AMENDMENT TO H.R OFFERED BY MR. SMITH OF TEXAS

Transcription

1 F:\M\SMITTX\SMITTX_0.XML AMENDMENT TO H.R. OFFERED BY MR. SMITH OF TEXAS Page, insert the following before line and redesignate succeeding sections and references thereto accordingly, and conform the table of contents accordingly: SEC.. DEFINITIONS. In this Act: () DIRECTOR. The term Director means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. () OFFICE. The term Office means the United States Patent and Trademark Office. () PATENT PUBLIC ADVISORY COMMITTEE. The term Patent Public Advisory Committee means the Patent Public Advisory Committee established under section (a)() of title, United States Code. () TRADEMARK ACT OF. The term Trademark Act of means the Act entitled Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and f:\vhlc\0\0.0.xml ( ) April, 0 (: a.m.) VerDate Nov 00 0: Apr, 0 Jkt PO Frm 0000 Fmt Sfmt 0 C:\DOCUMENTS AND SETTINGS\SLSTROKOFF\APPLICATION DATA\SOFTQUAD\XMETA

2 F:\M\SMITTX\SMITTX_0.XML for other purposes, approved July, ( U.S.C. et seq.) (commonly referred to as the Trademark Act of or the Lanham Act ). () TRADEMARK PUBLIC ADVISORY COM- MITTEE. The term Trademark Public Advisory Committee means the Trademark Public Advisory Committee established under section (a)() of title, United States Code. Page, lines and, strike or in public use, on sale, or otherwise available to the public and insert or otherwise disclosed to the public. Page, line, after disclosure insert to the public. Page, line, and page, line, strike publicly disclosed and insert disclosed to the public. Page, line, strike beginning and insert beginning on. Page, insert the following after line : (o) IMPLEMENTATION BY THE PATENT AND TRADE- MARK OFFICE. In any guidelines for the examination of patents addressing whether a disclosure to the public has been made under section of title, United States Code, as amended by this section, the Office shall use the f:\vhlc\0\0.0.xml ( ) April, 0 (: a.m.) VerDate Nov 00 0: Apr, 0 Jkt PO Frm 0000 Fmt Sfmt 0 C:\DOCUMENTS AND SETTINGS\SLSTROKOFF\APPLICATION DATA\SOFTQUAD\XMETA

3 F:\M\SMITTX\SMITTX_0.XML 0 public accessibility criteria employed by the courts in addressing whether a disclosure constitutes a printed publication under section of title, United States Code, as in effect on the day before the date of the enactment of this Act. Such public accessibility criteria shall be used regardless of the manner in which the disclosure resulted in the subject matter disclosed being known or used. (p) STUDY OF PATENT LITIGATION. () GAO STUDY. The Comptroller General of the United States shall conduct a study of the consequences of litigation by non-practicing entities, or by patent assertion entities, related to patent claims made under title, United States Code, and regulations authorized by that title. () CONTENTS OF STUDY. The study conducted under this subsection shall include the following: (A) The annual volume of litigation described in paragraph () over the 0-year period ending on the date of the enactment of this Act. (B) The volume of cases comprising such litigation that are found to be without merit after judicial review. f:\vhlc\0\0.0.xml ( ) April, 0 (: a.m.) VerDate Nov 00 0: Apr, 0 Jkt PO Frm 0000 Fmt Sfmt 0 C:\DOCUMENTS AND SETTINGS\SLSTROKOFF\APPLICATION DATA\SOFTQUAD\XMETA

4 F:\M\SMITTX\SMITTX_0.XML 0 (C) The impacts of such litigation on the time required to resolve patent claims. (D) The estimated costs, including the estimated cost of defense, associated with such litigation for patent holders, patent licensors, patent licensees, and inventors, and for users of alternate or competing innovations. (E) The economic impact of such litigation on the economy of the United States, including the impact on inventors, job creation, employers, employees, and consumers. (F) The benefit to commerce, if any, supplied by non-practicing entities or patent assertion entities that prosecute such litigation. () REPORT TO CONGRESS. The Comptroller General shall, not later than the date that is year after the date of the enactment of this Act, submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the results of the study required under this subsection, including recommendations for any changes to laws and regulations that will minimize the negative impact of abusive patent litigation on the patent process. Page, line, strike or outside. f:\vhlc\0\0.0.xml ( ) April, 0 (: a.m.) VerDate Nov 00 0: Apr, 0 Jkt PO Frm 0000 Fmt Sfmt 0 C:\DOCUMENTS AND SETTINGS\SLSTROKOFF\APPLICATION DATA\SOFTQUAD\XMETA

