IB 

Union Calendar No. 200 

110TH CONGRESS 

1ST SESSION H. R. 1908 

[Report No. 110–314] 

To amend title 35, United States Code, to provide for patent reform. 

IN THE HOUSE OF REPRESENTATIVES 

APRIL 18, 2007 

Mr. BERMAN (for himself, Mr. SMITH of Texas, Mr. CONYERS, Mr. COBLE, 

Mr. BOUCHER, Mr. GOODLATTE, Ms. ZOE LOFGREN of California, Mr. 

ISSA, Mr. SCHIFF, Mr. CANNON, and Ms. JACKSON-LEE of Texas) introduced the following bill; which was referred to the Committee on the Judiciary 

SEPTEMBER 4, 2007 

Additional sponsors: Mr. SIMPSON, Ms. WASSERMAN SCHULTZ, Mr. EMANUEL, Ms. ESHOO, Mr. WEXLER, Mr. MATHESON, Mr. CROWLEY, Mr. 

SMITH of Washington, Mr. MORAN of Virginia, Mr. SALI, Ms. HOOLEY, 

Mrs. JO ANN DAVIS of Virginia, and Mr. BACHUS

SEPTEMBER 4, 2007 

Reported with an amendment, committed to the Committee of the Whole 

House on the State of the Union, and ordered to be printed 

[Strike out all after the enacting clause and insert the part printed in italic] 

[For text of introduced bill, see copy of bill as introduced on April 18, 2007] 

A BILL 

To amend title 35, United States Code, to provide for patent 

reform. 


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1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled, 

3 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

4 (a) SHORT TITLE.—This Act may be cited as the ‘‘Pat5 ent Reform Act of 2007’’. 

6 (b) TABLE OF CONTENTS.—The table of contents of this 

7 Act is as follows: 

Sec. 1. Short title; table of contents. 

Sec. 2. Reference to title 35, United States Code. 

Sec. 3. Right of the first inventor to file. 

Sec. 4. Inventor’s oath or declaration. 

Sec. 5. Right of the inventor to obtain damages. 

Sec. 6. Post-grant procedures and other quality enhancements. 

Sec. 7. Definitions; patent trial and appeal board. 

Sec. 8. Study and report on reexamination proceedings. 

Sec. 9. Submissions by third parties and other quality enhancements. 

Sec. 10. Tax planning methods not patentable. 

Sec. 11. Venue and jurisdiction. 

Sec. 12. Additional information; inequitable conduct as defense to infringement. 

Sec. 13. Best mode requirement. 

Sec. 14. Regulatory authority. 

Sec. 15. Technical amendments. 

Sec. 16. Study of special masters in patent cases. 

Sec. 17. Rule of construction. 

8 SEC. 2. REFERENCE TO TITLE 35, UNITED STATES CODE. 

9 Whenever in this Act a section or other provision is 

10 amended or repealed, that amendment or repeal shall be 

11 considered to be made to that section or other provision of 

12 title 35, United States Code. 

13 SEC. 3. RIGHT OF THE FIRST INVENTOR TO FILE. 

14 (a) DEFINITIONS.—Section 100 is amended by adding 

15 at the end the following: 


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1 ‘‘(f) The term ‘inventor’ means the individual or, if 

2 a joint invention, the individuals collectively who invented 

3 or discovered the subject matter of an invention. 

4 ‘‘(g) The terms ‘joint inventor’ and ‘coinventor’ mean 

5 any one of the individuals who invented or discovered the 

6 subject matter of a joint invention. 

7 ‘‘(h) The ‘effective filing date of a claimed invention’ 

8 is— 

9 ‘‘(1) the filing date of the patent or the applica10 tion for patent containing the claim to the invention; 

11 or 

12 ‘‘(2) if the patent or application for patent is en13 titled to a right of priority of any other application 

14 under section 119, 365(a), or 365(b) or to the benefit 

15 of an earlier filing date in the United States under 

16 section 120, 121, or 365(c), the filing date of the ear17 liest such application in which the claimed invention 

18 is disclosed in the manner provided by section 112(a). 

19 ‘‘(i) The term ‘claimed invention’ means the subject 

20 matter defined by a claim in a patent or an application 

21 for a patent. 

22 ‘‘(j) The term ‘joint invention’ means an invention re23 sulting from the collaboration of inventive endeavors of two 

24 or more persons working toward the same end and pro25 ducing an invention by their collective efforts.’’. 


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1 (b) CONDITIONS FOR PATENTABILITY.— 

2 (1) IN GENERAL.—Section 102 is amended to 

3 read as follows: 

4 ‘‘§ 102. Conditions for patentability; novelty 

5 ‘‘(a) NOVELTY; PRIOR ART.—A patent for a claimed 

6 invention may not be obtained if— 

7 ‘‘(1) the claimed invention was patented, de8 scribed in a printed publication, in public use, or on 

9 sale— 

10 ‘‘(A) more than one year before the effective 

11 filing date of the claimed invention; or 

12 ‘‘(B) one year or less before the effective fil13 ing date of the claimed invention, other than 

14 through disclosures made by the inventor or a 

15 joint inventor or by others who obtained the sub16 ject matter disclosed directly or indirectly from 

17 the inventor or a joint inventor; or 

18 ‘‘(2) the claimed invention was described in a 

19 patent issued under section 151, or in an application 

20 for patent published or deemed published under sec21 tion 122(b), in which the patent or application, as 

22 the case may be, names another inventor and was ef23 fectively filed before the effective filing date of the 

24 claimed invention. 

25 ‘‘(b) EXCEPTIONS.— 


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1 ‘‘(1) PRIOR INVENTOR DISCLOSURE EXCEP2 TION.—Subject matter that would otherwise qualify 

3 as prior art based upon a disclosure under subpara4 graph (B) of subsection (a)(1) shall not be prior art 

5 to a claimed invention under that subparagraph if 

6 the subject matter had, before such disclosure, been 

7 publicly disclosed by the inventor or a joint inventor 

8 or others who obtained the subject matter disclosed di9 rectly or indirectly from the inventor or a joint in10 ventor. 

11 ‘‘(2) DERIVATION, PRIOR DISCLOSURE, AND COM12 MON ASSIGNMENT EXCEPTIONS.—Subject matter that 

13 would otherwise qualify as prior art only under sub14 section (a)(2) shall not be prior art to a claimed in15 vention if— 

16 ‘‘(A) the subject matter was obtained di17 rectly or indirectly from the inventor or a joint 

18 inventor; 

19 ‘‘(B) the subject matter had been publicly 

20 disclosed by the inventor or a joint inventor or 

21 others who obtained the subject matter disclosed 

22 directly or indirectly from the inventor or a joint 

23 inventor before the date on which the application 

24 or patent referred to in subsection (a)(2) was ef25 fectively filed; or 


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1 ‘‘(C) the subject matter and the claimed in2 vention, not later than the effective filing date of 

3 the claimed invention, were owned by the same 

4 person or subject to an obligation of assignment 

5 to the same person. 

6 ‘‘(3) JOINT RESEARCH AGREEMENT EXCEP7 TION.— 

8 ‘‘(A) IN GENERAL.—Subject matter and a 

9 claimed invention shall be deemed to have been 

10 owned by the same person or subject to an obli11 gation of assignment to the same person in ap12 plying the provisions of paragraph (2) if— 

13 ‘‘(i) the claimed invention was made 

14 by or on behalf of parties to a joint research 

15 agreement that was in effect on or before the 

16 effective filing date of the claimed invention; 

17 ‘‘(ii) the claimed invention was made 

18 as a result of activities undertaken within 

19 the scope of the joint research agreement; 

20 and 

21 ‘‘(iii) the application for patent for the 

22 claimed invention discloses or is amended to 

23 disclose the names of the parties to the joint 

24 research agreement. 


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1 ‘‘(B) For purposes of subparagraph (A), the 

2 term ‘joint research agreement’ means a written 

3 contract, grant, or cooperative agreement entered 

4 into by two or more persons or entities for the 

5 performance of experimental, developmental, or 

6 research work in the field of the claimed inven7 tion. 

8 ‘‘(4) PATENTS AND PUBLISHED APPLICATIONS

9 EFFECTIVELY FILED.—A patent or application for 

10 patent is effectively filed under subsection (a)(2) with 

11 respect to any subject matter described in the patent 

12 or application— 

13 ‘‘(A) as of the filing date of the patent or 

14 the application for patent; or 

15 ‘‘(B) if the patent or application for patent 

16 is entitled to claim a right of priority under sec17 tion 119, 365(a), or 365(b) or to claim the ben18 efit of an earlier filing date under section 120, 

19 121, or 365(c), based upon one or more prior 

20 filed applications for patent, as of the filing date 

21 of the earliest such application that describes the 

22 subject matter.’’. 

23 (2) CONFORMING AMENDMENT.—The item relat24 ing to section 102 in the table of sections for chapter 

25 10 is amended to read as follows: 

‘‘102. Conditions for patentability; novelty.’’. 


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1 (c) CONDITIONS FOR PATENTABILITY; NON-OBVIOUS

2 SUBJECT MATTER.—Section 103 is amended to read as fol3 lows: 

4 ‘‘§ 103. Conditions for patentability; nonobvious sub5 ject matter 

6 ‘‘A patent for a claimed invention may not be obtained 

7 though the claimed invention is not identically disclosed as 

8 set forth in section 102, if the differences between the 

9 claimed invention and the prior art are such that the 

10 claimed invention as a whole would have been obvious be11 fore the effective filing date of the claimed invention to a 

12 person having ordinary skill in the art to which the claimed 

13 invention pertains. Patentability shall not be negated by 

14 the manner in which the invention was made.’’. 

15 (d) REPEAL OF REQUIREMENTS FOR INVENTIONS

16 MADE ABROAD.—Section 104, and the item relating to that 

17 section in the table of sections for chapter 10, are repealed. 

18 (e) REPEAL OF STATUTORY INVENTION REGISTRA19 TION.— 

20 (1) IN GENERAL.—Section 157, and the item re21 lating to that section in the table of sections for chap22 ter 14, are repealed. 

23 (2) REMOVAL OF CROSS REFERENCES.—Section 

24 111(b)(8) is amended by striking ‘‘sections 115, 131, 

25 135, and 157’’ and inserting ‘‘sections 131 and 135’’. 


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1 (f) EARLIER FILING DATE FOR INVENTOR AND JOINT

2 INVENTOR.—Section 120 is amended by striking ‘‘which is 

3 filed by an inventor or inventors named’’ and inserting 

4 ‘‘which names an inventor or joint inventor’’. 

5 (g) CONFORMING AMENDMENTS.— 

6 (1) RIGHT OF PRIORITY.—Section 172 is amend7 ed by striking ‘‘and the time specified in section 

8 102(d)’’. 

9 (2) LIMITATION ON REMEDIES.—Section 

10 287(c)(4) is amended by striking ‘‘the earliest effective 

11 filing date of which is prior to’’ and inserting ‘‘which 

12 has an effective filing date before’’. 

