I 

110TH CONGRESS 

1ST SESSION H. R. 1908 

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 

A BILL 

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

reform. 

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 

5 ‘‘Patent Reform Act of 2007’’. 

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

7 this 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. 

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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. Venue and jurisdiction. 

Sec. 11. Regulatory authority. 

Sec. 12. Technical amendments. 

Sec. 13. Effective date; rule of construction. 

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

2 Whenever in this Act a section or other provision is 

3 amended or repealed, that amendment or repeal shall be 

4 considered to be made to that section or other provision 

5 of title 35, United States Code. 

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

7 (a) DEFINITIONS.—Section 100 is amended by add8 ing at the end the following: 

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

10 a joint invention, the individuals collectively who invented 

11 or discovered the subject matter of the invention. 

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

13 any 1 of the individuals who invented or discovered the 

14 subject matter of a joint invention. 

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

16 is— 

17 ‘‘(1) the filing date of the patent or the applica18 tion for patent containing the claim to the invention; 

19 or 

20 ‘‘(2) if the patent or application for patent is 

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1 tion under section 119, 365(a), or 365(b) or to the 

2 benefit of an earlier filing date in the United States 

3 under section 120, 121, or 365(c), the filing date of 

4 the earliest such application in which the claimed in5 vention is disclosed in the manner provided by the 

6 first paragraph of section 112. 

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

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

9 for a patent. 

10 ‘‘(j) The term ‘joint invention’ means an invention 

11 resulting from the collaboration of inventive endeavors of 

12 2 or more persons working toward the same end and pro13 ducing an invention by their collective efforts.’’. 

14 (b) CONDITIONS FOR PATENTABILITY.— 

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

16 read as follows: 

17 ‘‘§ 102. Conditions for patentability; novelty 

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

19 invention may not be obtained if— 

20 ‘‘(1) the claimed invention was patented, de21 scribed in a printed publication, or in public use or 

22 on sale— 

23 ‘‘(A) more than one year before the effec24 tive filing date of the claimed invention; or 

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1 ‘‘(B) one year or less before the effective 

2 filing date of the claimed invention, other than 

3 through disclosures made by the inventor or a 

4 joint inventor or by others who obtained the 

5 subject matter disclosed directly or indirectly 

6 from the inventor or a joint inventor; or 

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

8 patent issued under section 151, or in an application 

9 for patent published or deemed published under sec10 tion 122(b), in which the patent or application, as 

11 the case may be, names another inventor and was 

12 effectively filed before the effective filing date of the 

13 claimed invention. 

14 ‘‘(b) EXCEPTIONS.— 

15 ‘‘(1) PRIOR INVENTOR DISCLOSURE EXCEP16 TION.—Subject matter that would otherwise qualify 

17 as prior art under subparagraph (B) of subsection 

18 (a)(1) shall not be prior art to a claimed invention 

19 under that subparagraph if the subject matter had, 

20 before the applicable date under such subparagraph 

21 (B), been publicly disclosed by the inventor or a 

22 joint inventor or others who obtained the subject 

23 matter disclosed directly or indirectly from the in24 ventor, joint inventor, or applicant. 

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1 ‘‘(2) DERIVATION AND COMMON ASSIGNMENT

2 EXCEPTIONS.—Subject matter that would otherwise 

3 qualify as prior art only under subsection (a)(2), 

4 after taking into account the exception under para5 graph (1), shall not be prior art to a claimed inven6 tion if— 

7 ‘‘(A) the subject matter was obtained di8 rectly or indirectly from the inventor or a joint 

9 inventor; or 

10 ‘‘(B) the subject matter and the claimed 

11 invention, not later than the effective filing date 

12 of the claimed invention, were owned by the 

13 same person or subject to an obligation of as14 signment to the same person. 

15 ‘‘(3) JOINT RESEARCH AGREEMENT EXCEP16 TION.— 

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

18 claimed invention shall be deemed to have been 

19 owned by the same person or subject to an obli20 gation of assignment to the same person in ap21 plying the provisions of paragraph (2) if— 

22 ‘‘(i) the claimed invention was made 

23 by or on behalf of parties to a joint re24 search agreement that was in effect on or 

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1 before the effective filing date of the 

2 claimed invention; 

3 ‘‘(ii) the claimed invention was made 

4 as a result of activities undertaken within 

5 the scope of the joint research agreement; 

6 and 

7 ‘‘(iii) the application for patent for 

8 the claimed invention discloses or is 

9 amended to disclose the names of the par10 ties to the joint research agreement. 

11 ‘‘(B) For purposes of subparagraph (A), 

12 the term ‘joint research agreement’ means a 

13 written contract, grant, or cooperative agree14 ment entered into by two or more persons or 

15 entities for the performance of experimental, 

16 developmental, or research work in the field of 

17 the claimed invention. 

18 ‘‘(4) PATENTS AND PUBLISHED APPLICATIONS

19 EFFECTIVELY FILED.—A patent or application for 

20 patent is effectively filed under subsection (a)(2) 

21 with respect to any subject matter described in the 

22 patent or application— 

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

24 the application for patent; or 

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

2 is entitled to claim a right of priority under sec3 tion 119, 365(a), or 365(b) or to claim the ben4 efit of an earlier filing date under section 120, 

5 121, or 365(c), based upon one or more prior 

6 filed applications for patent, as of the filing 

7 date of the earliest such application that de8 scribes the subject matter.’’. 

9 (2) CONFORMING AMENDMENT.—The item re10 lating to section 102 in the table of sections for 

11 chapter 10 is amended to read as follows: 

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

12 (c) CONDITIONS FOR PATENTABILITY; NON-OBVIOUS

13 SUBJECT MATTER.—Section 103 is amended to read as 

14 follows: 

15 ‘‘§ 103. Conditions for patentability; nonobvious sub16 ject matter 

17 ‘‘A patent for a claimed invention may not be ob18 tained though the claimed invention is not identically dis19 closed as set forth in section 102, if the differences be20 tween the claimed invention and the prior art are such 

21 that the claimed invention as a whole would have been ob22 vious before the effective filing date of the claimed inven23 tion to a person having ordinary skill in the art to which 

24 the claimed invention pertains. Patentability shall not be 

25 negated by the manner in which the invention was made.’’. 

