,,ii #aahth ,,congress #ast ,session ,s4 #bbbj ,,in ,,the ,,senate ,,of ,,the ,,united ,,states ,july #aj1 #bjbc,mr4 ,coons 7for himself1 ,mr4 ,tillis1 ,mr4 ,durbin1 and ,ms4 ,hirono7 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 invest in inventors in the ,united ,states1 maintain the ,united ,states as the leading innovation economy in the world1 and protect the property rights of the inventors that grow the economy of the ,united ,states1 and for other purposes4 #a4 ,short title ,this ,act may be cited as the ,promoting and ,respecting ,economically ,vital ,american ,innovation ,leadership ,act or the ,,prevail ,act4 #b4 ,findings ,congress finds the following3 7#a7 ,the patent property rights enshrined in the ,constitution of the ,united ,states provide the foundation for the exceptional innovation environment in the ,united ,states4 7#b7 ,reliable and effective patent protection encourages ,united ,states inventors to invest their resources in creating new inventions4 7#c7 ,united ,states inventors have made discoveries leading to patient cures1 positive changes to the standard of living for all people in the ,united ,states1 and improvements to the agricultural1 telecommunications1 and electronics industries1 among others4 7#d7 ,the ,united ,states patent system is an essential part of the economic success of the ,united ,states4 7#e7 ,reliable and effective patent protection improves the chances of success for individual inventors and small companies and increases the chances of securing investments for those inventors and companies4 7#f7 ,intellectual property-intensive industries in the ,united ,states-- 7,a7 generate tens of millions of jobs for individuals in the ,united ,states2 and 7,b7 account for more than #a_/c of the gross domestic product of the ,united ,states4 7#g7 ,the ,national ,security ,commission on ,artificial ,intelligence has emphasized that-- 7,a7 the ,people's ,republic of ,china is leveraging and exploiting intellectual property as a critical tool within its national strategies for emerging technologies2 and 7,b7 the ,united ,states has failed to similarly recognize the importance of intellectual property in securing its own national security1 economic interests1 and technological competitiveness4 7#h7 ,in the highly competitive global economy1 the ,united ,states needs reliable and effective patent protections to safeguard national security interests and maintain its position as the most innovative country in the world4 7#i7 ,congress last enacted comprehensive reforms of the patent system in #bjaa4 7#aj7 ,unintended consequences of the comprehensive #bjaa reform of patent laws have become evident during the decade preceding the date of enactment of this ,act1 including the strategic filing of post-grant review proceedings to depress stock prices and extort settlements1 the filing of repetitive petitions for inter partes and post-grant reviews that have the effect of harassing patent owners1 and the unnecessary duplication of work by the district courts of the ,united ,states and the ,patent ,trial and ,appeal ,board1 all of which drive down investment in innovation and frustrate the purpose of those patent reform laws4 7#aa7 ,efforts by ,congress to reform the patent system without careful scrutiny create a serious risk of making it more costly and difficult for innovators to protect their patents from infringement1 thereby-- 7,a7 disincentivizing ,united ,states companies from innovating2 and 7,b7 weakening the economy of the ,united ,states4 #c4 ,patent trial and appeal board ,section #f of title #ce1 ,united ,states ,code1 is amended-- 7#a7 by redesignating subsections 7b71 7c71 and 7d7 as subsections 7c71 7d71 and 7e71 respectively2 7#b7 by inserting after subsection 7a7 the following3 7b7 ,code of conduct 7#a7 ,in general ,the ,director shall prescribe regulations establishing a code of conduct for the members of the ,patent ,trial and ,appeal ,board4 7#b7 ,considerations ,in prescribing regulations under paragraph 7#a71 the ,director shall consider the ,code of ,conduct for ,united ,states ,judges and how the provisions of that ,code of ,conduct may apply to the ,patent ,trial and ,appeal ,board4 2 7#c7 by striking subsection 7d71 as so redesignated1 and inserting the following3 7d7 #c-,member panels 7#a7 ,in general ,each appeal1 derivation proceeding1 post-grant review1 and inter partes review shall be heard by at least #c members of the ,patent ,trial and ,appeal ,board1 who shall be designated by the ,director4 ,the ,patent ,trial and ,appeal ,board may grant rehearings4 7#b7 ,changes to constitution of panel ,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 record4 7#c7 ,no direction or influence ,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 this subsection1 shall refrain from communications with the panel that direct or otherwise influence any merits decision of the panel4 7#d7 ,ineligibility to hear review ,a member of the ,patent ,trial and ,appeal ,board