[Congressional Bills 117th Congress]
[From the U.S. Government Publishing Office]
[S. 2891 Introduced in Senate (IS)]
<DOC>
117th CONGRESS
1st Session
S. 2891
To amend title 35, United States Code, to address matters relating to
the Patent Trial and Appeal Board of the United States Patent and
Trademark Office, and for other purposes.
_______________________________________________________________________
IN THE SENATE OF THE UNITED STATES
September 29, 2021
Mr. Leahy (for himself and Mr. Cornyn) introduced the following bill;
which was read twice and referred to the Committee on the Judiciary
_______________________________________________________________________
A BILL
To amend title 35, United States Code, to address matters relating to
the Patent Trial and Appeal Board of the United States Patent and
Trademark Office, 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.
This Act may be cited as the ``Restoring the America Invents Act''.
SEC. 2. PATENTS.
Title 35, United States Code, is amended--
(1) in section 6--
(A) in subsection (c)--
(i) in the second sentence, by striking
``Only the'' and inserting ``The''; and
(ii) by adding at the end the following:
``After the constitution of a panel of the
Patent Trial and Appeal Board under this
subsection has been made public, any changes to
the constitution of that panel shall be noted
in the record.'';
(B) by redesignating subsection (d) as subsection
(e);
(C) by inserting after subsection (c) the
following:
``(d) Review by Director.--
``(1) In general.--With respect to a final decision of the
Patent Trial and Appeal Board--
``(A) the Director may, on the initiative of the
Director, review, and modify or set aside, the
decision; and
``(B) if the decision is issued under section 318
or 328, a party to the applicable inter partes or post-
grant review may request that the Director review, and
modify or set aside, the decision.
``(2) Requirement.--Any review by the Director under
paragraph (1) shall be issued in a separate written opinion
that--
``(A) is made part of the public record; and
``(B) sets forth the reasons for the review,
modification, or setting aside of the final decision of
the Patent Trial and Appeal Board.
``(3) Timeline and bases for review.--Not later than 18
months after the date of enactment of the Restoring the America
Invents Act, the Director shall promulgate rules addressing the
following issues:
``(A) With respect to review of a decision on the
initiative of the Director under paragraph (1)(A)--
``(i) the timeline under which the Director
may review the decision, which shall be
consistent with the requirements under section
318(e) or 328(e), if applicable; and
``(ii) the bases on which the Director may
review the decision.
``(B) With respect to a request by a party under
paragraph (1)(B)--
``(i) the timeline for submitting such a
request;
``(ii) the content that the party is
required to include in such a request;
``(iii) the bases on which the party may
submit such a request; and
``(iv) the timeline for any response or
reply to such a request such that the request
can be decided within the deadline imposed
under section 318(e) or 328(e), as applicable.
``(4) Rule of construction.--For the purposes of an appeal
permitted under section 141, any decision on review issued by
the Director under this subsection shall be deemed a final
decision of the Patent Trial and Appeal Board.''; and
(D) in subsection (e), as so redesignated--
(i) in the first sentence--
(I) by striking ``of this
subsection'' and inserting ``of the
Restoring the America Invents Act'';
(II) by inserting ``or the
Secretary'' after ``appointment by the
Director''; and
(III) by inserting ``or the
Secretary, as applicable,'' after ``on
which the Director''; and
(ii) in the second sentence--
(I) by inserting ``, or, before the
date of enactment of the Restoring the
America Invents Act, having performed
duties no longer performed by
administrative patent judges,'' after
``by the Director''; and
(II) by striking ``that the
administrative patent judge so
appointed'' and inserting ``that the
applicable administrative patent
judge'';
(2) in section 302, in the first sentence, by inserting ``,
including a governmental entity,'' after ``A person'';
(3) in chapter 31--
(A) in section 311--
(i) in subsection (a), in the first
sentence, by inserting ``, including a
governmental entity,'' after ``a person''; and
(ii) in subsection (b), by striking ``under
section 102'' and all that follows through the
period at the end and inserting the following:
``under--
``(1) section 102 or 103 and only on the basis of--
``(A) prior art consisting of patents or printed
publications; or
