[Congressional Bills 113th Congress]
[From the U.S. Government Publishing Office]
[H.R. 3309 Introduced in House (IH)]
113th CONGRESS
1st Session
H. R. 3309
To amend title 35, United States Code, and the Leahy-Smith America
Invents Act to make improvements and technical corrections, and for
other purposes.
_______________________________________________________________________
IN THE HOUSE OF REPRESENTATIVES
October 23, 2013
Mr. Goodlatte (for himself, Mr. DeFazio, Mr. Coble, Ms. Lofgren, Mr.
Smith of Texas, Ms. Eshoo, Mr. Chaffetz, Mr. Bachus, Mr. Marino, Mr.
Farenthold, and Mr. Holding) introduced the following bill; which was
referred to the Committee on the Judiciary
_______________________________________________________________________
A BILL
To amend title 35, United States Code, and the Leahy-Smith America
Invents Act to make improvements and technical corrections, and for
other purposes.
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,
SECTION 1. SHORT TITLE; TABLE OF CONTENTS.
(a) Short Title.--This Act may be cited as the ``Innovation Act''.
(b) Table of Contents.--The table of contents for this Act is as
follows:
Sec. 1. Short title; table of contents.
Sec. 2. Definitions.
Sec. 3. Patent infringement actions.
Sec. 4. Transparency of patent ownership.
Sec. 5. Customer-suit exception.
Sec. 6. Procedures and practices to implement and recommendations to
the Judicial Conference.
Sec. 7. Small business education, outreach, and information access.
Sec. 8. Studies on patent transactions, quality, and examination.
Sec. 9. Improvements and technical corrections to the Leahy-Smith
America Invents Act.
Sec. 10. Effective date.
SEC. 2. DEFINITIONS.
In this Act:
(1) Director.--The term ``Director'' means the Under
Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
(2) Office.--The term ``Office'' means the United States
Patent and Trademark Office.
SEC. 3. PATENT INFRINGEMENT ACTIONS.
(a) Pleading Requirements.--
(1) Amendment.--Chapter 29 of title 35, United States Code,
is amended by inserting after section 281 the following:
``Sec. 281A. Pleading requirements for patent infringement actions
``(a) Pleading Requirements.--Except as provided in subsection (b),
in a civil action in which a party asserts a claim for relief arising
under any Act of Congress relating to patents, a party alleging
infringement shall include in the initial complaint, counterclaim, or
cross-claim for patent infringement, unless the information is not
reasonably accessible to such party, the following:
``(1) An identification of each patent allegedly infringed.
``(2) An identification of each claim of each patent
identified under paragraph (1) that is allegedly infringed.
``(3) For each claim identified under paragraph (2), an
identification of each accused apparatus, product, feature,
device, method, system, process, function, act, service, or
other instrumentality (referred to in this section as an
`accused instrumentality') alleged to infringe the claim.
``(4) For each accused instrumentality identified under
paragraph (3), an identification with particularity, if known,
of--
``(A) the name or model number of each accused
instrumentality; or
``(B) if there is no name or model number, a
description of each accused instrumentality that, when
used, allegedly results in the practice of the claimed
invention.
``(5) For each accused instrumentality identified under
paragraph (3), an explanation of--
``(A) where each element of each claim identified
under paragraph (2) is found within the accused
instrumentality;
``(B) whether each such element is infringed
literally or under the doctrine of equivalents; and
``(C) with detailed specificity, how the terms in
each claim identified under paragraph (2) correspond to
the functionality of the accused instrumentality.
``(6) For each claim that is alleged to have been infringed
indirectly, a description of--
``(A) the direct infringement;
``(B) any person alleged to be a direct infringer
known to the party alleging infringement; and
``(C) the acts of the alleged indirect infringer
that contribute to or are inducing the direct
infringement.
``(7) A description of the right of the party alleging
infringement to assert each--
``(A) patent identified under paragraph (1); and
``(B) patent claim identified under paragraph (2).
``(8) A description of the principal business of the party
alleging infringement.
``(9) A list of each complaint filed, of which the party
alleging infringement has knowledge, that asserts or asserted
any of the patents identified under paragraph (1).
``(10) For each patent identified under paragraph (1),
whether such patent has been specifically declared as
essential, potentially essential, or having potential to become
essential to any standard-setting body, and whether the United
States Government or a foreign government has imposed specific
licensing requirements with respect to such patent.
``(b) Information Not Readily Accessible.--A party required to
disclose the information described under subsection (a) shall include
with such disclosure a description of any information described under
subsection (a) that is not disclosed, why such undisclosed information
was not readily accessible, and the efforts made by such party to
access such undisclosed information.
``(c) Confidential Information.--For good cause shown by a party
required to disclose the information described under subsection (a),
the court may allow certain information that the court determines to be
confidential to be filed under seal.
``(d) Exemption.--A civil action that includes a claim for relief
arising under section 271(e)(2) shall not be subject to the
requirements of subsection (a).''.
(2) Conforming amendment.--The table of sections for
chapter 29 of title 35, United States Code, is amended by
inserting after the item relating to section 281 the following
new item:
``281A. Pleading requirements for patent infringement
actions.''.
(b) Fees and Other Expenses.--
(1) Amendment.--Section 285 of title 35, United States
Code, is amended to read as follows:
``Sec. 285. Fees and other expenses
``(a) Award.--The court shall award, to a prevailing party,
reasonable fees and other expenses incurred by that party in connection
with a civil action in which any party asserts a claim for relief
arising under any Act of Congress relating to patents, unless the court
finds that the position of the nonprevailing party or parties was
substantially justified or that special circumstances make an award
unjust.
