110TH CONGRESS 

1ST SESSION H. R. 1908 

AN ACT 

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, 
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1 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

2 (a) SHORT TITLE.—This Act may be cited as the 

3 ‘‘Patent Reform Act of 2007’’. 

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

5 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. 

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. Study on workplace conditions. 

Sec. 18. Rule of construction. 

Sec. 19. Study on patent damages. 

Sec. 20. Severability. 

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

7 Whenever in this Act a section or other provision is 

8 amended or repealed, that amendment or repeal shall be 

9 considered to be made to that section or other provision 

10 of title 35, United States Code. 

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

12 (a) DEFINITIONS.—Section 100 is amended by add13 ing at the end the following: 

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

15 a joint invention, the individuals collectively who invented 

16 or discovered the subject matter of an invention. 
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1 ‘‘(g) The terms ‘joint inventor’ and ‘coinventor’ mean 

2 any one of the individuals who invented or discovered the 

3 subject matter of a joint invention. 

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

5 is— 

6 ‘‘(1) the filing date of the patent or the applica7 tion for patent containing the claim to the invention; 

8 or 

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

10 entitled to a right of priority of any other applica11 tion under section 119, 365(a), or 365(b) or to the 

12 benefit of an earlier filing date in the United States 

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

14 the earliest such application in which the claimed in15 vention is disclosed in the manner provided by sec16 tion 112(a). 

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

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

19 for a patent.’’. 

20 (b) CONDITIONS FOR PATENTABILITY.— 

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

22 read as follows: 

23 ‘‘§ 102. Conditions for patentability; novelty 

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

25 invention may not be obtained if— 
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1 ‘‘(1) the claimed invention was patented, de2 scribed in a printed publication, in public use, or on 

3 sale— 

4 ‘‘(A) more than one year before the effec5 tive filing date of the claimed invention; or 

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

7 filing date of the claimed invention, other than 

8 through disclosures made by the inventor or a 

9 joint inventor or by others who obtained the 

10 subject matter disclosed directly or indirectly 

11 from the inventor or a joint inventor; or 

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

13 patent issued under section 151, or in an application 

14 for patent published or deemed published under sec15 tion 122(b), in which the patent or application, as 

16 the case may be, names another inventor and was 

17 effectively filed before the effective filing date of the 

18 claimed invention. 

19 ‘‘(b) EXCEPTIONS.— 

20 ‘‘(1) PRIOR INVENTOR DISCLOSURE EXCEP21 TION.—Subject matter that would otherwise qualify 

22 as prior art based upon a disclosure under subpara23 graph (B) of subsection (a)(1) shall not be prior art 

24 to a claimed invention under that subparagraph if 

25 the subject matter had, before such disclosure, been 
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1 publicly disclosed by the inventor or a joint inventor 

2 or others who obtained the subject matter disclosed 

3 directly or indirectly from the inventor or a joint in4 ventor. 

5 ‘‘(2) DERIVATION, PRIOR DISCLOSURE, AND

6 COMMON ASSIGNMENT EXCEPTIONS.—Subject mat7 ter that would otherwise qualify as prior art only 

8 under subsection (a)(2) shall not be prior art to a 

9 claimed invention if— 

10 ‘‘(A) the subject matter was obtained di11 rectly or indirectly from the inventor or a joint 

12 inventor; 

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

14 disclosed by the inventor or a joint inventor or 

15 others who obtained the subject matter dis16 closed directly or indirectly from the inventor or 

17 a joint inventor before the date on which the 

18 application or patent referred to in subsection 

19 (a)(2) was effectively filed; or 

20 ‘‘(C) the subject matter and the claimed 

21 invention, not later than the effective filing date 

22 of the claimed invention, were owned by the 

23 same person or subject to an obligation of as24 signment to the same person. 
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1 ‘‘(3) JOINT RESEARCH AGREEMENT EXCEP2 TION.— 

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

4 claimed invention shall be deemed to have been 

5 owned by the same person or subject to an obli6 gation of assignment to the same person in ap7 plying the provisions of paragraph (2) if— 

8 ‘‘(i) the claimed invention was made 

9 by or on behalf of parties to a joint re10 search agreement that was in effect on or 

11 before the effective filing date of the 

12 claimed invention; 

13 ‘‘(ii) the claimed invention was made 

14 as a result of activities undertaken within 

15 the scope of the joint research agreement; 

16 and 

17 ‘‘(iii) the application for patent for 

18 the claimed invention discloses or is 

19 amended to disclose the names of the par20 ties to the joint research agreement. 

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

22 the term ‘joint research agreement’ means a 

23 written contract, grant, or cooperative agree24 ment entered into by two or more persons or 

25 entities for the performance of experimental, 
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1 developmental, or research work in the field of 

2 the claimed invention. 

3 ‘‘(4) PATENTS AND PUBLISHED APPLICATIONS

4 EFFECTIVELY FILED.—A patent or application for 

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

6 with respect to any subject matter described in the 

7 patent or application— 

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

9 the application for patent; or 

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

11 is entitled to claim a right of priority under sec12 tion 119, 365(a), or 365(b) or to claim the ben13 efit of an earlier filing date under section 120, 

14 121, or 365(c), based upon one or more prior 

15 filed applications for patent, as of the filing 

16 date of the earliest such application that de17 scribes the subject matter.’’. 

18 (2) CONFORMING AMENDMENT.—The item re19 lating to section 102 in the table of sections for 

20 chapter 10 is amended to read as follows: 

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

21 (c) CONDITIONS FOR PATENTABILITY; NON-OBVIOUS

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

23 follows: 
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1 ‘‘§ 103. Conditions for patentability; nonobvious sub2 ject matter 

3 ‘‘A patent for a claimed invention may not be ob4 tained though the claimed invention is not identically dis5 closed as set forth in section 102, if the differences be6 tween the claimed invention and the prior art are such 

7 that the claimed invention as a whole would have been ob8 vious before the effective filing date of the claimed inven9 tion to a person having ordinary skill in the art to which 

10 the claimed invention pertains. Patentability shall not be 

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

12 (d) REPEAL OF REQUIREMENTS FOR INVENTIONS

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

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

15 repealed. 

16 (e) REPEAL OF STATUTORY INVENTION REGISTRA17 TION.— 

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

19 relating to that section in the table of sections for 

20 chapter 14, are repealed. 

21 (2) REMOVAL OF CROSS REFERENCES.—Section 

22 111(b)(8) is amended by striking ‘‘sections 115, 

23 131, 135, and 157’’ and inserting ‘‘sections 131 and 

24 135’’. 

25 (f) EARLIER FILING DATE FOR INVENTOR AND

26 JOINT INVENTOR.—Section 120 is amended by striking 
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1 ‘‘which is filed by an inventor or inventors named’’ and 

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

3 (g) CONFORMING AMENDMENTS.— 

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

5 amended by striking ‘‘and the time specified in sec6 tion 102(d)’’. 

7 (2) LIMITATION ON REMEDIES.—Section 

8 287(c)(4) is amended by striking ‘‘the earliest effec9 tive filing date of which is prior to’’ and inserting 

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

11 (3) INTERNATIONAL APPLICATION DESIG12 NATING THE UNITED STATES: EFFECT.—Section 

13 363 is amended by striking ‘‘except as otherwise 

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

15 (4) PUBLICATION OF INTERNATIONAL APPLICA16 TION: EFFECT.—Section 374 is amended by striking 

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

18 154(d)’’. 

19 (5) PATENT ISSUED ON INTERNATIONAL APPLI20 CATION: EFFECT.—The second sentence of section 

21 375(a) is amended by striking ‘‘Subject to section 

22 102(e) of this title, such’’ and inserting ‘‘Such’’. 

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

24 119(a) is amended by striking ‘‘; but no patent shall 
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1 be granted’’ and all that follows through ‘‘one year 

2 prior to such filing’’. 

3 (7) INVENTIONS MADE WITH FEDERAL ASSIST4 ANCE.—Section 202(c) is amended— 

5 (A) in paragraph (2)— 

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

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

8 ‘‘obtained in the United States’’ and in9 serting ‘‘the 1-year period referred to in 

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

11 that 2-year period’’; and 

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

13 inserting ‘‘that 1-year’’; and 

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

15 statutory bar date that may occur under this 

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

17 and inserting ‘‘the expiration of the 1-year pe18 riod referred to in section 102(a)’’. 

19 (h) REPEAL OF INTERFERING PATENT REMEDIES.— 

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

21 table of sections for chapter 29, are repealed. 

22 (i) ACTION FOR CLAIM TO PATENT ON DERIVED IN23 VENTION.—Section 135 is amended to read as follows: 

24 ‘‘§ 135. Derivation proceedings 

25 ‘‘(a) DISPUTE OVER RIGHT TO PATENT.— 
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1 ‘‘(1) INSTITUTION OF DERIVATION PRO2 CEEDING.— 

3 ‘‘(A) REQUEST FOR PROCEEDING.—An ap4 plicant may request initiation of a derivation 

5 proceeding to determine the right of the appli6 cant to a patent by filing a request that sets 

7 forth with particularity the basis for finding 

8 that another applicant derived the claimed in9 vention from the applicant requesting the pro10 ceeding and, without authorization, filed an ap11 plication claiming such invention. 