who participates in the decision to institute an inter partes review or a post-grant review of a patent shall be ineligible to hear the review4 2 and 7#d7 in subsection 7e71 as so redesignated-- 7,a7 in the first sentence-- 7i7 by striking this subsection and inserting the date of enactment of the ,promoting and ,respecting ,economically ,vital ,american ,innovation ,leadership ,act2 7ii7 by striking by the ,director and inserting by the ,director or the ,secretary2 and 7iii7 by inserting or the ,secretary1 as applicable1 after on which the ,director2 and 7,b7 in the second sentence-- 7i7 by inserting after by the ,director the following3 1 or1 before the date of enactment of the ,promoting and ,respecting ,economically ,vital ,american ,innovation ,leadership ,act1 having performed duties no longer performed by administrative patent judges12 and 7ii7 by striking that the administrative patent judge so appointed and inserting that the applicable administrative patent judge4 #d4 ,inter partes review 7a7 ,standing and real parties in interest ,section #caa of title #ce1 ,united ,states ,code1 is amended by adding at the end the following3 7d7 ,persons that may petition 7#a7 ,definition ,in this subsection1 the term charged with infringement means a real and substantial controversy regarding infringement of a patent exists such that the person would have standing to bring a declaratory judgment action in ,federal court4 7#b7 ,necessary conditions ,a person may not file with the ,office a petition to institute an inter partes review of a patent unless the person1 or a real party in interest or a privy of the person1 has been-- 7,a7 sued for infringement of the patent2 or 7,b7 charged with infringement of the patent4 7e7 ,real party in interest ,for purposes of this chapter1 a person that1 directly or through an affiliate1 subsidiary1 or proxy1 makes a financial contribution to the preparation for1 or conduct during1 an inter partes review on behalf of a petitioner shall be considered a real party in interest of that petitioner4 4 7b7 ,institution decision rehearing timing ,section #cad of title #ce1 ,united ,states ,code1 is amended by adding at the end the following3 7e7 ,rehearing ,not later than #de days after the date on which a request for rehearing from a determination by the ,director under subsection 7b7 is filed1 the ,director shall finally decide any request for reconsideration1 rehearing1 or review with respect to the determination1 except that the ,director may1 for good cause shown1 extend that #de-;day period by not more than #cj days4 4 7c7 ,eliminating repetitive proceedings 7#a7 ,in general ,section #cae of title #ce1 ,united ,states ,code1 is amended-- 7,a7 in subsection 7b71 by amending the second sentence to read as follows3 ,the time limitation set forth in the preceding sentence shall not bar a request for joinder under subsection 7d71 but shall establish a rebuttable presumption against joinder for the requesting person42 7,b7 by redesignating subsections 7c71 7d71 and 7e7 as subsections 7d71 7e71 and 7f71 respectively2 7,c7 by inserting after subsection 7b7 the following3 7c7 ,single forum 7#a7 ,in general ,if an inter partes review is instituted challenging the validity of a patent1 the petitioner1 a real party in interest1 or a privy of the petitioner may not file or maintain1 in a civil action arising in whole or in part under section #acch of title #bh1 or in a proceeding before the ,international ,trade ,commission under section #ccg of the ,tariff ,act of #aicj 7#ai ,u4,s4,c4 #accg71 a claim1 a counterclaim1 or an affirmative defense challenging the validity of any claim of the patent on any ground described in section #caa7;b74 7#b7 ,considerations ,in determining whether to institute a proceeding under this chapter1 subject to the provisions of subsections 7a77#a7 and 7g71 the ,director may not reject a petition requesting an inter partes review on the basis of the petitioner1 a real party in interest1 or a privy of the petitioner filing or maintaining a claim1 a counterclaim1 or an affirmative defense challenging the validity of the applicable patent in any civil action arising in whole or in part under section #acch of title #bh1 or in a proceeding before the ,international ,trade ,commission under section #ccg of the ,tariff ,act of #aicj 7#ai ,u4,s4,c4 #accg74 2 7,d7 by amending subsection 7d71 as so redesignated1 to read as follows3 7d7 ,joinder 7#a7 ,in general ,if the ,director institutes an inter partes review1 the ,director1 in the discretion of the ,director1 may join as a party to that inter partes review any person that properly files a request to join the inter partes review and a petition under section #caa that the ,director1 after receiving a preliminary response under section #cac or the expiration of the time for filing such a response1 determines warrants the institution of an inter partes review under section #cad4 7#b7 ,time-barred person ,pursuant to paragraph 7#a71 