``(b) Recovery.--If a nonprevailing party is unable to pay
reasonable fees and other expenses awarded by the court pursuant to
subsection (a), the court may make the reasonable fees and other
expenses recoverable against any interested party joined pursuant to
section 299(d).
``(c) Covenant Not To Sue.--A party to a civil action that asserts
a claim for relief arising under any Act of Congress relating to
patents against another party, and that subsequently unilaterally
extends to such other party a covenant not to sue for infringement with
respect to the patent or patents at issue, shall be deemed to be a
nonprevailing party (and the other party the prevailing party) for
purposes of this section, unless the party asserting such claim would
have been entitled, at the time that such covenant was extended, to
voluntarily dismiss the action or claim without a court order under
Rule 41 of the Federal Rules of Civil Procedure.''.
(2) Conforming amendment and amendment.--
(A) Conforming amendment.--The item relating to
section 285 of the table of sections for chapter 29 of
title 35, United States Code, is amended to read as
follows:
``285. Fees and other expenses.''.
(B) Amendment.--Section 273 of title 35, United
States Code, is amended by striking subsections (f) and
(g).
(3) Effective date.--The amendments made by this subsection
shall take effect on the date of the enactment of this Act and
shall apply to any action for which a complaint is filed on or
after that date.
(c) Joinder of Interested Parties.--Section 299 of title 35, United
States Code, is amended by adding at the end the following new
subsection:
``(d) Joinder of Interested Parties.--
``(1) Joinder.--In a civil action arising under any Act of
Congress relating to patents, the court shall grant a motion by
a party defending against an allegation of infringement of a
patent claim to join an interested party if such defending
party shows that the party alleging infringement has no
substantial interest in the patent or patents at issue other
than asserting such patent claim in litigation.
``(2) Limitation on joinder.--The court may deny a motion
to join an interested party under paragraph (1) if--
``(A) the interested party is not subject to
service of process; or
``(B) joinder under paragraph (1) would deprive the
court of subject matter jurisdiction or make venue
improper.
``(3) Interested party defined.--In this subsection, the
term `interested party' means a person, other than the party
alleging infringement, that--
``(A) is an assignee of the patent or patents at
issue;
``(B) has a right, including a contingent right, to
enforce or sublicense the patent or patents at issue;
or
``(C) has a direct financial interest in the patent
or patents at issue, including the right to any part of
an award of damages or any part of licensing revenue,
except that a person with a direct financial interest
does not include--
``(i) an attorney or law firm providing
legal representation in the civil action
described in paragraph (1) if the sole basis
for the financial interest of the attorney or
law firm in the patent or patents at issue
arises from the attorney or law firm's receipt
of compensation reasonably related to the
provision of the legal representation; or
``(ii) a person whose sole financial
interest in the patent or patents at issue is
ownership of an equity interest in the party
alleging infringement, unless such person also
has the right or ability to influence, direct,
or control the civil action.''.
(d) Discovery Limits.--
(1) Amendment.--Chapter 29 of title 35, United States Code,
is amended by adding at the end the following new section:
``Sec. 299A. Discovery in patent infringement action
``(a) Discovery in Patent Infringement Action.--Except as provided
in subsection (b), in a civil action arising under any Act of Congress
relating to patents, if the court determines that a ruling relating to
the construction of terms used in a patent claim asserted in the
complaint is required, discovery shall be limited, until such ruling is
issued, to information necessary for the court to determine the meaning
of the terms used in the patent claim, including any interpretation of
those terms used to support the claim of infringement.
``(b) Discretion To Expand Scope of Discovery.--
``(1) Timely resolution of actions.--If, under any
provision of Federal law (including the amendments made by the
Drug Price Competition and Patent Term Restoration Act of 1984
(Public Law 98-417)), resolution within a specified period of
time of a civil action arising under any Act of Congress
relating to patents will necessarily affect the rights of a
party with respect to the patent, the court may permit
discovery, in addition to the discovery authorized under
subsection (a), before the ruling described in subsection (a)
is issued as necessary to ensure timely resolution of the
action.
``(2) Resolution of motions.--When necessary to resolve a
motion properly raised by a party before a ruling relating to
the construction of terms described in subsection (a), the
court may allow limited discovery in addition to the discovery
authorized under subsection (a) as necessary to resolve the
motion.''.
(2) Conforming amendment.--The table of sections for
chapter 29 of title 35, United States Code, is amended by
adding at the end the following new item:
``299A. Discovery in patent infringement action.''.
(e) Effective Date.--Except as otherwise provided in this section,
the amendments made by this section shall take effect on the date of
the enactment of this Act and shall apply to any action for which a
complaint is filed on or after that date.
SEC. 4. TRANSPARENCY OF PATENT OWNERSHIP.
(a) Amendments.--Section 290 of title 35, United States Code, is
amended--
(1) in the heading, by striking ``suits'' and inserting
``suits; disclosure of interests'';
(2) by striking ``The clerks'' and inserting ``(a) Notice
of Patent Suits.--The clerks''; and
(3) by adding at the end the following new subsections:
``(b) Initial Disclosure.--
``(1) In general.--Except as provided in paragraph (2),
upon the filing of an initial complaint for patent
infringement, the plaintiff shall disclose to the Patent and
Trademark Office, the court, and each adverse party the
identity of each of the following:
``(A) The assignee of the patent or patents at
issue.
``(B) Any entity with a right to sublicense or
enforce the patent or patents at issue.