12 ‘‘(B) REQUIREMENTS FOR REQUEST.—Any 

13 request under subparagraph (A)— 

14 ‘‘(i) may only be made within 12 

15 months after the earlier of— 

16 ‘‘(I) the date on which a patent 

17 is issued containing a claim that is 

18 the same or substantially the same as 

19 the claimed invention; or 

20 ‘‘(II) the date of first publication 

21 of an application containing a claim 

22 that is the same or is substantially the 

23 same as the claimed invention; and 

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

25 must be supported by substantial evidence. 
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1 ‘‘(C) DETERMINATION OF DIRECTOR.— 

2 Whenever the Director determines that patents 

3 or applications for patent naming different indi4 viduals as the inventor interfere with one an5 other because of a dispute over the right to pat6 ent on the basis of a request under subpara7 graph (A), the Director shall institute a deriva8 tion proceeding for the purpose of determining 

9 which applicant is entitled to a patent. 

10 ‘‘(2) DETERMINATION BY PATENT TRIAL AND

11 APPEAL BOARD.—In any proceeding under this sub12 section, the Patent Trial and Appeal Board— 

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

14 right to patent; 

15 ‘‘(B) in appropriate circumstances, may 

16 correct the naming of the inventor in any appli17 cation or patent at issue; and 

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

19 right to patent. 

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

21 Trial and Appeal Board may defer action on a re22 quest to initiate a derivation proceeding for up to 

23 three months after the date on which the Director 

24 issues a patent to the applicant that filed the earlier 

25 application. 
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1 ‘‘(4) EFFECT OF FINAL DECISION.—The final 

2 decision of the Patent Trial and Appeal Board in a 

3 derivation proceeding, if adverse to the claim of an 

4 applicant, shall constitute the final refusal by the 

5 Patent and Trademark Office on the claims involved. 

6 The Director may issue a patent to an applicant who 

7 is determined by the Patent Trial and Appeal Board 

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

9 the Board, if adverse to a patentee, shall, if no ap10 peal or other review of the decision has been or can 

11 be taken or had, constitute cancellation of the claims 

12 involved in the patent, and notice of such cancella13 tion shall be endorsed on copies of the patent dis14 tributed after such cancellation by the Patent and 

15 Trademark Office. 

16 ‘‘(b) SETTLEMENT.—Parties to a derivation pro17 ceeding may terminate the proceeding by filing a written 

18 statement reflecting the agreement of the parties as to the 

19 correct inventors of the claimed invention in dispute. Un20 less the Patent Trial and Appeal Board finds the agree21 ment to be inconsistent with the evidence of record, it shall 

22 take action consistent with the agreement. Any written 

23 settlement or understanding of the parties shall be filed 

24 with the Director. At the request of a party to the pro25 ceeding, the agreement or understanding shall be treated 
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1 as business confidential information, shall be kept sepa2 rate from the file of the involved patents or applications, 

3 and shall be made available only to Government agencies 

4 on written request, or to any person on a showing of good 

5 cause. 

6 ‘‘(c) ARBITRATION.—Parties to a derivation pro7 ceeding, within such time as may be specified by the Di8 rector by regulation, may determine such contest or any 

9 aspect thereof by arbitration. Such arbitration shall be 

10 governed by the provisions of title 9 to the extent such 

11 title is not inconsistent with this section. The parties shall 

12 give notice of any arbitration award to the Director, and 

13 such award shall, as between the parties to the arbitration, 

14 be dispositive of the issues to which it relates. The arbitra15 tion award shall be unenforceable until such notice is 

16 given. Nothing in this subsection shall preclude the Direc17 tor from determining patentability of the invention in18 volved in the derivation proceeding.’’. 

19 (j) ELIMINATION OF REFERENCES TO INTER20 FERENCES.—(1) Sections 41(a)(6), 134, 141, 145, 146, 

21 154, 305, and 314 are each amended by striking ‘‘Board 

22 of Patent Appeals and Interferences’’ each place it ap23 pears and inserting ‘‘Patent Trial and Appeal Board’’. 

24 (2) Section 141 is amended— 
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1 (A) by striking ‘‘an interference’’ and inserting 

2 ‘‘a derivation proceeding’’; and 

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

4 place it appears and inserting ‘‘derivation pro5 ceeding’’. 

6 (3) Section 146 is amended— 

7 (A) in the first paragraph— 

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

9 ‘‘(a) IN GENERAL.—Any party’’; 

10 (ii) by striking ‘‘an interference’’ and in11 serting ‘‘a derivation proceeding’’; and 

12 (iii) by striking ‘‘interference’’ each addi13 tional place it appears and inserting ‘‘derivation 

14 proceeding’’; and 

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

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

17 subsection (a)’’. 

18 (4) The section heading for section 134 is amended 

19 to read as follows: 

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

21 (5) The section heading for section 135 is amended 

22 to read as follows: 

23 ‘‘§ 135. Derivation proceedings’’. 

24 (6) The section heading for section 146 is amended 

25 to read as follows: 
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1 ‘‘§ 146. Civil action in case of derivation proceeding’’. 

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

3 ‘‘INTERFERENCES’’ and inserting ‘‘DERIVATION PRO4 CEEDINGS’’. 

5 (8) The item relating to section 6 in the table of sec6 tions for chapter 1 is amended to read as follows: 

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

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

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

9 as follows: 

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

‘‘135. Derivation proceedings.’’. 

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

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

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

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

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

14 follows: 

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

16 the United States Patent and Trademark Office 

17 with respect to patent applications, derivation 

18 proceedings, and post-grant review proceedings, 

19 at the instance of an applicant for a patent or 

20 any party to a patent interference (commenced 

21 with respect to an application for patent filed 

22 before the effective date provided in section 

23 3(k) of the Patent Reform Act of 2007), deriva-
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1 tion proceeding, or post-grant review pro2 ceeding, and any such appeal shall waive any 

3 right of such applicant or party to proceed 

4 under section 145 or 146 of title 35;’’. 

5 (k) EFFECTIVE DATE.— 

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

7 this section— 

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

9 on which the President issues an Executive 

10 order containing the President’s finding that 

11 major patenting authorities have adopted a 

12 grace period having substantially the same ef13 fect as that contained under the amendments 

14 made by this section; and 

15 (B) shall apply to all applications for pat16 ent that are filed on or after the effective date 

17 under subparagraph (A). 

18 (2) DEFINITIONS.—In this subsection: 

19 (A) MAJOR PATENTING AUTHORITIES.— 

20 The term ‘‘major patenting authorities’’ means 

21 at least the patenting authorities in Europe and 

22 Japan. 

23 (B) GRACE PERIOD.—The term ‘‘grace pe24 riod’’ means the 1-year period ending on the ef25 fective filing date of a claimed invention, during 
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1 which disclosures of the subject matter by the 

2 inventor or a joint inventor, or by others who 

3 obtained the subject matter disclosed directly or 

4 indirectly from the inventor or a joint inventor, 

5 do not qualify as prior art to the claimed inven6 tion. 

7 (C) EFFECTIVE FILING DATE.—The term 

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

9 means, with respect to a patenting authority in 

10 another country, a date equivalent to the effec11 tive filing date of a claimed invention as defined 

12 in section 100(h) of title 35, United States 

13 Code, as added by subsection (a) of this section. 

14 (3) RETENTION OF INTERFERENCE PROCE15 DURES WITH RESPECT TO APPLICATIONS FILED BE16 FORE EFFECTIVE DATE.—In the case of any applica17 tion for patent that is filed before the effective date 

18 under paragraph (1)(A), the provisions of law re19 pealed or amended by subsections (h), (i), and (j) 

20 shall apply to such application as such provisions of 

21 law were in effect on the day before such effective 

22 date. 

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

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

25 subsection (k), and the end of every 7-year period there-
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1 after, the Under Secretary of Commerce for Intellectual 

2 Property and Director of the United States Patent and 

3 Trademark Office (in this subsection referred to as the 

4 ‘‘Director’’) shall— 

5 (1) conduct a study on the effectiveness and ef6 ficiency of the amendments made by this section; 

7 and 

8 (2) submit to the Committees on the Judiciary 

9 of the House of Representatives and the Senate a 

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

12 the law and other recommendations of the Director 

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

14 under 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 

24 invention for which an application has previously been 

25 filed under this title by that inventor shall include, or be 
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1 amended to include, the name of the inventor of any 

2 claimed invention in the application. Except as otherwise 

3 provided in this section, each individual who is the inven4 tor or a joint inventor of a claimed invention in an applica5 tion for patent shall execute an oath or declaration in con6 nection 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 author11 ized 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 

16 may specify additional information relating to the inventor 

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

18 oath 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 

25 specify by regulation. 
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1 ‘‘(2) PERMITTED CIRCUMSTANCES.—A sub2 stitute statement under paragraph (1) is permitted 

3 with respect to any individual who— 

4 ‘‘(A) is unable to file the oath or declara5 tion under subsection (a) because the indi6 vidual— 

7 ‘‘(i) is deceased; 

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

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

10 diligent effort; or 

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

12 invention and has refused to make the oath or 

13 declaration required under subsection (a). 

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

15 this subsection shall— 

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

17 whom the statement applies; 

18 ‘‘(B) set forth the circumstances rep19 resenting the permitted basis for the filing of 

20 the substitute statement in lieu of the oath or 

21 declaration under subsection (a); and 

22 ‘‘(C) contain any additional information, 

23 including any showing, required by the Direc24 tor. 
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1 ‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGN2 MENT OF RECORD.—An individual who has assigned 

3 rights in an application for patent may include the re4 quired statements under subsections (b) and (c) in the as5 signment executed by the individual, in lieu of filing such 

6 statements separately. 

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

8 section 151 may be provided to an applicant for patent 

9 only if the applicant for patent has filed each required 

10 oath or declaration under subsection (a) or has filed a sub11 stitute statement under subsection (d) or recorded an as12 signment meeting the requirements of subsection (e). 

