[Congressional Bills 113th Congress]
[From the U.S. Government Publishing Office]
[H.R. 3309 Referred in Senate (RFS)]
113th CONGRESS
1st Session
H. R. 3309
_______________________________________________________________________
IN THE SENATE OF THE UNITED STATES
December 9, 2013
Received; read twice and referred to the Committee on the Judiciary
_______________________________________________________________________
AN ACT
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 recommendations of 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 process, machine, manufacture,
or composition of matter (referred to in this section as an
`accused instrumentality') alleged to infringe the claim.
``(4) For each accused instrumentality identified under
paragraph (3), an identification with particularity, if known,
of--
``(A) the name or model number of each accused
instrumentality; or
``(B) if there is no name or model number, a
description of each accused instrumentality.
``(5) For each accused instrumentality identified under
paragraph (3), a clear and concise statement of--
``(A) where each element of each claim identified
under paragraph (2) is found within the accused
instrumentality; and
``(B) with detailed specificity, how each
limitation of each claim identified under paragraph (2)
is met by the accused instrumentality.
``(6) For each claim of indirect infringement, a
description of the acts of the alleged indirect infringer that
contribute to or are inducing the direct infringement.
``(7) A description of the authority of the party alleging
infringement to assert each patent identified under paragraph
(1) and of the grounds for the court's jurisdiction.
``(8) A clear and concise description of the principal
business, if any, of the party alleging infringement.
``(9) A list of each complaint filed, of which the party
alleging infringement has knowledge, that asserts or asserted
any of the patents identified under paragraph (1).
``(10) For each patent identified under paragraph (1),
whether a standard-setting body has specifically declared such
patent to be essential, potentially essential, or having
potential to become essential to that standard-setting body,
and whether the United States Government or a foreign
government has imposed specific licensing requirements with
respect to such patent.
``(b) Information Not Readily Accessible.--If information required
to be disclosed under subsection (a) is not readily accessible to a
party, that information may instead be generally described, along with
an explanation of why such undisclosed information was not readily
accessible, and of any efforts made by such party to access such
information.
``(c) Confidential Information.--A party required to disclose
information described under subsection (a) may file, under seal,
information believed to be confidential, with a motion setting forth
good cause for such sealing. If such motion is denied by the court, the
party may seek to file an amended complaint.
``(d) Exemption.--A civil action that includes a claim for relief
arising under section 271(e)(2) shall not be subject to the
requirements of subsection (a).''.
(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 and conduct of the nonprevailing party or
parties were reasonably justified in law and fact or that special
circumstances (such as severe economic hardship to a named inventor)
make an award unjust.
``(b) Certification and Recovery.--Upon motion of any party to the
action, the court shall require another party to the action to certify
whether or not the other party will be able to pay an award of fees and
other expenses if such an award is made under subsection (a). If a
nonprevailing party is unable to pay an award that is made against it
under subsection (a), the court may make a party that has been joined
under section 299(d) with respect to such party liable for the
unsatisfied portion of the award.
``(c) Covenant Not to Sue.--A party to a civil action that asserts
a claim for relief arising under any Act of Congress relating to
patents against another party, and that subsequently unilaterally
extends to such other party a covenant not to sue for infringement with
respect to the patent or patents at issue, shall be deemed to be a
nonprevailing party (and the other party the prevailing party) for
purposes of this section, unless the party asserting such claim would
have been entitled, at the time that such covenant was extended, to
voluntarily dismiss the action or claim without a court order under
Rule 41 of the Federal Rules of Civil Procedure.''.
(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 the first day of the 6-month period ending on that
effective 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 in which fees and other expenses
have been awarded under section 285 to a prevailing party
defending against an allegation of infringement of a patent
claim, and in which the nonprevailing party alleging
infringement is unable to pay the award of fees and other
expenses, the court shall grant a motion by the prevailing
party to join an interested party if such prevailing party
shows that the nonprevailing party has no substantial interest
in the subject matter at issue other than asserting such patent
claim in litigation.