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1 (d) REPEAL OF REQUIREMENTS FOR INVENTIONS

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

3 that section in the table of sections for chapter 10, are 

4 repealed. 

5 (e) REPEAL OF STATUTORY INVENTION REGISTRA6 TION.— 

7 (1) IN GENERAL.—Section 157, and the item 

8 relating to that section in the table of sections for 

9 chapter 14, are repealed. 

10 (2) REMOVAL OF CROSS REFERENCES.—Section 

11 111(b)(8) is amended by striking ‘‘sections 115, 

12 131, 135, and 157’’ and inserting ‘‘sections 131 and 

13 135’’. 

14 (f) EARLIER FILING DATE FOR INVENTOR AND

15 JOINT INVENTOR.—Section 120 is amended by striking 

16 ‘‘which is filed by an inventor or inventors named’’ and 

17 inserting ‘‘which names an inventor or joint inventor’’. 

18 (g) CONFORMING AMENDMENTS.— 

19 (1) RIGHT OF PRIORITY.—Section 172 is 

20 amended by striking ‘‘and the time specified in sec21 tion 102(d)’’. 

22 (2) LIMITATION ON REMEDIES.—Section 

23 287(c)(4) is amended by striking ‘‘the earliest effec24 tive filing date of which is prior to’’ and inserting 

25 ‘‘which has an effective filing date before’’. 

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1 (3) INTERNATIONAL APPLICATION DESIG2 NATING THE UNITED STATES: EFFECT.—Section 

3 363 is amended by striking ‘‘except as otherwise 

4 provided in section 102(e) of this title’’. 

5 (4) PUBLICATION OF INTERNATIONAL APPLICA6 TION: EFFECT.—Section 374 is amended by striking 

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

8 154(d)’’. 

9 (5) PATENT ISSUED ON INTERNATIONAL APPLI10 CATION: EFFECT.—The second sentence of section 

11 375(a) is amended by striking ‘‘Subject to section 

12 102(e) of this title, such’’ and inserting ‘‘Such’’. 

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

14 119(a) is amended by striking ‘‘; but no patent shall 

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

16 prior to such filing’’. 

17 (7) INVENTIONS MADE WITH FEDERAL ASSIST18 ANCE.—Section 202(c) is amended— 

19 (A) in paragraph (2)— 

20 (i) by striking ‘‘publication, on sale, 

21 or public use,’’ and all that follows through 

22 ‘‘obtained in the United States’’ and in23 serting ‘‘the 1-year period referred to in 

24 section 102(a) would end before the end of 

25 that 2-year period’’; and 

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1 (ii) by striking ‘‘the statutory’’ and 

2 inserting ‘‘that 1-year’’; and 

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

4 statutory bar date that may occur under this 

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

6 and inserting ‘‘the expiration of the 1-year pe7 riod referred to in section 102(a)’’. 

8 (h) REPEAL OF INTERFERING PATENT REMEDIES.— 

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

10 table of sections for chapter 29, are repealed. 

11 (i) ACTION FOR CLAIM TO PATENT ON DERIVED IN12 VENTION.—Section 135(a) is amended to read as follows: 

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

14 ‘‘(1) INSTITUTION OF DERIVATION PRO15 CEEDING.—An applicant may request initiation of a 

16 derivation proceeding to determine the right of the 

17 applicant to a patent by filing a request which sets 

18 forth with particularity the basis for finding that an 

19 earlier applicant derived the claimed invention from 

20 the applicant requesting the proceeding and, without 

21 authorization, filed an application claiming such in22 vention. Any such request may only be made within 

23 12 months after the date of first publication of an 

24 application containing a claim that is the same or is 

25 substantially the same as the claimed invention, 

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1 must be made under oath, and must be supported 

2 by substantial evidence. Whenever the Director de3 termines that patents or applications for patent 

4 naming different individuals as the inventor interfere 

5 with one another because of a dispute over the right 

6 to patent under section 101, the Director shall insti7 tute a derivation proceeding for the purpose of de8 termining which applicant is entitled to a patent. 

9 ‘‘(2) REQUIREMENTS.—A proceeding under this 

10 subsection may not be commenced unless the party 

11 requesting the proceeding has filed an application 

12 that was filed not later than 18 months after the ef13 fective filing date of the application or patent 

14 deemed to interfere with the subsequent application 

15 or patent. 

16 ‘‘(3) DETERMINATION BY PATENT TRIAL AND

17 APPEAL BOARD.—In any proceeding under this sub18 section, the Patent Trial and Appeal Board— 

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

20 right to patent; 

21 ‘‘(B) in appropriate circumstances, may 

22 correct the naming of the inventor in any appli23 cation or patent at issue; and 

24 ‘‘(C) shall issue a final decision on the 

25 right to patent. 

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1 ‘‘(4) DERIVATION PROCEEDING.—The Board 

2 may defer action on a request to initiate a derivation 

3 proceeding until 3 months after the date on which 

4 the Director issues a patent to the applicant that 

5 filed the earlier application. 

6 ‘‘(5) EFFECT OF FINAL DECISION.—The final 

7 decision of the Patent Trial and Appeal Board, if 

8 adverse to the claim of an applicant, shall constitute 

9 the final refusal by the Patent and Trademark Of10 fice on the claims involved. The Director may issue 

11 a patent to an applicant who is determined by the 

12 Patent Trial and Appeal Board to have the right to 

13 patent. The final decision of the Board, if adverse 

14 to a patentee, shall, if no appeal or other review of 

15 the decision has been or can be taken or had, con16 stitute cancellation of the claims involved in the pat17 ent, and notice of such cancellation shall be endorsed 

18 on copies of the patent distributed after such can19 cellation by the Patent and Trademark Office.’’. 