13 (3) INTERNATIONAL APPLICATION DESIGNATING

14 THE UNITED STATES: EFFECT.—Section 363 is 

15 amended by striking ‘‘except as otherwise provided in 

16 section 102(e) of this title’’. 

17 (4) PUBLICATION OF INTERNATIONAL APPLICA18 TION: EFFECT.—Section 374 is amended by striking 

19 ‘‘sections 102(e) and 154(d)’’ and inserting ‘‘section 

20 154(d)’’. 

21 (5) PATENT ISSUED ON INTERNATIONAL APPLICA22 TION: EFFECT.—The second sentence of section 375(a) 

23 is amended by striking ‘‘Subject to section 102(e) of 

24 this title, such’’ and inserting ‘‘Such’’. 


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1 (6) LIMIT ON RIGHT OF PRIORITY.—Section 

2 119(a) is amended by striking ‘‘; but no patent shall 

3 be granted’’ and all that follows through ‘‘one year 

4 prior to such filing’’. 

5 (7) INVENTIONS MADE WITH FEDERAL ASSIST6 ANCE.—Section 202(c) is amended— 

7 (A) in paragraph (2)— 

8 (i) by striking ‘‘publication, on sale, or 

9 public use,’’ and all that follows through 

10 ‘‘obtained in the United States’’ and insert11 ing ‘‘the 1-year period referred to in section 

12 102(a) would end before the end of that 2- 

13 year period’’; and 

14 (ii) by striking ‘‘the statutory’’ and in15 serting ‘‘that 1-year’’; and 

16 (B) in paragraph (3), by striking ‘‘any 

17 statutory bar date that may occur under this 

18 title due to publication, on sale, or public use’’ 

19 and inserting ‘‘the expiration of the 1-year pe20 riod referred to in section 102(a)’’. 

21 (h) REPEAL OF INTERFERING PATENT REMEDIES.— 

22 Section 291, and the item relating to that section in the 

23 table of sections for chapter 29, are repealed. 

24 (i) ACTION FOR CLAIM TO PATENT ON DERIVED IN25 VENTION.— 


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1 (1) IN GENERAL.—Section 135(a) is amended to 

2 read as follows: 

3 ‘‘(a) DISPUTE OVER RIGHT TO PATENT.— 

4 ‘‘(1) INSTITUTION OF DERIVATION PRO5 CEEDING.— 

6 ‘‘(A) REQUEST FOR PROCEEDING.—An ap7 plicant may request initiation of a derivation 

8 proceeding to determine the right of the appli9 cant to a patent by filing a request that sets 

10 forth with particularity the basis for finding 

11 that another applicant derived the claimed in12 vention from the applicant requesting the pro13 ceeding and, without authorization, filed an ap14 plication claiming such invention. Any such re15 quest— 

16 ‘‘(i) may only be made within 12 

17 months after the earlier of— 

18 ‘‘(I) the date on which a patent is 

19 issued containing a claim that is the 

20 same or substantially the same as the 

21 claimed invention; or 

22 ‘‘(II) the date of first publication 

23 of an application containing a claim 

24 that is the same or is substantially the 

25 same as the claimed invention; and 


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1 ‘‘(ii) must be made under oath, and 

2 must be supported by substantial evidence. 

3 ‘‘(B) DETERMINATION OF DIRECTOR.— 

4 Whenever the Director determines that patents or 

5 applications for patent naming different individ6 uals as the inventor interfere with one another 

7 because of a dispute over the right to patent 

8 under section 101 on the basis of a request under 

9 subparagraph (A), the Director shall institute a 

10 derivation proceeding for the purpose of deter11 mining which applicant is entitled to a patent. 

12 ‘‘(2) DETERMINATION BY PATENT TRIAL AND AP13 PEAL BOARD.—In any proceeding under this sub14 section, the Patent Trial and Appeal Board— 

15 ‘‘(A) shall determine the question of the 

16 right to patent; 

17 ‘‘(B) in appropriate circumstances, may 

18 correct the naming of the inventor in any appli19 cation or patent at issue; and 

20 ‘‘(C) shall issue a final decision on the right 

21 to patent. 

22 ‘‘(3) DERIVATION PROCEEDING.—The Patent 

23 Trial and Appeal Board may defer action on a re24 quest to initiate a derivation proceeding for up to 

25 three months after the date on which the Director 


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1 issues a patent to the applicant that filed the earlier 

2 application. 

3 ‘‘(4) EFFECT OF FINAL DECISION.—The final de4 cision of the Patent Trial and Appeal Board in a 

5 derivation proceeding, if adverse to the claim of an 

6 applicant, shall constitute the final refusal by the 

7 Patent and Trademark Office on the claims involved. 

8 The Director may issue a patent to an applicant who 

9 is determined by the Patent Trial and Appeal Board 

10 to have the right to a patent. The final decision of the 

11 Board, if adverse to a patentee, shall, if no appeal or 

12 other review of the decision has been or can be taken 

13 or had, constitute cancellation of the claims involved 

14 in the patent, and notice of such cancellation shall be 

15 endorsed on copies of the patent distributed after such 

16 cancellation by the Patent and Trademark Office.’’. 

17 (2) CONFORMING AMENDMENTS.—(A) Section 

18 135 is further amended— 

19 (i) in subsection (b)— 

20 (I) by striking ‘‘(b)(1) A claim’’ and 

21 inserting the following: 

22 ‘‘(b) SAME CLAIMS.— 

23 ‘‘(1) ISSUED PATENTS.—A claim’’; and 

24 (II) by striking ‘‘(2) A claim’’ and in25 serting the following: 


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1 ‘‘(2) PUBLISHED APPLICATIONS.—A claim’’; and 

2 (III) moving the remaining text of 

3 paragraphs (1) and (2) 2 ems to the right; 

4 (ii) in subsection (c)— 

5 (I) by striking ‘‘(c) Any agreement’’ 

6 and inserting the following: 

7 ‘‘(c) AGREEMENTS TO TERMINATE PROCEEDINGS.— 

8 ‘‘(1) IN GENERAL.—Any agreement’’; 

9 (II) by striking ‘‘an interference’’ and 

10 inserting ‘‘a derivation proceeding’’; 

11 (III) by striking ‘‘the interference’’ 

12 each place it appears and inserting ‘‘the 

13 derivation proceeding’’; 

14 (IV) in the second paragraph, by strik15 ing ‘‘The Director’’ and inserting the fol16 lowing: 

17 ‘‘(2) NOTICE.—The Director’’; 

18 (V) by amending the third paragraph 

19 to read as follows: 

20 ‘‘(3) JUDICIAL REVIEW.—Any discretionary ac21 tion of the Director under this subsection shall be re22 viewable under chapter 7 of title 5.’’; and 

23 (VI) by moving the remaining text of 

24 paragraphs (1) and (2) of subsection (c) 2 

25 ems to the right; and 


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1 (iii) in subsection (d)— 

2 (I) by striking ‘‘(d) Parties’’ and in3 serting ‘‘(d) ARBITRATION.—Parties’’; 

4 (II) by striking ‘‘a patent interference’’ 

5 and inserting ‘‘a derivation proceeding’’; 

6 and 

7 (III) by striking ‘‘the interference’’ and 

8 inserting ‘‘the derivation proceeding’’. 

9 (j) ELIMINATION OF REFERENCES TO INTER10 FERENCES.—(1) Sections 41(a)(6), 134, 141, 145, 146, 154, 

11 305, and 314 are each amended by striking ‘‘Board of Pat12 ent Appeals and Interferences’’ each place it appears and 

13 inserting ‘‘Patent Trial and Appeal Board’’. 

14 (2) Section 141 is amended— 

15 (A) by striking ‘‘an interference’’ and inserting 

16 ‘‘a derivation proceeding’’; and 

17 (B) by striking ‘‘interference’’ each additional 

18 place it appears and inserting ‘‘derivation pro19 ceeding’’. 

20 (3) Section 146 is amended— 

21 (A) in the first paragraph— 

22 (i) by striking ‘‘Any party’’ and inserting 

23 ‘‘(a) IN GENERAL.—Any party’’; 

24 (ii) by striking ‘‘an interference’’ and in25 serting ‘‘a derivation proceeding’’; and 


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1 (iii) by striking ‘‘interference’’ each addi2 tional place it appears and inserting ‘‘derivation 

3 proceeding’’; and 

4 (B) in the second paragraph, by striking ‘‘Such 

5 suit’’ and inserting ‘‘(b) PROCEDURE.—A suit under 

6 subsection (a)’’ 

7 (4) The section heading for section 134 is amended to 

8 read as follows: 

9 ‘‘§ 134. Appeal to the Patent Trial and Appeal Board’’. 

10 (5) The section heading for section 135 is amended to 

11 read as follows: 

12 ‘‘§ 135. Derivation proceedings’’. 

13 (6) The section heading for section 146 is amended to 

14 read as follows: 

15 ‘‘§ 146. Civil action in case of derivation proceeding’’. 

16 (7) Section 154(b)(1)(C) is amended by striking 

17 ‘‘INTERFERENCES’’ and inserting ‘‘DERIVATION PRO18 CEEDINGS’’. 

19 (8) The item relating to section 6 in the table of sec20 tions for chapter 1 is amended to read as follows: 

‘‘6. Patent Trial and Appeal Board.’’. 

21 (9) The items relating to sections 134 and 135 in the 

22 table of sections for chapter 12 are amended to read as fol23 lows: 

‘‘134. Appeal to the Patent Trial and Appeal Board. 

‘‘135. Derivation proceedings.’’. 


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1 (10) The item relating to section 146 in the table of 

2 sections for chapter 13 is amended to read as follows: 

‘‘146. Civil action in case of derivation proceeding.’’. 

3 (11) CERTAIN APPEALS.—Subsection 1295(a)(4)(A) of 

4 title 28, United States Code, is amended to read as follows: 

5 ‘‘(A) the Patent Trial and Appeal Board of 

6 the United States Patent and Trademark Office 

7 with respect to patent applications, derivation 

8 proceedings, and post-grant review proceedings, 

9 at the instance of an applicant for a patent or 

10 any party to a patent interference (commenced 

11 before the effective date provided in section 3(k) 

12 of the Patent Reform Act of 2007), derivation 

13 proceeding, or post-grant review proceeding, and 

14 any such appeal shall waive any right of such 

15 applicant or party to proceed under section 145 

16 or 146 of title 35;’’. 

17 (k) EFFECTIVE DATE.— 

18 (1) IN GENERAL.—The amendments made by 

19 this section— 

20 (A) shall take effect 90 days after the date 

21 on which the President transmits to the Congress 

22 a finding that major patenting authorities have 

23 adopted a grace period having substantially the 

24 same effect as that contained under the amend25 ments made by this section; and 


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1 (B) shall apply to all applications for pat2 ent that are filed on or after the effective date 

3 under subparagraph (A). 

