Sec. 9. Improvements and technical corrections to the Leahy-Smith America Invents Act

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Section 325(e)(2) of title 35, United States Code is amended by striking or reasonably could have raised . Section 316(a) of title 35, United States Code, is amended— in paragraph (12), by striking ; and and inserting a semicolon; in paragraph (13), by striking the period at the end and inserting a semicolon; and by adding at the end the following new paragraphs: providing that for all purposes under this chapter— 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 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; and providing that a review may not be instituted unless the petitioner certifies that the petitioner and the real parties in interest of the petitioner— do not own and will not acquire a financial instrument (including a prepaid variable forward contract, equity swap, collar, or exchange fund) that is designed to hedge or offset any decrease in the market value of an equity security of the patent owner or an affiliate of the patent owner, during a period following the filing of the petition to be determined by the Director; and have not demanded payment, monetary or otherwise, from the patent owner or an affiliate of the patent owner in exchange for a commitment not to file a petition under section 311 with respect to the patent that is the subject of the petition, unless the petitioner or the real party in interest of the petitioner has been sued for or charged with infringement of the patent, during a period to be determined by the Director. .

Section 326(a) of title 35, United States Code, is amended— in paragraph (11), by striking ; and and inserting a semicolon; in paragraph (12), by striking the period at the end and inserting a semicolon; and by adding at the end the following new paragraphs: providing that for all purposes under this chapter— 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 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; and providing that a review may not be instituted unless the petitioner certifies that the petitioner and the real parties in interest of the petitioner— do not own and will not acquire a financial instrument (including a prepaid variable forward contract, equity swap, collar, or exchange fund) that is designed to hedge or offset any decrease in the market value of an equity security of the patent owner or an affiliate of the patent owner, during a period following the filing of the petition to be determined by the Director; and have not demanded payment, monetary or otherwise, from the patent owner or an affiliate of the patent owner in exchange for a commitment not to file a petition under section 311 with respect to the patent that is the subject of the petition, unless the petitioner or the real party in interest of the petitioner has been sued for or charged with infringement of the patent, during a period to be determined by the Director. .

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) . Section 313 of title 35, United States Code, is amended by striking the period at the end and inserting , including affidavits or declarations of supporting evidence and opinions. . Section 323 of title 35, United States Code, is amended by striking the period at the end and inserting , including affidavits or declarations of supporting evidence and opinions. .

Section 316(b) of title 35, United States Code, is amended by striking and the ability and inserting the rights to due process of the patent owner and the petitioner, and the ability . Section 326(b) of title 35, United States Code, is amended by striking and the ability and inserting the rights to due process of the patent owner and the petitioner, and the ability . The Director shall designate as precedential (and may change the designation as the Director determines to be appropriate), with respect to the application of subsections

(d)and

(e)of section 325 of title 35, United States Code, the decisions of the Patent Trial and Appeal Board in each of the following decisions: Dell Inc. v. Electronics and Telecomms. Research Inst. , IPR2015–00549, Paper 10 (PTAB Mar. 26, 2015). Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC , IPR2014–01080, Paper 17 (PTAB Oct. 31, 2014). Prism Pharma Co., Ltd . v. Choongwae Pharma Corp. , IPR2014–00315, Paper 14 (PTAB July 8, 2014). Unilever, Inc. v. The Procter & Gamble Co. , IPR2014–00506, Paper 17 (PTAB July 7, 2014). Section 313 of title 35, United States Code, is amended by adding at the end the following new sentence: The Director may accept a reply by the petitioner to new issues raised in the preliminary response, upon request by the petitioner to file such reply, within a time period set by the Director. Section 314 of title 35, United States Code, is amended— in subsection (a), by striking any response and inserting any response or reply ; and in subsection (b)— in paragraph (1), by striking receiving a preliminary response to the petition and inserting receiving the later of a preliminary response to the petition or a reply to such preliminary response ; and by amending paragraph

(2)to read as follows: if— no such preliminary response is filed, the last date on which such response may be filed; and such preliminary response is filed and no such reply is requested, the last day on which such reply may be requested. . Sections 316(a)(15) and 326(a)(14) of title 35, United States Code, as added by paragraphs

(1)and

(2)shall take effect on the date of the enactment of this Act. Not later than one year after the date of the enactment of this Act, the Director shall issue regulations to carry out sections 316(a)(15) and 326(a)(14) of title 35, United States Code, as added by paragraphs

(1)and (2). During the period that begins on the date of the enactment of this Act and ends on the date of the issuance of the regulations required pursuant to subparagraph (B), a petition filed under chapter 31 or 32 of title 35, United States Code, on or after the date of the enactment of this Act may not be instituted unless the petitioner certifies that the petitioner and the real parties in interest of such petitioner— do not own a financial instrument described in sections 316(a)(15) and 326(a)(14) of title 35, United States Code, as added by paragraphs