20 (j) ELIMINATION OF REFERENCES TO INTER21 FERENCES.—(1) Sections 6, 41, 134, 141, 145, 146, 154, 

22 305, and 314 are each amended by striking ‘‘Board of 

23 Patent Appeals and Interferences’’ each place it appears 

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

25 (2) Sections 141, 146, and 154 are each amended— 

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1 (A) by striking ‘‘an interference’’ each place it 

2 appears and inserting ‘‘a derivation proceeding’’; 

3 and 

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

5 place it appears and inserting ‘‘derivation pro6 ceeding’’. 

7 (3) The section heading for section 134 is amended 

8 to read as follows: 

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

10 (4) The section heading for section 135 is amended 

11 to read as follows: 

12 ‘‘§ 135. Derivation proceedings’’. 

13 (5) The section heading for section 146 is amended 

14 to read as follows: 

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

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

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

19 (7) 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 (8) The items relating to sections 134 and 135 in 

22 the table of sections for chapter 12 are amended to read 

23 as follows: 

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

‘‘135. Derivation proceedings.’’. 

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1 (9) 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 (10) CERTAIN APPEALS.—Subsection 1295(a)(4)(A) 

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

5 follows: 

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

7 the United States Patent and Trademark Office 

8 with respect to patent applications, derivation 

9 proceedings, and post-grant review proceedings, 

10 at the instance of an applicant for a patent or 

11 any party to a patent interference (commenced 

12 before the effective date of the Patent Reform 

13 Act of 2007), derivation proceeding, or post14 grant review proceeding, and any such appeal 

15 shall waive any right of such applicant or party 

16 to proceed under section 145 or 146 of title 

17 35;’’. 

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

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

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

21 read as follows: 

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

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

24 DECLARATION.—An application for patent that is filed 

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

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

2 invention for which an application has previously been 

3 filed under this title by that inventor shall include, or be 

4 amended to include, the name of the inventor of any 

5 claimed invention in the application. Except as otherwise 

6 provided in this section, an individual who is the inventor 

7 or a joint inventor of a claimed invention in an application 

8 for patent shall execute an oath or declaration in connec9 tion with the application. 

10 ‘‘(b) REQUIRED STATEMENTS.—An oath or declara11 tion under subsection (a) shall contain statements that— 

12 ‘‘(1) the application was made or was author13 ized to be made by the affiant or declarant; and 

14 ‘‘(2) such individual believes himself or herself 

15 to be the original inventor or an original joint inven16 tor of a claimed invention in the application. 

17 ‘‘(c) ADDITIONAL REQUIREMENTS.—The Director 

18 may specify additional information relating to the inventor 

19 and the invention that is required to be included in an 

20 oath or declaration under subsection (a). 

21 ‘‘(d) SUBSTITUTE STATEMENT.— 

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

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

24 patent may provide a substitute statement under the 

25 circumstances described in paragraph (2) and such 

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1 additional circumstances that the Director may 

2 specify by regulation. 

3 ‘‘(2) PERMITTED CIRCUMSTANCES.—A sub4 stitute statement under paragraph (1) is permitted 

5 with respect to any individual who— 

6 ‘‘(A) is unable to file the oath or declara7 tion under subsection (a) because the indi8 vidual— 

9 ‘‘(i) is deceased; 

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

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

12 diligent effort; or 

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

14 invention but has refused to make the oath or 

15 declaration required under subsection (a). 

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

17 this subsection shall— 

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

19 whom the statement applies; 

20 ‘‘(B) set forth the circumstances rep21 resenting the permitted basis for the filing of 

22 the substitute statement in lieu of the oath or 

23 declaration under subsection (a); and 

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1 ‘‘(C) contain any additional information, 

2 including any showing, required by the Direc3 tor. 

4 ‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGN5 MENT OF RECORD.—An individual who is under an obliga6 tion of assignment of an application for patent may in7 clude the required statements under subsections (b) and 

8 (c) in the assignment executed by the individual, in lieu 

9 of filing such statements separately. 

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

11 section 151 may be provided to an applicant for patent 

12 only if the applicant for patent has filed each required 

13 oath or declaration under subsection (a) or has filed a sub14 stitute statement under subsection (d) or recorded an as15 signment meeting the requirements of subsection (e). 

16 ‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE17 QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.— 

18 The requirements under this section shall not apply to an 

19 individual with respect to an application for patent in 

20 which the individual is named as the inventor or a joint 

21 inventor and that claims the benefit under section 120 or 

22 365(c) of the filing of an earlier-filed application, if— 

23 ‘‘(1) an oath or declaration meeting the require24 ments of subsection (a) was executed by the indimstockstill on PROD1PC66 with BILLS

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1 vidual and was filed in connection with the earlier2 filed application; 

3 ‘‘(2) a substitute statement meeting the re4 quirements of subsection (d) was filed in the earlier 

5 filed application with respect to the individual; or 

6 ‘‘(3) an assignment meeting the requirements 

7 of subsection (e) was executed with respect to the 

8 earlier-filed application by the individual and was re9 corded in connection with the earlier-filed applica10 tion. 

11 ‘‘(h) SUPPLEMENTAL AND CORRECTED STATE12 MENTS; FILING ADDITIONAL STATEMENTS.— 

13 ‘‘(1) IN GENERAL.—Any person making a state14 ment required under this section may withdraw, re15 place, or otherwise correct the statement at any 

16 time. If a change is made in the naming of the in17 ventor requiring the filing of 1 or more additional 

18 statements under this section, the Director shall es19 tablish regulations under which such additional 

20 statements may be filed. 

21 ‘‘(2) SUPPLEMENTAL STATEMENTS NOT RE22 QUIRED.—If an individual has executed an oath or 

23 declaration under subsection (a) or an assignment 

24 meeting the requirements of subsection (e) with re25 spect to an application for patent, the Director may 

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1 not thereafter require that individual to make any 

2 additional oath, declaration, or other statement 

3 equivalent to those required by this section in con4 nection with the application for patent or any patent 

5 issuing thereon. 

6 ‘‘(3) SAVINGS CLAUSE.—No patent shall be in7 valid or unenforceable based upon the failure to 

8 comply with a requirement under this section if the 

9 failure is remedied as provided under paragraph 

10 (1).’’. 

11 (2) RELATIONSHIP TO DIVISIONAL APPLICA12 TIONS.—Section 121 is amended by striking ‘‘If a 

13 divisional application’’ and all that follows through 

14 ‘‘inventor.’’. 