``(C) Any entity, other than the plaintiff, that
the plaintiff knows to have a financial interest in the
patent or patents at issue or the plaintiff.
``(D) The ultimate parent entity of any assignee
identified under subparagraph (A) and any entity
identified under subparagraphs (B) and (C).
``(2) Exemption.--The requirements of paragraph (1) shall
not apply with respect to a civil action filed under subsection
(a) that includes a cause of action described under section
271(e)(2).
``(c) Disclosure Compliance.--
``(1) Publicly traded.--For purposes of subsection
(b)(1)(C), if the financial interest is held by a corporation
traded on a public stock exchange, an identification of the
name of the corporation and the public exchange listing shall
satisfy the disclosure requirement.
``(2) Not publicly traded.--For purposes of subsection
(b)(1)(C), if the financial interest is not held by a publicly
traded corporation, the disclosure shall satisfy the disclosure
requirement if the information identifies--
``(A) in the case of a partnership, the name of the
partnership and the name and correspondence address of
each partner or other entity that holds more than a 5-
percent share of that partnership;
``(B) in the case of a corporation, the name of the
corporation, the location of incorporation, the address
of the principal place of business, and the name of
each officer of the corporation; and
``(C) for each individual, the name and
correspondence address of that individual.
``(d) Ongoing Duty of Disclosure to the Patent and Trademark
Office.--
``(1) In general.--A plaintiff required to submit
information under subsection (b) or a subsequent owner of the
patent or patents at issue shall, not later than 90 days after
any change in the assignee of the patent or patents at issue or
an entity described under subparagraphs (B) and (D) of
subsection (b)(1), submit to the Patent and Trademark Office
the updated identification of such assignee or entity.
``(2) Failure to comply.--With respect to a patent for
which the requirement of paragraph (1) has not been met--
``(A) the plaintiff or subsequent owner shall not
be entitled to recover reasonable fees and other
expenses under section 285 or increased damages under
section 284 with respect to infringing activities
taking place during any period of noncompliance with
paragraph (1), unless the denial of such damages or
fees would be manifestly unjust; and
``(B) the court shall award to a prevailing party
accused of infringement reasonable fees and other
expenses incurred to discover the updated assignee or
entity described under paragraph (1), unless such
sanctions would be unjust.
``(e) Definitions.--In this section:
``(1) Financial interest.--The term `financial interest'--
``(A) means--
``(i) with regard to a patent or patents,
the right of a person to receive proceeds
related to the assertion of the patent or
patents, including a fixed or variable portion
of such proceeds; and
``(ii) with regard to the plaintiff, direct
or indirect ownership or control by a person of
more than 5 percent of such plaintiff; and
``(B) does not mean--
``(i) ownership of shares or other
interests in a mutual or common investment
fund, unless the owner of such interest
participates in the management of such fund; or
``(ii) the proprietary interest of a
policyholder in a mutual insurance company, of
a depositor in a mutual savings association, or
a similar proprietary interest, unless the
outcome of the proceeding could substantially
affect the value of such interest.
``(2) Proceeding.--The term `proceeding' means all stages
of a civil action, including pretrial and trial proceedings and
appellate review.
``(3) Ultimate parent entity.--
``(A) In general.--Except as provided in
subparagraph (B), the term `ultimate parent entity' has
the meaning given such term in section 801.1(a)(3) of
title 16, Code of Federal Regulations, or any successor
regulation.
``(B) Modification of definition.--The Director may
modify the definition of `ultimate parent entity' by
regulation.''.
(b) Technical and Conforming Amendment.--The item relating to
section 290 in the table of sections for chapter 29 of title 35, United
States Code, is amended to read as follows:
``290. Notice of patent suits; disclosure of interests.''.
(c) Regulations.--The Director may promulgate such regulations as
are necessary to establish a registration fee in an amount sufficient
to recover the estimated costs of administering subsections (b) through
(e) of section 290 of title 35, United States Code, as added by
subsection (a), to facilitate the collection and maintenance of the
information required by such subsections, and to ensure the timely
disclosure of such information to the public.
(d) Effective Date.--The amendments made by this section shall take
effect upon the expiration of the 6-month period beginning on the date
of the enactment of this Act and shall apply to any action for which a
complaint is filed on or after such effective date.
SEC. 5. CUSTOMER-SUIT EXCEPTION.
(a) Amendment.--Section 296 of title 35, United States Code, is
amended to read as follows:
``Sec. 296. Stay of action against customer
``(a) Stay of Action Against Customer.--Except as provided in
subsection (d), in any civil action arising under any Act of Congress
relating to patents, the court shall grant a motion to stay at least
the portion of the action against a covered customer related to
infringement of a patent involving a covered product or process if the
following requirements are met:
``(1) The covered manufacturer and the covered customer
consent in writing to the stay.
``(2) The covered manufacturer is a party to the action or
to a separate action involving the same patent or patents
related to the same covered product or process.
``(3) The covered customer agrees to be bound by any
judgment entered against the covered manufacturer to the same
extent that the covered manufacturer may be bound with respect
to issues that the covered manufacturer and the covered
customer have in common.
``(4) The motion is filed after the first pleading in the
action and not later than 120 days after service of the first
pleading in the action that specifically identifies--
``(A) the covered product or process as a basis for
the alleged infringement of the patent by the covered
customer; and
``(B) how the covered product or process is alleged
to infringe the patent.
``(b) Applicability of Stay.--A stay issued pursuant to subsection
(a) shall apply only to the patents, products, systems, or components
accused of infringement in the action.