``(B) admissions in the patent specification,
drawings, or claims; or
``(2) statutory or obviousness-type double patenting on the
basis of--
``(A) patents or printed publications; or
``(B) admissions in the patent specification,
drawings, or claims.'';
(B) in section 314--
(i) in subsection (a), by striking ``The
Director may not authorize an inter partes
review to be instituted unless'' and inserting
the following: ``Subject only to the discretion
of the Director under section 325(d)(4), a
petition that meets the requirements of this
chapter shall be instituted if''; and
(ii) in subsection (d)--
(I) by inserting ``or maintain''
after ``to institute''; and
(II) by striking ``section'' and
inserting ``chapter'';
(C) in section 315--
(i) in subsection (a)(1)--
(I) by striking ``An inter partes''
and inserting the following:
``(A) In general.--An inter partes''; and
(II) by adding at the end the
following:
``(B) Rule of construction.--Subparagraph (A) may
not be construed to prevent an inter partes review from
being instituted if a complaint in a civil action
described in that subparagraph has been dismissed
without prejudice.'';
(ii) by striking subsection (b) and
inserting the following:
``(b) Patent Owner's Action.--
``(1) In general.--An inter partes review may not be
instituted if the petition requesting the proceeding is filed
more than 1 year after the date on which the petitioner, real
party in interest, or privy of the petitioner is served with a
complaint alleging infringement of the patent. The time
limitation set forth in the preceding sentence shall be subject
to the following limitations:
``(A) The time limitation shall not apply--
``(i) to a request for joinder under
subsection (c); or
``(ii) if the complaint is dismissed
without prejudice.
``(B) If new or amended claims issue from
reexamination after the petitioner, real party in
interest, or privy of the petitioner is served with the
complaint, an inter partes review of those claims may
be instituted if the petition requesting the review is
filed not later than 1 year after the date on which the
challenged claims are asserted in the action.
``(2) Request for stay.--
``(A) In general.--If a party seeks a stay of a
civil action brought under section 281 alleging
infringement of a patent that is also subject to an
inter partes review, the court shall decide whether to
stay the civil action based on whether--
``(i) the outcome of the inter partes
review will likely simplify the issues in
question in the civil action and streamline the
proceedings in the civil action;
``(ii) as of the date on which the stay is
requested, discovery in the civil action is
complete;
``(iii) a stay, or the denial thereof,
would--
``(I) unduly prejudice the
nonmoving party; or
``(II) present a clear tactical
advantage for the moving party; and
``(iv) a stay, or the denial thereof, will
reduce the burden of litigation on the parties
to the civil action and the court.
``(B) Review.--A party may take an immediate
interlocutory appeal from the decision of a district
court of the United States under subparagraph (A). The
United States Court of Appeals for the Federal Circuit
shall review the district court's decision to ensure
consistent application of established precedent, and
such review shall be de novo.'';
(iii) in subsection (c)--
(I) by striking ``If the Director''
and inserting the following:
``(1) In general.--If the Director''; and
(II) by adding at the end the
following:
``(2) Estoppel.--Any person joined as a party to an inter
partes review, and any real party in interest or privy of such
person, shall be estopped under subsection (e) to the same
extent as if that person, real party in interest, or privy had
been the first petitioner in that inter partes review.'';
(iv) by striking subsection (d) and
inserting the following:
``(d) Multiple Proceedings.--
``(1) In general.--Notwithstanding sections 135(a), 251,
and 252, and chapter 30, during the pendency of an inter partes
review, if another proceeding or matter involving the patent is
before the Office, or if there is a pending application
claiming the benefit of a common filing date to the patent
under section 120 or 121--
``(A) the parties shall notify the Director; and
``(B) the Director shall issue a decision
determining the manner in which the other proceeding or
matter may proceed, including providing for stay,
transfer, consolidation, or termination of any such
proceeding or matter.
``(2) No extension.--A decision of the Director under
paragraph (1)(B) may not--
``(A) extend any statutory deadline under this
chapter; or
``(B) terminate an inter partes proceeding in favor
of an ex parte proceeding.