13 ‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE14 QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.— 

15 The requirements under this section shall not apply to an 

16 individual with respect to an application for patent in 

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

18 inventor and that claims the benefit of an earlier filing 

19 date under section 120 or 365(c), if— 

20 ‘‘(1) an oath or declaration meeting the require21 ments of subsection (a) was executed by the indi22 vidual and was filed in connection with the earlier23 filed application; 
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1 ‘‘(2) a substitute statement meeting the re2 quirements of subsection (d) was filed in the earlier 

3 filed application with respect to the individual; or 

4 ‘‘(3) an assignment meeting the requirements 

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

6 earlier-filed application by the individual and was re7 corded in connection with the earlier-filed applica8 tion. 

9 ‘‘(h) SUPPLEMENTAL AND CORRECTED STATE10 MENTS; FILING ADDITIONAL STATEMENTS.— 

11 ‘‘(1) IN GENERAL.—Any person making a state12 ment required under this section may withdraw, re13 place, or otherwise correct the statement at any 

14 time. If a change is made in the naming of the in15 ventor requiring the filing of 1 or more additional 

16 statements under this section, such additional state17 ments shall be filed in accordance with regulations 

18 established by the Director. 

19 ‘‘(2) SUPPLEMENTAL STATEMENTS NOT RE20 QUIRED.—If an individual has executed an oath or 

21 declaration under subsection (a) or an assignment 

22 meeting the requirements of subsection (e) with re23 spect to an application for patent, the Director may 

24 not thereafter require that individual to make any 

25 additional oath, declaration, or other statement 
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1 equivalent to those required by this section in con2 nection with the application for patent or any patent 

3 issuing thereon. 

4 ‘‘(3) SAVINGS CLAUSE.—No patent shall be in5 valid or unenforceable based upon the failure to 

6 comply with a requirement under this section if the 

7 failure is remedied as provided under paragraph (1). 

8 ‘‘(i) ACKNOWLEDGMENT OF PENALTIES.—Any dec9 laration or statement filed under this section must contain 

10 an acknowledgment that any willful false statement is 

11 punishable by fine or imprisonment, or both, under section 

12 1001 of title 18.’’. 

13 (2) RELATIONSHIP TO DIVISIONAL APPLICA14 TIONS.—Section 121 is amended by striking ‘‘If a 

15 divisional application’’ and all that follows through 

16 ‘‘inventor.’’. 

17 (3) REQUIREMENTS FOR NONPROVISIONAL AP18 PLICATIONS.—Section 111(a) is amended— 

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

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

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

22 striking ‘‘AND OATH’’; and 

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

24 appears. 
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1 (4) CONFORMING AMENDMENT.—The item re2 lating to section 115 in the table of sections for 

3 chapter 11 is amended to read as follows: 

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

4 (b) SPECIFICATION.—Section 112 is amended— 

5 (1) in the first paragraph—— 

6 (A) by striking ‘‘The specification’’ and in7 serting ‘‘(a) IN GENERAL.—The specification’’; 

8 and 

9 (B) by striking ‘‘of carrying out his inven10 tion’’ and inserting ‘‘or joint inventor of car11 rying out the invention’’; and 

12 (2) in the second paragraph— 

13 (A) by striking ‘‘The specification’’ and in14 serting ‘‘(b) CONCLUSION.—The specification’’; 

15 and 

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

17 invention’’ and inserting ‘‘inventor or a joint in18 ventor regards as the invention’’; 

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

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

21 (4) in the fourth paragraph, by striking ‘‘Sub22 ject to the following paragraph,’’ and inserting ‘‘(d) 

23 REFERENCE IN DEPENDENT FORMS.—Subject to 

24 subsection (e),’’; 
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1 (5) in the fifth paragraph, by striking ‘‘A 

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

3 DEPENDENT FORM.—A claim’’; and 

4 (6) in the last paragraph, by striking ‘‘An ele5 ment’’ and inserting ‘‘(f) ELEMENT IN CLAIM FOR

6 A COMBINATION.—An element’’. 

7 (c) EFFECTIVE DATE.—The amendments made by 

8 this section— 

9 (1) shall take effect at the end of the 1-year pe10 riod beginning on the date of the enactment of this 

11 Act; and 

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

13 application for reissue patent, that is filed on or 

14 after the effective date under paragraph (1). 

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

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

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

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

19 (2) by designating the second undesignated 

20 paragraph as subsection (c); 

21 (3) by inserting after subsection (a) (as des22 ignated by paragraph (1) of this subsection) the fol23 lowing: 

24 ‘‘(b) REASONABLE ROYALTY.— 
27 

•HR 1908 EH

1 ‘‘(1) IN GENERAL.— An award pursuant to 

2 subsection (a) that is based upon a reasonable roy3 alty shall be determined in accordance with this sub4 section. Based on the facts of the case, the court 

5 shall determine whether paragraph (2), (3), or (4) 

6 will be used by the court or the jury in calculating 

7 a reasonable royalty. The court shall identify the 

8 factors that are relevant to the determination of a 

9 reasonable royalty under the applicable paragraph, 

10 and the court or jury, as the case may be, shall con11 sider only those factors in making the determination. 

12 ‘‘(2) RELATIONSHIP OF DAMAGES TO CON13 TRIBUTIONS OVER PRIOR ART.—Upon a showing to 

14 the satisfaction of the court that a reasonable roy15 alty should be based on a portion of the value of the 

16 infringing product or process, the court shall con17 duct an analysis to ensure that a reasonable royalty 

18 under subsection (a) is applied only to that economic 

19 value properly attributable to the patent’s specific 

20 contribution over the prior art. The court shall ex21 clude from the analysis the economic value properly 

22 attributable to the prior art, and other features or 

23 improvements, whether or not themselves patented, 

24 that contribute economic value to the infringing 

25 product or process. 
28 

•HR 1908 EH

1 ‘‘(3) ENTIRE MARKET VALUE.—Upon a show2 ing to the satisfaction of the court that the patent’s 

3 specific contribution over the prior art is the pre4 dominant basis for market demand for an infringing 

5 product or process, damages may be based upon the 

6 entire market value of the products or processes in7 volved that satisfy that demand. 

8 ‘‘(4) OTHER FACTORS.—If neither paragraph 

9 (2) or (3) is appropriate for determining a reason10 able royalty, the court may consider, or direct the 

11 jury to consider, the terms of any nonexclusive mar12 ketplace licensing of the invention, where appro13 priate, as well as any other relevant factors under 

14 applicable law. 

15 ‘‘(5) COMBINATION INVENTIONS.—For pur16 poses of paragraphs (2) and (3), in the case of a 

17 combination invention the elements of which are 

18 present individually in the prior art, the patentee 

19 may show that the contribution over the prior art 

20 may include the value of the additional function re21 sulting from the combination, as well as the en22 hanced value, if any, of some or all of the prior art 

23 elements resulting from the combination.’’; 
29 

•HR 1908 EH

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

2 by paragraph (1) of this subsection) to read as fol3 lows: 

4 ‘‘(c) WILLFUL INFRINGEMENT.— 

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

6 determined that the infringer has willfully infringed 

7 a patent or patents may increase the damages up to 

8 three times the amount of damages found or as9 sessed under subsection (a), except that increased 

10 damages under this paragraph shall not apply to 

11 provisional rights under section 154(d). 

12 ‘‘(2) PERMITTED GROUNDS FOR WILLFUL13 NESS.—A court may find that an infringer has will14 fully infringed a patent only if the patent owner pre15 sents clear and convincing evidence that— 

16 ‘‘(A) after receiving written notice from 

17 the patentee— 

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

19 manner sufficient to give the infringer an 

20 objectively reasonable apprehension of suit 

21 on such patent, and 

22 ‘‘(ii) identifying with particularity 

23 each claim of the patent, each product or 

24 process that the patent owner alleges in-
30 

•HR 1908 EH

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 en11 gaged in conduct that was not colorably dif12 ferent from the conduct previously found to 

13 have infringed the patent, and that resulted in 

14 a separate finding of infringement of the same 

15 patent. 

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

17 court may not find that an infringer has willfully in18 fringed a patent under paragraph (2) for any period 

19 of time during which the infringer had an informed 

20 good faith belief that the patent was invalid or unen21 forceable, or would not be infringed by the conduct 

22 later shown to constitute infringement of the patent. 

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

24 meaning of subparagraph (A) may be established 

25 by— 
31 

•HR 1908 EH

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 

9 present evidence of advice of counsel is not relevant 

10 to a determination of willful infringement under 

11 paragraph (2). 

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

13 date on which a court determines that the patent in 

14 suit is not invalid, is enforceable, and has been in15 fringed by the infringer, a patentee may not plead 

16 and a court may not determine that an infringer has 

17 willfully infringed a patent.’’; and 

18 (5) in the third undesignated paragraph, by 

19 striking ‘‘The court’’ and inserting ‘‘(d) EXPERT

20 TESTIMONY.—The court’’. 

21 (b) REPORT TO CONGRESSIONAL COMMITTEES.—Not 

22 later than June 30, 2009, the Under Secretary of Com23 merce for Intellectual Property and Director of the United 

24 States Patent and Trademark Office (in this subsection 

25 referred to as the ‘‘Director’’) shall report to the Com-
32 

•HR 1908 EH

1 mittee on the Judiciary of the House of Representatives 

2 and the Committee on the Judiciary of the Senate the 

3 findings and recommendations of the Director on the oper4 ation of prior user rights in selected countries in the in5 dustrialized world. The report shall include the following: 

6 (1) A comparison between the patent laws of 

7 the United States and the laws of other industri8 alized countries, including the European Union, 

9 Japan, Canada, and Australia. 

10 (2) An analysis of the effect of prior user rights 

11 on innovation rates in the selected countries. 

