,,ii #aagth ,,congress #b;d ,session ,s4 #ddag ,,in ,,the ,,senate ,,of ,,the ,,united ,,states ,june #af1 #bjbb ,mr4 ,leahy 7for himself1 ,mr4 ,cornyn1 and ,mr4 ,tillis7 introduced the following bill2 which was read twice and referred to the ,committee on the ,judiciary ,a ,,bill ,to amend title #ce1 ,united ,states ,code1 to address matters relating to the ,patent ,trial and ,appeal ,board of the ,united ,states ,patent and ,trademark ,office1 and for other purposes4 #a4 ,short title ,this ,act may be cited as the ,patent ,trial and ,appeal ,board ,reform ,act of #bjbb4 #b4 ,patents 7a7 ,in general ,title #ce1 ,united ,states ,code1 is amended-- 7#a7 in section #f-- 7,a7 in subsection 7a71 by inserting after the third sentence the following3 ,each member of the ,patent ,trial and ,appeal ,board shall comply with the ,code of ,conduct for ,united ,states ,judges1 including limitations on ex parte communications1 when performing the duties enumerated in subsection 7b742 7,b7 in subsection 7c7-- 7i7 in the second sentence1 by striking ,only the and inserting ,the2 and 7ii7 by adding at the end the following3 ,after the constitution of a panel of the ,patent ,trial and ,appeal ,board under this subsection has been made public1 any changes to the constitution of that panel1 including changes that were made before the constitution of the panel was made public1 shall be noted in the record42 7,c7 by redesignating subsection 7d7 as subsection 7e72 7,d7 by inserting after subsection 7c7 the following3 7d7 ,review by the ,director 7#a7 ,opportunities for review 7,a7 ,in general ,with respect to a decision of the ,patent ,trial and ,appeal ,board-- 7i7 the ,director may1 on the initiative of the ,director1 review1 and modify or set aside1 the decision2 7ii7 if the decision is issued under section #cah7;a7 or #cbh7;a71 a party to the applicable inter partes or post-grant review may request that the ,director review1 and modify or set aside1 the decision2 and 7iii7 if the decision is issued under section #cad or #cbd under a delegation by the ,director1 a party to the applicable inter partes or post-grant review petition may request that the ,director review1 and modify or set aside1 the decision4 7,b7 ,effect of request for review of determination to institute review ,a request for review under subparagraph 7,a77iii7 shall not be a basis to stay or delay any proceeding4 7#b7 ,requirement 7,a7 ,in general ,any review by the ,director under paragraph 7#a7 shall be issued in a separate written opinion that-- 7i7 is made part of the public record2 7ii7 sets forth the reasons for the review1 modification1 or setting aside of the decision of the ,patent ,trial and ,appeal ,board2 and 7iii7 may be designated as precedential1 and if it is designated as precedential1 shall be followed by future panels of the ,patent ,trial and ,appeal ,board1 unless and until the opinion is-- 7,i7 rescinded2 or 7,,ii7 superseded by-- 7aa7 regulation2 7bb7 a decision of the ,director that is designated as precedential2 or 7cc7 a decision of a court4 7,b7 ,effect of precedential designation ,nothing in subparagraph 7,a77iii7 shall be construed to affect the obligation of the ,director to prescribe regulations under section #caf7;a7 or #cbf7;a74 7#c7 ,timeline and bases for review ,not later than #ah months after the date of enactment of the ,patent ,trial and ,appeal ,board ,reform ,act of #bjbb1 the ,director shall promulgate rules addressing the following issues3 7,a7 ,with respect to review of a decision on the initiative of the ,director under paragraph 7#a77;,a77i7-- 7i7 the timeline under which the ,director may review the decision1 which shall be consistent with the requirements under section #cah7;e7 or #cbh7;e71 if applicable2 and 7ii7 the bases on which the ,director may review the decision4 7,b7 ,with respect to a request by a party under clause 7ii7 or 7iii7 of paragraph 7#a77;,a7-- 7i7 the timeline for submitting such a request2 7ii7 the content that the party is required to include in such a request2 7iii7 the bases on which the party may submit such a request2 and 7iv7 the timeline for any response or reply to such a request such that the request can be decided within the deadline imposed under section #cah7;e7 or #cbh7;e71 as applicable4 7#d7 ,determination whether to review final decisions of ,board ,notwithstanding the bases for review promulgated under paragraph 7#c71 the determination whether to review a final decision of the ,patent ,trial and ,appeal ,board under this subsection is committed to the discretion of the ,director4 7#e7 ,rule of construction ,for the purposes of an appeal permitted under section #ada1 any decision on review of a final written decision of the ,patent ,trial and ,appeal ,board under section #cah7;a7 or #cbh7;a71 that is issued by the ,director under this subsection1 shall be deemed a final written decision of the ,patent ,trial and ,appeal ,board4 2 and 7,e7 in subsection 7e71 as so redesignated-- 7i7 in the first sentence-- 7,i7 by striking of this subsection and inserting of the ,patent ,trial and ,appeal ,board ,reform ,act of #bjbb2 7,,ii7 by inserting or the ,secretary after appointment by the ,director2 and 7,,iii7 by inserting or the ,secretary1 as applicable1 after on which the ,director2 and 7ii7 in the second sentence-- 7,i7 by inserting 1 or1 before the date of enactment of the ,patent ,trial and ,appeal ,board ,reform ,act of #bjbb1 having performed duties no longer performed by administrative patent judges1 after by the ,director2 and 7,,ii7 by striking that the administrative patent judge so appointed and inserting that the applicable administrative patent judge2 7#b7 in chapter #ca-- 7,a7 in section #cad7;d71 by striking section and inserting chapter2 7,b7 in section #cae-- 7i7 in subsection 7b71 by striking shall not apply to a request for joinder under subsection 7c74 and inserting the following3 shall be subject to the following limitations3 7#a7 ,the time limitation shall not apply-- 7,a7 to a request for joinder under subsection 7c72 or 7,b7 if the complaint is dismissed without prejudice4 7#b7 ,if new or amended claims issue from reexamination after the petitioner1 real party in interest1 or privy of the petitioner is served with the complaint1 an inter partes review of those claims1 and any dependent claims depending from those claims1 may be instituted if the petition requesting the review is filed not later than #a year after the date on which the new or amended claims are asserted against the petitioner1 real party in interest1 or privy of the petitioner4 2 7ii7 in subsection 7c71 by inserting a request to join the inter partes review and before a petition under section #caa2 7iii7 in subsection 7d7-- 7,i7 by striking ,notwithstanding and inserting the following3 7#a7 ,in general ,notwithstanding 2 and 7,,ii7 by striking before the ,office1 and all that follows and inserting the following3 before the ,office-- 7,a7 the parties shall notify the ,director2 7,b7 the ,director shall issue a decision determining the manner in which the other proceeding or matter may proceed1 including providing for stay1 transfer1 consolidation1 or termination of any such proceeding or matter2 and 7,c7 a party may seek review of the decision by way of petition to the ,director4 7#b7 ,no extension ,a decision of the ,director under paragraph 7#a77;,b7 may not-- 7,a7 extend any statutory deadline under this chapter2 or 7,b7 terminate an inter partes proceeding in favor of an ex parte proceeding4 7#c7 ,limit on repeated petitions ,the ,director may not authorize an inter partes review to be instituted if the ,director has previously instituted an inter partes review or post-grant review that includes one or more of the same claims based on a petition that was filed on a different day by the same petitioner1 or a real party in interest or privy of the same petitioner4 2 7iv7 in subsection 7e7-- 7,i7 in paragraph 7#b71 by inserting that the claim is not unpatentable after decision under section #cah7;a72 and 7,,ii7 by adding at the end the following3 7#c7 ,applicability ,the prohibitions under this subsection shall apply to the petitioner in an inter partes review upon the issuance of the final written decision for that review4 2 and 7v7 by adding at the end the following3 7f7 ,institution not ,to be denied based on parallel proceedings ,in deciding whether to institute an inter partes review proceeding1 the ,director shall not in any respect consider an ongoing civil action or a proceeding before the ,international ,trade ,commission under section #ccg of the ,tariff ,act of #aicj 7#ai ,u4,s4,c4 #accg71 other than with respect to-- 7#a7 the bars specified in subsections 7a7 and 7b72 or 7#b7 the determination under section #cad7;a7 that there is a reasonable likelihood that the petitioner would prevail with respect to at least #a of the claims challenged in the petition4 2 7,c7 in section #caf-- 7i7 in subsection 7a7-- 7,i7 in paragraph 7#e7-- 7aa7 in subparagraph 7,a71 by striking and at the end2 7bb7 by redesignating subparagraph 7,b7 as subparagraph 7,c72 and 7cc7 by inserting after subparagraph 7,a7 the following3 7,b7 evidence identifying real parties in interest of the petitioner who would be statutorily prohibited from filing a petition under section #caa2 and 2 7,,ii7 in paragraph 7#f7-- 7aa7 by inserting after abuse of process1 the following3 including a petitioner deliberately delaying or losing1 or