the ,director1 in the discretion of the ,director1 may join as a party to an inter partes review a person that did not satisfy the time limitation under subsection 7b7 that rebuts the presumption against joinder1 except that any such person shall not be permitted to serve as the lead petitioner and shall not be permitted to maintain the inter partes review unless a petitioner that satisfied the time limitation under subsection 7b7 remains in the inter partes review4 2 7,e7 by amending subsection 7e71 as so redesignated1 to read as follows3 7e7 ,multiple proceedings 7#a7 ,in general ,notwithstanding sections #ace7;a71 #bea1 and #beb1 and chapter #cj1 after a petition to institute an inter partes review is filed1 if another proceeding or matter involving the patent is before the ,office-- 7,a7 the parties shall notify the ,director of that other proceeding or matter-- 7i7 not later than #cj days after the date of entry of the notice of filing date accorded to the petition2 or 7ii7 if the other proceeding or matter is filed after the date on which the petition to institute an inter partes review is filed1 not later than #cj days after the date on which the other proceeding or matter is filed2 and 7,b7 the ,director shall issue a decision determining the manner in which the inter partes review or other proceeding or matter may proceed1 including providing for stay1 transfer1 consolidation1 or termination of any such matter or proceeding4 7#b7 ,considerations ,in determining whether to institute a proceeding under this chapter1 the ,director shall1 unless the ,director determines that the petitioner has demonstrated exceptional circumstances1 reject any petition that presents prior art or an argument that is the same or substantially the same as prior art or an argument that previously was presented to the ,office4 2 7,f7 by amending subsection 7f71 as so redesignated1 to read as follows3 7f7 ,estoppel 7#a7 ,in general ,a petitioner that has previously requested an inter partes review of a claim in a patent under this chapter1 or a real party in interest or a privy of such a petitioner1 may not request or maintain another proceeding before the ,office with respect to that patent on any ground that the petitioner raised or reasonably could have raised in the petition requesting or during the prior inter partes review1 unless-- 7,a7 after the filing of the initial petition1 the petitioner1 or a real party in interest or a privy of the petitioner1 is charged with infringement of additional claims of the patent2 7,b7 a subsequent petition requests an inter partes review of only the additional claims of the patent that the petitioner1 or a real party in interest or a privy of the petitioner1 is later charged with infringing2 and 7,c7 that subsequent petition is accompanied by a request for joinder to the prior inter partes review1 which overcomes the rebuttable presumption against joinder set forth in subsection 7b71 and which the ,director shall grant if the ,director authorizes an inter partes review to be instituted on the subsequent petition under section #cad4 7#b7 ,joined party ,any person joined as a party to an inter partes review1 and any real party in interest or any privy of such person1 shall be estopped under this subsection and subsections 7c77#a7 and 7e77#b7 to the same extent as if that person1 real party in interest1 or privy had been the first petitioner in that inter partes review4 2 and 7,g7 by adding at the end the following3 7g7 ,federal court and ,international ,trade ,commission validity determinations ,an inter partes review of a patent claim may not be instituted or maintained if1 in a civil action arising in whole or in part under section #acch of title #bh1 or in a proceeding before the ,international ,trade ,commission under section #ccg of the ,tariff ,act of #aicj 7#ai ,u4,s4,c4 #accg71 in which the petitioner1 a real party in interest1 or a privy of the petitioner is a party1 the court1 or the ,international ,trade ,commission1 as applicable1 has entered a final judgment that decides a challenge to the validity of the patent claim with respect to any ground described in section #caa7;b74 4 7#b7 ,technical and conforming amendments ,section #caf7;a7 of title #ce1 ,united ,states ,code1 is amended-- 7,a7 in paragraph 7#aa71 by striking section #cae7;c7 and inserting section #cae7;d72 and 7,b7 in paragraph 7#ab71 by striking section #cae7;c7 and inserting section #cae7;d74 7d7 ,conduct of inter partes review ,section #caf of title #ce1 ,united ,states ,code1 is amended-- 7#a7 in subsection 7a7-- 7,a7 by amending paragraph 7#e7 to read as follows3 7#e7 setting forth standards and procedures for discovery of relevant evidence1 including that such discovery shall be limited to-- 7,a7 the deposition of witnesses submitting affidavits or declarations2 7,b7 evidence identifying the real parties in interest of the petitioner2 and 7,c7 what is otherwise necessary in the interest of justice2 2 7,b7 by amending