``(2) Limitation on joinder.--
``(A) Discretionary denial of motion.--The court
may deny a motion to join an interested party under
paragraph (1) if--
``(i) the interested party is not subject
to service of process; or
``(ii) joinder under paragraph (1) would
deprive the court of subject matter
jurisdiction or make venue improper.
``(B) Required denial of motion.--The court shall
deny a motion to join an interested party under
paragraph (1) if--
``(i) the interested party did not timely
receive the notice required by paragraph (3);
or
``(ii) within 30 days after receiving the
notice required by paragraph (3), the
interested party renounces, in writing and with
notice to the court and the parties to the
action, any ownership, right, or direct
financial interest (as described in paragraph
(4)) that the interested party has in the
patent or patents at issue.
``(3) Notice requirement.--An interested party may not be
joined under paragraph (1) unless it has been provided actual
notice, within 30 days after the date on which it has been
identified in the initial disclosure provided under section
290(b), that it has been so identified and that such party may
therefore be an interested party subject to joinder under this
subsection. Such notice shall be provided by the party who
subsequently moves to join the interested party under paragraph
(1), and shall include language that--
``(A) identifies the action, the parties thereto,
the patent or patents at issue, and the pleading or
other paper that identified the party under section
290(b); and
``(B) informs the party that it may be joined in
the action and made subject to paying an award of fees
and other expenses under section 285(b) if--
``(i) fees and other expenses are awarded
in the action against the party alleging
infringement of the patent or patents at issue
under section 285(a);
``(ii) the party alleging infringement is
unable to pay the award of fees and other
expenses;
``(iii) the party receiving notice under
this paragraph is determined by the court to be
an interested party; and
``(iv) the party receiving notice under
this paragraph has not, within 30 days after
receiving such notice, renounced in writing,
and with notice to the court and the parties to
the action, any ownership, right, or direct
financial interest (as described in paragraph
(4)) that the interested party has in the
patent or patents at issue.
``(4) Interested party defined.--In this subsection, the
term `interested party' means a person, other than the party
alleging infringement, that--
``(A) is an assignee of the patent or patents at
issue;
``(B) has a right, including a contingent right, to
enforce or sublicense the patent or patents at issue;
or
``(C) has a direct financial interest in the patent
or patents at issue, including the right to any part of
an award of damages or any part of licensing revenue,
except that a person with a direct financial interest
does not include--
``(i) an attorney or law firm providing
legal representation in the civil action
described in paragraph (1) if the sole basis
for the financial interest of the attorney or
law firm in the patent or patents at issue
arises from the attorney or law firm's receipt
of compensation reasonably related to the
provision of the legal representation; or
``(ii) a person whose sole financial
interest in the patent or patents at issue is
ownership of an equity interest in the party
alleging infringement, unless such person also
has the right or ability to influence, direct,
or control the civil action.''.
(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 subsections (b) and (c), in a civil action arising under any Act of
Congress relating to patents, if the court determines that a ruling
relating to the construction of terms used in a patent claim asserted
in the complaint is required, discovery shall be limited, until such
ruling is issued, to information necessary for the court to determine
the meaning of the terms used in the patent claim, including any
interpretation of those terms used to support the claim of
infringement.
``(b) Discretion To Expand Scope of Discovery.--
``(1) Timely resolution of actions.--In the case of an
action under any provision of Federal law (including an action
that includes a claim for relief arising under section 271(e)),
for which resolution within a specified period of time of a
civil action arising under any Act of Congress relating to
patents will necessarily affect the rights of a party with
respect to the patent, the court shall permit discovery, in
addition to the discovery authorized under subsection (a),
before the ruling described in subsection (a) is issued as
necessary to ensure timely resolution of the action.
``(2) Resolution of motions.--When necessary to resolve a
motion properly raised by a party before a ruling relating to
the construction of terms described in subsection (a) is
issued, the court may allow limited discovery in addition to
the discovery authorized under subsection (a) as necessary to
resolve the motion.