12 (3) An analysis of the correlation, if any, be13 tween prior user rights and start-up enterprises and 

14 the ability to attract venture capital to start new 

15 companies. 

16 (4) An analysis of the effect of prior user 

17 rights, if any, on small businesses, universities, and 

18 individual inventors. 

19 (5) An analysis of any legal or constitutional 

20 issues that arise from placing elements of trade se21 cret law, in the form of prior user rights, in patent 

22 law. 

23 In preparing the report, the Director shall consult with 

24 the Secretary of State and the Attorney General of the 

25 United States. 
33 

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

2 this section shall apply to any civil action commenced on 

3 or after the date of the enactment of this Act. 

4 (d) REVIEW EVERY 7 YEARS.—Not later than the 

5 end of the 7-year period beginning on the date of the en6 actment of this Act, and the end of every 7-year period 

7 thereafter, the Under Secretary of Commerce for Intellec8 tual Property and Director of the United States Patent 

9 and Trademark Office (in this subsection referred to as 

10 the ‘‘Director’’) shall— 

11 (1) conduct a study on the effectiveness and ef12 ficiency of the amendments made by this section; 

13 and 

14 (2) submit to the Committees on the Judiciary 

15 of the House of Representatives and the Senate a 

16 report on the results of the study, including any rec17 ommendations the Director has on amendments to 

18 the law and other recommendations of the Director 

19 with respect to the right of the inventor to obtain 

20 damages for patent infringement. 

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

22 ENHANCEMENTS. 

23 (a) CITATION OF PRIOR ART.— 

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

25 read as follows: 
34 

•HR 1908 EH

1 ‘‘§ 301. Citation of prior art 

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

3 to the Office in writing— 

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

5 publications which that person believes to have a 

6 bearing on the patentability of any claim of a par7 ticular patent; or 

8 ‘‘(2) written statements of the patent owner 

9 filed in a proceeding before a Federal court or the 

10 Patent and Trademark Office in which the patent 

11 owner takes a position on the scope of one or more 

12 patent claims. 

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

14 person citing prior art or written submissions under sub15 section (a) explains in writing the pertinence and manner 

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

17 one claim of the patent, the citation of the prior art or 

18 written submissions (as the case may be) and the expla19 nation thereof shall become a part of the official file of 

20 the patent. 

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

22 ‘‘(1) SUBMISSION OF ADDITIONAL MATE23 RIALS.—A party that submits written statements 

24 under subsection (a)(2) in a proceeding shall include 

25 any other documents, pleadings, or evidence from 

26 the proceeding that address the patent owner’s 
35 

•HR 1908 EH

1 statements or the claims addressed by the written 

2 statements. 

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

4 Written statements submitted under subsection 

5 (a)(2) shall not be considered for any purpose other 

6 than to determine the proper meaning of the claims 

7 that are the subject of the request in a proceeding 

8 ordered pursuant to section 304 or 313. Any such 

9 written statements, and any materials submitted 

10 under paragraph (1), that are subject to an applica11 ble protective order shall be redacted to exclude in12 formation subject to the order. 

13 ‘‘(d) IDENTITY WITHHELD.—Upon the written re14 quest of the person citing prior art or written statements 

15 under subsection (a), the person’s identity shall be ex16 cluded from the patent file and kept confidential.’’. 

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

18 read as follows: 

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

20 files a request for reexamination under section 302, the 

21 Director shall determine whether a substantial new ques22 tion of patentability affecting any claim of the patent con23 cerned is raised by the request, with or without consider24 ation of other patents or printed publications. On the Di25 rector’s own initiative, and at any time, the Director may 
36 

•HR 1908 EH

1 determine whether a substantial new question of patent2 ability is raised by patents and publications discovered by 

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

4 person other than the owner of the patent under section 

5 302 or section 311. The existence of a substantial new 

6 question of patentability is not precluded by the fact that 

7 a patent or printed publication was previously considered 

8 by the Office.’’. 

9 (c) CONDUCT OF INTER PARTES PROCEEDINGS.— 

10 Section 314 is amended— 

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

12 striking ‘‘conducted according to the procedures es13 tablished for initial examination under the provisions 

14 of sections 132 and 133’’ and inserting ‘‘heard by 

15 an administrative patent judge in accordance with 

16 procedures which the Director shall establish’’; 

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

18 and inserting the following: 

19 ‘‘(2) The third-party requester shall have the oppor20 tunity to file written comments on any action on the mer21 its by the Office in the inter partes reexamination pro22 ceeding, and on any response that the patent owner files 

23 to such an action, if those written comments are received 

24 by the Office within 60 days after the date of service on 
37 

•HR 1908 EH

1 the third-party requester of the Office action or patent 

2 owner response, as the case may be.’’; and 

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

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

5 party requestor or the patent owner, the administrative 

6 patent judge shall conduct an oral hearing, unless the 

7 judge finds cause lacking for such hearing.’’. 

8 (d) ESTOPPEL.—Section 315(c) is amended by strik9 ing ‘‘or could have raised’’. 

10 (e) REEXAMINATION PROHIBITED AFTER DISTRICT

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

12 (1) in the subsection heading, by striking 

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

14 DECISION’’; and 

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

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

17 district court has been entered’’. 

18 (f) POST-GRANT OPPOSITION PROCEDURES.— 

19 (1) IN GENERAL.—Part III is amended by add20 ing at the end the following new chapter: 

21 ‘‘CHAPTER 32—POST-GRANT REVIEW 

22 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. 
38 

•HR 1908 EH

‘‘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. 

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 issuance of the patent or a reissue 

18 patent, as the case may be; or 

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

20 proceeding. 
39 

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1 ‘‘§ 323. Requirements of petition 

2 ‘‘A cancellation petition filed under section 321 may 

3 be considered only if— 

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

5 the fee established by the Director under section 

6 321; 

7 ‘‘(2) the petition identifies the cancellation peti8 tioner; 

9 ‘‘(3) for each claim sought to be canceled, the 

10 petition sets forth in writing the basis for cancella11 tion and provides the evidence in support thereof, in12 cluding copies of patents and printed publications, 

13 or written testimony of a witness attested to under 

14 oath or declaration by the witness, or any other in15 formation that the Director may require by regula16 tion; and 

17 ‘‘(4) the petitioner provides copies of the peti18 tion, including any evidence submitted with the peti19 tion and any other information submitted under 

20 paragraph (3), to the patent owner or, if applicable, 

21 the designated representative of the patent owner. 

22 ‘‘§ 324. Prohibited filings 

23 ‘‘A post-grant review proceeding may not be insti24 tuted under section 322 if the petition for cancellation re25 questing the proceeding— 
40 

•HR 1908 EH

1 ‘‘(1) identifies the same cancellation petitioner 

2 and the same patent as a previous petition for can3 cellation filed under such section; or 

4 ‘‘(2) is based on the best mode requirement 

5 contained in section 112. 

6 ‘‘§ 325. Submission of additional information; show7 ing of sufficient grounds 

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

9 file such additional information with respect to the peti10 tion as the Director may require. For each petition sub11 mitted under section 321, the Director shall determine if 

12 the written statement, and any evidence submitted with 

13 the request, establish that a substantial question of pat14 entability exists for at least one claim in the patent. The 

15 Director may initiate a post-grant review proceeding if the 

16 Director determines that the information presented pro17 vides sufficient grounds to believe that there is a substan18 tial question of patentability concerning one or more 

19 claims of the patent at issue. 

20 ‘‘(b) NOTIFICATION; DETERMINATIONS NOT RE21 VIEWABLE.—The Director shall notify the patent owner 

22 and each petitioner in writing of the Director’s determina23 tion under subsection (a), including a determination to 

24 deny the petition. The Director shall make that determina25 tion in writing not later than 60 days after receiving the 
41 

•HR 1908 EH

1 petition. Any determination made by the Director under 

2 subsection (a), including whether or not to institute a 

3 post-grant review proceeding or to deny the petition, shall 

4 not be reviewable. 

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

6 ‘‘(a) IN GENERAL.—The Director shall prescribe reg7 ulations, in accordance with section 2(b)(2)— 

8 ‘‘(1) establishing and governing post-grant re9 view proceedings under this chapter and their rela10 tionship to other proceedings under this title; 

11 ‘‘(2) establishing procedures for the submission 

12 of supplemental information after the petition for 

13 cancellation is filed; and 

14 ‘‘(3) setting forth procedures for discovery of 

15 relevant evidence, including that such discovery shall 

16 be limited to evidence directly related to factual as17 sertions advanced by either party in the proceeding, 

18 and the procedures for obtaining such evidence shall 

19 be consistent with the purpose and nature of the 

20 proceeding. 

21 In carrying out paragraph (3), the Director shall bear in 

22 mind that discovery must be in the interests of justice. 