15 (3) REQUIREMENTS FOR NONPROVISIONAL AP16 PLICATIONS.—Section 111(a) is amended— 

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

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

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

20 striking ‘‘AND OATH’’; and 

21 (C) by striking ‘‘and oath’’ each place it 

22 appears. 

23 (4) CONFORMING AMENDMENT.—The item re24 lating to section 115 in the table of sections for 

25 chapter 10 is amended to read as follows: 

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

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1 (b) FILING BY OTHER THAN INVENTOR.—Section 

2 118 is amended to read as follows: 

3 ‘‘§ 118. Filing by other than inventor 

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

5 under an obligation to assign the invention may make an 

6 application for patent. A person who otherwise shows suf7 ficient proprietary interest in the matter may make an ap8 plication for patent on behalf of and as agent for the in9 ventor on proof of the pertinent facts and a showing that 

10 such action is appropriate to preserve the rights of the 

11 parties. If the Director grants a patent on an application 

12 filed under this section by a person other than the inven13 tor, the patent shall be granted to the real party in inter14 est and upon such notice to the inventor as the Director 

15 considers to be sufficient.’’. 

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

17 (1) in the first paragraph—— 

18 (A) by striking ‘‘The specification’’ and in19 serting ‘‘(a) IN GENERAL.—The specification’’; 

20 (B) by striking ‘‘of carrying out his inven21 tion’’ and inserting ‘‘or joint inventor of car22 rying out the invention’’; and 

23 (2) in the second paragraph— 

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1 (A) by striking ‘‘The specifications’’ and 

2 inserting ‘‘(b) CONCLUSION.—The specifica3 tions’’; and 

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

5 invention’’ and inserting ‘‘inventor or a joint in6 ventor regards as the invention’’; 

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

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

9 (4) in the fourth paragraph, by striking ‘‘Sub10 ject to the following paragraph,’’ and inserting ‘‘(d) 

11 REFERENCE IN DEPENDENT FORMS.—Subject to 

12 subsection (e),’’; 

13 (5) in the fifth paragraph, by striking ‘‘A 

14 claim’’ and inserting ‘‘(e) REFERENCE IN MULTIPLE

15 DEPENDENT FORM.—A claim’’; and 

16 (6) in the last paragraph, by striking ‘‘An ele17 ment’’ and inserting ‘‘(f) ELEMENT IN CLAIM FOR

18 A COMBINATION.—An element’’. 

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

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

21 (1) in the first paragraph— 

22 (A) by striking ‘‘Upon’’ and inserting ‘‘(a) 

23 AWARD OF DAMAGES.— 

24 ‘‘(1) IN GENERAL.—Upon’’; 

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1 (B) by aligning the remaining text accord2 ingly; and 

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

4 ‘‘(2) RELATIONSHIP OF DAMAGES TO CON5 TRIBUTIONS OVER PRIOR ART.—The court shall con6 duct an analysis to ensure that a reasonable royalty 

7 under paragraph (1) is applied only to that economic 

8 value properly attributable to the patent’s specific 

9 contribution over the prior art. In a reasonable roy10 alty analysis, the court shall identify all factors rel11 evant to the determination of a reasonable royalty 

12 under this subsection, and the court or the jury, as 

13 the case may be, shall consider only those factors in 

14 making the determination. The court shall exclude 

15 from the analysis the economic value properly attrib16 utable to the prior art, and other features or im17 provements, whether or not themselves patented, 

18 that contribute economic value to the infringing 

19 product or process. 

20 ‘‘(3) ENTIRE MARKET VALUE.—Unless the 

21 claimant shows that the patent’s specific contribu22 tion over the prior art is the predominant basis for 

23 market demand for an infringing product or process, 

24 damages may not be based upon the entire market 

25 value of that infringing product or process. 

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1 ‘‘(4) OTHER FACTORS.—In determining dam2 ages, the court may also consider, or direct the jury 

3 to consider, the terms of any nonexclusive market4 place licensing of the invention, where appropriate, 

5 as well as any other relevant factors under applica6 ble law.’’; 

7 (2) by amending the second undesignated para8 graph to read as follows: 

9 ‘‘(b) WILLFUL INFRINGEMENT.— 

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

11 determined that the infringer has willfully infringed 

12 a patent or patents may increase the damages up to 

13 three times the amount of damages found or as14 sessed under subsection (a), except that increased 

15 damages under this paragraph shall not apply to 

16 provisional rights under section 154(d). 

17 ‘‘(2) PERMITTED GROUNDS FOR WILLFUL18 NESS.—A court may find that an infringer has will19 fully infringed a patent only if the patent owner pre20 sents clear and convincing evidence that— 

21 ‘‘(A) after receiving written notice from 

22 the patentee— 

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

24 manner sufficient to give the infringer an 

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1 objectively reasonable apprehension of suit 

2 on such patent, and 

3 ‘‘(ii) identifying with particularity 

4 each claim of the patent, each product or 

5 process that the patent owner alleges in6 fringes the patent, and the relationship of 

7 such product or process to such claim, 

8 the infringer, after a reasonable opportunity to 

9 investigate, thereafter performed one or more of 

10 the alleged acts of infringement; 

11 ‘‘(B) the infringer intentionally copied the 

12 patented invention with knowledge that it was 

13 patented; or 

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

15 have infringed that patent, the infringer en16 gaged in conduct that was not colorably dif17 ferent from the conduct previously found to 

18 have infringed the patent, and which resulted in 

19 a separate finding of infringement of the same 

20 patent. 

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

22 court may not find that an infringer has willfully in23 fringed a patent under paragraph (2) for any period 

24 of time during which the infringer had an informed 

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1 forceable, or would not be infringed by the conduct 

2 later shown to constitute infringement of the patent. 

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

4 meaning of subparagraph (A) may be established 

5 by— 

6 ‘‘(i) reasonable reliance on advice of coun7 sel; 

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

9 modify its conduct to avoid infringement once it 

10 had discovered the patent; or 

11 ‘‘(iii) other evidence a court may find suffi12 cient to establish such good faith belief. 

