, including financial details and staff levels with respect to major activities; and

(B)

detail the operating plan of the Office, including specific expense and staff needs, for the current fiscal year.

(f)

Audit

The Under Secretary shall, on an annual basis, provide for an independent audit of the financial statements of the Office. Such audit shall be conducted in accordance with generally acceptable accounting procedures.

(g)

Budget

In accordance with section 9103 of title 31, United States Code, the Fund shall prepare and submit each year to the President a business-type budget in a way, and before a date, the President prescribes by regulation for the budget program.

15.

Technical amendments

(a)

Joint inventions

Section 116 of title 35, United States Code, is amended—

(1)

in the first paragraph, by striking When and inserting (a) Joint Inventions.—When;

(2)

in the second paragraph, by striking If a joint inventor and inserting (b) Omitted Inventor.—If a joint inventor; and

(3)

in the third paragraph—

(A)

by striking Whenever and inserting (c) Correction of Errors in Application.—Whenever; and

(B)

by striking and such error arose without any deceptive intent on his part,.

(b)

Filing of application in foreign country

Section 184 of title 35, United States Code, is amended—

(1)

in the first paragraph—

(A)

by striking Except when and inserting (a) Filing in Foreign Country.—Except when; and

(B)

by striking and without deceptive intent;

(2)

in the second paragraph, by striking The term and inserting (b) Application.—The term; and

(3)

in the third paragraph, by striking The scope and inserting (c) Subsequent modifications, amendments, and supplements.—The scope.

(c)

Filing without a license

Section 185 of title 35, United States Code, is amended by striking and without deceptive intent.

(d)

Reissue of defective patents

Section 251 of title 35, United States Code, is amended—

(1)

in the first paragraph—

(A)

by striking Whenever and inserting (a) In general.—Whenever reissue of any patent is authorized under section 298 or; and

(B)

by striking without deceptive intention;

(2)

in the second paragraph, by striking The Director and inserting (b) Multiple reissued patents.—The Director;

(3)

in the third paragraph, by striking The provision and inserting (c) Applicability of this title.—The provisions; and

(4)

in the last paragraph, by striking No reissued patent and inserting (d) Reissue patent enlarging scope of claims.—No reissued patent.

(e)

Effect of reissue

Section 253 of title 35, United States Code, is amended—

(1)

in the first paragraph, by striking Whenever, without deceptive intention and inserting (a) In general.—Whenever; and

(2)

in the second paragraph, by striking in like manner and inserting (b) Additional disclaimer or dedication.—In the manner set forth in subsection (a),.

(f)

Correction of named inventor

Section 256 of title 35, United States Code, is amended—

(1)

in the first paragraph, by striking Whenever and inserting (a) Correction.—Whenever; and

(2)

in the second paragraph, by striking The error and inserting (b) Patent valid if error corrected.—The error.

(g)

Presumption of validity

Section 282 of title 35, United States Code, is amended—

(1)

in the first undesignated paragraph, by striking A patent and inserting (a) In general.—A patent;

(2)

in the second undesignated paragraph, by striking The following and inserting (b) Defenses.—The following; and

(3)

in the third undesignated paragraph, by striking In actions and inserting (c) Notice of actions; actions during extension of patent term.—In actions.

(h)

Action for infringement

Section 288 of title 35, United States Code, is amended by striking , without any deceptive intention,.

16.

Effective date; rule of construction

(a)

Effective date

Except as otherwise provided in this Act, the provisions of this Act shall take effect 12 months after the date of the enactment of this Act and shall apply to any patent issued on or after that effective date.

(b)

Special provisions relating to determinations of validity and patentability

(1)

In general

The amendments made by section 2 shall apply to any application for a patent and any patent issued pursuant to such an application that at any time—

(A)

contained a claim to a claimed invention that has an effective filing date, as such date is defined under section 100(h) of title 35, United States Code, 1 year or more after the date of the enactment of this Act;

(B)

asserted a claim to a right of priority under section 119, 365(a), or 365(b) of title 35, United States Code, to any application that was filed 1 year or more after the date of the enactment of this Act; or

(C)

made a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any application to which the amendments made by section 2 otherwise apply under this subsection.

(2)

Patentability

For any application for patent and any patent issued pursuant to such an application to which the amendments made by section 2 apply, no claim asserted in such application shall be patentable or valid unless such claim meets the conditions of patentability specified in section 102(g) of title 35, United States Code, as such conditions were in effect on the day prior to the date of enactment of this Act, if the application at any time—

(A)

contained a claim to a claimed invention that has an effective filing date as defined in section 100(h) of title 35, United States Code, earlier than 1 year after the date of the enactment of this Act;

(B)

asserted a claim to a right of priority under section 119, 365(a), or 365(b) of title 35, United States Code, to any application that was filed earlier than 1 year after the date of the enactment of this Act; or

(C)

made a specific reference under section 120, 121, or 365(c) of title 35, United States Code, with respect to which the requirements of section 102(g) applied.

(3)

Validity of patents

For the purpose of determining the validity of a claim in any patent or the patentability of any claim in a nonprovisional application for patent that is made before the effective date of the amendments made by sections 2 and 3, other than in an action brought in a court before the date of the enactment of this Act—

(A)

the provisions of subsections (c), (d), and (f) of section 102 of title 35, United States Code, that were in effect on the day prior to the date of enactment of this Act shall be deemed to be repealed;

(B)

the amendments made by section 3 of this Act shall apply, except that a claim in a patent that is otherwise valid under the provisions of section 102(f) of title 35, United States Code, as such provision was in effect on the day prior to the date of enactment of this Act, shall not be invalidated by reason of this paragraph; and

(C)

the term in public use or on sale as used in section 102(b) of title 35, United States Code, as such section was in effect on the day prior to the date of enactment of this Act shall be deemed to exclude the use, sale, or offer for sale of any subject matter that had not become available to the public.

(4)

Continuity of intent under the Create Act

The enactment of section 102(b)(3) of title 35, United States Code, under section (2)(b) of this Act is done with the same intent to promote joint research activities that was expressed, including in the legislative history, through the enactment of the Cooperative Research and Technology Enhancement Act of 2004 (Public Law 108–453; the CREATE Act), the amendments of which are stricken by section 2(c) of this Act. The United States Patent and Trademark Office shall administer section 102(b)(3) of title 35, United States Code, in a manner consistent with the legislative history of the CREATE Act that was relevant to its administration by the United States Patent and Trademark Office.