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

24 under subsection (a)(1)— 
42 

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

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

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

4 proceeding is instituted under this chapter, except 

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

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

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

8 the Director; 

9 ‘‘(3) shall provide for publication of notice in 

10 the Federal Register of the filing of a petition for 

11 post-grant review under this chapter, for publication 

12 of the petition, and documents, orders, and decisions 

13 relating to the petition, on the website of the Patent 

14 and Trademark Office, and for filings under seal ex15 empt from publication requirements; 

16 ‘‘(4) shall prescribe sanctions for abuse of dis17 covery, abuse of process, or any other improper use 

18 of the proceeding, such as to harass or to cause un19 necessary delay or unnecessary increase in the cost 

20 of the proceeding; 

21 ‘‘(5) may provide for protective orders gov22 erning the exchange and submission of confidential 

23 information; and 

24 ‘‘(6) shall ensure that any information sub25 mitted by the patent owner in support of any 
43 

•HR 1908 EH

1 amendment entered under section 329 is made avail2 able to the public as part of the prosecution history 

3 of the patent. 

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

5 under this section, the Director shall consider the effect 

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

7 the efficient administration of the Office. 

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

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

10 conduct each post-grant review proceeding authorized by 

11 the Director. 

12 ‘‘§ 327. Patent owner response 

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

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

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

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

17 The patent owner shall file with the response, through af18 fidavits or declarations, any additional factual evidence 

19 and expert opinions on which the patent owner relies in 

20 support of the response. 

21 ‘‘§ 328. Proof and evidentiary standards 

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

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

24 patent claim under this chapter. 
44 

•HR 1908 EH

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 

8 motion to amend the patent in one or more of the fol9 lowing 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 pat19 ent 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 

23 Appeal Board shall issue a final written decision address24 ing the patentability of any patent claim challenged and 

25 any new claim added under section 329. 
45 

•HR 1908 EH

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 certifi6 cate canceling any claim of the patent finally determined 

7 to be unpatentable and incorporating in the patent by op8 eration of the certificate any new claim determined to be 

9 patentable. 

10 ‘‘(b) NEW CLAIMS.—Any new claim held to be pat11 entable and incorporated into a patent in a post-grant re12 view proceeding shall have the same effect as that speci13 fied in section 252 for reissued patents on the right of 

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

15 within the United States, or imported into the United 

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

17 substantial preparations therefor, before a certificate 

18 under subsection (a) of this section is issued. 

19 ‘‘§ 332. Settlement 

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

21 shall be terminated with respect to any petitioner upon 

22 the joint request of the petitioner and the patent owner, 

23 unless the Patent Trial and Appeal Board has issued a 

24 written decision before the request for termination is filed. 

25 If the post-grant review proceeding is terminated with re26 spect to a petitioner under this paragraph, no estoppel 
46 

•HR 1908 EH

1 shall apply to that petitioner. If no petitioner remains in 

2 the proceeding, the panel of administrative patent judges 

3 assigned to the proceeding shall terminate the proceeding. 

4 ‘‘(b) AGREEMENT IN WRITING.—Any agreement or 

5 understanding between the patent owner and a petitioner, 

6 including any collateral agreements referred to in the 

7 agreement or understanding, that is made in connection 

8 with or in contemplation of the termination of a post-grant 

9 review proceeding, must be in writing. A post-grant review 

10 proceeding as between the parties to the agreement or un11 derstanding may not be terminated until a copy of the 

12 agreement or understanding, including any such collateral 

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

14 such an agreement or understanding requests, the agree15 ment or understanding shall be kept separate from the 

16 file of the post-grant review proceeding, and shall be made 

17 available only to Government agencies on written request, 

18 or to any person on a showing of good cause. 

19 ‘‘§ 333. Relationship to other proceedings 

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

21 135(a), sections 251 and 252, and chapter 30, the Direc22 tor may determine the manner in which any reexamination 

23 proceeding, reissue proceeding, interference proceeding 

24 (commenced with respect to an application for patent filed 

25 before the effective date provided in section 3(k) of the 
47 

•HR 1908 EH

1 Patent Reform Act of 2007), derivation proceeding, or 

2 post-grant review proceeding, that is pending during a 

3 post-grant review proceeding, may proceed, including pro4 viding for stay, transfer, consolidation, or termination of 

5 any such proceeding. 

6 ‘‘(b) STAYS.—The Director may stay a post-grant re7 view proceeding if a pending civil action for infringement 

8 of a patent addresses the same or substantially the same 

9 questions of patentability raised against the patent in a 

10 petition for post-grant review. 

11 ‘‘(c) EFFECT OF COMMENCEMENT OF PRO12 CEEDING.—The commencement of a post-grant review 

13 proceeding— 

14 ‘‘(1) shall not limit in any way the right of the 

15 patent owner to commence an action for infringe16 ment of the patent; and 

17 ‘‘(2) shall not be cited as evidence relating to 

18 the validity of any claim of the patent in any pro19 ceeding before a court or the International Trade 

20 Commission concerning the patent. 

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

22 post-grant review proceedings 

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

24 civil action arising in whole or in part under section 1338 
48 

•HR 1908 EH

1 of title 28 establishing that the party has not sustained 

2 its burden of proving the invalidity of any patent claim— 

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

4 privies of that party may not thereafter request a 

5 post-grant review proceeding on that patent claim on 

6 the basis of any grounds, under the provisions of 

7 section 321, which that party or the privies of that 

8 party raised or could have raised; and 

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

10 a post-grant review proceeding that was requested, 

11 before the final decision was so entered, by that 

12 party or the privies of that party on the basis of 

13 such grounds. 

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

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

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

17 challenged by the cancellation petitioner, the cancellation 

18 petitioner may not thereafter, based on any ground that 

19 the cancellation petitioner raised during the post-grant re20 view proceeding— 

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

22 claim under chapter 31; 

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

24 with respect to such claim; 
49 

•HR 1908 EH

1 ‘‘(3) request or pursue a post-grant review pro2 ceeding under this chapter with respect to such 

3 claim; 

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

5 any civil action arising in whole or in part under sec6 tion 1338 of title 28; or 

7 ‘‘(5) assert the invalidity of any such claim in 

8 defense to an action brought under section 337 of 

9 the Tariff Act of 1930 (19 U.S.C. 1337). 

10 ‘‘§ 336. Appeal 

11 ‘‘A party dissatisfied with the final determination of 

12 the Patent Trial and Appeal Board in a post-grant pro13 ceeding under this chapter may appeal the determination 

14 under sections 141 through 144. Any party to the post15 grant proceeding shall have the right to be a party to the 

16 appeal.’’. 

17 (g) CONFORMING AMENDMENT.—The table of chap18 ters for part III is amended by adding at the end the fol19 lowing: 

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

20 (h) REPEAL.—Section 4607 of the Intellectual Prop21 erty and Communications Omnibus Reform Act of 1999, 

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

23 is repealed. 

24 (i) EFFECTIVE DATES.— 
50 

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

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

3 the 1-year period beginning on the date of the enact4 ment of this Act. 

5 (2) APPLICABILITY TO EX PARTE AND INTER

6 PARTES PROCEEDINGS.—Notwithstanding any other 

7 provision of law, sections 301 and 311 through 318 

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

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

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

11 from an original application filed on any date. 

12 (3) APPLICABILITY TO POST-GRANT PRO13 CEEDINGS.—The amendments made by subsections 

14 (f) and (g) shall apply to patents issued on or after 

15 the effective date under paragraph (1). 

16 (j) REGULATIONS.—The Under Secretary of Com17 merce for Intellectual Property and Director of the United 

18 States Patent and Trademark Office (in this subsection 

19 referred to as the ‘‘Director’’) shall, not later than the 

20 date that is 1 year after the date of the enactment of this 

21 Act, issue regulations to carry out chapter 32 of title 35, 

22 United States Code, as added by subsection (f) of this sec23 tion. 
51 

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

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

3 Act) is further amended by adding at the end the fol4 lowing: 

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

6 party in interest requesting cancellation of any claim of 

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

8 the real party in interest.’’. 

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

10 is amended to read as follows: 

11 ‘‘§ 6. Patent Trial and Appeal Board 

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

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

14 The administrative patent judges shall constitute the Pat15 ent Trial and Appeal Board. The administrative patent 

16 judges shall be persons of competent legal knowledge and 

17 scientific ability who are appointed by the Secretary of 

18 Commerce. Any reference in any Federal law, Executive 

19 order, rule, regulation, or delegation of authority, or any 

20 document of or pertaining to the Board of Patent Appeals 

21 and Interferences is deemed to refer to the Patent Trial 

22 and Appeal Board. 

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

24 shall— 
52 

•HR 1908 EH

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

2 adverse decisions of examiners upon application for 

3 patents; 

4 ‘‘(2) on written appeal of a patent owner, re5 view adverse decisions of examiners upon patents in 

6 reexamination proceedings under chapter 30; 

7 ‘‘(3) review appeals by patent owners and third8 party requesters under section 315; 

9 ‘‘(4) determine priority and patentability of in10 vention in derivation proceedings under section 

11 135(a); and 

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

13 under chapter 32. 

14 Each appeal and derivation proceeding shall be heard by 

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

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

17 Trial and Appeal Board may grant rehearings. The Direc18 tor shall assign each post-grant review proceeding to a 

19 panel of 3 administrative patent judges. Once assigned, 

20 each such panel of administrative patent judges shall have 

21 the responsibilities under chapter 32 in connection with 

22 post-grant review proceedings.’’. 

23 (b) EFFECTIVE DATE.—The amendments made by 

24 this section shall take effect at the end of the 1-year period 

25 beginning on the date of the enactment of this Act. 
53 

•HR 1908 EH

1 SEC. 8. STUDY AND REPORT ON REEXAMINATION PRO2 CEEDINGS. 

3 The Under Secretary of Commerce for Intellectual 

4 Property and Director of the Patent and Trademark Of5 fice shall, not later than 2 years after the date of the en6 actment of this Act— 

7 (1) conduct a study of the effectiveness and ef8 ficiency of the different forms of proceedings avail9 able under title 35, United States Code, for the re10 examination of patents; and 

11 (2) submit to the Committees on the Judiciary 

12 of the House of Representatives and the Senate a 

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

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

15 any other recommendations the Director has with 

16 respect to patent reexamination proceedings. 