``(3) Presumption.--For the purposes of this subsection, if
the multiple proceedings described in paragraph (1) are of like
type and are filed reasonably close in time, there shall be a
rebuttable presumption that the Director shall consolidate the
proceedings under that paragraph.''; and
(v) in subsection (e)--
(I) in paragraph (1)--
(aa) by striking ``The
petitioner in'' and inserting
the following:
``(A) Estoppel against petitioner.--The petitioner
in'';
(bb) in subparagraph (A),
as so designated, by inserting
``, after the time for appeal
of the decision has expired or
any such appeal has
terminated,'' after ``may
not''; and
(cc) by adding at the end
the following:
``(B) Estoppel against patent owner.--The Office
may not issue to a patent owner any claim that is not
patentably distinct from a claim that was issued and
was subsequently--
``(i) found to be unpatentable; or
``(ii) canceled in any proceeding before
the Office, including under section 135, 251,
253, 301, 311, or 321.''; and
(II) in paragraph (2)--
(aa) by inserting ``that
the claim is not unpatentable''
after ``section 318(a)'';
(bb) by inserting ``, after
the time for appeal of the
decision has expired or any
such appeal has terminated,''
after ``may not''; and
(cc) by inserting ``or
1498'' after ``section 1338'';
(D) in section 316--
(i) in subsection (a)(11), by inserting
``or consolidation under section 315(d)'' after
``under section 315(c)'';
(ii) in subsection (c)--
(I) by striking ``The Patent'' and
inserting the following:
``(1) In general.--The Patent''; and
(II) by adding at the end the
following:
``(2) Ex parte communication.--An officer who has review
authority, supervisory authority, or disciplinary authority
with respect to an administrative patent judge of the Patent
Trial and Appeal Board (or a delegate of such an officer), and
who is not a member of a panel described in section 6(c), shall
refrain from ex parte communication with such a judge who is a
member of that panel concerning any pending matter before that
panel, except as allowed under the Code of Conduct for United
States Judges.''; and
(iii) in subsection (e)--
(I) by striking ``In an'' and
inserting the following:
``(1) In general.--In an'';
(II) in paragraph (1), as so
designated, by inserting ``of
challenged patent claims'' after
``unpatentability''; and
(III) by adding at the end the
following:
``(2) Claim amendment.--For any substitute claim proposed
under subsection (d)--
``(A) the patent owner shall have the burden of
proving patentability, including under sections 101,
102, 103, and 112, by a preponderance of the evidence;
``(B) the Patent Trial and Appeal Board shall--
``(i) examine the substitute claim; or
``(ii) notwithstanding subsection (c)(2),
refer the substitute claim to the Director, who
shall cause an examination of the substitute
claim to be made within the time limits for the
applicable inter partes review; and
``(C) the Director may establish, by regulation,
fees for examination of the substitute claim in such
amounts as the Director determines to be reasonable,
taking into consideration the aggregate costs of
examination.'';
(E) in section 318--
(i) in subsection (b), by inserting ``, not
later than 60 days after the date on which the
parties to the inter partes review have
informed the Director that the time for appeal
has expired or any appeal has terminated,''
after ``the Director shall''; and
(ii) by adding at the end the following:
``(e) Rehearing.--Not later than 120 days after the date on which
the Patent Trial and Appeal Board issues a final written decision under
subsection (a), the Board or the Director shall finally decide any
request for reconsideration, rehearing, or review that is submitted
with respect to the decision, except that the Director may, for good
cause shown, extend that 120-day period by not more than 60 days.'';
and
(F) in section 319--
(i) in the first sentence, by striking ``A
party'' and inserting the following:
``(a) In General.--A party''; and
(ii) by adding at the end the following:
``(b) Standing.--
``(1) Injury in fact.--For the purposes of an appeal
described in subsection (a), injury in fact shall be presumed
if the party appealing the decision--
``(A) reasonably expects that another person will
assert estoppel against the party under section 315(e)
as a result of the final written decision that is the
subject of the appeal; or
``(B) suffers any other concrete and particularized
injury that--
``(i) is fairly traceable to the final
written decision that is the subject of the
appeal; and
``(ii) could be redressed through appellate
review.