4 (2) DEFINITIONS.—In this subsection: 

5 (A) MAJOR PATENTING AUTHORITIES.—The 

6 term ‘‘major patenting authorities’’ means at 

7 least the patenting authorities in Europe and 

8 Japan. 

9 (B) GRACE PERIOD.—The term ‘‘grace pe10 riod’’ means the 1-year period ending on the ef11 fective filing date of a claimed invention, during 

12 which disclosures of the subject matter by the in13 ventor or a joint inventor, or by others who ob14 tained the subject matter disclosed directly or in15 directly from the inventor or a joint inventor, do 

16 not qualify as prior art to the claimed invention. 

17 (C) EFFECTIVE FILING DATE.—The term 

18 ‘‘effective filing date of a claimed invention’’ 

19 means, with respect to a patenting authority in 

20 another country, a date equivalent to the effective 

21 filing date of a claimed invention as defined in 

22 section 100(h) of title 35, United States Code, as 

23 added by subsection (a) of this section. 

24 (l) REVIEW EVERY 7 YEARS.—Not later than the end 

25 of the 7-year period beginning on the effective date under 


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1 subsection (k), and the end of every 7-year period thereafter, 

2 the Under Secretary of Commerce for Intellectual Property 

3 and Director of the United States Patent and Trademark 

4 Office (in this subsection referred to as the ‘‘Director’’) 

5 shall— 

6 (1) conduct a study on the effectiveness and effi7 ciency of the amendments made by this section; and 

8 (2) submit to the Committees on the Judiciary of 

9 the House of Representatives and the Senate a report 

10 on the results of the study, including any rec11 ommendations the Director has on amendments to the 

12 law and other recommendations of the Director with 

13 respect to the first-to-file system implemented under 

14 the amendments made by this section. 

15 SEC. 4. INVENTOR’S OATH OR DECLARATION. 

16 (a) INVENTOR’S OATH OR DECLARATION.— 

17 (1) IN GENERAL.—Section 115 is amended to 

18 read as follows: 

19 ‘‘§ 115. Inventor’s oath or declaration 

20 ‘‘(a) NAMING THE INVENTOR; INVENTOR’S OATH OR

21 DECLARATION.—An application for patent that is filed 

22 under section 111(a), that commences the national stage 

23 under section 363, or that is filed by an inventor for an 

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1 ed to include, the name of the inventor of any claimed in2 vention in the application. Except as otherwise provided 

3 in this section, each individual who is the inventor or a 

4 joint inventor of a claimed invention in an application for 

5 patent shall execute an oath or declaration in connection 

6 with the application. 

7 ‘‘(b) REQUIRED STATEMENTS.—An oath or declara8 tion by an individual under subsection (a) shall contain 

9 statements that— 

10 ‘‘(1) the application was made or was authorized 

11 to be made by individual; and 

12 ‘‘(2) the individual believes himself or herself to 

13 be the original inventor or an original joint inventor 

14 of a claimed invention in the application. 

15 ‘‘(c) ADDITIONAL REQUIREMENTS.—The Director may 

16 specify additional information relating to the inventor and 

17 the invention that is required to be included in an oath 

18 or declaration under subsection (a). 

19 ‘‘(d) SUBSTITUTE STATEMENT.— 

20 ‘‘(1) IN GENERAL.—In lieu of executing an oath 

21 or declaration under subsection (a), the applicant for 

22 patent may provide a substitute statement under the 

23 circumstances described in paragraph (2) and such 

24 additional circumstances that the Director may speci25 fy by regulation. 


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1 ‘‘(2) PERMITTED CIRCUMSTANCES.—A substitute 

2 statement under paragraph (1) is permitted with re3 spect to any individual who— 

4 ‘‘(A) is unable to file the oath or declaration 

5 under subsection (a) because the individual— 

6 ‘‘(i) is deceased; 

7 ‘‘(ii) is under legal incapacity; or 

8 ‘‘(iii) cannot be found or reached after 

9 diligent effort; or 

10 ‘‘(B) is under an obligation to assign the 

11 invention and has refused to make the oath or 

12 declaration required under subsection (a). 

13 ‘‘(3) CONTENTS.—A substitute statement under 

14 this subsection shall— 

15 ‘‘(A) identify the individual with respect to 

16 whom the statement applies; 

17 ‘‘(B) set forth the circumstances rep18 resenting the permitted basis for the filing of the 

19 substitute statement in lieu of the oath or dec20 laration under subsection (a); and 

21 ‘‘(C) contain any additional information, 

22 including any showing, required by the Director. 

23 ‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGNMENT

24 OF RECORD.—An individual who is under an obligation 

25 of assignment of an application for patent may include the 


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1 required statements under subsections (b) and (c) in the as2 signment executed by the individual, in lieu of filing such 

3 statements separately. 

4 ‘‘(f) TIME FOR FILING.—A notice of allowance under 

5 section 151 may be provided to an applicant for patent only 

6 if the applicant for patent has filed each required oath or 

7 declaration under subsection (a) or has filed a substitute 

8 statement under subsection (d) or recorded an assignment 

9 meeting the requirements of subsection (e). 

10 ‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE11 QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.—The 

12 requirements under this section shall not apply to an indi13 vidual with respect to an application for patent in which 

14 the individual is named as the inventor or a joint inventor 

15 and that claims the benefit of an earlier filing date under 

16 section 120 or 365(c), if— 

17 ‘‘(1) an oath or declaration meeting the require18 ments of subsection (a) was executed by the indi19 vidual and was filed in connection with the earlier20 filed application; 

21 ‘‘(2) a substitute statement meeting the require22 ments of subsection (d) was filed in the earlier filed 

23 application with respect to the individual; or 

24 ‘‘(3) an assignment meeting the requirements of 

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1 filed application by the individual and was recorded 

2 in connection with the earlier-filed application. 

3 ‘‘(h) SUPPLEMENTAL AND CORRECTED STATEMENTS; 

4 FILING ADDITIONAL STATEMENTS.— 

5 ‘‘(1) IN GENERAL.—Any person making a state6 ment required under this section may withdraw, re7 place, or otherwise correct the statement at any time. 

8 If a change is made in the naming of the inventor re9 quiring the filing of 1 or more additional statements 

10 under this section, such additional statements shall be 

11 filed in accordance with regulations established by the 

12 Director. 

13 ‘‘(2) SUPPLEMENTAL STATEMENTS NOT RE14 QUIRED.—If an individual has executed an oath or 

15 declaration under subsection (a) or an assignment 

16 meeting the requirements of subsection (e) with re17 spect to an application for patent, the Director may 

18 not thereafter require that individual to make any 

19 additional oath, declaration, or other statement equiv20 alent to those required by this section in connection 

21 with the application for patent or any patent issuing 

22 thereon. 

23 ‘‘(3) SAVINGS CLAUSE.—No patent shall be in24 valid or unenforceable based upon the failure to comVerDate Aug 31 2005 22:20 Sep 04, 2007 Jkt 059200 PO 00000 Frm 00023 Fmt 6652 Sfmt 6203 E:\BILLS\H1908.RH H1908

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1 ply with a requirement under this section if the fail2 ure is remedied as provided under paragraph (1). 

3 ‘‘(i) ACKNOWLEDGMENT OF PENALTIES.—Any dec4 laration or statement filed under this section must contain 

5 an acknowledgment that any willful false statement is pun6 ishable by fine or imprisonment, or both, under section 

7 1001 of title 18.’’. 

8 (2) RELATIONSHIP TO DIVISIONAL APPLICA9 TIONS.—Section 121 is amended by striking ‘‘If a di10 visional application’’ and all that follows through 

11 ‘‘inventor.’’. 

12 (3) REQUIREMENTS FOR NONPROVISIONAL APPLI13 CATIONS.—Section 111(a) is amended— 

14 (A) in paragraph (2)(C), by striking ‘‘by 

15 the applicant’’ and inserting ‘‘or declaration’’; 

16 (B) in the heading for paragraph (3), by 

17 striking ‘‘AND OATH’’; and 

18 (C) by striking ‘‘and oath’’ each place it ap19 pears. 

20 (4) CONFORMING AMENDMENT.—The item relat21 ing to section 115 in the table of sections for chapter 

22 11 is amended to read as follows: 

‘‘115. Inventor’s oath or declaration.’’. 

23 (b) FILING BY OTHER THAN INVENTOR.—Section 118 

24 is amended to read as follows: 


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1 ‘‘§ 118. Filing by other than inventor 

2 ‘‘A person to whom the inventor has assigned or is 

3 under an obligation to assign the invention may make an 

4 application for patent. A person who otherwise shows suffi5 cient proprietary interest in the matter may make an ap6 plication for patent on behalf of and as agent for the inven7 tor on proof of the pertinent facts and a showing that such 

8 action is appropriate to preserve the rights of the parties. 

9 If the Director grants a patent on an application filed 

10 under this section by a person other than the inventor, the 

11 patent shall be granted to the real party in interest and 

12 upon such notice to the inventor as the Director considers 

13 to be sufficient.’’. 

14 (c) SPECIFICATION.—Section 112 is amended— 

15 (1) in the first paragraph—— 

16 (A) by striking ‘‘The specification’’ and in17 serting ‘‘(a) IN GENERAL.—The specification’’; 

18 and 

19 (B) by striking ‘‘of carrying out his inven20 tion’’ and inserting ‘‘or joint inventor of car21 rying out the invention’’; and 

22 (2) in the second paragraph— 

23 (A) by striking ‘‘The specification’’ and in24 serting ‘‘(b) CONCLUSION.—The specification’’; 

25 and 


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1 (B) by striking ‘‘applicant regards as his 

2 invention’’ and inserting ‘‘inventor or a joint in3 ventor regards as the invention’’; 

4 (3) in the third paragraph, by striking ‘‘A 

5 claim’’ and inserting ‘‘(c) FORM.—A claim’’; 

6 (4) in the fourth paragraph, by striking ‘‘Subject 

7 to the following paragraph,’’ and inserting ‘‘(d) REF8 ERENCE IN DEPENDENT FORMS.—Subject to sub9 section (e),’’; 

10 (5) in the fifth paragraph, by striking ‘‘A claim’’ 

11 and inserting ‘‘(e) REFERENCE IN MULTIPLE DE12 PENDENT FORM.—A claim’’; and 

13 (6) in the last paragraph, by striking ‘‘An ele14 ment’’ and inserting ‘‘(f) ELEMENT IN CLAIM FOR A

15 COMBINATION.—An element’’. 

16 (d) EFFECTIVE DATE.—The amendments made by this 

17 section— 

18 (1) shall take effect at the end of the 1-year pe19 riod beginning on the date of the enactment of this 

20 Act; and 

21 (2) shall apply to any application for patent, or 

22 application for reissue patent, that is filed on or after 

23 the effective date under paragraph (1). 