``(c) Lift of Stay.--
``(1) In general.--A stay entered pursuant to this section
may be lifted upon grant of a motion based on a showing that--
``(A) the action involving the covered manufacturer
will not resolve a major issue in suit against the
covered customer; or
``(B) the stay unreasonably prejudices and would be
manifestly unjust to the party seeking to lift the
stay.
``(2) Separate manufacturer action involved.--In the case
of a stay entered based on the participation of the covered
manufacturer in a separate action involving the same patent or
patents related to the same covered product or process, a
motion under this subsection may only be made if the court in
such separate action determines the showing required under
paragraph (1) has been met.
``(d) Exemption.--This section shall not apply to an action that
includes a cause of action described under section 271(e).
``(e) Rule of Construction.--Nothing in this section shall be
construed to limit the ability of a court to grant any stay, or expand
any stay granted pursuant to this section, if otherwise permitted by
law.
``(f) Definitions.--In this section:
``(1) Covered customer.--The term `covered customer' means
a party accused of infringing a patent or patents in dispute
based on a covered product or process.
``(2) Covered manufacturer.--The term `covered
manufacturer' means a person that manufactures or supplies, or
causes the manufacture or supply of, a covered product or
process or a relevant part of such product or process.
``(3) Covered product or process.--The term `covered
product or process' means a product, process, system, service,
component, material, or apparatus, or relevant part thereof,
that--
``(A) is alleged to infringe the patent or patents
in dispute; or
``(B) implements a process alleged to infringe the
patent or patents in dispute.''.
(b) Conforming Amendment.--The table of sections for chapter 29 of
title 35, United States Code, is amended by striking the item relating
to section 296 and inserting the following:
``296. Stay of action against customer.''.
(c) Effective Date.--The amendments made by this section shall take
effect on the date of the enactment of this Act and shall apply to any
action for which a complaint is filed on or after that date.
SEC. 6. PROCEDURES AND PRACTICES TO IMPLEMENT AND RECOMMENDATIONS TO
THE JUDICIAL CONFERENCE.
(a) Judicial Conference Rules and Procedures on Discovery Burdens
and Costs.--
(1) Rules and procedures.--The Judicial Conference of the
United States, using existing resources, shall develop rules
and procedures to implement the requirements described in
paragraph (2) to address the asymmetries in discovery burdens
and costs in any civil action arising under any Act of Congress
relating to patents. Such rules and procedures shall include
how and when payment for document discovery in addition to the
discovery of core documentary evidence is to occur, and what
information must be presented to demonstrate financial capacity
before permitting document discovery in addition to the
discovery of core documentary evidence.
(2) Rules and procedures to be considered.--The rules and
procedures required under paragraph (1) shall include each of
the following requirements:
(A) Discovery of core documentary evidence.--Each
party to the action is entitled to receive core
documentary evidence and shall be responsible for the
costs of producing core documentary evidence within the
possession or control of each such party. Each party to
the action may seek nondocumentary discovery as
otherwise provided in the Federal Rules of Civil
Procedure.
(B) Electronic communication.--If the parties
determine that the discovery of electronic
communication is necessary, such discovery shall occur
after the parties have exchanged initial disclosures
and core documentary evidence and shall be in
accordance with the following:
(i) Any request for the production of
electronic communication shall be specific and
may not be a general request for the production
of information relating to a product or
business.
(ii) Each request shall identify the
custodian of the information requested, the
search terms, and a time frame. The parties
shall cooperate to identify the proper
custodians, the proper search terms, and the
proper time frame.
(iii) A party may not submit production
requests to more than 5 custodians, unless the
parties jointly agree to modify the number of
production requests without leave of the court.
(iv) The court may consider contested
requests for up to 5 additional custodians per
producing party, upon a showing of a distinct
need based on the size, complexity, and issues
of the case.
(v) If a party requests the discovery of
electronic communication for additional
custodians beyond the limits agreed to by the
parties or granted by the court, the requesting
party shall bear all reasonable costs caused by
such additional discovery.
(C) Additional document discovery.--
(i) In general.--Each party to the action
may seek any additional document discovery
otherwise permitted under the Federal Rules of
Civil Procedure, if such party bears the
reasonable costs, including reasonable
attorney's fees, of the additional document
discovery.
(ii) Requirements for additional document
discovery.--Unless the parties mutually agree
otherwise, no party may be permitted additional
document discovery unless such a party posts a
bond, or provides other security, in an amount
sufficient to cover the expected costs of such
additional document discovery, or makes a
showing to the court that such party has the
financial capacity to pay the costs of such
additional document discovery.
(iii) Limits on additional document
discovery.--A court, upon motion, may determine
that a request for additional document
discovery is excessive, irrelevant, or
otherwise abusive and may set limits on such
additional document discovery.
(iv) Good cause modification.--A court,
upon motion and for good cause shown, may
modify the requirements of subparagraphs (A)
and (B) and any definition under paragraph (3).
Not later than 30 days after the pretrial
conference under Rule 16 of the Federal Rules
of Civil Procedure, the parties shall jointly
submit any proposed modifications of the
requirements of subparagraphs (A) and (B) and
any definition under paragraph (3), unless the
parties do not agree, in which case each party
shall submit any proposed modification of such
party and a summary of the disagreement over
the modification.
(v) Computer code.--A court, upon motion
and for good cause shown, may determine that
computer code should be included in the
discovery of core documentary evidence. The
discovery of computer code shall occur after
the parties have exchanged initial disclosures
and other core documentary evidence.