``(2) Estoppel.--If a court finds that a party lacks
standing to bring an appeal described in subsection (a) under
article III of the Constitution of the United States, that
party shall not be estopped under section 315(e) with respect
to the underlying inter partes review.''; and
(4) in chapter 32--
(A) in section 321(a), by inserting ``, including a
governmental entity,'' after ``a person'';
(B) in section 324--
(i) in subsection (a), by striking ``The
Director may not authorize a post-grant review
to be instituted unless'' and inserting the
following: ``Subject only to the discretion of
the Director under section 325(d)(4), a
petition filed under section 321 that meets the
requirements of this chapter shall be
instituted if''; and
(ii) in subsection (e)--
(I) by inserting ``or maintain''
after ``to institute''; and
(II) by striking ``section'' and
inserting ``chapter'';
(C) in section 325--
(i) in subsection (a)--
(I) in the subsection heading, by
striking ``Infringer's Civil Action''
and inserting ``Civil Action''; and
(II) by adding at the end the
following:
``(4) Request for stay.--
``(A) In general.--If a party seeks a stay of a
civil action brought under section 281 alleging
infringement of a patent that is also subject to a
post-grant review, the court shall decide whether to
stay the civil action based on whether--
``(i) the outcome of the post-grant review
will likely simplify the issues in question in
the civil action and streamline the proceedings
in the civil action;
``(ii) as of the date on which the stay is
requested, discovery in the civil action is
complete;
``(iii) a stay, or the denial thereof,
would--
``(I) unduly prejudice the
nonmoving party; or
``(II) present a clear tactical
advantage for the moving party; and
``(iv) a stay, or the denial thereof, will
reduce the burden of litigation on the parties
to the civil action and the court.
``(B) Review.--A party may take an immediate
interlocutory appeal from the decision of a district
court of the United States under subparagraph (A). The
United States Court of Appeals for the Federal Circuit
shall review the district court's decision to ensure
consistent application of established precedent, and
such review shall be de novo.'';
(ii) in subsection (c)--
(I) by striking ``If more'' and
inserting the following:
``(1) In general.--If more''; and
(II) by adding at the end the
following:
``(2) Estoppel.--Any person joined as a party to a post-
grant review, and any real party in interest or privy of such
person, shall be estopped under subsection (e) to the same
extent as if that person, real party in interest, or privy had
been the first petitioner in that post-grant review.'';
(iii) by striking subsection (d) and
inserting the following:
``(d) Multiple Proceedings.--
``(1) In general.--Notwithstanding sections 135(a), 251,
and 252, and chapter 30, during the pendency of any post-grant
review under this chapter, if another proceeding or matter
involving the patent is before the Office, or if there is a
pending application claiming the benefit of a common filing
date to the patent under section 120 or 121--
``(A) the parties shall notify the Director; and
``(B) the Director shall issue a decision
determining the manner in which the other proceeding or
matter may proceed, including providing for stay,
transfer, consolidation, or termination of any such
proceeding or matter.
``(2) No extension.--A decision of the Director under
paragraph (1)(B) may not--
``(A) extend any statutory deadline under this
chapter; or
``(B) terminate an inter partes proceeding in favor
of an ex parte proceeding.
``(3) Presumption.--For the purposes of this subsection, if
the multiple proceedings described in paragraph (1) are of like
type and are filed reasonably close in time, there shall be a
rebuttable presumption that the Director shall consolidate the
proceedings under that paragraph.