13 ‘‘(C) The decision of the infringer not to 

14 present evidence of advice of counsel is not relevant 

15 to a determination of willful infringement under 

16 paragraph (2). 

17 ‘‘(4) LIMITATION ON PLEADING.—Before the 

18 date on which a court determines that the patent in 

19 suit is not invalid, is enforceable, and has been in20 fringed by the infringer, a patentee may not plead 

21 and a court may not determine that an infringer has 

22 willfully infringed a patent. The court’s determina23 tion of an infringer’s willfulness shall be made with24 out a jury.’’; and 

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1 (3) in the third undesignated paragraph, by 

2 striking ‘‘The court’’ and inserting ‘‘(c) EXPERT

3 TESTIMONY.—The court’’. 

4 (b) DEFENSE TO INFRINGEMENT BASED ON EAR5 LIER INVENTOR.—Section 273 of title 35, United States 

6 Code, is amended— 

7 (1) in subsection (a)— 

8 (A) in paragraph (1)— 

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

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

11 inserting ‘‘review period; and’’; 

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

13 semicolon at the end and inserting a period; 

14 and 

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

16 (2) in subsection (b)— 

17 (A) in paragraph (1)— 

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

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

20 the effective filing date of such patent, 

21 and’’ and all that follows through the pe22 riod and inserting ‘‘and commercially used, 

23 or made substantial preparations for com24 mercial use of, the subject matter before 

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1 the effective filing date of the claimed in2 vention.’’; 

3 (B) in paragraph (2)— 

4 (i) by striking ‘‘The sale or other dis5 position of a useful end result produced by 

6 a patented method’’ and inserting ‘‘The 

7 sale or other disposition of subject matter 

8 that qualifies for the defense set forth in 

9 this section’’; and 

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

11 section with respect to that useful end re12 sult’’ and inserting ‘‘such defense’’; and 

13 (C) in paragraph (3)— 

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

15 (ii) by redesignating subparagraphs 

16 (B) and (C) as subparagraphs (A) and 

17 (B), respectively; 

18 (3) in paragraph (7), by striking ‘‘of the pat19 ent’’ and inserting ‘‘of the claimed invention’’; and 

20 (4) by amending the heading to read as follows: 

21 ‘‘§ 273. Special defenses to and exemptions from in22 fringement’’. 

23 (c) TABLE OF SECTIONS.—The item relating to sec24 tion 273 in the table of sections for chapter 28 is amended 

25 to read as follows: 

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

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1 (d) EFFECTIVE DATE.—The amendments made by 

2 this section shall apply to any civil action commenced on 

3 or after the date of enactment of this Act. 

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

5 ENHANCEMENTS. 

6 (a) REEXAMINATION.—Section 303(a) is amended to 

7 read as follows: 

8 ‘‘(a) Within 3 months after the owner of a patent 

9 files a request for reexamination under section 302, the 

10 Director shall determine whether a substantial new ques11 tion of patentability affecting any claim of the patent con12 cerned is raised by the request, with or without consider13 ation of other patents or printed publications. On the Di14 rector’s own initiative, and at any time, the Director may 

15 determine whether a substantial new question of patent16 ability is raised by patents and publications discovered by 

17 the Director, is cited under section 301, or is cited by any 

18 person other than the owner of the patent under section 

19 302 or section 311. The existence of a substantial new 

20 question of patentability is not precluded by the fact that 

21 a patent or printed publication was previously cited by or 

22 to the Office or considered by the Office.’’. 

23 (b) REEXAMINATION.—Section 315(c) is amended by 

24 striking ‘‘or could have raised’’. 

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1 (c) REEXAMINATION PROHIBITED AFTER DISTRICT

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

3 (1) in the subsection heading, by striking 

4 ‘‘FINAL DECISION’’ and inserting ‘‘DISTRICT COURT

5 DECISION’’; and 

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

7 entered’’ and inserting ‘‘Once the judgment of the 

8 district court has been entered’’. 

9 (d) EFFECTIVE DATES.—Notwithstanding any other 

10 provision of law, sections 311 through 318 of title 35, 

11 United States Code, as amended by this Act, shall apply 

12 to any patent that issues before, on, or after the date of 

13 enactment of this Act from an original application filed 

14 on any date. 

15 (e) POST-GRANT OPPOSITION PROCEDURES.— 

16 (1) IN GENERAL.—Part III is amended by add17 ing at the end the following new chapter: 

18 ‘‘CHAPTER 32—POST-GRANT REVIEW 

19 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. Relationship to other pending proceedings. 

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‘‘333. Effect of decisions rendered in civil action on future post-grant review 

proceedings. 

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

‘‘335. Appeal. 

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

2 ‘‘Subject to sections 322, 324, 332, and 333, a per3 son who is not the patent owner may file with the Office 

4 a petition for cancellation seeking to institute a post-grant 

5 review proceeding to cancel as unpatentable any claim of 

6 a patent on any ground that could be raised under para7 graph (2) or (3) of section 282(b) (relating to invalidity 

8 of the patent or any claim). The Director shall establish, 

9 by regulation, fees to be paid by the person requesting 

10 the proceeding, in such amounts as the Director deter11 mines to be reasonable. 

12 ‘‘§ 322. Timing and bases of petition 

13 ‘‘A post-grant proceeding may be instituted under 

14 this chapter pursuant to a cancellation petition filed under 

15 section 321 only if— 

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

17 months after the grant of the patent or issuance of 

18 a reissue patent, as the case may be; 

19 ‘‘(2)(A) the petitioner establishes a substantial 

20 reason to believe that the continued existence of the 

21 challenged claim in the petition causes or is likely to 

22 cause the petitioner significant economic harm; or 

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1 ‘‘(B) the petitioner has received notice from the 

2 patent holder alleging infringement by the petitioner 

3 of the patent; or 

4 ‘‘(3) the patent owner consents in writing to the 

5 proceeding. 