``(3) Special circumstances.--In special circumstances that
would make denial of discovery a manifest injustice, the court
may permit discovery, in addition to the discovery authorized
under subsection (a), as necessary to prevent the manifest
injustice.
``(4) Actions seeking relief based on competitive harm.--
The limitation on discovery provided under subsection (a) shall
not apply to an action seeking a preliminary injunction to
redress harm arising from the use, sale, or offer for sale of
any allegedly infringing instrumentality that competes with a
product sold or offered for sale, or a process used in
manufacture, by a party alleging infringement.
``(c) Exclusion From Discovery Limitation.--The parties may
voluntarily consent to be excluded, in whole or in part, from the
limitation on discovery provided under subsection (a) if at least one
plaintiff and one defendant enter into a signed stipulation, to be
filed with and signed by the court. With regard to any discovery
excluded from the requirements of subsection (a) under the signed
stipulation, with respect to such parties, such discovery shall proceed
according to the Federal Rules of Civil Procedure.''.
(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) Sense of Congress.--It is the sense of Congress that it is an
abuse of the patent system and against public policy for a party to
send out purposely evasive demand letters to end users alleging patent
infringement. Demand letters sent should, at the least, include basic
information about the patent in question, what is being infringed, and
how it is being infringed. Any actions or litigation that stem from
these types of purposely evasive demand letters to end users should be
considered a fraudulent or deceptive practice and an exceptional
circumstance when considering whether the litigation is abusive.
(f) Demand Letters.--Section 284 of title 35, United States Code,
is amended--
(1) in the first undesignated paragraph, by striking ``Upon
finding'' and inserting ``(a) In General.--Upon finding'';
(2) in the second undesignated paragraph, by striking
``When the damages'' and inserting ``(b) Assessment by Court;
Treble Damages.--When the damages'';
(3) by inserting after subsection (b), as designated by
paragraph (2) of this subsection, the following:
``(c) Willful Infringement.--A claimant seeking to establish
willful infringement may not rely on evidence of pre-suit notification
of infringement unless that notification identifies with particularity
the asserted patent, identifies the product or process accused,
identifies the ultimate parent entity of the claimant, and explains
with particularity, to the extent possible following a reasonable
investigation or inquiry, how the product or process infringes one or
more claims of the patent.''; and
(4) in the last undesignated paragraph, by striking ``The
court'' and inserting ``(d) Expert Testimony.--The court''.
(g) 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 subparagraph (B) or (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 subparagraph (B) or (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 under section 285 that are 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 or
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 issues
that the covered customer has in common with the covered
manufacturer and are finally decided as to the covered
manufacturer in an action described in paragraph (2).
``(4) The motion is filed after the first pleading in the
action but not later than the later of--
``(A) the 120th day after the date on which the
first pleading in the action is served that
specifically identifies the covered product or process
as a basis for the covered customer's alleged
infringement of the patent and that specifically
identifies how the covered product or process is
alleged to infringe the patent; or
``(B) the date on which the first scheduling order
in the case is entered.
``(b) Applicability of Stay.--A stay issued under 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 under 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)(2).
``(e) Consent Judgment.--If, following the grant of a motion to
stay under this section, the covered manufacturer seeks or consents to
entry of a consent judgment relating to one or more of the common
issues that gave rise to the stay, or declines to prosecute through
appeal a final decision as to one or more of the common issues that
gave rise to the stay, the court may, upon grant of a motion, determine
that such consent judgment or unappealed final decision shall not be
binding on the covered customer with respect to one or more of such
common issues based on a showing that such an outcome would
unreasonably prejudice and be manifestly unjust to the covered customer
in light of the circumstances of the case.
``(f) Rule of Construction.--Nothing in this section shall be
construed to limit the ability of a court to grant any stay, expand any
stay granted under this section, or grant any motion to intervene, if
otherwise permitted by law.
``(g) 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 thereof.
``(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 the first day of the
30-day period that ends on that date.