paragraph 7#i7 to read as follows3 7#i7 setting forth standards and procedures for-- 7,a7 allowing the patent owner to move to amend the patent under subsection 7d7 to cancel a challenged claim or propose a reasonable number of substitute claims2 7,b7 allowing the ,patent ,trial and ,appeal ,board to provide guidance on substitute claims proposed by the patent owner2 7,c7 allowing the patent owner to further revise proposed substitute claims after the issuance of guidance described in subparagraph 7,b72 and 7,d7 ensuring that any information submitted by the patent owner in support of any amendment entered under subsection 7d71 and any guidance issued by the ,patent ,trial and ,appeal ,board1 is made available to the public as part of the prosecution history of the patent2 2 7,c7 in paragraph 7#ab71 by striking and at the end2 7,d7 in paragraph 7#ac71 by striking the period at the end and inserting 2 and2 and 7,e7 by adding at the end the following3 7#ad7 setting forth the standards for demonstrating exceptional circumstances under sections #cjc7;e77#a7 and #cae7;e77#b74 2 7#b7 by amending subsection 7e7 to read as follows3 7e7 ,evidentiary standards 7#a7 ,presumption of validity ,the presumption of validity under section #bhb7;a7 shall apply to previously issued claims of a patent that is challenged in an inter partes review under this chapter4 7#b7 ,burden of proof ,in an inter partes review under this chapter-- 7,a7 the petitioner shall have the burden of proving a proposition of unpatentability of a previously issued claim of a patent by clear and convincing evidence2 and 7,b7 the petitioner shall have the burden of persuasion1 by a preponderance of the evidence1 with respect to a proposition of unpatentability for any substitute claim proposed by the patent owner4 2 and 7#c7 by adding at the end the following3 7f7 ,claim construction ,for the purposes of this chapter-- 7#a7 each challenged claim of a patent1 and each substitute claim proposed in a motion to amend1 shall be construed as the claim would be construed under section #bhb7;b7 in an action to invalidate a patent1 including by construing each such claim in accordance with-- 7,a7 the ordinary and customary meaning of the claim as understood by a person having ordinary skill in the art to which the claimed invention pertains2 and 7,b7 the prosecution history pertaining to the patent2 and 7#b7 if a court has previously construed a challenged claim of a patent or a challenged claim term in a civil action to which the patent owner was a party1 the ,office shall consider that claim construction4 4 7e7 ,settlement ,section #cag7;a7 of title #ce1 ,united ,states ,code1 is amended by striking the second sentence4 7f7 ,timing ,to issue trial certificate and decisions on rehearing ,section #cah of title #ce1 ,united ,states ,code1 is amended-- 7#a7 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 7#b7 by adding at the end the following3 7e7 ,rehearing ,not later than #ij days after the date on which a request for rehearing of a final written decision issued by the ,patent and ,trial ,appeal ,board under subsection 7a7 is filed1 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 #ij-;day period by not more than #fj days4 7f7 ,review by director 7#a7 ,in general ,the ,director may grant rehearing1 reconsideration1 or review of a decision by the ,patent ,trial and ,appeal ,board issued under this chapter4 7#b7 ,requirements ,any reconsideration1 rehearing1 or review by the ,director1 as described in paragraph 7#a71 shall be issued in a separate written opinion that-- 7,a7 is made part of the public record2 and 7,b7 sets forth the reasons for the reconsideration1 rehearing1 or review of the applicable decision by the ,patent ,trial and ,appeal ,board4 7g7 ,rule of construction ,for the purposes of an appeal permitted under section #ada1 any decision on rehearing1 reconsideration1 or review of a final written decision of the ,patent ,trial and ,appeal ,board under subsection 7a7 of this section that is issued by the ,director shall be deemed to be a final written decision of the ,patent ,trial and ,appeal ,board4 4 7g7 ,timing ,to issue decisions on remand ,section #cai of title #ce1 ,united ,states ,code1 is amended-- 7#a7 by striking ,a party and inserting the following3 7a7 ,in general ,a party 2 and 7#b7 by adding at the end the following3 7b7 ,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 #e4 ,post-grant review 7a7 ,real parties in interest ,section #cba of title #ce1 ,united ,states ,code1 is amended by adding at the end the following3 7d7 ,real party in interest ,for purposes of this chapter1 a person that1 directly or through an affiliate1 subsidiary1 or proxy1 makes a financial contribution to the preparation for1 or conduct during1 a post-grant review on behalf of a petitioner shall be considered a real party in interest of that petitioner4 4 7b7 ,timing ,to issue decisions on rehearing ,section #cbd of title #ce1 ,united ,states ,code1 is amended