6 ‘‘§ 323. Requirements of petition 

7 ‘‘A cancellation petition filed under section 321 may 

8 be considered only if— 

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

10 the fee established by the Director under section 

11 321; 

12 ‘‘(2) the petition identifies the cancellation peti13 tioner; and 

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

15 for the cancellation, identifying each claim chal16 lenged and providing such information as the Direc17 tor may require by regulation, and includes copies of 

18 patents and printed publications that the cancella19 tion petitioner relies upon in support of the petition; 

20 and 

21 ‘‘(4) the petitioner provides copies of those doc22 uments to the patent owner or, if applicable, the 

23 designated representative of the patent owner. 

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1 ‘‘§ 324. Prohibited filings 

2 ‘‘A post-grant review proceeding may not be insti3 tuted under paragraph (1), (2), or (3) of section 322 if 

4 the petition for cancellation requesting the proceeding 

5 identifies the same cancellation petitioner and the same 

6 patent as a previous petition for cancellation filed under 

7 the same paragraph of section 322. 

8 ‘‘§ 325. Submission of additional information; show9 ing of sufficient grounds 

10 ‘‘The cancellation petitioner shall file such additional 

11 information with respect to the petition as the Director 

12 may require. The Director may not authorize a post-grant 

13 review proceeding to commence unless the Director deter14 mines that the information presented provides sufficient 

15 grounds to proceed. 

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

17 ‘‘(a) IN GENERAL.—The Director shall— 

18 ‘‘(1) prescribe regulations, in accordance with 

19 section 2(b)(2), establishing and governing post20 grant review proceedings under this chapter and 

21 their relationship to other proceedings under this 

22 title; 

23 ‘‘(2) prescribe regulations setting forth the 

24 standards for showings of substantial reason to be25 lieve and significant economic harm under section 

26 322(2) and sufficient grounds under section 325; 

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1 ‘‘(3) prescribe regulations establishing proce2 dures for the submission of supplemental informa3 tion after the petition for cancellation is filed; and 

4 ‘‘(4) prescribe regulations setting forth proce5 dures for discovery of relevant evidence, including 

6 that such discovery shall be limited to evidence di7 rectly related to factual assertions advanced by ei8 ther party in the proceeding, and the procedures for 

9 obtaining such evidence shall be consistent with the 

10 purpose and nature of the proceeding. 

11 ‘‘(b) POST-GRANT REGULATIONS.—Regulations 

12 under subsection (a)(1)— 

13 ‘‘(1) shall require that the final determination 

14 in a post-grant proceeding issue not later than one 

15 year after the date on which the post-grant review 

16 proceeding is instituted under this chapter, except 

17 that, for good cause shown, the Director may extend 

18 the 1-year period by not more than six months; 

19 ‘‘(2) shall provide for discovery upon order of 

20 the Director; 

21 ‘‘(3) shall prescribe sanctions for abuse of dis22 covery, abuse of process, or any other improper use 

23 of the proceeding, such as to harass or to cause un24 necessary delay or unnecessary increase in the cost 

25 of the proceeding; 

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1 ‘‘(4) may provide for protective orders gov2 erning the exchange and submission of confidential 

3 information; and 

4 ‘‘(5) shall ensure that any information sub5 mitted by the patent owner in support of any 

6 amendment entered under section 328 is made avail7 able to the public as part of the prosecution history 

8 of the patent. 

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

10 under this section, the Director shall consider the effect 

11 on the economy, the integrity of the patent system, and 

12 the efficient administration of the Office. 

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

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

15 conduct each post-grant review proceeding authorized by 

16 the Director. 

17 ‘‘§ 327. Patent owner response 

18 ‘‘After a post-grant proceeding under this chapter 

19 has been instituted with respect to a patent, the patent 

20 owner shall have the right to file, within a time period 

21 set by the Director, a response to the cancellation petition. 

22 The patent owner shall file with the response, through af23 fidavits or declarations, any additional factual evidence 

24 and expert opinions on which the patent owner relies in 

25 support of the response. 

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1 ‘‘§ 328. Proof and evidentiary standards 

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

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

4 patent claim under this chapter. 

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

6 proposition under this chapter shall have the burden of 

7 proving that proposition by a preponderance of the evi8 dence. 

9 ‘‘§ 329. Amendment of the patent 

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

11 petition for cancellation, the patent owner may file 1 mo12 tion to amend the patent in 1 or more of the following 

13 ways: 

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

15 ‘‘(2) For each challenged claim, propose a sub16 stitute claim. 

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

18 amend the patent other than the claims. 

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

20 amend may be permitted only for good cause shown. 

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

22 section may not enlarge the scope of the claims of the pat23 ent or introduce new matter. 

24 ‘‘§ 330. Decision of the Board 

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

26 not dismissed under this chapter, the Patent Trial and 

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1 Appeal Board shall issue a final written decision with re2 spect to the patentability of any patent claim challenged 

3 and any new claim added under section 329. 

4 ‘‘§ 331. Effect of decision 

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

6 Board issues a final decision under section 330 and the 

7 time for appeal has expired or any appeal proceeding has 

8 terminated, the Director shall issue and publish a certifi9 cate canceling any claim of the patent finally determined 

10 to be unpatentable and incorporating in the patent by op11 eration of the certificate any new claim determined to be 

12 patentable. 

13 ‘‘(b) NEW CLAIMS.—Any new claim held to be pat14 entable and incorporated into a patent in a post-grant re15 view proceeding shall have the same effect as that speci16 fied in section 252 for reissued patents on the right of 

17 any person who made, purchased, offered to sell, or used 

18 within the United States, or imported into the United 

19 States, anything patented by such new claim, or who made 

20 substantial preparations therefore, prior to issuance of a 

21 certificate under subsection (a) of this section. 

22 ‘‘§ 332. Relationship to other pending proceedings 

23 ‘‘Notwithstanding subsection 135(a), sections 251 

24 and 252, and chapter 30, the Director may determine the 

25 manner in which any reexamination proceeding, reissue 

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1 proceeding, interference proceeding (commenced before 

2 the effective date of the Patent Reform Act of 2007), deri3 vation proceeding, or post-grant review proceeding, that 

4 is pending during a post-grant review proceeding, may 

5 proceed, including providing for stay, transfer, consolida6 tion, or termination of any such proceeding. 