17 SEC. 9. SUBMISSIONS BY THIRD PARTIES AND OTHER 

18 QUALITY ENHANCEMENTS. 

19 (a) PUBLICATION.—Section 122(b)(2)(B)(i) is 

20 amended by striking ‘‘published as provided in paragraph 

21 (1).’’ and inserting the following: ‘‘published until the later 

22 of— 

23 ‘‘(I) three months after a second action is 

24 taken pursuant to section 132 on the applica25 tion, of which notice has been given or mailed 

26 to the applicant; or 
54 

•HR 1908 EH

1 ‘‘(II) the date specified in paragraph (1).’’. 

2 (b) PREISSUANCE SUBMISSIONS BY THIRD PAR3 TIES.—Section 122 is amended by adding at the end the 

4 following: 

5 ‘‘(e) PREISSUANCE SUBMISSIONS BY THIRD PAR6 TIES.— 

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

8 consideration and inclusion in the record of a patent 

9 application, any patent, published patent application, 

10 or other publication of potential relevance to the ex11 amination of the application, if such submission is 

12 made in writing before the earlier of— 

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

14 section 151 is mailed in the application for pat15 ent; or 

16 ‘‘(B) either— 

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

18 the application for patent is published 

19 under section 122, or 

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

21 under section 132 of any claim by the ex22 aminer during the examination of the ap23 plication for patent, 

24 whichever occurs later. 
55 

•HR 1908 EH

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

2 under paragraph (1) shall— 

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

4 asserted relevance of each submitted document; 

5 ‘‘(B) be accompanied by such fee as the 

6 Director may prescribe; 

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

8 affirming that the submission was made in 

9 compliance with this section; and 

10 ‘‘(D) identify the real party-in-interest 

11 making the submission.’’. 

12 (c) EFFECTIVE DATE.—The amendments made by 

13 this section— 

14 (1) shall take effect at the end of the 1-year pe15 riod beginning on the date of the enactment of this 

16 Act; and 

17 (2) shall apply to any application for patent 

18 filed before, on, or after the effective date under 

19 paragraph (1). 

20 SEC. 10. TAX PLANNING METHODS NOT PATENTABLE. 

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

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

23 PATENTABLE INVENTIONS.—Whoever’’; and 

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

25 ‘‘(b) TAX PLANNING METHODS.— 
56 

•HR 1908 EH

1 ‘‘(1) UNPATENTABLE SUBJECT MATTER.—A 

2 patent may not be obtained for a tax planning meth3 od. 

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

5 (1)— 

6 ‘‘(A) the term ‘tax planning method’ 

7 means a plan, strategy, technique, or scheme 

8 that is designed to reduce, minimize, or defer, 

9 or has, when implemented, the effect of reduc10 ing, minimizing, or deferring, a taxpayer’s tax 

11 liability, but does not include the use of tax 

12 preparation software or other tools used solely 

13 to perform or model mathematical calculations 

14 or prepare tax or information returns; 

15 ‘‘(B) the term ‘taxpayer’ means an indi16 vidual, entity, or other person (as defined in 

17 section 7701 of the Internal Revenue Code of 

18 1986) that is subject to taxation directly, is re19 quired to prepare a tax return or information 

20 statement to enable one or more other persons 

21 to determine their tax liability, or is otherwise 

22 subject to a tax law; 

23 ‘‘(C) the terms ‘tax’, ‘tax laws’, ‘tax liabil24 ity’, and ‘taxation’ refer to any Federal, State, 

25 county, city, municipality, or other govern-
57 

•HR 1908 EH

1 mental levy, assessment, or imposition, whether 

2 measured by income, value, or otherwise; and 

3 ‘‘(D) the term ‘State’ means each of the 

4 several States, the District of Columbia, and 

5 any commonwealth, territory, or possession of 

6 the United States.’’. 

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

8 section— 

9 (1) shall take effect on the date of the enact10 ment of this Act; 

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

12 application for a reissue patent that is— 

13 (A) filed on or after the date of the enact14 ment of this Act; or 

15 (B) filed before that date if a patent or re16 issue patent has not been issued pursuant to 

17 the application as of that date; and 

18 (3) shall not be construed as validating any pat19 ent issued before the date of the enactment of this 

20 Act for an invention described in section 101(b) of 

21 title 35, United States Code, as amended by this 

22 section. 
58 

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1 SEC. 11. VENUE AND JURISDICTION. 

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

3 title 28, United States Code, is amended by striking sub4 section (b) and inserting the following: 

5 ‘‘(b) In any civil action arising under any Act of Con6 gress relating to patents, a party shall not manufacture 

7 venue by assignment, incorporation, joinder, or otherwise 

8 primarily to invoke the venue of a specific district court. 

9 ‘‘(c) Notwithstanding section 1391 of this title, ex10 cept as provided in paragraph (3) of this subsection, any 

11 civil action for patent infringement or any action for de12 claratory judgment relating to a patent may be brought 

13 only in a judicial district— 

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

15 of business or is incorporated, or, for foreign cor16 porations with a United States subsidiary, where the 

17 defendant’s primary United States subsidiary has its 

18 principal place of business or is incorporated; 

19 ‘‘(2) where the defendant has committed a sub20 stantial portion of the acts of infringement and has 

21 a regular and established physical facility that the 

22 defendant controls and that constitutes a substantial 

23 portion of the defendant’s operations; 

24 ‘‘(3) for cases involving only foreign defendants 

25 with no United States subsidiary, according to sec26 tion 1391(d) of this title; 
59 

•HR 1908 EH

1 ‘‘(4) where the plaintiff resides, if the plaintiff 

2 is— 

3 ‘‘(A) an institution of higher education as 

4 defined under section 101(a) of the Higher 

5 Education Act of 1965 (20 U.S.C. section 

6 1001(a)); or 

7 ‘‘(B) a nonprofit organization that— 

8 ‘‘(i) is described in section 501(c)(3) 

9 of the Internal Revenue Code of 1986; 

10 ‘‘(ii) is exempt from taxation under 

11 section 501(a) of such Code; and 

12 ‘‘(iii) serves primarily as the patent 

13 and licensing organization for an institu14 tion of higher education as defined under 

15 section 101(a) of the Higher Education 

16 Act of 1965 (20 U.S.C. 1001(a)); 

17 ‘‘(5) where the plaintiff or a subsidiary has a 

18 place of business that is engaged in substantial— 

19 ‘‘(A) research and development, 

20 ‘‘(B) manufacturing activities, or 

21 ‘‘(C) management of research and develop22 ment or manufacturing activities, 

23 related to the patent or patents in dispute; 

24 ‘‘(6) where the plaintiff resides if the plaintiff 

25 is named as inventor or co-inventor on the patent 
60 

•HR 1908 EH

1 and has not assigned, granted, conveyed, or licensed, 

2 and is under no obligation to assign, grant, convey, 

3 or license, any rights in the patent or in enforcement 

4 of the patent, including the results of any such en5 forcement; or 

6 ‘‘(7) where any of the defendants has substan7 tial evidence and witnesses if there is no other dis8 trict in which the action may be brought under this 

9 section.’’. 

10 (b) INTERLOCUTORY APPEALS.—Subsection (c) of 

11 section 1292 of title 28, United States Code, is amended— 

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

13 (1); 

14 (2) by striking the period at the end of para15 graph (2) and inserting ‘‘; and’’; and 

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

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

18 or decree determining construction of claims in a 

19 civil action for patent infringement under section 

20 271 of title 35. 

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

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

23 or decree. The district court shall have discretion whether 

24 to approve the application and, if so, whether to stay pro-
61 

•HR 1908 EH

1 ceedings in the district court during pendency of the ap2 peal.’’. 

3 (c) EFFECTIVE DATE.— 

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

5 this section— 

6 (A) shall take effect on the date of the en7 actment of this Act; and 

8 (B) shall apply to any civil action com9 menced on or after such date of enactment. 

10 (2) PENDING CASES.—Any case commenced in 

11 a United States district court on or after September 

12 7, 2007, in which venue is improper under section 

13 1400 of title 28, United States Code, as amended by 

14 this section, shall be transferred pursuant to section 

15 1404 of such title, unless— 

16 (A) one or more substantive rulings on the 

17 merits, or other substantial litigation, has oc18 curred; and 

19 (B) the court finds that transfer would not 

20 serve the interests of justice. 

21 SEC. 12. ADDITIONAL INFORMATION; INEQUITABLE CON22 DUCT AS DEFENSE TO INFRINGEMENT. 

23 (a) DISCLOSURE REQUIREMENTS FOR APPLI24 CANTS.— 
62 

•HR 1908 EH

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

2 adding at the end the following new section: 

3 ‘‘§ 123. Additional information 

4 ‘‘(a) IN GENERAL.—The Director may, by regulation, 

5 require that applicants submit a search report and other 

6 information and analysis relevant to patentability. If the 

7 Director requires a search report to be submitted by appli8 cants, and an applicant does not itself perform the search, 

9 the search must be performed by one or more individuals 

10 who are United States citizens or by a commercial entity 

11 that is organized under the laws of the United States or 

12 any State and employs United States citizens to perform 

13 such searches. An application shall be regarded as aban14 doned if the applicant fails to submit a search report, in15 formation, or an analysis in the manner and within the 

16 time period prescribed by the Director. Any search report 

17 required by the Director may not substitute in any way 

18 for a search by an examiner of the prior art during exam19 ination. 