(D) Discovery sequence and scope.--The parties
shall discuss and address in the written report filed
pursuant to Rule 26(f) of the Federal Rules of Civil
Procedure the views and proposals of each party on the
following:
(i) When the discovery of core documentary
evidence should be completed.
(ii) Whether additional document discovery
will be sought under subparagraph (C).
(iii) Any issues about infringement,
invalidity, or damages that, if resolved before
the additional discovery described in
subparagraph (C) commences, might simplify or
streamline the case, including the
identification of any terms or phrases relating
to any patent claim at issue to be construed by
the court and whether the early construction of
any of those terms or phrases would be helpful.
(3) Definitions.--In this subsection:
(A) Core documentary evidence.--In this subsection,
the term ``core documentary evidence''--
(i) includes--
(I) documents relating to the
conception of, reduction to practice
of, and application for, the patent or
patents at issue;
(II) documents sufficient to show
the technical operation of the product
or process identified in the complaint
as infringing the patent or patents at
issue;
(III) documents relating to
potentially invalidating prior art;
(IV) documents relating to any
licensing of, or other transfer of
rights to, the patent or patents at
issue before the date on which the
complaint is filed;
(V) documents sufficient to show
profit attributable to the claimed
invention of the patent or patents at
issue;
(VI) documents relating to any
knowledge by the accused infringer of
the patent or patents at issue before
the date on which the complaint is
filed;
(VII) documents relating to any
knowledge by the patentee of
infringement of the patent or patents
at issue before the date on which the
complaint is filed;
(VIII) documents relating to any
licensing term or pricing commitment to
which the patent or patents may be
subject through any agency or standard-
setting body; and
(IX) documents sufficient to show
any marking or other notice provided of
the patent or patents at issue; and
(ii) does not include computer code, except
as specified in paragraph (2)(C)(v).
(B) Electronic communication.--The term
``electronic communication'' means any form of
electronic communication, including email, text
message, or instant message.
(4) Implementation by the district courts.--Not later than
6 months after the date on which the Judicial Conference has
developed the rules and procedures required by this subsection,
each United States district court and the United States Court
of Federal Claims shall revise the applicable local rules for
such court to implement such rules and procedures.
(5) Authority for judicial conference to review and
modify.--The Judicial Conference shall study the efficacy of
the rules and procedures required by this subsection during the
first 4 years following the implementation of such rules and
procedures by the district courts and the United States Court
of Federal Claims. The Judicial Conference may modify such
rules and procedures following such 4-year period.
(b) Judicial Conference Patent Case Management.--The Judicial
Conference of the United States, using existing resources, shall
develop case management procedures to be implemented by the United
States district courts and the United States Court of Federal Claims
for any civil action arising under any Act of Congress relating to
patents, including initial disclosure and early case management
conference practices that--
(1) will identify any potential dispositive issues of the
case; and
(2) focus on early summary judgment motions when resolution
of issues may lead to expedited disposition of the case.
(c) Revision of Form for Patent Infringement.--
(1) Elimination of form.--The Supreme Court, using existing
resources, shall eliminate Form 18 in the Appendix to the
Federal Rules of Civil Procedure (relating to Complaint for
Patent Infringement), effective on the date of the enactment of
this Act.
(2) Revised form.--The Supreme Court may prescribe a new
form or forms setting out model allegations of patent
infringement that, at a minimum, notify accused infringers of
the asserted claim or claims, the products or services accused
of infringement, and the plaintiff's theory for how each
accused product or service meets each limitation of each
asserted claim. The Judicial Conference should exercise the
authority under section 2073 of title 28, United States Code,
to make recommendations with respect to such new form or forms.
(d) Protection of Intellectual-Property Licenses in Bankruptcy.--
(1) In general.--Section 1520(a) of title 11, United States
Code, is amended--
(A) in paragraph (3), by striking ``; and'' and
inserting a semicolon;
(B) in paragraph (4), by striking the period at the
end and inserting ``; and''; and
(C) by inserting at the end the following new
paragraph:
``(5) section 365(n) applies to intellectual property of
which the debtor is a licensor or which the debtor has
transferred.''.
(2) Effective date.--The amendments made by this subsection
shall take effect on the date of the enactment of this Act and
shall apply to any action for which a complaint is pending on,
or filed on or after, such date of enactment.
SEC. 7. SMALL BUSINESS EDUCATION, OUTREACH, AND INFORMATION ACCESS.
(a) Small Business Education and Outreach.--
(1) Resources for small business.--Using existing
resources, the Director shall develop educational resources for
small businesses to address concerns arising from patent
infringement.
(2) Small business patent ombudsman.--The Patent Ombudsman
Program established under section 28 of the Leahy-Smith America
Invents Act (Public Law 112-29; 125 Stat. 339; 35 U.S.C. 2
note) shall coordinate with the existing small business
outreach programs of the Office to provide education and
awareness on abusive patent litigation practices.
(b) Improving Information Transparency for Small Business and the
United States Patent and Trademark Office Users.--
(1) Web site.--Using existing resources, the Director shall
create a user-friendly section on the official Web site of the
Office to notify the public when a patent case is brought in
Federal court and with respect to each patent at issue in such
case, the Director shall include--
(A) information disclosed pursuant to subsections
(b) and (d) of section 290 of title 35, United States
Code, as added by section 4(a) of this Act; and
(B) any other information the Director determines
to be relevant.
(2) Format.--In order to promote accessibility for the
public, the information described in paragraph (1) shall be
searchable by patent number, patent art area, and entity.
SEC. 8. STUDIES ON PATENT TRANSACTIONS, QUALITY, AND EXAMINATION.