by adding at the end the following3 7f7 ,rehearing ,not later than #de days after the date on which a request for rehearing from a determination by the ,director under subsection 7c7 is filed1 the ,director shall finally decide any request for reconsideration1 rehearing1 or review with respect to the determination1 except that the ,director may1 for good cause shown1 extend that #de-;day period by not more than #cj days4 4 7c7 ,eliminating repetitive proceedings ,section #cbe of title #ce1 ,united ,states ,code1 is amended-- 7#a7 by redesignating subsections 7c7 through 7f7 as subsections 7d7 through 7g71 respectively2 7#b7 by inserting after subsection 7b7 the following3 7c7 ,single forum 7#a7 ,in general ,if a post-grant review is instituted challenging the validity of a patent1 the petitioner1 a real party in interest1 or a privy of the petitioner may not file or maintain1 in a civil action arising in whole or in part under section #acch of title #bh1 or in a proceeding before the ,international ,trade ,commission under section #ccg of the ,tariff ,act of #aicj 7#ai ,u4,s4,c4 #accg71 a claim1 a counterclaim1 or an affirmative defense challenging the validity of any claim of the patent4 7#b7 ,considerations ,in determining whether to institute a proceeding under this chapter1 subject to the provisions of subsections 7a77#a7 and 7h71 the ,director may not reject a petition requesting a post-grant review on the basis of the petitioner1 a real party in interest1 or a privy of the petitioner filing or maintaining a claim1 a counterclaim1 or an affirmative defense challenging the validity of the patent in any civil action arising in whole or in part under section #acch of title #bh1 or in a proceeding before the ,international ,trade ,commission under section #ccg of the ,tariff ,act of #aicj 7#ai ,u4,s4,c4 #accg74 2 7#c7 by amending subsection 7e71 as so redesignated1 to read as follows3 7e7 ,multiple proceedings 7#a7 ,in general ,notwithstanding sections #ace7;a71 #bea1 and #beb1 and chapter #cj1 after a petition to institute a post-grant review is filed1 if another proceeding or matter involving the patent is before the ,office-- 7,a7 the parties shall notify the ,director of that other proceeding or matter-- 7i7 not later than #cj days after the date of entry of the notice of filing date accorded to the petition2 or 7ii7 if the other proceeding or matter is filed after the date on which the petition to institute an inter partes review is filed1 not later than #cj days after the date on which the other proceeding or matter is filed2 and 7,b7 the ,director shall issue a decision determining the manner in which the post-grant review or other proceeding or matter may proceed1 including providing for stay1 transfer1 consolidation1 or termination of any such matter or proceeding4 7#b7 ,considerations ,in determining whether to institute a proceeding under this chapter1 the ,director shall1 unless the ,director determines that the petitioner has demonstrated exceptional circumstances1 reject any petition that presents prior art or an argument that is the same or substantially the same as prior art or an argument that previously was presented to the ,office4 2 7#d7 by amending subsection 7f71 as so redesignated1 to read as follows3 7f7 ,estoppel 7#a7 ,in general ,a petitioner that has previously requested a post-grant review of a claim in a patent under this chapter1 or a real party in interest or a privy of a petitioner1 may not request or maintain another proceeding before the ,office with respect to that patent on any ground that the petitioner raised or reasonably could have raised in the petition requesting or during the prior post-grant review1 unless-- 7,a7 after the filing of the initial petition1 the petitioner1 or a real party in interest or a privy of the petitioner1 is charged with infringement of additional claims of the patent2 7,b7 a subsequent petition requests an inter partes review of only the additional claims of the patent that the petitioner1 or a real party in interest or a privy of the petitioner1 is later charged with infringing2 and 7,c7 that subsequent petition is accompanied by a request for joinder to the prior post-grant review1 which the ,director shall grant if the ,director authorizes a post-grant review to be instituted on the subsequent petition under section #cbd4 7#b7 ,joined party ,any person joined as a party to a post-grant review1 and any real party in interest or any privy of such person1 shall be estopped under this subsection and subsections 7c77#a7 and 7e77#b7 to the same extent as if that person1 real party in interest1 or privy had been the first petitioner in that post-grant review4 2 and 7#e7 by adding at the end the following3 7h7 ,federal court and ,international ,trade ,commission validity determinations ,a post-grant review of a patent claim may not be instituted or maintained if1 in a civil action arising in whole or in part under section #acch of title #bh1 or in a proceeding