7 ‘‘§ 333. Effect of decisions rendered in civil action on 

8 future post-grant review proceedings 

9 ‘‘If a final decision has been entered against a party 

10 in a civil action arising in whole or in part under section 

11 1338 of title 28 establishing that the party has not sus12 tained its burden of proving the invalidity of any patent 

13 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 

18 section 311, which that party or the privies of that 

19 party raised or had actual knowledge of; and 

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

21 a post-grant review proceeding previously requested 

22 by that party or the privies of that party on the 

23 basis of such grounds. 

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

2 ‘‘(a) IN GENERAL.—If a final decision under section 

3 330 is favorable to the patentability of any original or new 

4 claim of the patent challenged by the cancellation peti5 tioner, the cancellation petitioner may not thereafter, 

6 based on any ground which the cancellation petitioner 

7 raised during the post-grant review 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 

14 claim; or 

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

16 any civil action arising in whole or in part under sec17 tion 1338 of title 28. 

18 ‘‘(b) EXTENSION OF PROHIBITION.—If the final deci19 sion is the result of a petition for cancellation filed on the 

20 basis of paragraph (2) of section 322, the prohibition 

21 under this section shall extend to any ground which the 

22 cancellation petitioner raised during the post-grant review 

23 proceeding. 

24 ‘‘§ 335. Appeal 

25 ‘‘A party dissatisfied with the final determination of 

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1 ceeding under this chapter may appeal the determination 

2 under sections 141 through 144. Any party to the post3 grant proceeding shall have the right to be a party to the 

4 appeal.’’. 

5 (f) CONFORMING AMENDMENT.—The table of chap6 ters for part III is amended by adding at the end the fol7 lowing: 

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

8 (g) REGULATIONS AND EFFECTIVE DATE.— 

9 (1) REGULATIONS.—The Under Secretary of 

10 Commerce for Intellectual Property and Director of 

11 the United States Patent and Trademark Office (in 

12 this subsection referred to as the ‘‘Director’’) shall, 

13 not later than the date that is 1 year after the date 

14 of the enactment of this Act, issue regulations to 

15 carry out chapter 32 of title 35, United States Code, 

16 as added by subsection (e) of this section 

17 (2) APPLICABILITY.—The amendments made 

18 by subsection (e) shall take effect on the date that 

19 is 1 year after the date of the enactment of this Act 

20 and shall apply to patents issued before, on, or after 

21 that date, except that, in the case of a patent issued 

22 before that date, a petition for cancellation under 

23 section 321 of title 35, United States Code, may be 

24 filed only if a circumstance described in paragraph 

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1 (2), (3), or (4) of section 322 of title 35, United 

2 States Code, applies to the petition. 

3 (3) PENDING INTERFERENCES.—The Director 

4 shall determine the procedures under which inter5 ferences commenced before the effective date under 

6 paragraph (2) are to proceed, including whether any 

7 such interference is to be dismissed without preju8 dice to the filing of a cancellation petition for a post9 grant opposition proceeding under chapter 32 of title 

10 35, United States Code, or is to proceed as if this 

11 Act had not been enacted. The Director shall include 

12 such procedures in regulations issued under para13 graph (1). 

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

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

16 Act) is further amended— 

17 (1) in subsection (e), by striking ‘‘or inter 

18 partes reexamination under section 311’’; 

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

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

21 party in interest requesting cancellation of any claim of 

22 a patent under chapter 31 of this title and the privies of 

23 the real party in interest.’’. 

24 (b) PATENT TRIAL AND APPEAL BOARD.—Section 6 

25 is amended to read as follows: 

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1 ‘‘§ 6. Patent Trial and Appeal Board 

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

3 shall be in the Office a Patent Trial and Appeal Board. 

4 The Director, the Deputy Director, the Commissioner for 

5 Patents, the Commissioner for Trademarks, and the ad6 ministrative patent judges shall constitute the Patent 

7 Trial and Appeal Board. The administrative patent judges 

8 shall be persons of competent legal knowledge and sci9 entific ability who are appointed by the Director. Any ref10 erence in any Federal law, Executive order, rule, regula11 tion, or delegation of authority, or any document of or 

12 pertaining to the Board of Patent Appeals and Inter13 ferences is deemed to refer to the Patent Trial and Appeal 

14 Board. 

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

16 shall— 

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

18 adverse decisions of examiners upon application for 

19 patents; 

20 ‘‘(2) on written appeal of a patent owner, re21 view adverse decisions of examiners upon patents in 

22 reexamination proceedings under chapter 30; and 

23 ‘‘(3) determine priority and patentability of in24 vention in derivation proceedings under subsection 

25 135(a); and 

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1 ‘‘(4) 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 SEC. 8. STUDY AND REPORT ON REEXAMINATION PRO13 CEEDINGS. 

14 The Under Secretary of Commerce for Intellectual 

15 Property and Director of the Patent and Trademark Of16 fice shall, not later than 3 years after the date of the en17 actment of this Act— 

18 (1) conduct a study of the effectiveness and ef19 ficiency of the different forms of proceedings avail20 able under title 35, United States Code, for the re21 examination of patents; and 

22 (2) submit to the Committees on the Judiciary 

23 of the House of Representatives and the Senate a 

24 report on the results of the study, including any of 

25 the Director’s suggestions for amending the law, and 

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1 any other recommendations the Director has with 

2 respect to patent reexamination proceedings. 

3 SEC. 9. SUBMISSIONS BY THIRD PARTIES AND OTHER 

4 QUALITY ENHANCEMENTS. 

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

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

7 (2) in subparagraph (A)— 

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

9 inserting ‘‘An application’’; and 

10 (B) by redesignating clauses (i) through 

11 (iv) as subparagraphs (A) through (D), respec12 tively. 

13 (b) PREISSUANCE SUBMISSIONS BY THIRD PAR14 TIES.—Section 122 is amended by adding at the end the 

15 following: 

16 ‘‘(e) PREISSUANCE SUBMISSIONS BY THIRD PAR17 TIES.— 

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

19 consideration and inclusion in the record of a patent 

20 application, any patent, published patent application 

21 or other publication of potential relevance to the ex22 amination of the application, if such submission is 

23 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 

18 Director may prescribe; and 

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

20 affirming that the submission was made in 

21 compliance with this section.’’. 