24 SEC. 5. RIGHT OF THE INVENTOR TO OBTAIN DAMAGES. 

25 (a) DAMAGES.—Section 284 is amended— 


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1 (1) in the first paragraph, by striking ‘‘Upon’’ 

2 and inserting ‘‘(a) IN GENERAL.—Upon’’; 

3 (2) by designating the second undesignated para4 graph as subsection (c); 

5 (3) by inserting after subsection (a) (as des6 ignated by paragraph (1) of this subsection) the fol7 lowing: 

8 ‘‘(b) REASONABLE ROYALTY.— 

9 ‘‘(1) IN GENERAL.— An award pursuant to sub10 section (a) that is based upon a reasonable royalty 

11 shall be determined in accordance with this sub12 section. Based on the facts of the case, the court shall 

13 determine whether paragraph (2), (3), or (5) will be 

14 used by the court or the jury in calculating a reason15 able royalty. The court shall identify the factors that 

16 are relevant to the determination of a reasonable roy17 alty under the applicable paragraph, and the court or 

18 jury, as the case may be, shall consider only those fac19 tors in making the determination. 

20 ‘‘(2) RELATIONSHIP OF DAMAGES TO CONTRIBU21 TIONS OVER PRIOR ART.—The court shall conduct an 

22 analysis to ensure that a reasonable royalty under 

23 subsection (a) is applied only to that economic value 

24 properly attributable to the patent’s specific contribu25 tion over the prior art. The court shall exclude from 


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1 the analysis the economic value properly attributable 

2 to the prior art, and other features or improvements, 

3 whether or not themselves patented, that contribute 

4 economic value to the infringing product or process. 

5 ‘‘(3) ENTIRE MARKET VALUE.—Unless the claim6 ant shows that the patent’s specific contribution over 

7 the prior art is the predominant basis for market de8 mand for an infringing product or process, damages 

9 may not be based upon the entire market value of the 

10 products or processes involved that satisfy that de11 mand. 

12 ‘‘(4) COMBINATION INVENTIONS.—For purposes 

13 of paragraphs (2) and (3), in the case of a combina14 tion invention the elements of which are present indi15 vidually in the prior art, the patentee may show that 

16 the contribution over the prior art may include the 

17 value of the additional function resulting from the 

18 combination, as well as the enhanced value, if any, of 

19 some or all of the prior art elements resulting from 

20 the combination. 

21 ‘‘(5) OTHER FACTORS.—In determining a rea22 sonable royalty, the court may also consider, or direct 

23 the jury to consider, the terms of any nonexclusive 

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1 priate, as well as any other relevant factors under ap2 plicable law.’’; 

3 (4) by amending subsection (c) (as designated by 

4 paragraph (1) of this subsection) to read as follows: 

5 ‘‘(c) WILLFUL INFRINGEMENT.— 

6 ‘‘(1) INCREASED DAMAGES.—A court that has 

7 determined that the infringer has willfully infringed 

8 a patent or patents may increase the damages up to 

9 three times the amount of damages found or assessed 

10 under subsection (a), except that increased damages 

11 under this paragraph shall not apply to provisional 

12 rights under section 154(d). 

13 ‘‘(2) PERMITTED GROUNDS FOR WILLFULNESS.— 

14 A court may find that an infringer has willfully in15 fringed a patent only if the patent owner presents 

16 clear and convincing evidence that— 

17 ‘‘(A) after receiving written notice from the 

18 patentee— 

19 ‘‘(i) alleging acts of infringement in a 

20 manner sufficient to give the infringer an 

21 objectively reasonable apprehension of suit 

22 on such patent, and 

23 ‘‘(ii) identifying with particularity 

24 each claim of the patent, each product or 

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1 fringes the patent, and the relationship of 

2 such product or process to such claim, 

3 the infringer, after a reasonable opportunity to 

4 investigate, thereafter performed one or more of 

5 the alleged acts of infringement; 

6 ‘‘(B) the infringer intentionally copied the 

7 patented invention with knowledge that it was 

8 patented; or 

9 ‘‘(C) after having been found by a court to 

10 have infringed that patent, the infringer engaged 

11 in conduct that was not colorably different from 

12 the conduct previously found to have infringed 

13 the patent, and that resulted in a separate find14 ing of infringement of the same patent. 

15 ‘‘(3) LIMITATIONS ON WILLFULNESS.—(A) A 

16 court may not find that an infringer has willfully in17 fringed a patent under paragraph (2) for any period 

18 of time during which the infringer had an informed 

19 good faith belief that the patent was invalid or unen20 forceable, or would not be infringed by the conduct 

21 later shown to constitute infringement of the patent. 

22 ‘‘(B) An informed good faith belief within the 

23 meaning of subparagraph (A) may be established 

24 by— 


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1 ‘‘(i) reasonable reliance on advice of coun2 sel; 

3 ‘‘(ii) evidence that the infringer sought to 

4 modify its conduct to avoid infringement once it 

5 had discovered the patent; or 

6 ‘‘(iii) other evidence a court may find suffi7 cient to establish such good faith belief. 

8 ‘‘(C) The decision of the infringer not to present 

9 evidence of advice of counsel is not relevant to a deter10 mination of willful infringement under paragraph 

11 (2). 

12 ‘‘(4) LIMITATION ON PLEADING.—Before the date 

13 on which a court determines that the patent in suit 

14 is not invalid, is enforceable, and has been infringed 

15 by the infringer, a patentee may not plead and a 

16 court may not determine that an infringer has will17 fully infringed a patent. The court’s determination of 

18 an infringer’s willfulness shall be made without a 

19 jury.’’; and 

20 (5) in the third undesignated paragraph, by 

21 striking ‘‘The court’’ and inserting ‘‘(d) EXPERT TES22 TIMONY.—The court’’. 

23 (b) DEFENSE TO INFRINGEMENT BASED ON EARLIER

24 INVENTOR.—Section 273 is amended— 

25 (1) in subsection (a)— 


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1 (A) in paragraph (1)— 

2 (i) by striking ‘‘of a method’’; and 

3 (ii) by striking ‘‘review period;’’ and 

4 inserting ‘‘review period; and’’; 

5 (B) in paragraph (2)(B), by striking the 

6 semicolon at the end and inserting a period; and 

7 (C) by striking paragraphs (3) and (4); 

8 (2) in subsection (b)— 

9 (A) in paragraph (1)— 

10 (i) by striking ‘‘for a method’’; and 

11 (ii) by striking ‘‘at least 1 year before 

12 the effective filing date of such patent, and’’ 

13 and all that follows through the period and 

14 inserting ‘‘and commercially used, or made 

15 substantial preparations for commercial use 

16 of, the subject matter before the effective fil17 ing date of the claimed invention.’’; 

18 (B) in paragraph (2)— 

19 (i) by striking ‘‘The sale or other dis20 position of a useful end product produced 

21 by a patented method’’ and inserting ‘‘The 

22 sale or other disposition of subject matter 

23 that qualifies for the defense set forth in this 

24 section’’; and 


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1 (ii) by striking ‘‘a defense under this 

2 section with respect to that useful end re3 sult’’ and inserting ‘‘such defense’’; 

4 (C) in paragraph (3)— 

5 (i) by striking subparagraph (A); and 

6 (ii) by redesignating subparagraphs 

7 (B) and (C) as subparagraphs (A) and (B), 

8 respectively; and 

9 (D) in paragraph (7), by striking ‘‘of the 

10 patent’’ and inserting ‘‘of the claimed inven11 tion’’; and 

12 (3) by amending the heading to read as follows: 

13 ‘‘§ 273. Special defenses to and exemptions from in14 fringement’’. 

15 (c) TABLE OF SECTIONS.—The item relating to section 

16 273 in the table of sections for chapter 28 is amended to 

17 read as follows: 

‘‘273. Special defenses to and exemptions from infringement.’’. 

18 (d) EFFECTIVE DATE.—The amendments made by this 

19 section shall apply to any civil action commenced on or 

20 after the date of the enactment of this Act. 

21 (e) REVIEW EVERY 7 YEARS.—Not later than the end 

22 of the 7-year period beginning on the date of the enactment 

23 of this Act, and the end of every 7-year period thereafter, 

24 the Under Secretary of Commerce for Intellectual Property 

25 and Director of the United States Patent and Trademark 


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1 Office (in this subsection referred to as the ‘‘Director’’) 

2 shall— 

3 (1) conduct a study on the effectiveness and effi4 ciency of the amendments made by this section; and 

5 (2) submit to the Committees on the Judiciary of 

6 the House of Representatives and the Senate a report 

7 on the results of the study, including any rec8 ommendations the Director has on amendments to the 

9 law and other recommendations of the Director with 

10 respect to the right of the inventor to obtain damages 

11 for patent infringement. 

12 SEC. 6. POST-GRANT PROCEDURES AND OTHER QUALITY 

13 ENHANCEMENTS. 

14 (a) CITATION OF PRIOR ART.— 

15 (1) IN GENERAL.—Section 301 is amended to 

16 read as follows: 

17 ‘‘§ 301. Citation of prior art 

18 ‘‘(a) IN GENERAL.—Any person at any time may cite 

19 to the Office in writing— 

20 ‘‘(1) prior art consisting of patents or printed 

21 publications which that person believes to have a 

22 bearing on the patentability of any claim of a par23 ticular patent; or 

24 ‘‘(2) written statements of the patent owner filed 

25 in a proceeding before a Federal court or the Patent 


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1 and Trademark Office in which the patent owner 

2 takes a position on the scope of one or more patent 

3 claims. 

4 ‘‘(b) SUBMISSIONS PART OF OFFICIAL FILE.—If the 

5 person citing prior art or written submissions under sub6 section (a) explains in writing the pertinence and manner 

7 of applying the prior art or written submissions to at least 

8 one claim of the patent, the citation of the prior art or writ9 ten submissions (as the case may be) and the explanation 

10 thereof shall become a part of the official file of the patent. 

11 ‘‘(c) PROCEDURES FOR WRITTEN STATEMENTS.— 

12 ‘‘(1) SUBMISSION OF ADDITIONAL MATERIALS.— 

13 A party that submits written statements under sub14 section (a)(2) in a proceeding shall include any other 

15 documents, pleadings, or evidence from the proceeding 

16 that address the patent owner’s statements or the 

17 claims addressed by the written statements. 

18 ‘‘(2) LIMITATION ON USE OF STATEMENTS.— 

19 Written statements submitted under subsection (a)(2) 

20 shall not be considered for any purpose other than to 

21 determine the proper meaning of the claims that are 

22 the subject of the request in a proceeding ordered pur23 suant to section 304 or 313. Any such written state24 ments, and any materials submitted under paragraph 

25 (1), that are subject to an applicable protective order 


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1 shall be redacted to exclude information subject to the 

2 order. 

3 ‘‘(d) IDENTITY WITHHELD.—Upon the written request 

4 of the person citing prior art or written statements under 

5 subsection (a), the person’s identity shall be excluded from 

6 the patent file and kept confidential.’’. 