5 F:\M\SMITTX\SMITTX_0.XML Page, line, add and after the semicolon. Page, strike lines through and insert the following: (B) by striking paragraphs () and (). Page, strike lines and and insert the following: (A) in paragraph () (i) by striking for a method ; and (ii) by striking at least year and all that follows through the end and inserting and commercially used the subject matter at least year before the effective filing date of the claimed invention that is the subject matter of the patent. ; following: Page, strike lines through and insert the (ii) by striking subparagraph (B) and inserting the following: (A) DERIVATION AND PRIOR DISCLOSURE TO THE PUBLIC. A person may not assert the defense under this section if (i) the subject matter on which the defense is based was derived from the pat- f:\vhlc\0\0.0.xml ( ) April, 0 (: a.m.) VerDate Nov 00 0: Apr, 0 Jkt PO Frm 0000 Fmt Sfmt 0 C:\DOCUMENTS AND SETTINGS\SLSTROKOFF\APPLICATION DATA\SOFTQUAD\XMETA

6 F:\M\SMITTX\SMITTX_0.XML entee or persons in privity with the patentee; or (ii) the claimed invention that is the subject of the defense was disclosed to the public in a manner that qualified for the exception from the prior art under section (b)() before the date relied upon under paragraph () of this subsection for establishing entitlement to the defense. ; (iii) by redesignating subparagraph (C) as subparagraph (B); and (iv) by adding at the end the following: (C) FUNDING.. Page, line, strike months and insert year. Page, line, strike and any response and all that follows through line 0 and insert shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least of the claims challenged in the petition.. Page, line 0, strike months and insert year. Page, insert the following after line : f:\vhlc\0\0.0.xml ( ) April, 0 (: a.m.) VerDate Nov 00 0: Apr, 0 Jkt PO Frm 0000 Fmt Sfmt 0 C:\DOCUMENTS AND SETTINGS\SLSTROKOFF\APPLICATION DATA\SOFTQUAD\XMETA

7 F:\M\SMITTX\SMITTX_0.XML (f) RESPONSE. In any inter partes review instituted under this chapter, the petitioner shall have at least one opportunity to file written comments within a time period established by the Director.. Page, strike line and all that follows through court. on page, line, and conform the table of contents on page accordingly. Page 0, line, strike months and insert year. Page, strike line and all that follows through court. on page, line, and conform the table of contents on page accordingly. Page, line, strike the period after defined. Page, strike lines through and insert the following: (i) EFFECTIVE DATE; SUNSET. () EFFECTIVE DATE. This section and the amendments made by this section shall take effect on the date of the enactment of this Act. () SUNSET. The authority of the Director to set or adjust any fee under subsection (a) shall terminate upon the expiration of the -year period beginning on the date of the enactment of this Act. f:\vhlc\0\0.0.xml ( ) April, 0 (: a.m.) VerDate Nov 00 0: Apr, 0 Jkt PO Frm 0000 Fmt Sfmt 0 C:\DOCUMENTS AND SETTINGS\SLSTROKOFF\APPLICATION DATA\SOFTQUAD\XMETA

8 F:\M\SMITTX\SMITTX_0.XML Page, insert the following after line : () REPORT. Not later than the date that is years after the date of the enactment of this Act, the Director shall submit a report to Congress that provides (A) an analysis of the effectiveness of virtual marking, as provided in the amendment made by paragraph () of this subsection, as an alternative to the physical marking of articles; (B) an analysis of whether such virtual marking has limited or improved the ability of the general public to access information about patents; (C) an analysis of the legal issues, if any, that arise from such virtual marking; and (D) an analysis of the deficiencies, if any, of such virtual marking. Page, insert the following after line and redesignate the succeeding paragraph accordingly: () EXPIRED PATENTS. Section of title, United States Code, is amended by adding at the end the following: f:\vhlc\0\0.0.xml ( ) April, 0 (: a.m.) VerDate Nov 00 0: Apr, 0 Jkt PO Frm 0000 Fmt Sfmt 0 C:\DOCUMENTS AND SETTINGS\SLSTROKOFF\APPLICATION DATA\SOFTQUAD\XMETA

9 F:\M\SMITTX\SMITTX_0.XML (c) Whoever engages in an activity under subsection (a) for which liability would otherwise be imposed shall not be liable for such activity () that is engaged in during the -year period beginning on the date on which the patent at issue expires; and () that is engaged in after the end of that - year period if the word expired is placed before the word patent, patented, the abbreviation pat, or the patent number, either on the article or through a posting on the Internet, as provided in section (a).. Page, strike lines through and redesignate succeeding sections and references thereto, and amend the table of contents, accordingly. Page, line, insert of title, United States Code after section (c). Page, lines and, strike -year and insert -year. Page, line, strike de novo. Page, line, insert, and such review may be de novo before the period. f:\vhlc\0\0.0.xml ( ) April, 0 (: a.m.) VerDate Nov 00 0: Apr, 0 Jkt PO Frm 0000 Fmt Sfmt 0 C:\DOCUMENTS AND SETTINGS\SLSTROKOFF\APPLICATION DATA\SOFTQUAD\XMETA