offering to deliberately delay or lose1 an instituted proceeding in exchange for consideration12 and 7bb7 by inserting before the semicolon at the end the following3 1 which sanctions shall be equally applicable to petitioners and patent owners and may include1 among other things-- 7,a7 shifting costs1 expert witness fees1 or attorney fees2 7,b7 referring counsel to the ,office of ,enrollment and ,discipline2 7,c7 a bar preventing a party from filing certain documents2 and 7,d7 a bar preventing a party from filing any inter partes review or post-grant review petition for a period of #a year 2 7,,iii7 in paragraph 7#aa71 by inserting or consolidation under section #cae7;d7 after under section #cae7;c72 7,,iv7 in paragraph 7#ab71 by striking and at the end2 7,v7 in paragraph 7#ac71 by striking the period at the end and inserting 2 and2 and 7,,vi7 by adding at the end the following3 7#ad7 providing that for all purposes under this chapter-- 7,a7 each term in a challenged claim of a patent shall be construed using the same claim construction standard that would be used to construe the term in a civil action under chapter #bi2 and 7,b7 if a court has previously construed a term in a civil action involving the patent under chapter #bi1 the ,office-- 7i7 shall make that construction of record in the proceeding2 and 7ii7 shall consider but shall not be bound by that construction4 2 7ii7 in subsection 7c7-- 7,i7 by striking ,the ,patent and inserting the following3 7#a7 ,in general ,the ,patent 2 and 7,,ii7 by adding at the end the following3 7#b7 ,ex parte communication ,an officer who has supervisory authority or disciplinary authority with respect to an administrative patent judge of the ,patent ,trial and ,appeal ,board 7or a delegate of such an officer71 and who is not a member of a panel described in section #f7;c71 shall refrain from ex parte communication with such a judge who is a member of that panel concerning any pending matter before that panel1 except as allowed under the ,code of ,conduct for ,united ,states ,judges4 2 and 7iii7 in subsection 7e7-- 7,i7 by striking ,in an and inserting the following3 7#a7 ,in general ,in an 2 7,,ii7 in paragraph 7#a71 as so designated1 by inserting of challenged patent claims after unpatentability2 and 7,,iii7 by adding at the end the following3 7#b7 ,claim amendment ,for any substitute claim proposed under subsection 7d71 the burden of proving patentability1 including under sections #aja1 #ajb1 #ajc1 and #aab1 shall be the same as in examination under section #aca4 2 7,d7 in section #cah-- 7i7 in subsection 7b71 by inserting 1 not later than #fj 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 terminated1 after the ,director shall2 and 7ii7 by adding at the end the following3 7e7 ,rehearing ,not later than #abj days after the date on which the ,patent ,trial and ,appeal ,board issues a final written decision under subsection 7a71 the ,board or the ,director shall finally decide any request for reconsideration1 rehearing1 or review that is submitted with respect to the decision1 except that the ,director may1 for good cause shown1 extend that #abj-;day period by not more than #fj days4 2 7,e7 in section #cai-- 7i7 by striking ,a party and inserting the following3 7a7 ,in general ,a party 2 and 7ii7 by adding at the end the following3 7b7 ,standing ,to appeal ,for the purposes of an appeal described in subsection 7a71 the right to appeal shall extend at least to any dissatisfied party that reasonably expects that another person will assert estoppel against the party under section #cae7;e7 as a result of the decision4 7c7 ,timing on remand after appeal ,not later than #abj days after the date on which a mandate issues from the court remanding to the ,patent ,trial and ,appeal ,board after an appeal under subsection 7a71 the ,board or the ,director shall finally decide any issue on remand1 except that the ,director may1 for good cause shown1 extend that #abj-;day period by not more than #fj days4 2 and 7,f7 by adding at the end the following3 #cbj4 ,support for small and micro entities in inter partes review and post-grant review 7a7 ,covered patent defined ,in this section1 the term covered patent means a patent-- 7#a7 that is the subject of a petition for inter partes review under chapter #ca or post-grant review under chapter #cb2 7#b7 whose owner at the time of the patent application qualified for small entity or micro entity status2 7#c7 whose owner1 on the date on which the petition is filed1 would qualify for small entity or micro entity status if that owner were to file a patent application2 7#d7 whose owner has not asserted the patent in litigation2 7#e7 that has not been licensed to any other party that would