7 (b) REEXAMINATION.—Section 303(a) is amended to 

8 read as follows: 

9 ‘‘(a) Within three months after the owner of a patent 

10 files a request for reexamination under section 302, the Di11 rector shall determine whether a substantial new question 

12 of patentability affecting any claim of the patent concerned 

13 is raised by the request, with or without consideration of 

14 other patents or printed publications. On the Director’s own 

15 initiative, and at any time, the Director may determine 

16 whether a substantial new question of patentability is 

17 raised by patents and publications discovered by the Direc18 tor, is cited under section 301, or is cited by any person 

19 other than the owner of the patent under section 302 or 

20 section 311. The existence of a substantial new question of 

21 patentability is not precluded by the fact that a patent or 

22 printed publication was previously cited by or to the Office 

23 or considered by the Office.’’. 

24 (c) CONDUCT OF INTER PARTES PROCEEDINGS.—Sec25 tion 314 is amended— 


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1 (1) in the first sentence of subsection (a), by 

2 striking ‘‘conducted according to the procedures estab3 lished for initial examination under the provisions of 

4 sections 132 and 133’’ and inserting ‘‘heard by an 

5 administrative patent judge in accordance with pro6 cedures which the Director shall establish’’; 

7 (2) in subsection (b), by striking paragraph (2) 

8 and inserting the following: 

9 ‘‘(2) The third-party requester shall have the oppor10 tunity to file written comments on any action on the merits 

11 by the Office in the inter partes reexamination proceeding, 

12 and on any response that the patent owner files to such 

13 an action, if those written comments are received by the 

14 Office within 60 days after the date of service on the third15 party requester of the Office action or patent owner re16 sponse, as the case may be.’’; and 

17 (3) by adding at the end the following: 

18 ‘‘(d) ORAL HEARING.—At the request of a third party 

19 requestor or the patent owner, the administrative patent 

20 judge shall conduct an oral hearing, unless the judge finds 

21 cause lacking for such hearing.’’. 

22 (d) ESTOPPEL.—Section 315(c) is amended by strik23 ing ‘‘or could have raised’’. 

24 (e) REEXAMINATION PROHIBITED AFTER DISTRICT

25 COURT DECISION.—Section 317(b) is amended— 


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1 (1) in the subsection heading, by striking ‘‘FINAL

2 DECISION’’ and inserting ‘‘DISTRICT COURT DECI3 SION’’; and 

4 (2) by striking ‘‘Once a final decision has been 

5 entered’’ and inserting ‘‘Once the judgment of the dis6 trict court has been entered’’. 

7 (f) POST-GRANT OPPOSITION PROCEDURES.— 

8 (1) IN GENERAL.—Part III is amended by add9 ing at the end the following new chapter: 

10 ‘‘CHAPTER 32—POST-GRANT REVIEW 

11 PROCEDURES 

‘‘Sec. 

‘‘321. Petition for post-grant review. 

‘‘322. Timing and bases of petition. 

‘‘323. Requirements of petition. 

‘‘324. Prohibited filings. 

‘‘325. Submission of additional information; showing of sufficient grounds. 

‘‘326. Conduct of post-grant review proceedings. 

‘‘327. Patent owner response. 

‘‘328. Proof and evidentiary standards. 

‘‘329. Amendment of the patent. 

‘‘330. Decision of the Board. 

‘‘331. Effect of decision. 

‘‘332. Settlement. 

‘‘333. Relationship to other pending proceedings. 

‘‘334. Effect of decisions rendered in civil action on post-grant review proceedings. 

‘‘335. Effect of final decision on future proceedings. 

‘‘336. Appeal. 

12 ‘‘§ 321. Petition for post-grant review 

13 ‘‘Subject to sections 322, 324, 332, and 333, a person 

14 who is not the patent owner may file with the Office a peti15 tion for cancellation seeking to institute a post-grant review 

16 proceeding to cancel as unpatentable any claim of a patent 

17 on any ground that could be raised under paragraph (2) 


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1 or (3) of section 282(b) (relating to invalidity of the patent 

2 or any claim). The Director shall establish, by regulation, 

3 fees to be paid by the person requesting the proceeding, in 

4 such amounts as the Director determines to be reasonable. 

5 ‘‘§ 322. Timing and bases of petition 

6 ‘‘A post-grant proceeding may be instituted under this 

7 chapter pursuant to a cancellation petition filed under sec8 tion 321 only if— 

9 ‘‘(1) the petition is filed not later than 12 

10 months after the grant of the patent or issuance of a 

11 reissue patent, as the case may be; or 

12 ‘‘(2) the patent owner consents in writing to the 

13 proceeding. 

14 ‘‘§ 323. Requirements of petition 

15 ‘‘A cancellation petition filed under section 321 may 

16 be considered only if— 

17 ‘‘(1) the petition is accompanied by payment of 

18 the fee established by the Director under section 321; 

19 ‘‘(2) the petition identifies the cancellation peti20 tioner; and 

21 ‘‘(3) the petition sets forth in writing the basis 

22 for the cancellation, identifying each claim challenged 

23 and providing such information as the Director may 

24 require by regulation, and includes copies of patents 


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1 and printed publications that the cancellation peti2 tioner relies upon in support of the petition; and 

3 ‘‘(4) the petitioner provides copies of those docu4 ments to the patent owner or, if applicable, the des5 ignated representative of the patent owner. 

6 ‘‘§ 324. Prohibited filings 

7 ‘‘A post-grant review proceeding may not be instituted 

8 under section 322 if the petition for cancellation requesting 

9 the proceeding identifies the same cancellation petitioner 

10 and the same patent as a previous petition for cancellation 

11 filed under such section. 

12 ‘‘§ 325. Submission of additional information; showing 

13 of sufficient grounds 

14 ‘‘(a) IN GENERAL.—The cancellation petitioner shall 

15 file such additional information with respect to the petition 

16 as the Director may require. For each petition submitted 

17 under section 321, the Director shall determine if the writ18 ten statement, and any evidence submitted with the request, 

19 establish that a substantial question of patentability exists 

20 for at least one claim in the patent. The Director may ini21 tiate a post-grant review proceeding if the Director deter22 mines that the information presented provides sufficient 

23 grounds to believe that there is a substantial question of 

24 patentability concerning one or more claims of the patent 

25 at issue. 


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1 ‘‘(b) NOTIFICATION; DETERMINATIONS NOT REVIEW2 ABLE.—The Director shall notify the patent owner and each 

3 petitioner in writing of the Director’s determination under 

4 subsection (a), including a determination to deny the peti5 tion. The Director shall make that determination in writing 

6 not later than 60 days after receiving the petition. Any de7 termination made by the Director under subsection (a), in8 cluding whether or not to institute a post-grant review pro9 ceeding or to deny the petition, shall not be reviewable. 

10 ‘‘§ 326. Conduct of post-grant review proceedings 

11 ‘‘(a) IN GENERAL.—The Director shall prescribe regu12 lations, in accordance with section 2(b)(2)— 

13 ‘‘(1) establishing and governing post-grant re14 view proceedings under this chapter and their rela15 tionship to other proceedings under this title; 

16 ‘‘(2) establishing procedures for the submission of 

17 supplemental information after the petition for can18 cellation is filed; and 

19 ‘‘(3) setting forth procedures for discovery of rel20 evant evidence, including that such discovery shall be 

21 limited to evidence directly related to factual asser22 tions advanced by either party in the proceeding, and 

23 the procedures for obtaining such evidence shall be 

24 consistent with the purpose and nature of the pro25 ceeding. 


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1 ‘‘(b) POST-GRANT REGULATIONS.—Regulations under 

2 subsection (a)(1)— 

3 ‘‘(1) shall require that the final determination in 

4 a post-grant proceeding issue not later than one year 

5 after the date on which the post-grant review pro6 ceeding is instituted under this chapter, except that, 

7 for good cause shown, the Director may extend the 1- 

8 year period by not more than six months; 

9 ‘‘(2) shall provide for discovery upon order of the 

10 Director; 

11 ‘‘(3) shall provide for publication of notice in the 

12 Federal Register of the filing of a petition for post13 grant review under this chapter, for publication of the 

14 petition, and documents, orders, and decisions relat15 ing to the petition, on the website of the Patent and 

16 Trademark Office, and for filings under seal exempt 

17 from publication requirements; 

18 ‘‘(4) shall prescribe sanctions for abuse of dis19 covery, abuse of process, or any other improper use of 

20 the proceeding, such as to harass or to cause unneces21 sary delay or unnecessary increase in the cost of the 

22 proceeding; 

23 ‘‘(5) may provide for protective orders governing 

24 the exchange and submission of confidential informa25 tion; and 


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1 ‘‘(6) shall ensure that any information submitted 

2 by the patent owner in support of any amendment 

3 entered under section 329 is made available to the 

4 public as part of the prosecution history of the patent. 

5 ‘‘(c) CONSIDERATIONS.—In prescribing regulations 

6 under this section, the Director shall consider the effect on 

7 the economy, the integrity of the patent system, and the effi8 cient administration of the Office. 

9 ‘‘(d) CONDUCT OF PROCEEDING.—The Patent Trial 

10 and Appeal Board shall, in accordance with section 6(b), 

11 conduct each post-grant review proceeding authorized by the 

12 Director. 

13 ‘‘§ 327. Patent owner response 

14 ‘‘After a post-grant proceeding under this chapter has 

15 been instituted with respect to a patent, the patent owner 

16 shall have the right to file, within a time period set by the 

17 Director, a response to the cancellation petition. The patent 

18 owner shall file with the response, through affidavits or dec19 larations, any additional factual evidence and expert opin20 ions on which the patent owner relies in support of the re21 sponse. 

22 ‘‘§ 328. Proof and evidentiary standards 

23 ‘‘(a) IN GENERAL.—The presumption of validity set 

24 forth in section 282 shall not apply in a challenge to any 

25 patent claim under this chapter. 


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1 ‘‘(b) BURDEN OF PROOF.—The party advancing a 

2 proposition under this chapter shall have the burden of 

3 proving that proposition by a preponderance of the evi4 dence. 

5 ‘‘§ 329. Amendment of the patent 

6 ‘‘(a) IN GENERAL.—In response to a challenge in a 

7 petition for cancellation, the patent owner may file one mo8 tion to amend the patent in one or more of the following 

9 ways: 

10 ‘‘(1) Cancel any challenged patent claim. 

11 ‘‘(2) For each challenged claim, propose a sub12 stitute claim. 

13 ‘‘(3) Amend the patent drawings or otherwise 

14 amend the patent other than the claims. 

15 ‘‘(b) ADDITIONAL MOTIONS.—Additional motions to 

16 amend may be permitted only for good cause shown. 

17 ‘‘(c) SCOPE OF CLAIMS.—An amendment under this 

18 section may not enlarge the scope of the claims of the patent 

19 or introduce new matter. 

20 ‘‘§ 330. Decision of the Board 

21 ‘‘If the post-grant review proceeding is instituted and 

22 not dismissed under this chapter, the Patent Trial and Ap23 peal Board shall issue a final written decision with respect 

24 to the patentability of any patent claim challenged and any 

25 new claim added under section 329. 


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1 ‘‘§ 331. Effect of decision 

2 ‘‘(a) IN GENERAL.—If the Patent Trial and Appeal 

3 Board issues a final decision under section 330 and the 

4 time for appeal has expired or any appeal proceeding has 

5 terminated, the Director shall issue and publish a certificate 

6 canceling any claim of the patent finally determined to be 

7 unpatentable and incorporating in the patent by operation 

8 of the certificate any new claim determined to be patentable. 