SEC. 6. PROCEDURES AND PRACTICES TO IMPLEMENT RECOMMENDATIONS OF 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 issues and proposals described
in paragraph (2) to address the asymmetries in discovery
burdens and costs in any civil action arising under any Act of
Congress relating to patents. Such rules and procedures shall
include how and when payment for document discovery in addition
to the discovery of core documentary evidence is to occur, and
what information must be presented to demonstrate financial
capacity before permitting document discovery in addition to
the discovery of core documentary evidence.
(2) Rules and procedures to be considered.--The rules and
procedures required under paragraph (1) should address each of
the following issues and proposals:
(A) Discovery of core documentary evidence.--
Whether and to what extent each party to the action is
entitled to receive core documentary evidence and shall
be responsible for the costs of producing core
documentary evidence within the possession or control
of each such party, and whether and to what extent each
party to the action may seek nondocumentary discovery
as otherwise provided in the Federal Rules of Civil
Procedure.
(B) Electronic communication.--If the parties
determine that the discovery of electronic
communication is appropriate, whether such discovery
shall occur after the parties have exchanged initial
disclosures and core documentary evidence and whether
such discovery shall be in accordance with the
following:
(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.--Whether the
following should apply:
(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.--Whether the
parties shall discuss and address in the written report
filed pursuant to Rule 26(f) of the Federal Rules of
Civil Procedure the views and proposals of each party
on the following:
(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.--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.--
(A) Study of efficacy of rules and procedures.--The
Judicial Conference shall study the efficacy of the
rules and procedures required by this subsection during
the 4-year period beginning on the date on which such
rules and procedures by the district courts and the
United States Court of Federal Claims are first
implemented. The Judicial Conference may modify such
rules and procedures following such 4-year period.
(B) Initial modifications.--Before the expiration
of the 4-year period described in subparagraph (A), the
Judicial Conference may modify the requirements under
this subsection--
(i) by designating categories of ``core
documentary evidence'', in addition to those
designated under paragraph (3)(A), as the
Judicial Conference determines to be
appropriate and necessary; and
(ii) as otherwise necessary to prevent a
manifest injustice, the imposition of a
requirement the costs of which clearly outweigh
its benefits, or a result that could not
reasonably have been intended by the Congress.
(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 1522 of title 11, United States
Code, is amended by adding at the end the following:
``(e) Section 365(n) shall apply to cases under this chapter. If
the foreign representative rejects or repudiates a contract under which
the debtor is a licensor of intellectual property, the licensee under
such contract shall be entitled to make the election and exercise the
rights described in section 365(n).''.
(2) Trademarks.--
(A) In general.--Section 101(35A) of title 11,
United States Code, is amended--
(i) in subparagraph (E), by striking
``or'';
(ii) in subparagraph (F), by striking
``title 17;'' and inserting ``title 17; or'';
and
(iii) by adding after subparagraph (F) the
following new subparagraph:
``(G) a trademark, service mark, or trade name, as
those terms are defined in section 45 of the Act of
July 5, 1946 (commonly referred to as the `Trademark
Act of 1946') (15 U.S.C. 1127);''.
(B) Conforming amendment.--Section 365(n)(2) of
title 11, United States Code, is amended--
(i) in subparagraph (B)--
(I) by striking ``royalty
payments'' and inserting ``royalty or
other payments''; and
(II) by striking ``and'' after the
semicolon;
(ii) in subparagraph (C), by striking the
period at the end of clause (ii) and inserting
``; and''; and
(iii) by adding at the end the following
new subparagraph:
``(D) in the case of a trademark, service mark, or trade
name, the trustee shall not be relieved of a contractual
obligation to monitor and control the quality of a licensed
product or service.''.
(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 case that is pending on, or for which a
petition or complaint is filed on or after, such date of
enactment.
SEC. 7. SMALL BUSINESS EDUCATION, OUTREACH, AND INFORMATION ACCESS.