not qualify for small entity or micro entity status if that party were to file a patent application2 and 7#f7 the owner or exclusive licensee of which makes or uses the claimed invention in a commercial enterprise1 or has made substantial preparations to do so4 7b7 ,expenses covered 7#a7 ,in general ,the ,office shall pay to the owner of a covered patent all of the reasonable expenses of the proceeding actually incurred by the patent owner 7and not expenses incurred by a third party funding the proceeding71 including reasonable expert witness fees and reasonable attorney fees1 for defending the inter partes review or post-grant review4 7#b7 ,expenses included ,the expenses to be paid under paragraph 7#a7 shall include expenses of-- 7,a7 a preliminary response under section #cac or #cbc2 7,b7 a response under section #caf7;a77#h7 or #cbf7;a77#h72 7,c7 any discovery under section #caf7;a77#e7 or #cbf7;a77#e72 7,d7 motions filed at the ,patent ,trial and ,appeal ,board2 7,e7 any requests for reconsideration1 rehearing1 or review2 and 7,f7 any proceedings after a remand from the ,court of ,appeals for the ,federal ,circuit4 7#c7 ,payment not dependent on outcome ,the ,office shall pay reasonable expenses under paragraph 7#a7 regardless of the outcome of the proceeding4 7#d7 ,expenses not included ,the expenses to be paid under paragraph 7#a7 shall not include expenses incurred-- 7,a7 in a proceeding at the ,court of ,appeals for the ,federal ,circuit or any tribunal outside the ,office2 or 7,b7 in moving to amend any patent claim under-- 7i7 subsection 7a77#i71 7d71 or 7e7 of section #caf2 or 7ii7 subsection 7a77#i71 7d71 or 7e7 of section #cbf4 7c7 ,source of funds ,the total estimated expenses paid to owners of covered patents under this section-- 7#a7 shall be considered part of the aggregate costs under section #caa7;a7 or #cba7;a72 and 7#b7 shall be recovered through fees paid by petitioners4 2 and 7#c7 in chapter #cb-- 7,a7 in section #cbd7;e71 by striking section and inserting chapter2 7,b7 in section #cbe-- 7i7 in subsection 7c71 by inserting 1 the petitioner files a request to join the post-grant review1 before and the ,director2 7ii7 by striking subsection 7d7 and inserting the following3 7d7 ,multiple proceedings 7#a7 ,in general ,notwithstanding sections #ace7;a71 #bea1 and #beb1 and chapter #cj1 during the pendency of any post-grant review under this chapter1 if another proceeding or matter involving the patent is before the ,office-- 7,a7 the parties shall notify the ,director2 7,b7 the ,director shall issue a decision determining the manner in which the other proceeding or matter may proceed1 including providing for stay1 transfer1 consolidation1 or termination of any such proceeding or matter2 and 7,c7 a party may seek review of the decision by way of petition to the ,director4 7#b7 ,no extension ,a decision of the ,director under paragraph 7#a77;,b7 may not-- 7,a7 extend any statutory deadline under this chapter2 or 7,b7 terminate an inter partes proceeding in favor of an ex parte proceeding4 7#c7 ,limit on repeated petitions ,the ,director shall not authorize a post-grant review to be instituted if the ,director has previously instituted an inter partes review or post-grant review that includes one or more of the same claims based on a petition that was filed on a different day by the same petitioner1 or a real party in interest or privy of the same petitioner4 7#d7 ,considerations ,in determining whether to institute or order a proceeding under this chapter1 chapter #cj1 or chapter #ca1 the ,director may take into account whether1 and reject the petition or request because1 the same or substantially the same prior art or arguments previously were presented to the ,office4 2 7iii7 in subsection 7e7-- 7,i7 in paragraph 7#b71 by inserting that the claim is not unpatentable after decision under section #cbh7;a72 and 7,,ii7 by adding at the end the following3 7#c7 ,applicability ,the prohibitions under this subsection shall apply to the petitioner in a post-grant review upon the issuance of the final written decision for that review4 2 and 7iv7 by adding at the end the following3 7g7 ,institution not ,to be denied based on parallel proceedings ,in deciding whether to institute a post-grant review proceeding1 the ,director shall not in any respect consider an ongoing civil action or a proceeding before the ,international ,trade ,commission under section #ccg of the ,tariff ,act of #aicj 7#ai ,u4,s4,c4 #accg71 other than with respect to the determination under section #cbd7;a7 that there is a reasonable likelihood that the petitioner would prevail with respect to at least #a of the claims challenged in the petition4 2 7,c7 in section #cbf-- 7i7 in