9 ‘‘(b) NEW CLAIMS.—Any new claim held to be patent10 able and incorporated into a patent in a post-grant review 

11 proceeding shall have the same effect as that specified in 

12 section 252 for reissued patents on the right of any person 

13 who made, purchased, offered to sell, or used within the 

14 United States, or imported into the United States, anything 

15 patented by such new claim, or who made substantial prep16 arations therefor, before a certificate under subsection (a) 

17 of this section is issued. 

18 ‘‘§ 332. Settlement 

19 ‘‘(a) IN GENERAL.—A post-grant review proceeding 

20 shall be terminated with respect to any petitioner upon the 

21 joint request of the petitioner and the patent owner, unless 

22 the Patent Trial and Appeal Board has issued a written 

23 decision before the request for termination is filed. If the 

24 post-grant review proceeding is terminated with respect to 

25 a petitioner under this paragraph, no estoppel shall apply 

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1 ceeding, the panel of administrative patent judges assigned 

2 to the proceeding shall terminate the proceeding. 

3 ‘‘(b) AGREEMENT IN WRITING.—Any agreement or un4 derstanding between the patent owner and a petitioner, in5 cluding any collateral agreements referred to in the agree6 ment or understanding, that is made in connection with 

7 or in contemplation of the termination of a post-grant re8 view proceeding, must be in writing. A post-grant review 

9 proceeding as between the parties to the agreement or un10 derstanding may not be terminated until a copy of the 

11 agreement or understanding, including any such collateral 

12 agreements, has been filed in the Office. If any party filing 

13 such an agreement or understanding requests, the agreement 

14 or understanding shall be kept separate from the file of the 

15 post-grant review proceeding, and shall be made available 

16 only to Government agencies on written request, or to any 

17 person on a showing of good cause. 

18 ‘‘§ 333. Relationship to other pending proceedings 

19 ‘‘(a) IN GENERAL.—Notwithstanding subsection 

20 135(a), sections 251 and 252, and chapter 30, the Director 

21 may determine the manner in which any reexamination 

22 proceeding, reissue proceeding, interference proceeding 

23 (commenced before the effective date provided in section 3(k) 

24 of the Patent Reform Act of 2007), derivation proceeding, 

25 or post-grant review proceeding, that is pending during a 


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1 post-grant review proceeding, may proceed, including pro2 viding for stay, transfer, consolidation, or termination of 

3 any such proceeding. 

4 ‘‘(b) STAYS.—The Director may stay a post-grant re5 view proceeding if a pending civil action for infringement 

6 addresses the same or substantially the same questions of 

7 patentability. 

8 ‘‘§ 334. Effect of decisions rendered in civil action on 

9 post-grant review proceedings 

10 ‘‘If a final decision is entered against a party in a 

11 civil action arising in whole or in part under section 1338 

12 of title 28 establishing that the party has not sustained its 

13 burden of proving the invalidity of any patent claim— 

14 ‘‘(1) that party to the civil action and the 

15 privies of that party may not thereafter request a 

16 post-grant review proceeding on that patent claim on 

17 the basis of any grounds, under the provisions of sec18 tion 321, which that party or the privies of that 

19 party raised or could have raised; and 

20 ‘‘(2) the Director may not thereafter maintain a 

21 post-grant review proceeding that was requested, be22 fore the final decision was so entered, by that party 

23 or the privies of that party on the basis of such 

24 grounds. 


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1 ‘‘§ 335. Effect of final decision on future proceedings 

2 ‘‘If a final decision under section 330 is favorable to 

3 the patentability of any original or new claim of the patent 

4 challenged by the cancellation petitioner, the cancellation 

5 petitioner may not thereafter, based on any ground that the 

6 cancellation petitioner raised during the post-grant review 

7 proceeding— 

8 ‘‘(1) request or pursue a reexamination of such 

9 claim under chapter 31; 

10 ‘‘(2) request or pursue a derivation proceeding 

11 with respect to such claim; 

12 ‘‘(3) request or pursue a post-grant review pro13 ceeding under this chapter with respect to such claim; 

14 or 

15 ‘‘(4) assert the invalidity of any such claim in 

16 any civil action arising in whole or in part under 

17 section 1338 of title 28. 

18 ‘‘§ 336. Appeal 

19 ‘‘A party dissatisfied with the final determination of 

20 the Patent Trial and Appeal Board in a post-grant pro21 ceeding under this chapter may appeal the determination 

22 under sections 141 through 144. Any party to the post-grant 

23 proceeding shall have the right to be a party to the appeal.’’. 

24 (g) CONFORMING AMENDMENT.—The table of chapters 

25 for part III is amended by adding at the end the following: 

‘‘32. Post-Grant Review Proceedings .............................................. 321’’. 


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1 (h) REPEAL.—Section 4607 of the Intellectual Prop2 erty and Communications Omnibus Reform Act of 1999, 

3 as enacted by section 1000(a)(9) of Public Law 106–113, 

4 is repealed. 

5 (i) EFFECTIVE DATES.— 

6 (1) IN GENERAL.—The amendments and repeal 

7 made by this section shall take effect at the end of the 

8 1-year period beginning on the date of the enactment 

9 of this Act. 

10 (2) APPLICABILITY TO EX PARTE AND INTER

11 PARTES PROCEEDINGS.—Notwithstanding any other 

12 provision of law, sections 301 and 311 through 318 

13 of title 35, United States Code, as amended by this 

14 section, shall apply to any patent that issues before, 

15 on, or after the effective date under paragraph (1) 

16 from an original application filed on any date. 

17 (3) APPLICABILITY TO POST-GRANT PRO18 CEEDINGS.—The amendments made by subsection (f) 

19 shall apply to patents issued on or after the effective 

20 date under paragraph (1). 

21 (j) REGULATIONS.— 

22 (1) REGULATIONS.—The Under Secretary of 

23 Commerce for Intellectual Property and Director of 

24 the United States Patent and Trademark Office (in 

25 this subsection referred to as the ‘‘Director’’) shall, not 


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1 later than the date that is 1 year after the date of the 

2 enactment of this Act, issue regulations to carry out 

3 chapter 32 of title 35, United States Code, as added 

4 by subsection (f) of this section. 

5 (2) PENDING INTERFERENCES.—The Director 

6 shall determine the procedures under which inter7 ferences under title 35, United States Code, that are 

8 commenced before the effective date under subsection 

9 (i)(1) are to proceed, including whether any such in10 terference is to be dismissed without prejudice to the 

11 filing of a cancellation petition for a post-grant oppo12 sition proceeding under chapter 32 of title 35, United 

13 States Code, or is to proceed as if this Act had not 

14 been enacted. The Director shall include such proce15 dures in regulations issued under paragraph (1). 

16 SEC. 7. DEFINITIONS; PATENT TRIAL AND APPEAL BOARD. 

17 (a) DEFINITIONS.—Section 100 (as amended by this 

18 Act) is further amended by adding at the end the following: 

19 ‘‘(k) The term ‘cancellation petitioner’ means the real 

20 party in interest requesting cancellation of any claim of 

21 a patent under chapter 32 of this title and the privies of 

22 the real party in interest.’’. 

23 (a) PATENT TRIAL AND APPEAL BOARD.—Section 6 

24 is amended to read as follows: 


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1 ‘‘§ 6. Patent Trial and Appeal Board 

2 ‘‘(a) ESTABLISHMENT AND COMPOSITION.—There shall 

3 be in the Office a Patent Trial and Appeal Board. The Di4 rector, the Deputy Director, the Commissioner for Patents, 

5 the Commissioner for Trademarks, and the administrative 

6 patent judges shall constitute the Patent Trial and Appeal 

7 Board. The administrative patent judges shall be persons 

8 of competent legal knowledge and scientific ability who are 

9 appointed by the Director. Any reference in any Federal 

10 law, Executive order, rule, regulation, or delegation of au11 thority, or any document of or pertaining to the Board of 

12 Patent Appeals and Interferences is deemed to refer to the 

13 Patent Trial and Appeal Board. 

14 ‘‘(b) DUTIES.—The Patent Trial and Appeal Board 

15 shall— 

16 ‘‘(1) on written appeal of an applicant, review 

17 adverse decisions of examiners upon application for 

18 patents; 

19 ‘‘(2) on written appeal of a patent owner, review 

20 adverse decisions of examiners upon patents in reex21 amination proceedings under chapter 30; 

22 ‘‘(3) review appeals by patent owners and third23 party requesters under section 315; 

24 ‘‘(4) determine priority and patentability of in25 vention in derivation proceedings under section 

26 135(a); and 


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1 ‘‘(5) conduct post-grant opposition proceedings 

2 under chapter 32. 

3 Each appeal and derivation proceeding shall be heard by 

4 at least 3 members of the Patent Trial and Appeal Board, 

5 who shall be designated by the Director. Only the Patent 

6 Trial and Appeal Board may grant rehearings. The Direc7 tor shall assign each post-grant review proceeding to a 

8 panel of 3 administrative patent judges. Once assigned, 

9 each such panel of administrative patent judges shall have 

10 the responsibilities under chapter 32 in connection with 

11 post-grant review proceedings.’’. 

12 (b) EFFECTIVE DATE.—The amendments made by this 

13 section shall take effect at the end of the 1-year period begin14 ning on the date of the enactment of this Act. 

15 SEC. 8. STUDY AND REPORT ON REEXAMINATION PRO16 CEEDINGS. 

17 The Under Secretary of Commerce for Intellectual 

18 Property and Director of the Patent and Trademark Office 

19 shall, not later than 2 years after the date of the enactment 

20 of this Act— 

21 (1) conduct a study of the effectiveness and effi22 ciency of the different forms of proceedings available 

23 under title 35, United States Code, for the reexamina24 tion of patents; and 


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1 (2) submit to the Committees on the Judiciary of 

2 the House of Representatives and the Senate a report 

3 on the results of the study, including any of the Di4 rector’s suggestions for amending the law, and any 

5 other recommendations the Director has with respect 

6 to patent reexamination proceedings. 

7 SEC. 9. SUBMISSIONS BY THIRD PARTIES AND OTHER 

8 QUALITY ENHANCEMENTS. 

9 (a) PUBLICATION.—Section 122(b)(2) is amended— 

10 (1) by striking subparagraph (B); and 

11 (2) in subparagraph (A)— 

12 (A) by striking ‘‘(A) An application’’ and 

13 inserting ‘‘An application’’; and 

14 (B) by redesignating clauses (i) through (iv) 

15 as subparagraphs (A) through (D), respectively. 