(1)and (2), during the one-week period following the date on which the petition is filed; and have not demanded anything of value from the patent owner or an affiliate of the patent owner during the period between September 16, 2012, and the date of the filing of the petition. Except as otherwise provided, 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. Section 102 of title 35, United States Code, is amended by inserting at the end the following new subsection: If a first claimed invention in a first patent was effectively filed on or before the effective filing date of a second claimed invention in a second patent or in the application on which the second patent issues, and the first claimed invention is not otherwise prior art to the second claimed invention under this section, then the first claimed invention shall, notwithstanding the other subsections of this section, constitute prior art to the second claimed invention under this subsection unless— the second claimed invention is consonant with a requirement for restriction under the first sentence of section 121 with respect to the claims issued in the first patent; or an election has been recorded in the Office by the owner of the second patent or the application on which the second patent issues disclaiming the right to bring or maintain a civil action under section 281 to enforce the second patent, except that such disclaimer shall not apply if— the relief being sought in the civil action would not constitute a cause of action barred by res judicata had the asserted claims of the second patent been issued in the first patent; and the owner of the first patent or the application on which the first patent issues has recorded an election limiting the enforcement of the first patent relative to the second patent in the manner described in this paragraph, the owner of the first patent is a party to the civil action, or a separate action under section 281 to enforce the first patent can no longer be brought or maintained. . Section 121 of title 35, United States Code, is amended by striking the third sentence. Paragraph

(2)of section 154(b) of title 35, United States Code, is amended by inserting at the end the following new subparagraph: If a patent is subject to an election as described in section 102(e)(2) with respect to one or more other patents, the adjusted term of the patent under this subsection may not exceed a period of 17 years from the date of issuance of any of such other patents and the portion of any adjustment of the term of the patent under this subsection that extends beyond the expiration of such 17-year period years shall be void. . The amendments made by paragraph

(1)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 ). If a second claimed invention in a second patent issued before the date of the enactment of this Act is subject to the amendments made by paragraph

(1)and would not have been invalid had the amendments made by paragraph

(1)and the provisions of this paragraph not been enacted, then, notwithstanding section 102(e) of title 35, United States Code, as added by paragraph (1), prior art under such section 102(e) may not be considered in determining the validity of such second claimed invention. If a first claimed invention in a first application for patent subject to the amendments under paragraph

(1)would, if issued as a patent, constitute prior art under section 102(e) of title 35, United States Code, as added by paragraph (1), with respect to a second claimed invention in a second application, the first claimed invention may be provisionally cited by the Office as prior art in a notice under section 132 of title 35, United States Code, in connection with the examination of the second claimed invention. If the term of a patent is based upon the amendments made to subsection

(a)of section 154, title 35, United States Code, by the Uruguay Round Agreements Act ( Public Law 103–465 ; 108 Stat. 4809)— the patent term as provided under subsection

(a)of such section 154, any adjustment to said term as provided under subsection

(b)of such section 154, and any extension of such term as provided under section 156 of title 35, United States Code, shall not constitute, nor be deemed by the Office or the courts to constitute, an unjustified period of protection under the patent or an unjustified extension of the right to exclude under the patent relative to an earlier-expiring patent; the Office shall not condition the issuance of such a patent on a disclaimer of any portion of the term of the patent; and the Office may condition the issuance of such a patent on the making of an election as described in section 102(e)(2) of title 35, United States Code, as added by paragraph

(1)in lieu of the filing of a disclaimer with respect to the ownership or separate enforcement of the patent that would otherwise be required by the Office in cases of non-statutory double patenting. A terminal disclaimer made in connection with an application for patent with respect to one or more other applications or patents shall be given no effect and shall be treated as having never been made if— within one year after the date of the enactment of this Act, an election as described in section 102(e)(2) of title 35, United State Code, as added by paragraph (1), has been made in connection with the application or any patent issuing thereon and has effect with respect to each such other application or patent with respect to which the disclaimer was made; the application was pending before the Office on or after July 1, 2015; and the term of a patent issued on the application would be based upon the amendments made to subsection

(a)of section 154 of title 35, United States Code, by the Uruguay Round Agreements Act. Except as provided in clause (ii), nothing in this subsection shall be construed to negate the effect of a terminal disclaimer limiting the enforcement of a patent issued on or before the date of the enactment of this Act. In this subparagraph, the term terminal disclaimer has the meaning as such term is described in section 1.321 of title 37, Code of Federal Regulations. A claimed invention of a patent described in section 3(n)(1) of the Leahy-Smith America Invents Act ( 35 U.S.C. 100 note) and issued before, on, or after the date of the enactment of this Act may not be held invalid on any nonstatutory double-patenting ground. A claimed invention of a patent not described in section 3(n)(1) of the Leahy-Smith America Invents Act and issued before, on, or after the date of the enactment of this Act may not be held invalid with respect to a claimed invention of another patent based on any nonstatutory double patenting ground if one of the claimed inventions is prior art to the other claimed invention under section 102 of title 35, United States Code, as in effect on the day prior to the effective date of the amendments made by section 3(b)(1) of the Leahy-Smith America Invents Act. Subparagraphs