(a) Study on Secondary Market Oversight for Patent Transactions To
Promote Transparency and Ethical Business Practices.--
(1) Study required.--The Director, in consultation with the
Secretary of Commerce, the Secretary of the Treasury, the
Chairman of the Securities and Exchange Commission, the heads
of other relevant agencies, and interested parties, shall,
using existing resources of the Office, conduct a study--
(A) to develop legislative recommendations to
ensure greater transparency and accountability in
patent transactions occurring on the secondary market;
(B) to examine the economic impact that the patent
secondary market has on the United States;
(C) to examine licensing and other oversight
requirements that may be placed on the patent secondary
market, including on the participants in such markets,
to ensure that the market is a level playing field and
that brokers in the market have the requisite expertise
and adhere to ethical business practices; and
(D) to examine the requirements placed on other
markets.
(2) Submission of study.--Not later than 1 year after the
date of the enactment of this Act, the Director shall submit a
report to the Committee on the Judiciary of the House of
Representatives and the Committee on the Judiciary of the
Senate on the findings and recommendations of the Director from
the study required under paragraph (1).
(b) Study on Patents Owned by the United States Government.--
(1) Study required.--The Director, in consultation with the
heads of relevant agencies and interested parties, shall, using
existing resources of the Office, conduct a study on patents
owned by the United States Government that--
(A) examines how such patents are licensed and
sold, and any litigation relating to the licensing or
sale of such patents;
(B) provides legislative and administrative
recommendations on whether there should be restrictions
placed on patents acquired from the United States
Government;
(C) examines whether or not each relevant agency
maintains adequate records on the patents owned by such
agency, specifically whether such agency addresses
licensing, assignment, and Government grants for
technology related to such patents; and
(D) provides recommendations to ensure that each
relevant agency has an adequate point of contact that
is responsible for managing the patent portfolio of the
agency.
(2) Report on study.--Not later than 6 months after the
date of the enactment of this Act, the Director shall submit to
the Committee on the Judiciary of the House of Representatives
and the Committee on the Judiciary of the Senate a report on
the findings and recommendations of the Director from the study
required under paragraph (1).
(c) Study on Patent Quality and Access to the Best Information
During Examination.--
(1) GAO study.--The Comptroller General of the United
States shall conduct a study on patent examination at the
Office and the technologies available to improve examination
and improve patent quality.
(2) Contents of the study.--The study required under
paragraph (1) shall include the following:
(A) An examination of patent quality at the Office.
(B) An examination of ways to improve quality,
specifically through technology, that shall include
examining best practices at foreign patent offices and
the use of existing off-the-shelf technologies to
improve patent examination.
(C) A description of how patents are classified.
(D) An examination of procedures in place to
prevent double patenting through filing by applicants
in multiple art areas.
(E) An examination of the types of off-the-shelf
prior art databases and search software used by foreign
patent offices and governments, particularly in Europe
and Asia, and whether those databases and search tools
could be used by the Office to improve patent
examination.
(F) An examination of any other areas the
Comptroller General determines to be relevant.
(3) Report to congress.--Not later than 6 months after the
date of the enactment of this Act, the Comptroller General
shall submit to the Committee on the Judiciary of the House of
Representatives and the Committee on the Judiciary of the
Senate a report on the findings and recommendations from the
study required by this subsection, including recommendations
for any changes to laws and regulations that will improve the
examination of patent applications and patent quality.
SEC. 9. IMPROVEMENTS AND TECHNICAL CORRECTIONS TO THE LEAHY-SMITH
AMERICA INVENTS ACT.
(a) Repeal of Civil Action To Obtain a Patent.--
(1) Repeal.--Section 145 of title 35, United States Code,
is repealed.
(2) Conforming amendments.--
(A) Federal circuit jurisdiction.--Section
1295(a)(4) of title 28, United States Code, is
amended--
(i) in subparagraph (A), by striking
``except that an applicant or a party'' and all
that follows through the end of the
subparagraph and inserting the following:
``except that a party to a derivation
proceeding may also have remedy by civil action
pursuant to section 146 of title 35; an appeal
under this subparagraph of a decision of the
Board with respect to a derivation proceeding
shall waive the right of such party to proceed
under section 146 of title 35;''; and
(ii) in subparagraph (C), by striking
``section 145, 146, or'' and inserting
``section 146 or''.
(B) Federal circuit appeal.--Section 141(a) of
title 35, United States Code, is amended--
(i) by striking ``may appeal the Board's
decision to'' and inserting ``may appeal the
Board's decision only to''; and
(ii) by striking the second sentence.
(C) Adjustment of patent term.--Section
154(b)(1)(A)(iii) of title 35, United States Code, is
amended by striking ``section 141, 145, or 146'' and
inserting ``section 141 or 146''.
(D) Clerical amendment.--The table of sections for
chapter 13 of title 35, United States Code, is amended
by repealing the item relating to section 145.
(3) Effective date.--The amendments made by this subsection
shall apply to any proceeding in which a decision is made by
the Patent Trial and Appeal Board on or after the date of the
enactment of this Act.
(b) Post-Grant Review Amendment.--Section 325(e)(2) of title 35,
United States Code is amended by striking ``or reasonably could have
raised''.