10 F:\M\SMITTX\SMITTX_0.XML Page, strike line and all that follows through page, line, and redesignate succeeding subsections accordingly. Page, line, insert of title, United States Code after section. Page, line, strike CLARIFICATION OF JU- RISDICTION and insert JURISDICTION AND PRO- CEDURAL MATTERS, and conform the table of contents accordingly. Page, add the following after the matter following line and redesignate the succeeding subsection accordingly: (e) PROCEDURAL MATTERS IN PATENT CASES. () JOINDER OF PARTIES AND STAY OF AC- TIONS. Chapter of title, United States Code, is amended by adding at the end the following new section:. Joinder of parties and stay of actions (a) JOINDER OF PARTIES. () JOINDER OF ACCUSED INFRINGERS. In any civil action arising under any Act of Congress relating to patents, other than an action in which an act of infringement under section (e)() has been pled, parties that are accused infringers may be f:\vhlc\0\0.0.xml ( ) April, 0 (: a.m.) VerDate Nov 00 0: Apr, 0 Jkt PO Frm 000 Fmt Sfmt 0 C:\DOCUMENTS AND SETTINGS\SLSTROKOFF\APPLICATION DATA\SOFTQUAD\XMETA

11 F:\M\SMITTX\SMITTX_0.XML 0 joined in one action as defendants or counterclaim defendants only if (A) any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process; and (B) questions of fact common to all defendants or counterclaim defendants will arise in the action. () ALLEGATIONS INSUFFICIENT FOR JOIN- DER. For purposes of this subsection, accused infringers may not be joined in one action as defendants or counterclaim defendants based solely on allegations that they each have infringed the patent or patents in suit. (b) STAY OF ACTIONS AGAINST NONMANUFACTUR- ING PARTIES. () JOINDER AND INTERVENTION OF MANU- FACTURER OR USER OF INFRINGING PRODUCT OR PROCESS. In any civil action arising under any Act of Congress relating to patents, the court shall grant f:\vhlc\0\0.0.xml ( ) April, 0 (: a.m.) VerDate Nov 00 0: Apr, 0 Jkt PO Frm 000 Fmt Sfmt 0 C:\DOCUMENTS AND SETTINGS\SLSTROKOFF\APPLICATION DATA\SOFTQUAD\XMETA

12 F:\M\SMITTX\SMITTX_0.XML 0 a motion brought by any party to join as a party defendant or counterclaim defendant, or a motion to intervene as a party defendant or counterclaim defendant (A) the manufacturer of a product alleged to infringe the patent or patents in dispute; or (B) the user of a manufacturing process, or manufacturer of a system or components that implement a process, that is alleged to infringe the patent or patents in dispute. () STAY OF CERTAIN ACTIONS. The court shall grant a stay of a civil action arising under any Act of Congress relating to patents that is brought against a distributor, reseller, customer, or user of an allegedly infringing product or process, upon a motion showing that the same patent or patents that are being asserted in the action are also the subject of a declaratory judgment or infringement action that (A) was instituted by or against the manufacturer or supplier of the allegedly infringing product, or system or components that implement a process alleged to infringe the patent or patents in dispute; and f:\vhlc\0\0.0.xml ( ) April, 0 (: a.m.) VerDate Nov 00 0: Apr, 0 Jkt PO Frm 000 Fmt Sfmt 0 C:\DOCUMENTS AND SETTINGS\SLSTROKOFF\APPLICATION DATA\SOFTQUAD\XMETA

13 F:\M\SMITTX\SMITTX_0.XML 0 (B) was filed no later than 0 days after the service of the complaint in the action to be stayed. () STAY OF ACTION AGAINST ADDITIONAL PARTIES. In any civil action arising under any Act of Congress relating to patents, if the manufacturer of a product or components alleged to infringe the patent or patents in dispute, or the user of a manufacturing process, or manufacturer of a system or components that implement a process alleged to infringe the patent or patents in dispute, is a party to the action, the court shall grant a motion to stay the action as to other parties accused of infringing the patent or patents in dispute solely by offering for sale or selling products or processes alleged to infringe the patent or patents in dispute.. () CONFORMING AMENDMENT. The table of sections for chapter of title, United States Code, is amended by adding at the end the following new item:. Joinder of parties and stay of actions.. Page, strike lines through and redesignate succeeding subsections accordingly. f:\vhlc\0\0.0.xml ( ) April, 0 (: a.m.) VerDate Nov 00 0: Apr, 0 Jkt PO Frm 000 Fmt Sfmt 0 C:\DOCUMENTS AND SETTINGS\SLSTROKOFF\APPLICATION DATA\SOFTQUAD\XMETA

14 F:\M\SMITTX\SMITTX_0.XML Page, strike lines through and insert the following: Any amounts in the Fund shall be available for use by the Director without fiscal year limitation.. Page, line, insert and recorded as offsetting receipts after into the Fund. Page 0, line, insert a comma after Act. Page 0, line, strike PURPOSE and purpose and insert Purposes and purposes, respectively. Page, lines and, strike Subject to available resources, the Director may establish and insert Using available resources, the Director shall establish and maintain. f:\vhlc\0\0.0.xml ( ) April, 0 (: a.m.) VerDate Nov 00 0: Apr, 0 Jkt PO Frm 000 Fmt Sfmt 0 C:\DOCUMENTS AND SETTINGS\SLSTROKOFF\APPLICATION DATA\SOFTQUAD\XMETA