(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 outreach.--The existing small
business patent outreach programs of the Office, and the
relevant offices at the Small Business Administration and the
Minority Business Development Agency, shall provide education
and awareness on abusive patent litigation practices. The
Director may give special consideration to the unique needs of
small firms owned by disabled veterans, service-disabled
veterans, women, and minority entrepreneurs in planning and
executing the outreach efforts by the Office.
(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 under 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) Report on study.--Not later than 18 months after the
date of the enactment of this Act, the Director shall submit a
report to the Committee on the Judiciary of the House of
Representatives and the Committee on the Judiciary of the
Senate on the findings and recommendations of the Director from
the study required under paragraph (1).
(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 1 year after the date
of the enactment of this Act, the Director shall submit to the
Committee on the Judiciary of the House of Representatives and
the Committee on the Judiciary of the Senate a report on the
findings and recommendations of the Director from the study
required under paragraph (1).
(c) Study on Patent Quality and Access to the Best Information
During Examination.--
(1) GAO study.--The Comptroller General of the United
States shall, using existing resources, 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 patent
quality, specifically through technology, that shall
include examining best practices at foreign patent
offices and the use of existing off-the-shelf
technologies to improve patent examination.
(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 on study.--Not later than 1 year after the date
of the enactment of this Act, the Comptroller General shall
submit to the Committee on the Judiciary of the House of
Representatives and the Committee on the Judiciary of the
Senate a report on the findings and recommendations from the
study required by this subsection, including recommendations
for any changes to laws and regulations that will improve the
examination of patent applications and patent quality.
(d) Study on Patent Small Claims Court.--
(1) Study required.--
(A) In general.--The Director of the Administrative
Office of the United States Courts, in consultation
with the Director of the Federal Judicial Center and
the United States Patent and Trademark Office, shall,
using existing resources, conduct a study to examine
the idea of developing a pilot program for patent small
claims procedures in certain judicial districts within
the existing patent pilot program mandated by Public
Law 111-349.
(B) Contents of study.--The study under
subparagraph (A) shall examine--
(i) the necessary criteria for using small
claims procedures;
(ii) the costs that would be incurred for
establishing, maintaining, and operating such a
pilot program; and
(iii) the steps that would be taken to
ensure that the procedures used in the pilot
program are not misused for abusive patent
litigation.
(2) Report on study.--Not later than 1 year after the date
of the enactment of this Act, the Director of the
Administrative Office of the United States Courts shall submit
a report to the Committee on the Judiciary of the House of
Representatives and the Committee on the Judiciary of the
Senate on the findings and recommendations of the Director of
the Administrative Office from the study required under
paragraph (1).
(e) Study on Demand Letters.--
(1) Study.--The Director, in consultation with the heads of
other appropriate agencies, shall, using existing resources,
conduct a study of the prevalence of the practice of sending
patent demand letters in bad faith and the extent to which that
practice may, through fraudulent or deceptive practices, impose
a negative impact on the marketplace.
(2) Report to congress.--Not later than 1 year after the
date of the enactment of this Act, the Director shall submit a
report to the Committee on the Judiciary of the House of
Representatives and the Committee on the Judiciary of the
Senate on the findings and recommendations of the Director from
the study required under paragraph (1).
(3) Patent demand letter defined.--In this subsection, the
term ``patent demand letter'' means a written communication
relating to a patent that states or indicates, directly or
indirectly, that the recipient or anyone affiliated with the
recipient is or may be infringing the patent.
(f) Study on Business Method Patent Quality.--
(1) GAO study.--The Comptroller General of the United
States shall, using existing resources, conduct a study on the
volume and nature of litigation involving business method
patents.
(2) Contents of study.--The study required under paragraph
(1) shall focus on examining the quality of business method
patents asserted in suits alleging patent infringement, and may
include an examination of any other areas that the Comptroller
General determines to be relevant.
(3) Report to congress.--Not later than 1 year after the
date of the enactment of this Act, the Comptroller General
shall submit to the Committee on the Judiciary of the House of
Representatives and the Committee on the Judiciary of the
Senate a report on the findings and recommendations from the
study required by this subsection, including recommendations
for any changes to laws or regulations that the Comptroller
General considers appropriate on the basis of the study.