20 ‘‘(b) EXCEPTION FOR MICRO ENTITIES.—Applica21 tions from micro-entities shall not be subject to the re22 quirements of regulations issued under subsection (a). 
63 

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1 ‘‘§ 124. Micro entities 

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

3 term ‘micro entity’ means an applicant for patent who 

4 makes a certification under either subsection (b) or (c). 

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

6 under this subsection is a certification by each inventor 

7 named in the application that the inventor— 

8 ‘‘(1) qualifies as a small entity as defined in 

9 regulations issued by the Director; 

10 ‘‘(2) has not been named on five or more pre11 viously filed patent applications; 

12 ‘‘(3) has not assigned, granted, or conveyed, 

13 and is not under an obligation by contract or law to 

14 assign, grant, or convey, a license or any other own15 ership interest in the application; and 

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

17 in section 61(a) of the Internal Revenue Code of 

18 1986, exceeding 2.5 times the median household in19 come, as reported by the Bureau of the Census, for 

20 the most recent calendar year preceding the calendar 

21 year in which the examination fee is being paid. 

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

23 this subsection is a certification by each inventor named 

24 in the application that the inventor— 
64 

•HR 1908 EH

1 ‘‘(1) qualifies as a small entity as defined in 

2 regulations issued by the Director and meets the re3 quirements of subsection (b)(4); 

4 ‘‘(2) has not been named on five or more pre5 viously filed patent applications; and 

6 ‘‘(3) has assigned, granted, conveyed, or is 

7 under an obligation by contract or law to assign, 

8 grant, or convey, a license or other ownership inter9 est in the application to an entity that has five or 

10 fewer employees and has a gross taxable income, as 

11 defined in section 61(a) of the Internal Revenue 

12 Code of 1986, that does not exceed 2.5 times the 

13 median household income, as reported by the Bu14 reau of the Census, for the most recent calendar 

15 year preceding the calendar year in which the exam16 ination fee is being paid.’’. 

17 (2) CONFORMING AMENDMENT.—The table of 

18 sections for chapter 11 is amended by adding at the 

19 end the following new items: 

‘‘123. Additional information. 

‘‘124. Micro entities.’’. 

20 (b) INEQUITABLE CONDUCT AS DEFENSE TO IN21 FRINGEMENT.—Section 282 is amended— 

22 (1) in the first undesignated paragraph, by 

23 striking ‘‘A patent’’ and inserting ‘‘(a) IN GEN24 ERAL.—A patent’’; 
65 

•HR 1908 EH

1 (2) in the second undesignated paragraph— 

2 (A) by striking ‘‘The following’’ and insert3 ing ‘‘(b) DEFENSES.—The following’’; and 

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

5 each of paragraphs (1), (2), and (3) and insert6 ing a period; 

7 (3) in the third undesignated paragraph— 

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

9 ‘‘(d) NOTICE OF ACTIONS; PLEADING.—In ac10 tions’’; 

11 (B) by inserting after the second sentence 

12 the following: ‘‘In an action involving any alle13 gation of inequitable conduct under subsection 

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

15 shall comply with the pleading requirements set 

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

17 Procedure.’’; and 

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

19 ‘‘(e) EXTENSION OF PATENT TERM.—Inva20 lidity’’; and 

21 (4) by inserting after subsection (b), as des22 ignated by paragraph (2) of this subsection, the fol23 lowing: 

24 ‘‘(c) INEQUITABLE CONDUCT.— 
66 

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1 ‘‘(1) DEFENSE.—One or more claims of a pat2 ent may be held to be unenforceable, or other rem3 edy imposed under paragraph (4), for inequitable 

4 conduct only if it is established, by clear and con5 vincing evidence, that a person with a duty of disclo6 sure to the Office, with the intent to mislead or de7 ceive the patent examiner, misrepresented or failed 

8 to disclose material information to the examiner dur9 ing examination of the patent. 

10 ‘‘(2) MATERIALITY.— 

11 ‘‘(A) IN GENERAL.—Information is mate12 rial under this section if— 

13 ‘‘(i) a reasonable examiner would have 

14 made a prima facie finding of 

15 unpatentability, or maintained a finding of 

16 unpatentability, of one or more of the pat17 ent claims based on the information, and 

18 the information is not cumulative to infor19 mation already of record or previously con20 sidered by the Office; or 

21 ‘‘(ii) information that is otherwise ma22 terial refutes or is inconsistent with a posi23 tion the applicant takes in opposing a re24 jection of the claim or in asserting an ar25 gument of patentability. 
67 

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1 ‘‘(B) PRIMA FACIE FINDING.—A prima 

2 facie finding of unpatentability under this sec3 tion is shown if a reasonable examiner, based 

4 on a preponderance of the evidence, would con5 clude that the claim is unpatentable based on 

6 the information misrepresented or not disclosed, 

7 when that information is considered alone or in 

8 conjunction with other information or record. In 

9 determining whether there is a prima facie find10 ing of unpatentability, each term in the claim 

11 shall be given its broadest reasonable construc12 tion consistent with the specification, and re13 buttal evidence shall not be considered. 

14 ‘‘(3) INTENT.—To prove a person with a duty 

15 of disclosure to the Office intended to mislead or de16 ceive the examiner under paragraph (1), specific 

17 facts beyond materiality of the information misrepre18 sented or not disclosed must be proven that establish 

19 the intent of the person to mislead or deceive the ex20 aminer by the actions of the person. Facts support 

21 an intent to mislead or deceive if they show cir22 cumstances that indicate conscious or deliberate be23 havior on the part of the person to not disclose ma24 terial information or to submit false material infor25 mation in order to mislead or deceive the examiner. 
68 

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1 Circumstantial evidence may be used to prove that 

2 a person had the intent to mislead or deceive the ex3 aminer under paragraph (1). 

4 ‘‘(4) REMEDY.—Upon a finding of inequitable 

5 conduct, the court shall balance the equities to de6 termine which of the following remedies to impose: 

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

8 holder and limiting the remedy for infringement 

9 to reasonable royalties. 

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

11 claims in which inequitable conduct occurred, 

12 unenforceable. 

13 ‘‘(C) Holding the patent unenforceable. 

14 ‘‘(D) Holding the claims of a related pat15 ent unenforceable. 

16 ‘‘(5) ATTORNEY MISCONDUCT.—Upon a finding 

17 of inequitable conduct, if there is evidence that the 

18 conduct is attributable to a person or persons au19 thorized to practice before the Office, the court shall 

20 refer the matter to the Office for appropriate dis21 ciplinary action under section 32, and shall order the 

22 parties to preserve and make available to the Office 

23 any materials that may be relevant to the determina24 tion under section 32.’’. 

25 (c) EFFECTIVE DATE.— 
69 

•HR 1908 EH

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

2 by subsection (a)— 

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

4 year period beginning on the date of the enact5 ment of this Act; and 

6 (B) shall apply to any application for pat7 ent filed on or after the effective date under 

8 subparagraph (A). 

9 (2) SUBSECTION (b).—The amendments made 

10 by subsection (b) shall apply to any civil action com11 menced on or after the date of the enactment of this 

12 Act. 

13 SEC. 13. BEST MODE REQUIREMENT. 

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

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

16 the following: 

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

18 suit for failure to comply with— 

19 ‘‘(A) any requirement of section 112 of 

20 this title, other than the requirement that the 

21 specification shall set forth the best mode con22 templated by the inventor of carrying out his 

23 invention; or 

24 ‘‘(B) any requirement of section 251 of 

25 this title.’’. 
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1 SEC. 14. REGULATORY AUTHORITY. 

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

3 amended by adding at the end the following: 

4 ‘‘(6) The powers granted under paragraph (2) of sub5 section (b) include the authority to promulgate regulations 

6 to ensure the quality and timeliness of applications and 

7 their examination, including specifying circumstances 

8 under which an application for patent may claim the ben9 efit under sections 120, 121 and 365(c) of the filing date 

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

11 (b) CLARIFICATION.—The amendment made by sub12 section (a) clarifies the scope of power granted to the 

13 United States Patent and Trademark Office by paragraph 

14 (2) of section 2(b) of title 35, United States Code, as in 

15 effect since the enactment of Public Law 106–113. 

16 (c) EFFECTIVE DATE OF REGULATIONS.— 

17 (1) REVIEW BY CONGRESS.—A regulation pro18 mulgated by the United States Patent and Trade19 mark Office under section 2(b)(2) of title 35, United 

20 States Code, with respect to any matter described in 

21 section 2(c)(6) of such title, as added by subsection 

22 (a) of this section, may not take effect before the 

23 end of a period of 60 days beginning on the date on 

24 which the Under Secretary of Commerce for Intellec25 tual Property and Director of the United States Pat26 ent and Trademark Office submits to each House of 
71 

•HR 1908 EH

1 Congress a copy of the regulation, together with a 

2 report containing the reasons for its adoption. The 

3 regulation and report so submitted shall be referred 

4 to the Committee on the Judiciary of the House of 

5 Representatives and the Committee on the Judiciary 

6 of the Senate. 

7 (2) JOINT RESOLUTION OF DISAPPROVAL.—If a 

8 joint resolution of disapproval with respect to the 

9 regulation is enacted into law, the regulation shall 

10 not become effective or continue in effect. 