22 SEC. 10. VENUE AND JURISDICTION. 

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

24 title 28, United States Code, is amended by striking sub25 section (b) and inserting the following: 

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1 ‘‘(b) Any civil action arising under any Act of Con2 gress relating to patents, other than an action for declara3 tory judgment or an action seeking review of a decision 

4 of the Patent Trial and Appeal Board under chapter 13 

5 of title 35, may be brought only— 

6 ‘‘(1) in the judicial district where either party 

7 resides; or 

8 ‘‘(2) in the judicial district where the defendant 

9 has committed acts of infringement and has a reg10 ular and established place of business. 

11 ‘‘(c) Notwithstanding section 1391(c) of this title, for 

12 purposes of venue under subsection (b), a corporation 

13 shall be deemed to reside in the judicial district in which 

14 the corporation has its principal place of business or in 

15 the State in which the corporation is incorporated.’’. 

16 (b) INTERLOCUTORY APPEALS.—Subsection (c)(2) of 

17 section 1292 of title 28, United States Code, is amended 

18 by adding at the end the following: 

19 ‘‘(3) of an appeal from an interlocutory order 

20 or decree determining construction of claims in a 

21 civil action for patent infringement under section 

22 271 of title 35. 

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

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

25 or decree, and proceedings in the district court under such 

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1 paragraph shall be stayed during pendency of the ap2 peal.’’. 

3 SEC. 11. REGULATORY AUTHORITY. 

4 Section 3(a) is amended by adding at the end the 

5 following: 

6 ‘‘(5) REGULATORY AUTHORITY.—In addition to 

7 the authority conferred by other provisions of this 

8 title, the Director may promulgate such rules, regu9 lations, and orders that the Director determines ap10 propriate to carry out the provisions of this title or 

11 any other law applicable to the United States Patent 

12 and Trademark Office or that the Director deter13 mines necessary to govern the operation and organi14 zation of the Office.’’. 

15 SEC. 12. TECHNICAL AMENDMENTS. 

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

17 (1) in the first paragraph, by striking 

18 ‘‘When’’ and inserting ‘‘(a) JOINT INVEN19 TIONS.—When’’; 

20 (2) in the second paragraph, by striking 

21 ‘‘If a joint inventor’’ and inserting ‘‘(b) OMIT22 TED INVENTOR.—If a joint inventor’’; and 

23 (3) in the third paragraph, by striking 

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

25 ERRORS IN APPLICATION.—Whenever’’. 

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1 (b) FILING OF APPLICATION IN FOREIGN COUN2 TRY.—Section 184 is amended— 

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

4 when’’ and inserting ‘‘(a) FILING IN FOREIGN

5 COUNTRY.—Except when’’; 

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

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

8 term’’; and 

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

10 scope’’ and inserting ‘‘(c) SUBSEQUENT MODIFICA11 TIONS, AMENDMENTS, AND SUPPLEMENTS.—The 

12 scope’’. 

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

14 is amended— 

15 (1) in the first paragraph, by striking ‘‘When16 ever’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; 

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

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

19 PATENTS.—The Director’’; 

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

21 provision’’ and inserting ‘‘(c) APPLICABILITY OF

22 THIS TITLE.—The provisions’’; and 

23 (4) in the last paragraph, by striking ‘‘No re24 issued patent’’ and inserting ‘‘(d) REISSUE PATENT

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1 ENLARGING SCOPE OF CLAIMS.—No reissued pat2 ent’’. 

3 (d) EFFECT OF REISSUE.—Section 253 is amend4 ed— 

5 (1) in the first paragraph, by striking ‘‘When6 ever’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; 

7 and 

8 (2) in the second paragraph, by striking ‘‘in 

9 like manner’’ and inserting ‘‘(b) ADDITIONAL DIS10 CLAIMER OR DEDICATION.—In the manner set forth 

11 in subsection (a),’’. 

12 (e) CORRECTION OF NAMED INVENTOR.—Section 

13 256 is amended— 

14 (1) in the first paragraph, by striking ‘‘When15 ever’’ and inserting ‘‘(a) CORRECTION.—Whenever’’; 

16 and 

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

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

19 CORRECTED.—The error’’. 

20 (f) PRESUMPTION OF VALIDITY.—Section 282 is 

21 amended— 

22 (1) in the first undesignated paragraph, by 

23 striking ‘‘A patent’’ and inserting ‘‘(a) IN GEN24 ERAL.—A patent’’; 

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1 (2) in the second undesignated paragraph, by 

2 striking ‘‘The following’’ and inserting ‘‘(b) DE3 FENSES.—The following’’; and 

4 (3) in the third undesignated paragraph, by 

5 striking ‘‘In actions’’ and inserting ‘‘(c) NOTICE OF

6 ACTIONS; ACTIONS DURING EXTENSION OF PATENT

7 TERM.—In actions’’. 

8 SEC. 13. EFFECTIVE DATE; RULE OF CONSTRUCTION. 

9 (a) EFFECTIVE DATE.—Except as otherwise provided 

10 in this Act, the provisions of this Act shall take effect 12 

11 months after the date of the enactment of this Act and 

12 shall apply to any patent issued on or after that effective 

13 date. 

14 (b) CONTINUITY OF INTENT UNDER THE CREATE

15 ACT.—The enactment of section 102(b)(3) of title 35, 

16 United States Code, under section (3)(b) of this Act is 

17 done with the same intent to promote joint research activi18 ties that was expressed, including in the legislative history, 

19 through the enactment of the Cooperative Research and 

20 Technology Enhancement Act of 2004 (Public Law 108– 

21 453; the ‘‘CREATE Act’’), the amendments of which are 

22 stricken by section 3(c) of this Act. The United States 

23 Patent and Trademark Office shall administer section 

24 102(b)(3) of title 35, United States Code, in a manner 

25 consistent with the legislative history of the CREATE Act 

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1 that was relevant to its administration by the Patent and 

2 Trademark Office. 

Æ 

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