16 (b) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.— 

17 Section 122 is amended by adding at the end the following: 

18 ‘‘(e) PREISSUANCE SUBMISSIONS BY THIRD PAR19 TIES.— 

20 ‘‘(1) IN GENERAL.—Any person may submit for 

21 consideration and inclusion in the record of a patent 

22 application, any patent, published patent applica23 tion, or other publication of potential relevance to the 

24 examination of the application, if such submission is 

25 made in writing before the earlier of— 


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1 ‘‘(A) the date a notice of allowance under 

2 section 151 is mailed in the application for pat3 ent; or 

4 ‘‘(B) either— 

5 ‘‘(i) 6 months after the date on which 

6 the application for patent is published 

7 under section 122, or 

8 ‘‘(ii) the date of the first rejection 

9 under section 132 of any claim by the ex10 aminer during the examination of the ap11 plication for patent, 

12 whichever occurs later. 

13 ‘‘(2) OTHER REQUIREMENTS.—Any submission 

14 under paragraph (1) shall— 

15 ‘‘(A) set forth a concise description of the 

16 asserted relevance of each submitted document; 

17 ‘‘(B) be accompanied by such fee as the Di18 rector may prescribe; and 

19 ‘‘(C) include a statement by the submitter 

20 affirming that the submission was made in com21 pliance with this section.’’. 

22 (c) EFFECTIVE DATE.—The amendments made by this 

23 section— 


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1 (1) shall take effect at the end of the 1-year pe2 riod beginning on the date of the enactment of this 

3 Act; and 

4 (2) shall apply to any application for patent 

5 filed before, on, or after the effective date under para6 graph (1). 

7 SEC. 10. TAX PLANNING METHODS NOT PATENTABLE. 

8 (a) IN GENERAL.—Section 101 is amended— 

9 (1) by striking ‘‘Whoever’’ and inserting ‘‘(a) 

10 PATENTABLE INVENTIONS.—Whoever’’; and 

11 (2) by adding at the end the following: 

12 ‘‘(b) TAX PLANNING METHODS.— 

13 ‘‘(1) UNPATENTABLE SUBJECT MATTER.—A pat14 ent may not be obtained for a tax planning method. 

15 ‘‘(2) DEFINITIONS.—For purposes of paragraph 

16 (1)— 

17 ‘‘(A) the term ‘tax planning method’ means 

18 a plan, strategy, technique, or scheme that is de19 signed to reduce, minimize, or defer, or has, 

20 when implemented, the effect of reducing, mini21 mizing, or deferring, a taxpayer’s tax liability, 

22 but does not include the use of tax preparation 

23 software or other tools used solely to perform or 

24 model mathematical calculations or prepare tax 

25 or information returns; 


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1 ‘‘(B) the term ‘taxpayer’ means an indi2 vidual, entity, or other person (as defined in sec3 tion 7701 of the Internal Revenue Code of 1986) 

4 that is subject to taxation directly, is required to 

5 prepare a tax return or information statement to 

6 enable one or more other persons to determine 

7 their tax liability, or is otherwise subject to a tax 

8 law; 

9 ‘‘(C) the terms ‘tax’, ‘tax laws’, ‘tax liabil10 ity’, and ‘taxation’ refer to any Federal, State, 

11 county, city, municipality, or other govern12 mental levy, assessment, or imposition, whether 

13 measured by income, value, or otherwise; and 

14 ‘‘(D) the term ‘State’ means each of the sev15 eral States, the District of Columbia, and any 

16 commonwealth, territory, or possession of the 

17 United States.’’. 

18 (b) APPLICABILITY.—The amendments made by this 

19 section— 

20 (1) shall take effect on the date of the enactment 

21 of this Act; 

22 (2) shall apply to any application for patent or 

23 application for a reissue patent that is— 

24 (A) filed on or after the date of the enact25 ment of this Act; or 


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1 (B) filed before that date if a patent or re2 issue patent has not been issued pursuant to the 

3 application as of that date; and 

4 (3) shall not be construed as validating any pat5 ent issued before the date of the enactment of this Act 

6 for an invention described in section 101(b) of title 

7 35, United States Code, as amended by this section. 

8 SEC. 11. VENUE AND JURISDICTION. 

9 (a) VENUE FOR PATENT CASES.—Section 1400 of title 

10 28, United States Code, is amended by striking subsection 

11 (b) and inserting the following: 

12 ‘‘(b) Notwithstanding section 1391 of this title, in any 

13 civil action arising under any Act of Congress relating to 

14 patents, a party shall not manufacture venue by assign15 ment, incorporation, or otherwise to invoke the venue of a 

16 specific district court. 

17 ‘‘(c) Notwithstanding section 1391 of this title, any 

18 civil action for patent infringement or any action for de19 claratory judgment may be brought only in a judicial dis20 trict— 

21 ‘‘(1) where the defendant has its principal place 

22 of business or in the location or place in which the 

23 defendant is incorporated, or, for foreign corporations 

24 with a United States subsidiary, where the defend25 ant’s primary United States subsidiary has its prinVerDate Aug 31 2005 22:20 Sep 04, 2007 Jkt 059200 PO 00000 Frm 00057 Fmt 6652 Sfmt 6203 E:\BILLS\H1908.RH H1908

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1 cipal place of business or in the location or place in 

2 which the defendants primary United States sub3 sidiary is incorporated; 

4 ‘‘(2) where the defendant has committed a sub5 stantial portion of the acts of infringement and has 

6 a regular and established physical facility that the de7 fendant controls and that constitutes a substantial 

8 portion of the operations of the defendant; 

9 ‘‘(3) where the primary plaintiff resides, if the 

10 primary plaintiff in the action is an institution of 

11 higher education as defined under section 101(a) of 

12 the Higher Education Act of 1965 (20 U.S.C. 

13 1001(a)); or 

14 ‘‘(4) where the plaintiff resides, if the plaintiff or 

15 a subsidiary of the plaintiff has an established phys16 ical facility in such district dedicated to research, de17 velopment, or manufacturing that is operated by full18 time employees of the plaintiff or such subsidiary, or 

19 if the sole plaintiff in the action is an individual in20 ventor who is a natural person and who qualifies at 

21 the time such action is filed as a micro entity under 

22 section 124 of title 35. 

23 ‘‘(d) If the plaintiff brings a civil action for patent 

24 infringement in a judicial district under subsection (c), the 


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1 district court may transfer that action to any other district 

2 or division where— 

3 ‘‘(1) the defendant has substantial evidence or 

4 witnesses; and 

5 ‘‘(2) venue would be appropriate under section 

6 1391 of this title, if such transfer would be appro7 priate under section 1404 of this title.’’. 

8 (b) INTERLOCUTORY APPEALS.—Subsection (c) of sec9 tion 1292 of title 28, United States Code, is amended— 

10 (1) by striking ‘‘and’’ at the end of paragraph 

11 (1); 

12 (2) by striking the period at the end of para13 graph (2) and inserting ‘‘; and’’; and 

14 (3) by adding at the end the following: 

15 ‘‘(3) of an appeal from an interlocutory order or 

16 decree determining construction of claims in a civil 

17 action for patent infringement under section 271 of 

18 title 35. 

19 Application for an appeal under paragraph (3) shall be 

20 made to the court within 10 days after entry of the order 

21 or decree. The district court shall have discretion whether 

22 to approve the application and, if so, whether to stay pro23 ceedings in the district court during pendency of the ap24 peal.’’. 


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1 (c) EFFECTIVE DATE.—The amendments made by this 

2 section shall apply to any action commenced on or after 

3 the date of the enactment of this Act. 

4 SEC. 12. ADDITIONAL INFORMATION; INEQUITABLE CON5 DUCT AS DEFENSE TO INFRINGEMENT. 

6 (a) DISCLOSURE REQUIREMENTS FOR APPLICANTS.— 

7 (1) IN GENERAL.—Chapter 11 is amended by 

8 adding at the end the following new section: 

9 ‘‘§ 123. Additional information 

10 ‘‘(a) IN GENERAL.—The Director shall, by regulation, 

11 require that applicants submit a search report and other 

12 information and analysis relevant to patentability. An ap13 plication shall be regarded as abandoned if the applicant 

14 fails to submit the required search report, information, and 

15 analysis in the manner and within the time period pre16 scribed by the Director. 

17 ‘‘(b) EXCEPTION FOR MICRO ENTITIES.—Applications 

18 from micro-entities shall not be subject to the requirements 

19 of regulations issued under subsection (a). 

20 ‘‘§ 124. Micro entities 

21 ‘‘(a) DEFINITION.—For purposes of this title, the term 

22 ‘micro entity’ means an applicant for patent who makes 

23 a certification under either subsection (b) or (c). 


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1 ‘‘(b) UNASSIGNED APPLICATION.—A certification 

2 under this subsection is a certification by each inventor 

3 named in the application that the inventor— 

4 ‘‘(1) qualifies as a small entity as defined in reg5 ulations issued by the Director; 

6 ‘‘(2) has not been named on five or more pre7 viously filed patent applications; 

8 ‘‘(3) has not assigned, granted, or conveyed, and 

9 is not under an obligation by contract or law to as10 sign, grant, or convey, a license or any other owner11 ship interest in the application; and 

12 ‘‘(4) does not have a gross income, as defined in 

13 section 61(a) of the Internal Revenue Code of 1986, 

14 exceeding 2.5 times the median household income, as 

15 reported by the Bureau of the Census, for the most re16 cent calendar year preceding the calendar year in 

17 which the examination fee is being paid. 

18 ‘‘(c) ASSIGNED APPLICATION.—A certification under 

19 this subsection is a certification by each inventor named 

20 in the application that the inventor— 

21 ‘‘(1) qualifies as a small entity as defined in reg22 ulations issued by the Director and meets the require23 ments of subsection (b)(4); 

24 ‘‘(2) has not been named on five or more pre25 viously filed patent applications; and 


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1 ‘‘(3) has assigned, granted, conveyed, or is under 

2 an obligation by contract or law to assign, grant, or 

3 convey, a license or other ownership interest in the 

4 application to an entity that has five or fewer em5 ployees and has a gross taxable income, as defined in 

6 section 61(a) of the Internal Revenue Code of 1986, 

7 that does not exceed 2.5 times the median household 

8 income, as reported by the Bureau of the Census, for 

9 the most recent calendar year preceding the calendar 

10 year in which the examination fee is being paid.’’. 

11 (2) CONFORMING AMENDMENT.—The table of sec12 tions for chapter 11 is amended by adding at the end 

13 the following new items: 

‘‘123. Additional information. 

‘‘124. Micro entities.’’. 