``(4) Considerations.--In determining whether to institute
or order a proceeding under this chapter, chapter 30, or
chapter 31, the Director may take into account whether, and
reject the petition or request because, the same or
substantially the same prior art or arguments previously were
presented to the Office.''; and
(iv) in subsection (e)--
(I) in paragraph (1)--
(aa) by striking ``The
petitioner in'' and inserting
the following:
``(A) Estoppel against petitioner.--The petitioner
in'';
(bb) in subparagraph (A),
as so designated, by inserting
``, after the time for appeal
of the decision has expired or
any such appeal has
terminated,'' after ``may
not''; and
(cc) by adding at the end
the following:
``(B) Estoppel against patent owner.--The Office
may not issue to a patent owner any claim that is not
patentably distinct from a claim that was issued and
was subsequently--
``(i) found to be unpatentable; or
``(ii) canceled in any proceeding before
the Office, including under section 135, 251,
253, 301, 311, or 321.''; and
(II) in paragraph (2)--
(aa) by inserting ``that
the claim is not unpatentable''
after ``section 328(a)'';
(bb) by inserting ``, after
the time for appeal of the
decision has expired or any
such appeal has terminated,''
after ``may not''; and
(cc) by inserting ``or
1498'' after ``section 1338'';
(D) in section 326--
(i) in subsection (a)(11), by inserting
``or consolidation under section 325(d)'' after
``under section 325(c)'';
(ii) in subsection (c)--
(I) by striking ``The Patent'' and
inserting the following:
``(1) In general.--The Patent''; and
(II) by adding at the end the
following:
``(2) Ex parte communication.--An officer who has review
authority, supervisory authority, or disciplinary authority
with respect to an administrative patent judge of the Patent
Trial and Appeal Board (or a delegate of such an officer), and
who is not a member of a panel described in section 6(c), shall
refrain from ex parte communication with such a judge who is a
member of that panel concerning any pending matter before that
panel, except as allowed under the Code of Conduct for United
States Judges.''; and
(iii) in subsection (e)--
(I) by striking ``In a'' and
inserting the following:
``(1) In general.--In a'';
(II) in paragraph (1), as so
designated, by inserting ``of
challenged patent claims'' after
``unpatentability''; and
(III) by adding at the end the
following:
``(2) Claim amendment.--For any substitute claim proposed
under subsection (d)--
``(A) the patent owner shall have the burden of
proving patentability, including under sections 101,
102, 103, and 112, by a preponderance of the evidence;
``(B) the Patent Trial and Appeal Board shall--
``(i) examine the substitute claim; or
``(ii) notwithstanding subsection (c)(2),
refer the substitute claim to the Director, who
shall cause an examination of the substitute
claim to be made within the time limits for the
applicable inter partes review; and
``(C) the Director may establish, by regulation,
fees for examination of the substitute claim in such
amounts as the Director determines to be reasonable,
taking into consideration the aggregate costs of
examination.'';
(E) in section 328--
(i) in subsection (b), by inserting ``not
later than 60 days after the date on which the
parties to the post-grant review have informed
the Director that the time for appeal has
expired or any appeal has terminated,'' after
``the Director shall''; and
(ii) by adding at the end the following:
``(e) Rehearing.--Not later than 120 days after the date on which
the Patent Trial and Appeal Board issues a final written decision under
subsection (a), the Board or the Director shall finally decide any
request for reconsideration, rehearing, or review that is submitted
with respect to the decision, except that the Director may, for good
cause shown, extend that 120-day period by not more than 60 days.'';
and
(F) in section 329--
(i) in the first sentence, by striking ``A
party'' and inserting the following:
``(a) In General.--A party''; and
(ii) by adding at the end the following:
``(b) Standing.--
``(1) Injury in fact.--For the purposes of an appeal
described in subsection (a), injury in fact shall be presumed
if the party appealing the decision--
``(A) reasonably expects that another person will
assert estoppel against the party under section 325(e)
as a result of the final written decision that is the
subject of the appeal; or
``(B) suffers any other concrete and particularized
injury that--
``(i) is fairly traceable to the final
written decision that is the subject of the
appeal; and
``(ii) could be redressed through appellate
review.
``(2) Estoppel.--If a court finds that a party lacks
standing to bring an appeal described in subsection (a) under
article III of the Constitution of the United States, that
party shall not be estopped under section 325(e) with respect
to the underlying post-grant review.''.
<all>