before the ,international ,trade ,commission under section #ccg of the ,tariff ,act of #aicj 7#ai ,u4,s4,c4 #accg71 in which the petitioner1 a real party in interest1 or a privy of the petitioner is a party1 the court1 or the ,international ,trade ,commission1 as applicable1 has entered a final judgment that decides a challenge to the validity of the patent claim4 4 7d7 ,conduct of post-,grant review ,section #cbf of title #ce1 ,united ,states ,code1 is amended-- 7#a7 in subsection 7a7-- 7,a7 by amending paragraph 7#e7 to read as follows3 7#e7 setting forth standards and procedures for discovery of relevant evidence1 including that such discovery shall be limited to-- 7,a7 the deposition of witnesses submitting affidavits or declarations2 7,b7 evidence identifying the real parties in interest of the petitioner2 and 7,c7 what is otherwise necessary in the interest of justice2 2 7,b7 by amending paragraph 7#i7 to read as follows3 7#i7 setting forth standards and procedures for-- 7,a7 allowing the patent owner to move to amend the patent under subsection 7d7 to cancel a challenged claim or propose a reasonable number of substitute claims2 7,b7 allowing the ,patent ,trial and ,appeal ,board to provide guidance on substitute claims proposed by the patent owner2 7,c7 allowing the patent owner to further revise proposed substitute claims after the issuance of guidance described in subparagraph 7,b72 and 7,d7 ensuring that any information submitted by the patent owner in support of any amendment entered under subsection 7d71 and any guidance issued by the ,patent ,trial and ,appeal ,board1 is made available to the public as part of the prosecution history of the patent2 2 7,c7 in paragraph 7#aa71 by striking section #cbe7;c7 and inserting section #cbe7;d72 7,d7 in paragraph 7#ab71 by striking the period at the end and inserting 2 and2 and 7,e7 by adding at the end the following3 7#ac7 setting forth the standards for demonstrating exceptional circumstances under section #cbe7;e77#b74 2 7#b7 by amending subsection 7e7 to read as follows3 7e7 ,evidentiary standards 7#a7 ,presumption of validity ,the presumption of validity under section #bhb7;a7 shall apply to previously issued claims of a patent that is challenged in a post-grant review under this chapter4 7#b7 ,burden of proof ,in a post-grant review under this chapter-- 7,a7 the petitioner shall have the burden of proving a proposition of unpatentability of a previously issued claim of a patent by clear and convincing evidence2 and 7,b7 the petitioner shall have the burden of persuasion1 by a preponderance of the evidence1 with respect to a proposition of unpatentability for any substitute claim proposed by the patent owner4 2 and 7#c7 by adding at the end the following3 7f7 ,claim construction ,for the purposes of this chapter-- 7#a7 each challenged claim of a patent1 and each substitute claim proposed in a motion to amend1 shall be construed as the claim would be construed under section #bhb7;b7 in an action to invalidate a patent1 including by construing each such claim in accordance with-- 7,a7 the ordinary and customary meaning of the claim as understood by a person having ordinary skill in the art to which the claimed invention pertains2 and 7,b7 the prosecution history pertaining to the patent2 and 7#b7 if a court has previously construed a challenged claim of a patent or a challenged claim term in a civil action to which the patent owner was a party1 the ,office shall consider that claim construction4 4 7e7 ,settlement ,section #cbg7;a7 of title #ce1 ,united ,states ,code1 is amended by striking the second sentence4 7f7 ,timing ,to issue trial certificates and decisions on rehearing ,section #cbh of title #ce1 ,united ,states ,code1 is amended-- 7#a7 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 7#b7 by adding at the end the following3 7e7 ,rehearing ,not later than #ij days after the date on which a request for rehearing of a final written decision issued by the ,patent and ,trial ,appeal ,board under subsection 7a7 is filed1 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 #ij-;day period by not more than #fj days4 7f7 ,review by director 7#a7 ,in general ,the ,director may grant rehearing1 reconsideration1 or review of a decision by the ,patent ,trial and ,appeal ,board issued under this chapter4 7#b7 ,requirements ,any reconsideration1 rehearing1 or review by the ,director1 as described in paragraph 7#a71 shall be issued in a separate written opinion that-- 7,a7 is made part of the public record2 and 7,b7 sets forth the reasons for the reconsideration1 rehearing1 or review of the decision by the ,patent ,trial and ,appeal ,board4 7g7 ,rule of construction ,for the purposes of an appeal permitted under section #ada1 any decision on rehearing1 reconsideration1 or review of a final written decision of the ,patent ,trial and ,appeal ,board under subsection 7a7 of this section that is issued by the ,director shall be deemed to be a final written decision of