(g) Study on Impact of Legislation on Ability of Individuals and
Small Businesses to Protect Exclusive Rights to Inventions and
Discoveries.--
(1) Study required.--The Director, in consultation with the
Secretary of Commerce, the Director of the Administrative
Office of the United States Courts, the Director of the Federal
Judicial Center, the heads of other relevant agencies, and
interested parties, shall, using existing resources of the
Office, conduct a study to examine the economic impact of
sections 3, 4, and 5 of this Act, and any amendments made by
such sections, on the ability of individuals and small
businesses owned by women, veterans, and minorities to assert,
secure, and vindicate the constitutionally guaranteed exclusive
right to inventions and discoveries by such individuals and
small business.
(2) Report on study.--Not later than 2 years after the date
of the enactment of this Act, the Director shall submit to the
Committee on the Judiciary of the House of Representatives and
the Committee on the Judiciary of the Senate a report on the
findings and recommendations of the Director from the study
required under paragraph (1).
SEC. 9. IMPROVEMENTS AND TECHNICAL CORRECTIONS TO THE LEAHY-SMITH
AMERICA INVENTS ACT.
(a) Post-Grant Review Amendment.--Section 325(e)(2) of title 35,
United States Code is amended by striking ``or reasonably could have
raised''.
(b) 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; 35 U.S.C. 321 note) 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, as the case may be, for which the petition
for review is filed on or after such effective date.
(c) 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 individual or individuals as the 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 based on a patent described in section 3(n)(1) of the
Leahy-Smith America Invents Act (35 U.S.C. 100 note).
(5) Effective date.--The amendments made by this subsection
shall take effect upon the expiration of the 1-year period
beginning on the date of the enactment of this Act and shall
apply to a patent or patent application only if both the first
and second patents described in section 106 of title 35, United
States Code, as added by paragraph (1), are patents or patent
applications that are described in section 3(n)(1) of the
Leahy-Smith America Invents Act (35 U.S.C. 100 note).
(d) PTO Patent Reviews.--
(1) Clarification.--
(A) Scope of prior art.--Section 18(a)(1)(C)(i) of
the Leahy-Smith America Invents Act (35 U.S.C. 321
note) is amended by striking ``section 102(a)'' and
inserting ``subsection (a) or (e) of section 102''.
(B) Effective date.--The amendment made by
subparagraph (A) shall take effect on the date of the
enactment of this Act and shall apply to any proceeding
pending on, or filed on or after, such date of
enactment.
(2) 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).
(e) 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 take effect on the date of the enactment of this Act and
apply to any patent application that is pending on, or filed on
or after, such date of enactment.
(f) 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 or 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.
(g) Patent Pilot Program in Certain District Courts Duration.--
(1) Duration.--Section 1(c) of Public Law 111-349 (124
Stat. 3674; 28 U.S.C. 137 note) is amended to read as follows:
``(c) Duration.--The program established under subsection (a) shall
be maintained using existing resources, and shall terminate 20 years
after the end of the 6-month period described in subsection (b).''.
(2) Effective date.--The amendment made by paragraph (1)
shall take effect on 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 112-29).
(2) Inventor's oath or declaration.--
(A) Amendment.--The second sentence of section
115(a) of title 35, United States Code, is amended by
striking ``shall execute'' and inserting ``may be
required to execute''.
(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 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 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) Time limit for commencing misconduct proceedings.--
(A) Amendment.--The fourth sentence of section 32
of title 35, United States Code, is amended by striking
``1 year'' and inserting ``18 months''.
(B) Effective date.--The amendment made by this
paragraph shall take effect on the date of the
enactment of this Act and shall apply to any action in
which the Office files a complaint on or after such
date of enactment.
(7) 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.
(8) 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), respectively.
(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.
Passed the House of Representatives December 5, 2013.
Attest:
KAREN L. HAAS,
Clerk.