11 (3) JOINT RESOLUTION DEFINED.—For pur12 poses of this subsection, the term a ‘‘joint resolution 

13 of disapproval’’ means a joint resolution, the matter 

14 after the resolving clause of which is as follows: 

15 ‘‘That Congress disapproves the regulation sub16 mitted by the Under Secretary of Commerce for In17 tellectual Property and Director of the United States 

18 Patent and Trademark Office on lll relating to 

19 lll, and such regulation shall have no force or 

20 effect.’’, with the first space being filled with the ap21 propriate date, and the second space being filled 

22 with a description of the regulation at issue. 

23 (4) REFERRAL.—A joint resolution of dis24 approval shall be referred in the House of Rep-
72 

•HR 1908 EH

1 resentatives to the Committee on the Judiciary and 

2 in the Senate to the Committee on the Judiciary. 

3 (5) FLOOR CONSIDERATION.—A vote on final 

4 passage of a joint resolution of disapproval shall be 

5 taken in each House on or before the close of the 

6 15th day after the bill or resolution is reported by 

7 the committee of that House to which it was re8 ferred or after such committee has been discharged 

9 from further consideration of the joint resolution of 

10 disapproval. 

11 (6) NO INFERENCES.— If the Congress does 

12 not enact a joint resolution of disapproval, no court 

13 or agency may infer therefrom any intent of the 

14 Congress with regard to such regulation or action. 

15 (7) CALCULATION OF DAYS.—The 60-day pe16 riod referred to in paragraph (1) and the 15-day pe17 riod referred to in paragraph (5) shall be computed 

18 by excluding— 

19 (A) the days on which either House of 

20 Congress is not in session because of an ad21 journment of the Congress sine die; and 

22 (B) any Saturday and Sunday, not ex23 cluded under subparagraph (A), when either 

24 House is not in session. 
73 

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1 (8) RULEMAKING AUTHORITY.—This subsection 

2 is enacted by the Congress as an exercise of the 

3 rulemaking power of the Senate and House of Rep4 resentatives respectively, and as such it is deemed a 

5 part of the rules of each House, respectively. 

6 SEC. 15. TECHNICAL AMENDMENTS. 

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

8 (1) in the first paragraph, by striking 

9 ‘‘When’’ and inserting ‘‘(a) JOINT INVEN10 TIONS.—When’’; 

11 (2) in the second paragraph, by striking 

12 ‘‘If a joint inventor’’ and inserting ‘‘(b) OMIT13 TED INVENTOR.—If a joint inventor’’; and 

14 (3) in the third paragraph, by striking 

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

16 ERRORS IN APPLICATION.—Whenever’’. 

17 (b) FILING OF APPLICATION IN FOREIGN COUN18 TRY.—Section 184 is amended— 

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

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

21 COUNTRY.—Except when’’; 

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

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

24 term’’; and 
74 

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

2 scope’’ and inserting ‘‘(c) SUBSEQUENT MODIFICA3 TIONS, AMENDMENTS, AND SUPPLEMENTS.—The 

4 scope’’. 

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

6 is amended— 

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

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

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

11 PATENTS.—The Director’’; 

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

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

14 THIS TITLE.—The provisions’’; and 

15 (4) in the last paragraph, by striking ‘‘No re16 issued patent’’ and inserting ‘‘(d) REISSUE PATENT

17 ENLARGING SCOPE OF CLAIMS.—No reissued pat18 ent’’. 

19 (d) EFFECT OF REISSUE.—Section 253 is amend20 ed— 

21 (1) in the first paragraph, by striking ‘‘When22 ever’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; 

23 and 

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

25 like manner’’ and inserting ‘‘(b) ADDITIONAL DIS-
75 

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1 CLAIMER OR DEDICATION.—In the manner set forth 

2 in subsection (a),’’. 

3 (e) CORRECTION OF NAMED INVENTOR.—Section 

4 256 is amended— 

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

7 and 

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

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

10 CORRECTED.—The error’’. 

11 (f) EFFECTIVE DATE.—The amendments made by 

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

13 of this Act. 

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

15 (a) IN GENERAL.—Not later than 1 year after the 

16 date of the enactment of this Act, the Director of the Ad17 ministrative Office of the United States Courts shall con18 duct a study of, and submit to the Committee on the Judi19 ciary of the House of Representatives and the Committee 

20 on the Judiciary of the Senate a report on, the use of 

21 special masters in patent litigation who are appointed in 

22 accordance with Rule 53 of the Federal Rules of Civil Pro23 cedure. 

24 (b) OBJECTIVE.—In conducting the study under sub25 section (a), the Director shall consider whether the use 
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1 of special masters has been beneficial in patent litigation 

2 and what, if any, program should be undertaken to facili3 tate the use by the judiciary of special masters in patent 

4 litigation. 

5 (c) FACTORS TO CONSIDER.—In conducting the 

6 study under subsection (a), the Director, in consultation 

7 with the Federal Judicial Center, shall consider— 

8 (1) the basis upon which courts appoint special 

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

10 Civil Procedure; 

11 (2) the frequency with which special masters 

12 have been used by the courts; 

13 (3) the role and powers special masters are 

14 given by the courts; 

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

16 special masters; 

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

18 where a special master is used as compared to cases 

19 where no special master is used; 

20 (6) the legal and technical training and experi21 ence of special masters; 

22 (7) whether the use of special masters has an 

23 impact on the reversal rate of district court decisions 

24 at the Court of Appeals for the Federal Circuit; and 
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1 (8) any other factors that the Director believes 

2 would assist in gauging the effectiveness of special 

3 masters in patent litigation. 

4 SEC. 17. STUDY ON WORKPLACE CONDITIONS. 

5 The Comptroller General shall, not later than 2 years 

6 after the date of the enactment of this Act— 

7 (1) conduct a study of workplace conditions for 

8 the examiner corps of the United States Patent and 

9 Trademark Office, including the effect, if any, of 

10 this Act and the amendments made by this Act on— 

11 (A) recruitment, retention, and promotion 

12 of employees; and 

13 (B) workload, quality assurance, and em14 ployee grievances; and 

15 (2) submit to the Committees on the Judiciary 

16 of the House of Representatives and the Senate a 

17 report on the results of the study, including any sug18 gestions for improving workplace conditions, to19 gether with any other recommendations that the 

20 Comptroller General has with respect to patent reex21 amination proceedings. 

22 SEC. 18. RULE OF CONSTRUCTION. 

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

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

25 done with the same intent to promote joint research activi-
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1 ties that was expressed, including in the legislative history, 

2 through the enactment of the Cooperative Research and 

3 Technology Enhancement Act of 2004 (Public Law 108– 

4 453; the ‘‘CREATE Act’’), the amendments of which are 

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

6 Patent and Trademark Office shall administer section 

7 102(b)(3) of title 35, United States Code, in a manner 

8 consistent with the legislative history of the CREATE Act 

9 that was relevant to its administration by the Patent and 

10 Trademark Office. 

11 SEC. 19. STUDY ON PATENT DAMAGES. 

12 (a) IN GENERAL.—The Under Secretary of Com13 merce for Intellectual Property and Director of the United 

14 States Patent and Trademark Office (in this section re15 ferred to as the ‘‘Director’’) shall conduct a study of pat16 ent damage awards in cases where such awards have been 

17 based on a reasonable royalty under section 284 of title 

18 35, United States Code. The study should, at a minimum, 

19 consider cases from 1990 to the present. 

20 (b) CONDUCT.—In conducting the study under sub21 section (a), the Director shall investigate, at a minimum, 

22 the following: 

23 (1) Whether the mean or median dollar amount 

24 of reasonable-royalty-based patent damages awarded 

25 by courts or juries, as the case may be, has signifi-
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1 cantly increased on a per case basis during the pe2 riod covered by the study, taking into consideration 

3 adjustments for inflation and other relevant eco4 nomic factors. 

5 (2) Whether there has been a pattern of exces6 sive and inequitable reasonable-royalty-based dam7 ages during the period covered by the study and, if 

8 so, any contributing factors, including, for example, 

9 evidence that Federal courts have routinely and in10 appropriately broadened the scope of the ‘‘entire 

11 market value rule’’, or that juries have routinely 

12 misapplied the entire market value rule to the facts 

13 at issue. 

14 (3) To the extent that a pattern of excessive 

15 and inequitable damage awards exists, measures 

16 that could guard against such inappropriate awards 

17 without unduly prejudicing the rights and remedies 

18 of patent holders or significantly increasing litigation 

19 costs, including legislative reforms or improved 

20 model jury instructions. 

21 (4) To the extent that a pattern of excessive 

22 and inequitable damage awards exists, whether legis23 lative proposals that would mandate, or create a pre24 sumption in favor of, apportionment of reasonable25 royalty-based patent damages would effectively 
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1 guard against such inappropriate awards without 

2 unduly prejudicing the rights and remedies of patent 

3 holders or significantly increasing litigation costs. 

4 (c) REPORT.—Not later than 1 year after the date 

5 of the enactment of this Act, the Director shall submit 

6 to the Congress a report on the study conducted under 

7 this section. 

8 SEC. 20. SEVERABILITY. 

9 If any provision of this Act or of any amendment or 

10 repeals made by this Act, or the application of such a pro11 vision to any person or circumstance, is held to be invalid 

12 or unenforceable, the remainder of this Act and the 

13 amendments and repeals made by this Act, and the appli14 cation of this Act and such amendments and repeals to 

15 any other person or circumstance, shall not be affected 

16 by such holding. 

Passed the House of Representatives September 7, 

2007. 

Attest: 

Clerk. 

110TH CONGRESS 

1ST SESSION H. R. 1908 

AN ACT 

To amend title 35, United States Code, to provide 

for patent reform.