(c) Use of District-Court Claim Construction in Post-Grant and
Inter Partes Reviews.--
(1) Inter partes review.--Section 316(a) of title 35,
United States Code, is amended--
(A) in paragraph (12), by striking ``; and'' and
inserting a semicolon;
(B) in paragraph (13), by striking the period at
the end and inserting ``; and''; and
(C) by adding at the end the following new
paragraph:
``(14) providing that for all purposes under this chapter--
``(A) each claim of a patent shall be construed as
such claim would be in a civil action to invalidate a
patent under section 282(b), including construing each
claim of the patent in accordance with the ordinary and
customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history
pertaining to the patent; and
``(B) if a court has previously construed the claim
or a claim term in a civil action in which the patent
owner was a party, the Office shall consider such claim
construction.''.
(2) Post-grant review.--Section 326(a) of title 35, United
States Code, is amended--
(A) in paragraph (11), by striking ``; and'' and
inserting a semicolon;
(B) in paragraph (12), by striking the period at
the end and inserting ``; and''; and
(C) by adding at the end the following new
paragraph:
``(13) providing that for all purposes under this chapter--
``(A) each claim of a patent shall be construed as
such claim would be in a civil action to invalidate a
patent under section 282(b), including construing each
claim of the patent in accordance with the ordinary and
customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history
pertaining to the patent; and
``(B) if a court has previously construed the claim
or a claim term in a civil action in which the patent
owner was a party, the Office shall consider such claim
construction.''.
(3) Technical and conforming amendment.--Section
18(a)(1)(A) of the Leahy-Smith America Invents Act (Public Law
112-29; 126 Stat. 329) is amended by striking ``Section
321(c)'' and inserting ``Sections 321(c) and 326(a)(13)''.
(4) Effective date.--The amendments made by this subsection
shall take effect upon the expiration of the 90-day period
beginning on the date of the enactment of this Act, and shall
apply to any proceeding under chapter 31 or 32 of title 35,
United States Code, for which the petition for review is filed
on or after such effective date.
(d) Codification of the Double-Patenting Doctrine for First-
Inventor-To-File Patents.--
(1) Amendment.--Chapter 10 of title 35, United States Code,
is amended by adding at the end the following new section:
``Sec. 106. Prior art in cases of double patenting
``A claimed invention of a patent issued under section 151
(referred to as the `first patent') that is not prior art to a claimed
invention of another patent (referred to as the `second patent') shall
be considered prior art to the claimed invention of the second patent
for the purpose of determining the nonobviousness of the claimed
invention of the second patent under section 103 if--
``(1) the claimed invention of the first patent was
effectively filed under section 102(d) on or before the
effective filing date of the claimed invention of the second
patent;
``(2) either--
``(A) the first patent and second patent name the
same inventor; or
``(B) the claimed invention of the first patent
would constitute prior art to the claimed invention of
the second patent under section 102(a)(2) if an
exception under section 102(b)(2) were deemed to be
inapplicable and the claimed invention of the first
patent was, or were deemed to be, effectively filed
under section 102(d) before the effective filing date
of the claimed invention of the second patent; and
``(3) the patentee of the second patent has not disclaimed
the rights to enforce the second patent independently from, and
beyond the statutory term of, the first patent.''.
(2) Regulations.--The Director shall promulgate regulations
setting forth the form and content of any disclaimer required
for a patent to be issued in compliance with section 106 of
title 35, United States Code, as added by paragraph (1). Such
regulations shall apply to any disclaimer filed after a patent
has issued. A disclaimer, when filed, shall be considered for
the purpose of determining the validity of the patent under
section 106 of title 35, United States Code.
(3) Conforming amendment.--The table of sections for
chapter 10 of title 35, United States Code, is amended by
adding at the end the following new item:
``106. Prior art in cases of double patenting.''.
(4) Exclusive rule.--A patent subject to section 106 of
title 35, United States Code, as added by paragraph (1), shall
not be held invalid on any nonstatutory, double-patenting
ground.
(5) Effective date.--The amendments made by this subsection
shall take effect on the date of the enactment of this Act and
shall apply to a patent or patent application only if both the
first and second patents described in section 106 of title 35,
United States Code, as added by paragraph (1), are patents or
patent applications that are described in section 3(n)(1) of
the Leahy-Smith America Invents Act (35 U.S.C. 100 note).
(e) Covered Business Method Patent Reviews.--
(1) Limitation; repeal.--
(A) Limitation to first-to-invent patents.--Section
18(a)(2) of the Leahy-Smith America Invents Act is
amended by striking ``shall not apply to a patent
described in section 6(f)(2)(A) of this Act during the
period in which a petition for post-grant review of
that patent would satisfy the requirements of section
321(c) of title 35, United States Code'' and inserting
``shall not apply to a patent that is described in
section 3(n)(1) of this Act (but is not described in
section 3(n)(2) of this Act)''.
(B) Repeal of sunset.--Section 18(a) of the Leahy-
Smith America Invents Act (35 U.S.C. 321 note) is
amended by striking paragraph (3).
(C) Effective date.--The amendments made by
subparagraphs (A) and (B) shall take effect on the date
of the enactment of this Act.
(2) Definition; clarification.--
(A) Definition.--For purposes of section 18(d) of
the Leahy-Smith America Invents Act, the words ``used
in the practice, administration, or management of a
financial product or service'' shall be construed
consistently with the institution decision of the
Patent Trial and Appeal Board of the United States
Patent and Trademark Office in SAP America, Inc. v.
Versata Dev. Group, Inc., CBM2012-00001, Paper 36
(January 9, 2013).
(B) Scope of prior art.--Section 18(a)(1)(C)(i) of
the Leahy-Smith America Invents Act is amended by
striking ``section 102(a)'' and inserting ``subsection
(a), (d), or (e) of section 102''.