subsection 7a7-- 7,i7 in paragraph 7#e7-- 7aa7 by striking shall be limited to evidence and inserting the following3 shall be limited to-- 7,a7 evidence 2 and 7bb7 by adding at the end the following3 and 7,b7 evidence identifying real parties in interest of the petitioner who would be statutorily prohibited from filing a petition under section #cba2 2 7,,ii7 in paragraph 7#f7-- 7aa7 by inserting after abuse of process1 the following3 including a petitioner deliberately delaying or losing1 or offering to deliberately delay or lose1 an instituted proceeding in exchange for consideration12 and 7bb7 by inserting before the semicolon at the end the following3 1 which sanctions shall be equally applicable to petitioners and patent owners and may include1 among other things-- 7,a7 shifting costs1 expert witness fees1 or attorney fees2 7,b7 referring counsel to the ,office of ,enrollment and ,discipline2 7,c7 a bar preventing a party from filing certain documents2 and 7,d7 a bar preventing a party from filing any inter partes review or post-grant review petition for a period of #a year 2 7,,iii7 in paragraph 7#aa7-- 7aa7 by inserting or consolidation under section #cbe7;d7 after under section #cbe7;c72 and 7bb7 by striking and at the end2 7,,iv7 in paragraph 7#ab71 by striking the period at the end and inserting 2 and2 and 7,v7 by adding at the end the following3 7#ac7 providing that for all purposes under this chapter-- 7,a7 each term in a challenged claim of a patent shall be construed using the same claim construction standard that would be used to construe the term in a civil action under chapter #bi2 and 7,b7 if a court has previously construed a term in a civil action involving the patent under chapter #bi1 the ,office-- 7i7 shall make that construction of record in the proceeding2 and 7ii7 shall consider but shall not be bound by that construction4 2 7ii7 in subsection 7c7-- 7,i7 by striking ,the ,patent and inserting the following3 7#a7 ,in general ,the ,patent 2 and 7,,ii7 by adding at the end the following3 7#b7 ,ex parte communication ,an officer who has supervisory authority or disciplinary authority with respect to an administrative patent judge of the ,patent ,trial and ,appeal ,board 7or a delegate of such an officer71 and who is not a member of a panel described in section #f7;c71 shall refrain from ex parte communication with such a judge who is a member of that panel concerning any pending matter before that panel1 except as allowed under the ,code of ,conduct for ,united ,states ,judges4 2 and 7iii7 in subsection 7e7-- 7,i7 by striking ,in a and inserting the following3 7#a7 ,in general ,in a 2 7,,ii7 in paragraph 7#a71 as so designated1 by inserting of challenged patent claims after unpatentability2 and 7,,iii7 by adding at the end the following3 7#b7 ,claim amendment ,for any substitute claim proposed under subsection 7d71 the burden of proving patentability1 including under sections #aja1 #ajb1 #ajc1 and #aab1 shall be the same as in examination under section #aca4 2 7,d7 in section #cbh-- 7i7 in subsection 7b71 by inserting 1 not later than #fj 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 terminated1 after the ,director shall2 and 7ii7 by adding at the end the following3 7e7 ,rehearing ,not later than #abj days after the date on which the ,patent ,trial and ,appeal ,board issues a final written decision under subsection 7a71 the ,board or the ,director shall finally decide any request for reconsideration1 rehearing1 or review that is submitted with respect to the decision1 except that the ,director may1 for good cause shown1 extend that #abj-;day period by not more than #fj days4 2 and 7,e7 in section #cbi-- 7i7 by striking ,a party and inserting the following3 7a7 ,in general ,a party 2 and 7ii7 by adding at the end the following3 7b7 ,standing ,to appeal ,for the purposes of an appeal described in subsection 7a71 the right to appeal shall extend at least to any dissatisfied party that reasonably expects that another person will assert estoppel against the party under section #cbe7;e7 as a result of the decision4 7c7 ,timing on remand after appeal ,not later than #abj days after the date on which a mandate issues from the court remanding to the ,patent ,trial and ,appeal ,board after an appeal under subsection 7a71 the ,board or the ,director shall finally decide any issue on remand1 except that the ,director may1 for good cause shown1 extend that #abj-;day period by not more than #fj days4 4 7b7 ,technical and conforming amendment ,the table of sections for chapter #ca of title #ce1 ,united ,states ,code1 is amended by adding at the end the following3 #cbj4 ,support for small and micro entities in inter partes review and post-grant review4 4