Exhibit No. DOK 2004
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`Exhibit No. DOK 2004
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`

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`Bill Text - 114th Congress - THOMAS (Library of Congress)
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`H.R.9.IH
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`H.R.9
`
`Innovation Act (Introduced in House - I
`
`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 ;
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`Bill Text - 114th Congress - THOMAS (Library of Congress)
`and'; and
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`Page 2 of 6
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`(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
`
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`Page 3 of 6
`(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--';
`
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`(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,
`
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`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 'I 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)
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`Bill Text - 114th Congress - THOMAS (Library of Congress)
`Page 6 of 6
`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.
`
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`S1137
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`(vii) by adding at the end the following:
`
`"(N) providing that for all purposes under this chapter—
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`Page 1 of 1
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`"(i) 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
`
`"(ii) if a court of the United. States has previously construed the claim or a claim
`term, or made a determination as to the patent's validity, in a proceeding or an action in
`which the patent owner was a party, the Office shall consider such claim construction
`or determination; and
`
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`S632
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`Page 1 of 1
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`SEC. 102. INTER PARTES REVIEW.
`(a) CLAIM CONSTRUCTION. Section 316(a) of title 35, United States Code, is amended
`
`(1) in paragraph (12), by striking "; and" and inserting a semicolon;
`
`(2) in paragraph (13), by striking the period at the end and inserting "; and"; and
`
`(3) by adding at the end the following:
`
`"(14) providing that for all purposes under this chapter—
`
`"(A) each claim of a patent shall be construed as the claim would be construed under
`section 282(b) in an action to invalidate a patent, including by construing each claim of the
`patent in accordance with—
`
`"(i) the ordinary and customary meaning of the claim as understood by a person
`having ordinary skill in the art to which the claimed invention pertains; and
`
`"(ii) the prosecution history pertaining to the patent; and
`
`"(B) if a court has previously construed a claim of a patent or a claim term in a civil
`action to which the patent owner was a party, the Office shall consider that claim
`construction.".
`
`Tuesday, November 03, 2015 AOL: Jayspiegel