(C) Effective date.--Subparagraph (A) and the
amendment made by subparagraph (B) shall take effect on
the date of the enactment of this Act and shall apply
to any proceeding pending on, or filed on or after,
such date of enactment.
(3) Authority to waive fee.--Subject to available
resources, the Director may waive payment of a filing fee for a
transitional proceeding described under section 18(a) of the
Leahy-Smith America Invents Act (35 U.S.C. 321 note).
(f) Clarification of Limits on Patent Term Adjustment.--
(1) Amendments.--Section 154(b)(1)(B) of title 35, United
States Code, is amended--
(A) in the matter preceding clause (i), by striking
``not including--'' and inserting ``the term of the
patent shall be extended 1 day for each day after the
end of that 3-year period until the patent is issued,
not including--'';
(B) in clause (i), by striking ``consumed by
continued examination of the application requested by
the applicant'' and inserting ``consumed after
continued examination of the application is requested
by the applicant'';
(C) in clause (iii), by striking the comma at the
end and inserting a period; and
(D) by striking the matter following clause (iii).
(2) Effective date.--The amendments made by this subsection
shall apply to any patent application or patent that is pending
on, or filed on or after, the date of the enactment of this
Act.
(g) Clarification of Jurisdiction.--
(1) In general.--The Federal interest in preventing
inconsistent final judicial determinations as to the legal
force or effect of the claims in a patent presents a
substantial Federal issue that is important to the Federal
system as a whole.
(2) Applicability.--Paragraph (1)--
(A) shall apply to all cases filed on, after, or
pending on, the date of the enactment of this Act; and
(B) shall not apply to a case in which a Federal
court has issued a ruling on whether the case or a
claim arises under any Act of Congress relating to
patents or plant variety protection before the date of
the enactment of this Act.
(h) Technical Corrections.--
(1) Novelty.--
(A) Amendment.--Section 102(b)(1)(A) of title 35,
United States Code, is amended by striking ``the
inventor or joint inventor or by another'' and
inserting ``the inventor or a joint inventor or
another''.
(B) Effective date.--The amendment made by
subparagraph (A) shall be effective as if included in
the amendment made by section 3(b)(1) of the Leahy-
Smith America Invents Act (Public Law No. 112-29).
(2) Inventor's oath or declaration.--
(A) Amendment.--Subsection (g)(1) of section 115 of
title 35, United States Code, is amended--
(i) by striking ``claims the benefit'' and
inserting ``is entitled, as to each invention
claimed in the application, to the benefit'';
and
(ii) in subparagraph (A), by striking
``meeting the requirements of subsection (a)
was executed by the individual and was filed in
connection with the earlier-filed application''
and inserting the following: ``executed by or
on behalf of the individual was filed in
connection with the earlier-filed application
and meets the requirements of this section as
effective on the date such oath or declaration
was filed''.
(B) Effective date.--The amendment made by
subparagraph (A) shall be effective as if included in
the amendment made by section 4(a)(1) of the Leahy-
Smith America Invents Act (Public Law No. 112-29).
(3) Assignee filers.--
(A) Benefit of earlier filing date; right of
priority.--Section 119(e)(1) of title 35, United States
Code, is amended, in the first sentence, by striking
``by an inventor or inventors named'' and inserting
``that names the inventor or a joint inventor''.
(B) Benefit of earlier filing date in the united
states.--Section 120 of title 35, United States Code,
is amended, in the first sentence, by striking ``names
an inventor or joint inventor'' and inserting ``names
the inventor or a joint inventor''.
(C) Effective date.--The amendments made by this
paragraph shall take effect on the date of the
enactment of this Act and shall apply to any patent
application, and any patent issuing from such
application, that is filed on or after September 16,
2012.
(4) Derived patents.--
(A) Amendment.--Section 291(b) of title 35, United
States Code, is amended by striking ``or joint
inventor'' and inserting ``or a joint inventor''.
(B) Effective date.--The amendment made by
subparagraph (A) shall be effective as if included in
the amendment made by section 3(h)(1) of the Leahy-
Smith America Invents Act (Public Law No. 112-29).
(5) Specification.--Notwithstanding section 4(e) of the
Leahy-Smith America Invents Act (Public Law 112-29; 125 Stat.
297), the amendments made by subsections (c) and (d) of section
4 of such Act shall apply to any proceeding or matter, that is
pending on, or filed on or after, the date of the enactment of
this Act.
(6) Patent owner response.--
(A) Conduct of inter partes review.--Paragraph (8)
of section 316(a) of title 35, United States Code, is
amended by striking ``the petition under section 313''
and inserting ``the petition under section 311''.
(B) Conduct of post-grant review.--Paragraph (8) of
section 326(a) of title 35, United States Code, is
amended by striking ``the petition under section 323''
and inserting ``the petition under section 321''.
(C) Effective date.--The amendments made by this
paragraph shall take effect on the date of the
enactment of this Act.
(7) International applications.--
(A) Amendments.--Section 202(b) of the Patent Law
Treaties Implementation Act of 2012 (Public Law 112-
211; 126 Stat. 1536) is amended--
(i) by striking paragraph (7); and
(ii) by redesignating paragraphs (8) and
(9) as paragraphs (7) and (8).
(B) Effective date.--The amendments made by
subparagraph (A) shall be effective as if included in
title II of the Patent Law Treaties Implementation Act
of 2012 (Public Law 112-21).
SEC. 10. EFFECTIVE DATE.
Except as otherwise provided in this Act, the provisions of this
Act shall take effect on the date of the enactment of this Act, and
shall apply to any patent issued, or any action filed, on or after that
date.
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