the ,patent ,trial and ,appeal ,board4 4 7g7 ,timing ,to issue decisions on remand ,section #cbi of title #ce1 ,united ,states ,code1 is amended-- 7#a7 by striking ,a party and inserting the following3 7a7 ,in general ,a party 2 and 7#b7 by adding at the end the following3 7b7 ,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 #f4 ,reexamination of patents 7a7 ,request for reexamination ,section #cjb of title #ce1 ,united ,states ,code1 is amended by inserting after the second sentence the following3 ,the request must identify all real parties in interest and certify that reexamination is not barred under section #cjc7;d744 7b7 ,reexamination barred ,section #cjc of title #ce1 ,united ,states ,code1 is amended-- 7#a7 in subsection 7a71 by striking the third sentence2 and 7#b7 by adding at the end the following3 7d7 ,an ex parte reexamination may not be ordered if the request for reexamination is filed more than #a year after the date on which the requester or a real party in interest or a privy of the requester is served with a complaint alleging infringement of the patent4 ,for purposes of this chapter1 a person that directly or through an affiliate1 subsidiary1 or proxy makes a financial contribution to the preparation for1 or conduct during1 an ex parte reexamination on behalf of a requester shall be considered a real party in interest of the requester4 7e7 ,in determining whether to order an ex parte reexamination1 the ,director-- 7#a7 shall1 unless the ,director determines that the requestor has demonstrated exceptional circumstances1 reject any request that presents prior art or an argument that is the same or substantially the same as prior art or an argument that previously was presented to the ,office2 and 7#b7 may reject any request that the ,director determines has used a prior ,office decision as a guide to correct or bolster a previous deficient request filed under this chapter or a previous deficient petition filed under chapter #ca or #cb4 4 7c7 ,reexamination order by ,director ,section #cjd of title #ce1 ,united ,states ,code1 is amended1 in the first sentence1 by inserting after resolution of the question the following3 1 unless the ,director determines that the request for reexamination should be rejected under subsection 7d7 or 7e7 of section #cjc1 in which case the ,director shall issue an order denying reexamination4 #g4 ,elimination of ,,uspto fee diversion 7a7 ,funding ,section #db of title #ce1 ,united ,states ,code1 is amended-- 7#a7 in subsection 7a71 by striking ,all fees and inserting the following3 7a7 ,fees for service by ,,pto ,all fees 2 7#b7 in subsection 7b7-- 7,a7 by striking ,all fees paid to the ,director and all appropriations and inserting the following3 7b7 ,innovation ,promotion ,fund ,all fees paid to the ,director 2 and 7,b7 by striking ,patent and ,trademark ,office ,appropriation ,account and inserting ,united ,states ,patent and ,trademark ,office ,innovation ,promotion ,fund2 7#c7 by striking subsection 7c7 and inserting the following3 7c7 ,collection of funds for ,,pto activities 7#a7 ,in general ,fees authorized in this title or any other ,act to be charged or established by the ,director shall be collected by the ,director and shall be available to the ,director until expended to carry out the activities of the ,patent and ,trademark ,office4 7#b7 ,use of fees 7,a7 ,patent fees ,any fees that are collected under this title1 and any surcharges on such fees1 may only be used for expenses of the ,office relating to the processing of patent applications and for other activities1 services1 and materials relating to patents and to cover a proportionate share of the administrative costs of the ,office4 7,b7 ,trademark fees ,any fees that are collected under section #ca of the ,trademark ,act of #aidf 7as defined in subsection 7d77#a77 7#ae ,u4,s4,c4 #aaac71 and any surcharges on such fees1 may only be used for expenses of the ,office relating to the processing of trademark registrations and for other activities1 services1 and materials relating to trademarks and to cover a proportionate share of the administrative costs of the ,office4 2 7#d7 by redesignating subsections 7d7 and 7e7 as subsections 7e7 and 7f71 respectively2 7#e7 by inserting after subsection 7c7 the following3 7d7 ,revolving fund 7#a7 ,definitions ,in this subsection-- 7,a7 the term ,fund means the ,united ,states ,patent and ,trademark ,office ,innovation ,promotion ,fund established under paragraph 7#b72 and 7,b7 the term ,trademark ,act of #aidf means the ,act entitled ,an ,act to provide for the registration and protection of trademarks used in commerce1 to carry out the provisions of certain international conventions1 and for other purposes1 approved ,july #e1 #aidf 7#ae ,u4,s4,c4 #ajea et seq47 7commonly referred to as the ,trademark ,act of #aidf or the ,lanham ,act74 7#b7 ,establishment ,there is established in the ,treasury a revolving fund to be known as the ,united ,states ,patent and ,trademark ,office ,innovation ,promotion ,fund4 7#c7 ,derivation of resources ,there shall be deposited into the ,fund any fees collected under-- 7,a7 this title2 or 7,b7 the ,trademark ,act of #aidf4 7#d7 ,expenses ,amounts deposited into the ,fund under paragraph 7#c7 shall be available1 without fiscal year limitation1 to cover-- 7,a7 to the extent consistent with the limitation on the use of fees under subsection 7c71 all expenses1 including all administrative and operating expenses1 determined by the ,director to be ordinary and reasonable1 incurred by the ,director for the continued operation of all services1 programs1 activities1 and duties of the ,office relating to patents and trademarks1 as such services1 programs1 activities1 and duties are described under-- 7i7 this title2 and 7ii7 the ,trademark ,act of #aidf2 and 7,b7 all expenses incurred pursuant to any obligation1 representation1 or other commitment of the ,office4 2 7#f7 in subsection 7e71 as so redesignated1 by striking ,the ,director and inserting the following3 7e7 ,refunds ,the ,director 2 and 7#g7 in subsection 7f71 as so redesignated1 by striking ,the ,secretary and inserting the following3 7f7 ,report ,the ,secretary 4 7b7 ,effective date2 transfer from and termination of obsolete funds 7#a7 ,effective date ,the amendments made by subsection 7a7 shall take effect on the first day of the first fiscal year that begins on or after the date of enactment of this ,act4 7#b7 ,remaining balances ,on the effective date described in paragraph 7#a71 there shall be deposited in the ,united ,states ,patent and ,trademark ,office ,innovation ,promotion ,fund established under section #db7;d77#b7 of title #ce1 ,united ,states ,code 7as added by subsection 7a771 any available unobligated balances remaining in the ,patent and ,trademark ,office ,appropriation ,account1 and in the ,patent and ,trademark ,fee ,reserve ,fund established under section #db7;c77#b7 of title #ce1 ,united ,states ,code1 as in effect on the day before that effective date4 7#c7 ,termination of reserve fund ,upon the payment of all obligated amounts in the ,patent and ,trademark ,fee ,reserve ,fund under paragraph 7#b71 the ,patent and ,trademark ,fee ,reserve ,fund shall be terminated4 #h4 ,institutions of higher education ,section #abc7;d7 of title #ce1 ,united ,states ,code1 is amended to read as follows3 7d7 ,institutions of higher education 7#a7 ,definition ,in this subsection1 the term institution of higher education has the meaning given the term in section #aja7;a7 of the ,higher ,education ,act of #aife 7#bj ,u4,s4,c4 #ajja7;a774 7#b7 ,inclusions ,for purposes of this section1 a micro entity shall include an applicant who certifies that-- 7,a7 the applicant's employer1 from which the applicant obtains the majority of the applicant's income1 is an institution of higher education2 7,b7 the applicant has assigned1 granted1 conveyed1 or is under an obligation by contract or law to assign1 grant1 or convey1 a license or other ownership interest in the particular applications to an institution of higher education2 7,c7 the applicant is an institution of higher education2 or 7,d7 the applicant is an organization described in section #eja7;c77#c7 of the ,internal ,revenue ,code of #aihf and exempt from taxation under section #eja7;a7 of such ,code that holds title to patents and patent applications on behalf of an institution of higher education for the purpose of facilitating commercialization of the technologies of the patents and patent applications4 4 #i4 ,assisting small businesses in the ,united ,states patent system 7a7 ,definition ,in this section1 the term small business concern has the meaning given the term in section #c of the ,small ,business ,act 7#ae ,u4,s4,c4 #fcb74 7b7 ,small business administration report ,not later than #a year after the date of the enactment of this ,act1 the ,administrator of the ,small ,business ,administration1 using existing resources1 shall submit to the ,committee on ,small ,business and ,entrepreneurship of the ,senate and the ,committee on ,small ,business of the ,house of ,representatives a report analyzing the impact of-- 7#a7 patent ownership by small business concerns2 and 7#b7 civil actions against small business concerns arising under title #ce1 ,united ,states ,code1 relating to patent infringement4 7c7 ,free online availability of public search facility materials ,section #da7;i7 of title #ce1 ,united ,states ,code1 is amended by adding at the end the following3 7#e7 ,free online availability of public search facility materials ,the ,director shall make available online and at no charge all patent and trademark information that is available at the ,public ,search ,facility of the ,office located in ,alexandria1 ,virginia1 including1 except to the extent that licenses with third-party contractors would make such provision financially unviable-- 7,a7 search tools and databases2 7,b7 informational materials2 and 7,c7 training classes and materials4 4