(D)and

(E)shall take effect on the date of the enactment of this Act, except that they shall not apply to any defense raised in a civil action brought before such date. 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 . 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. 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). Section 315(c) of title 35, United States Code, is amended to read as follows: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who meets the requirement of properly filing a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. For good cause shown, the Director may allow a party who files a petition that meets the requirement described in paragraph

(1)and concerns the patent of a pending inter partes review to join the petition to the pending review. . An action or claim arises under an Act of Congress relating to patents if such action or claim— necessarily requires resolution of a disputed question as to the validity of a patent or the scope of a patent claim; or is an action or claim for legal malpractice that arises from an attorney’s conduct in relation to an action or claim arising under an Act of Congress relating to patents (including as described in paragraph (1)). Paragraph (1)— shall apply to all cases filed on or after, or pending on, the date of the enactment of this Act; and 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. Section 1(c) of Public Law 111–349 (124 Stat. 3674; 28 U.S.C. 137 note) is amended to read as follows: 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). . The amendment made by paragraph

(1)shall take effect on the date of the enactment of this Act. Section 3(b)(1) of title 35, United States Code, is amended in the first sentence— by striking be vested with the authority to act in the capacity of the and inserting serve as Acting, ; and by inserting before the period or in the event of a vacancy in the office of the Director . The amendments made by paragraph

(1)shall take effect on the date of the enactment of this Act and shall apply with respect to appointments and vacancies occurring before, on, or after the date of the enactment of this Act. 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 . 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 ). The second sentence of section 115(a) of title 35, United States Code, is amended by striking shall execute and inserting may be required to execute . 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 ). 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 . 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 . 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. Section 291(b) of title 35, United States Code, is amended by striking or joint inventor and inserting or a joint inventor . 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 ). 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. Section 32 of title 35, United States Code, is amended by striking the fourth sentence and inserting the following new sentences: A proceeding under this section shall be commenced not later than the earlier of either the date that is 10 years after the date on which the misconduct forming the basis for the proceeding occurred, or 18 months after the date on which the Director of the Office of Enrollment and Discipline received a written grievance (as prescribed in the regulations established under section 2(b)(2)(D)) about a specified individual that describes the misconduct forming the basis for the proceeding. If the misconduct that forms the basis for the proceeding under this section is at issue in a court or administrative-agency proceeding, the 18-month period for commencing the proceeding under this section shall be tolled until the court or agency’s decision regarding the misconduct becomes final and non-appealable. The 18-month period for commencing a proceeding under this section also may be tolled by agreement between the parties. 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. 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 . Paragraph

(8)of section 326(a) of title 35, United States Code, is amended by striking the petition under section 323 and inserting the petition under section 321 . The amendments made by this paragraph shall take effect on the date of the enactment of this Act. Section 202(b) of the Patent Law Treaties Implementation Act of 2012 ( Public Law 112–211 ; 126 Stat. 1536) is amended— by striking paragraph (7); and by redesignating paragraphs

(8)and

(9)as paragraphs

(7)and (8), respectively. 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 ). Section 122 of title 35, United States Code, is amended by adding at the end the following new subsection: The Director may provide information concerning an application for patent to a foreign or international intellectual property office if a corresponding application is filed with such foreign or international intellectual property office. If the corresponding application is an international application, such information may also be provided to an International Searching Authority, an International Preliminary Examining Authority, or the International Bureau. For purposes of this subsection, the terms international application , International Searching Authority , International Preliminary Examining Authority , and International Bureau have the same meaning given those terms under section 351. . Section 122(a) of title 35, United States Code, is amended by striking subsection

(b)and inserting subsections

(b)and

(f). The amendments made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to applications for patent that are pending on, or filed on or after, such effective date. Section 1295(a)(4)(C) of title 28, United States Code, is amended by striking title 35 and inserting title 35 or section 21(b) of the Act of July 5, 1946 (commonly referred to as the ; Trademark Act of 1946 ) ( 15 U.S.C. 1071(b) ) Section 39(a) of the Act of July 5, 1946 (commonly referred to as the Trademark Act of 1946 ) ( 15 U.S.C. 1121(a) ) is amended by striking under this Act and inserting under this Act (except as provided in section 1295(a)(4) of title 28, United States Code) . The amendment made by subparagraph

(A)shall apply in any case in which a final judgment is entered by the district court on or after the date of enactment of this Act. Section 3(b)(3)(A) of title 35, United States Code, is amended by striking appoint and inserting appoint, or nominate for appointment by the Secretary of Commerce, . Section 3(b)(3)(B) of title 35, United States Code, as added by subparagraph

(A)shall apply to all officers nominated for appointment by the Secretary of Commerce before, on, or after the date of the enactment of this Act. Section 10(i)(2) of the Leahy-Smith America Invents Act ( Public Law 112–29 ; 125 Stat. 319; 35 U.S.C. 41 note) is amended by striking 7-year and inserting 17-year .

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