14 (b) INEQUITABLE CONDUCT AS DEFENSE TO IN15 FRINGEMENT.—Section 282 is amended— 

16 (1) in the first undesignated paragraph, by 

17 striking ‘‘A patent’’ and inserting ‘‘(a) IN GEN18 ERAL.—A patent’’; 

19 (2) in the second undesignated paragraph— 

20 (A) by striking ‘‘The following’’ and insert21 ing ‘‘(b) DEFENSES.—The following’’; and 

22 (B) by striking the comma at the end of 

23 each of paragraphs (1), (2), and (3) and insert24 ing a period; 


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1 (3) in the third undesignated paragraph— 

2 (A) by striking ‘‘In actions’’ and inserting 

3 ‘‘(d) NOTICE OF ACTIONS; PLEADING.—In ac4 tions’’; 

5 (B) by inserting after the second sentence 

6 the following: ‘‘In an action involving any alle7 gation of inequitable conduct under subsection 

8 (c), the party asserting this defense or claim 

9 shall comply with the pleading requirements set 

10 forth in Rule 9(b) of the Federal Rules of Civil 

11 Procedure.’’; and 

12 (C) by striking ‘‘Invalidity’’ and inserting 

13 ‘‘(e) EXTENSION OF PATENT TERM.—Inva14 lidity’’; and 

15 (4) by inserting after subsection (b), as des16 ignated by paragraph (2) of this subsection, the fol17 lowing: 

18 ‘‘(c) INEQUITABLE CONDUCT.— 

19 ‘‘(1) DEFENSE.—A patent may be held to be un20 enforceable, or other remedy imposed under para21 graph (3), for inequitable conduct only if it is estab22 lished, by clear and convincing evidence, that— 

23 ‘‘(A) the patentee, its agents, or another 

24 person with a duty of disclosure to the Office, 

25 with the intent to mislead or deceive the patent 


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1 examiner, misrepresented or failed to disclose 

2 material information concerning a matter or 

3 proceeding before the Office; and 

4 ‘‘(B) in the absence of such deception, the 

5 Office, acting reasonably, would, on the record 

6 before it, have made a prima facie finding of 

7 unpatentability. 

8 ‘‘(2) INTENT.—In order to prove intent to mis9 lead or deceive under paragraph (1), specific facts be10 yond materiality of the information submitted or not 

11 disclosed must be proven that support an inference of 

12 intent to mislead or deceive the Patent and Trade13 mark Office. Facts support an inference of intent if 

14 they show circumstances that indicate conscious or 

15 deliberate behavior on the part of the patentee, its 

16 agents, or another person with a duty of disclosure to 

17 the Office, to not disclose material information or to 

18 submit materially false information. 

19 ‘‘(3) REMEDY.—Upon a finding of inequitable 

20 conduct, the court shall balance the equities to deter21 mine which of the following remedies to impose: 

22 ‘‘(A) Denying equitable relief to the patent 

23 holder and limiting the remedy for infringement 

24 to damages. 


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1 ‘‘(B) Holding the claims-in-suit, or the 

2 claims in which inequitable conduct occurred, 

3 unenforceable. 

4 ‘‘(C) Holding the patent unenforceable. 

5 ‘‘(D) Holding the claims of a related patent 

6 unenforceable. 

7 ‘‘(4) ATTORNEY MISCONDUCT.—Upon a finding 

8 of inequitable conduct, if there is evidence that the 

9 conduct can be attributable to a person or persons au10 thorized to practice before the Office, the court shall 

11 refer the matter to the Office for appropriate discipli12 nary action under section 32, and shall order the par13 ties to preserve and make available to the Office any 

14 materials that may be relevant to the determination 

15 under section 32.’’. 

16 (c) EFFECTIVE DATE.— 

17 (1) SUBSECTION (a).—The amendments made by 

18 subsection (a)— 

19 (A) shall take effect at the end of the 1-year 

20 period beginning on the date of the enactment of 

21 this Act; and 

22 (B) shall apply to any application for pat23 ent filed on or after the effective date under sub24 paragraph (A). 


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1 (2) SUBSECTION (b).—The amendments made by 

2 subsection (b) shall apply to any civil action com3 menced on or after the date of the enactment of this 

4 Act. 

5 SEC. 13. BEST MODE REQUIREMENT. 

6 Section 282(b) (as designated by section 12(b) of this 

7 Act) is amended by striking paragraph (3) and inserting 

8 the following: 

9 ‘‘(3) Invalidity of the patent or any claim in 

10 suit for failure to comply with— 

11 ‘‘(A) any requirement of section 112 of this 

12 title, other than the requirement that the speci13 fication shall set forth the best mode con14 templated by the inventor of carrying out his in15 vention; or 

16 ‘‘(B) any requirement of section 251 of this 

17 title.’’. 

18 SEC. 14. REGULATORY AUTHORITY. 

19 (a) REGULATORY AUTHORITY.—Section 2(c) is 

20 amended by adding at the end the following: 

21 ‘‘(6) The powers granted under paragraph (2) of sub22 section (b) include the authority to promulgate regulations 

23 to ensure the quality and timeliness of applications and 

24 their examination, including specifying circumstances 

25 under which an application for patent may claim the benVerDate Aug 31 2005 22:20 Sep 04, 2007 Jkt 059200 PO 00000 Frm 00066 Fmt 6652 Sfmt 6203 E:\BILLS\H1908.RH H1908

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1 efit under sections 120, 121 and 365(c) of the filing date 

2 of a prior filed application for patent.’’. 

3 (b) CLARIFICATION.—The amendment made by sub4 section (a) clarifies the scope of power granted to the United 

5 States Patent and Trademark Office by paragraph (2) of 

6 section 2(b) of title 35, United States Code, as in effect since 

7 the enactment of Public Law 106–113. 

8 SEC. 15. TECHNICAL AMENDMENTS. 

9 (a) JOINT INVENTIONS.—Section 116 is amended— 

10 (1) in the first paragraph, by striking 

11 ‘‘When’’ and inserting ‘‘(a) JOINT INVEN12 TIONS.—When’’; 

13 (2) in the second paragraph, by striking ‘‘If 

14 a joint inventor’’ and inserting ‘‘(b) OMITTED

15 INVENTOR.—If a joint inventor’’; and 

16 (3) in the third paragraph, by striking 

17 ‘‘Whenever’’ and inserting ‘‘(c) CORRECTION OF

18 ERRORS IN APPLICATION.—Whenever’’. 

19 (b) FILING OF APPLICATION IN FOREIGN COUNTRY.— 

20 Section 184 is amended— 

21 (1) in the first paragraph, by striking ‘‘Except 

22 when’’ and inserting ‘‘(a) FILING IN FOREIGN COUN23 TRY.—Except when’’; 


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1 (2) in the second paragraph, by striking ‘‘The 

2 term’’ and inserting ‘‘(b) APPLICATION.—The term’’; 

3 and 

4 (3) in the third paragraph, by striking ‘‘The 

5 scope’’ and inserting ‘‘(c) SUBSEQUENT MODIFICA6 TIONS, AMENDMENTS, AND SUPPLEMENTS.—The 

7 scope’’. 

8 (c) REISSUE OF DEFECTIVE PATENTS.—Section 251 

9 is amended— 

10 (1) in the first paragraph, by striking ‘‘When11 ever’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; 

12 (2) in the second paragraph, by striking ‘‘The 

13 Director’’ and inserting ‘‘(b) MULTIPLE REISSUED

14 PATENTS.—The Director’’; 

15 (3) in the third paragraph, by striking ‘‘The 

16 provisions’’ and inserting ‘‘(c) APPLICABILITY OF

17 THIS TITLE.—The provisions’’; and 

18 (4) in the last paragraph, by striking ‘‘No re19 issued patent’’ and inserting ‘‘(d) REISSUE PATENT

20 ENLARGING SCOPE OF CLAIMS.—No reissued patent’’. 

21 (d) EFFECT OF REISSUE.—Section 253 is amended— 

22 (1) in the first paragraph, by striking ‘‘When23 ever’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; 

24 and 


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1 (2) in the second paragraph, by striking ‘‘In like 

2 manner’’ and inserting ‘‘(b) ADDITIONAL DISCLAIMER

3 OR DEDICATION.—In the manner set forth in sub4 section (a),’’. 

5 (e) CORRECTION OF NAMED INVENTOR.—Section 256 

6 is amended— 

7 (1) in the first paragraph, by striking ‘‘When8 ever’’ and inserting ‘‘(a) CORRECTION.—Whenever’’; 

9 and 

10 (2) in the second paragraph, by striking ‘‘The 

11 error’’ and inserting ‘‘(b) PATENT VALID IF ERROR

12 CORRECTED.—The error’’. 

13 (f) EFFECTIVE DATE.—The amendments made by this 

14 section shall take effect on the date of the enactment of this 

15 Act. 

16 SEC. 16. STUDY OF SPECIAL MASTERS IN PATENT CASES. 

17 (a) IN GENERAL.—Not later than 180 days after the 

18 date of the enactment of this Act, the Director of the Admin19 istrative Office of the United States Courts shall conduct 

20 a study of, and submit to the Committee on the Judiciary 

21 of the House of Representatives and the Committee on the 

22 Judiciary of the Senate a report on, the use of special mas23 ters in patent litigation who are appointed in accordance 

24 with Rule 53 of the Federal Rules of Civil Procedure. 


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1 (b) OBJECTIVE.—In conducting the study under sub2 section (a), the Director shall consider whether the use of 

3 special masters has been beneficial in patent litigation and 

4 what, if any, program should be undertaken to facilitate 

5 the use by the judiciary of special masters in patent litiga6 tion. 

7 (c) FACTORS TO CONSIDER.—In conducting the study 

8 under subsection (a), the Director, in consultation with the 

9 Federal Judicial Center, shall consider— 

10 (1) the basis upon which courts appoint special 

11 masters under Rule 53(b) of the Federal Rules of 

12 Civil Procedure; 

13 (2) the frequency with which special masters 

14 have been used by the courts; 

15 (3) the role and powers special masters are given 

16 by the courts; 

17 (4) the subject matter at issue in cases that use 

18 special masters; 

19 (5) the impact on court time and costs in cases 

20 where a special master is used as compared to cases 

21 where no special master is used; 

22 (6) the legal and technical training and experi23 ence of special masters; 


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1 (7) whether the use of special masters has an im2 pact on the reversal rate of district court decisions at 

3 the Court of Appeals for the Federal Circuit; and 

4 (8) any other factors that the Director believes 

5 would assist in gauging the effectiveness of special 

6 masters in patent litigation. 

7 SEC. 17. RULE OF CONSTRUCTION. 

8 The enactment of section 102(b)(3) of title 35, United 

9 States Code, under section (3)(b) of this Act is done with 

10 the same intent to promote joint research activities that was 

11 expressed, including in the legislative history, through the 

12 enactment of the Cooperative Research and Technology En13 hancement Act of 2004 (Public Law 108–453; the ‘‘CRE14 ATE Act’’), the amendments of which are stricken by sec15 tion 3(c) of this Act. The United States Patent and Trade16 mark Office shall administer section 102(b)(3) of title 35, 

17 United States Code, in a manner consistent with the legisla18 tive history of the CREATE Act that was relevant to its 

19 administration by the Patent and Trademark Office. 


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Union Calendar No. 200 

110TH CONGRESS 

1ST SESSION H. R. 1908 

[Report No. 110

–314] 

A BILL 

To amend title 35, United States Code, to provide 

S

for patent reform. 

EPTEMBER 4, 2007 

Reported with an amendment, committed to the Comand ordered to be printed mittee of the Whole House on the State of the Union, 


hsrobinson on PROD1PC76 with BILLS