II 

Calendar No. 348 

110TH CONGRESS 

1ST SESSION H. R. 1908 

IN THE SENATE OF THE UNITED STATES 

SEPTEMBER 10, 2007 

Received and read the first time 

SEPTEMBER 11, 2007 

Read the second time and placed on the calendar 

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, 

3 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

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

5 ‘‘Patent Reform Act of 2007’’. 

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

7 this Act is as follows: 

Sec. 1. Short title; table of contents. 

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

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

Sec. 4. Inventor’s oath or declaration. 

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

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


bajohnson on PROD1PC77 with BILLS
2 

HR 1908 PCS

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. 

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

2 Whenever in this Act a section or other provision is 

3 amended or repealed, that amendment or repeal shall be 

4 considered to be made to that section or other provision 

5 of title 35, United States Code. 

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

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

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

10 a joint invention, the individuals collectively who invented 

11 or discovered the subject matter of an invention. 

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

13 any one of the individuals who invented or discovered the 

14 subject matter of a joint invention. 

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

16 is— 

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

19 or 


bajohnson on PROD1PC77 with BILLS
3 

HR 1908 PCS

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

2 entitled to a right of priority of any other applica3 tion under section 119, 365(a), or 365(b) or to the 

4 benefit of an earlier filing date in the United States 

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

6 the earliest such application in which the claimed in7 vention is disclosed in the manner provided by sec8 tion 112(a). 

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

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

11 for a patent.’’. 

12 (b) CONDITIONS FOR PATENTABILITY.— 

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

14 read as follows: 

15 ‘‘§ 102. Conditions for patentability; novelty 

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

17 invention may not be obtained if— 

18 ‘‘(1) the claimed invention was patented, de19 scribed in a printed publication, in public use, or on 

20 sale— 

21 ‘‘(A) more than one year before the effec22 tive filing date of the claimed invention; or 

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

24 filing date of the claimed invention, other than 

25 through disclosures made by the inventor or a 


bajohnson on PROD1PC77 with BILLS
4 

HR 1908 PCS

1 joint inventor or by others who obtained the 

2 subject matter disclosed directly or indirectly 

3 from the inventor or a joint inventor; or 

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

5 patent issued under section 151, or in an application 

6 for patent published or deemed published under sec7 tion 122(b), in which the patent or application, as 

8 the case may be, names another inventor and was 

9 effectively filed before the effective filing date of the 

10 claimed invention. 

11 ‘‘(b) EXCEPTIONS.— 

12 ‘‘(1) PRIOR INVENTOR DISCLOSURE EXCEP13 TION.—Subject matter that would otherwise qualify 

14 as prior art based upon a disclosure under subpara15 graph (B) of subsection (a)(1) shall not be prior art 

16 to a claimed invention under that subparagraph if 

17 the subject matter had, before such disclosure, been 

18 publicly disclosed by the inventor or a joint inventor 

19 or others who obtained the subject matter disclosed 

20 directly or indirectly from the inventor or a joint in21 ventor. 

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

23 COMMON ASSIGNMENT EXCEPTIONS.—Subject mat24 ter that would otherwise qualify as prior art only 


bajohnson on PROD1PC77 with BILLS
5 

HR 1908 PCS

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

2 claimed invention if— 

3 ‘‘(A) the subject matter was obtained di4 rectly or indirectly from the inventor or a joint 

5 inventor; 

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

7 disclosed by the inventor or a joint inventor or 

8 others who obtained the subject matter dis9 closed directly or indirectly from the inventor or 

10 a joint inventor before the date on which the 

11 application or patent referred to in subsection 

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

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

14 invention, not later than the effective filing date 

15 of the claimed invention, were owned by the 

16 same person or subject to an obligation of as17 signment to the same person. 

18 ‘‘(3) JOINT RESEARCH AGREEMENT EXCEP19 TION.— 

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

21 claimed invention shall be deemed to have been 

22 owned by the same person or subject to an obli23 gation of assignment to the same person in ap24 plying the provisions of paragraph (2) if— 


bajohnson on PROD1PC77 with BILLS
6 

HR 1908 PCS

1 ‘‘(i) the claimed invention was made 

2 by or on behalf of parties to a joint re3 search agreement that was in effect on or 

4 before the effective filing date of the 

5 claimed invention; 

6 ‘‘(ii) the claimed invention was made 

7 as a result of activities undertaken within 

8 the scope of the joint research agreement; 

9 and 

10 ‘‘(iii) the application for patent for 

11 the claimed invention discloses or is 

12 amended to disclose the names of the par13 ties to the joint research agreement. 

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

15 the term ‘joint research agreement’ means a 

16 written contract, grant, or cooperative agree17 ment entered into by two or more persons or 

18 entities for the performance of experimental, 

19 developmental, or research work in the field of 

20 the claimed invention. 

21 ‘‘(4) PATENTS AND PUBLISHED APPLICATIONS

22 EFFECTIVELY FILED.—A patent or application for 

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

24 with respect to any subject matter described in the 

25 patent or application— 


bajohnson on PROD1PC77 with BILLS
7 

HR 1908 PCS

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

2 the application for patent; or 

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

4 is entitled to claim a right of priority under sec5 tion 119, 365(a), or 365(b) or to claim the ben6 efit of an earlier filing date under section 120, 

7 121, or 365(c), based upon one or more prior 

8 filed applications for patent, as of the filing 

9 date of the earliest such application that de10 scribes the subject matter.’’. 

11 (2) CONFORMING AMENDMENT.—The item re12 lating to section 102 in the table of sections for 

13 chapter 10 is amended to read as follows: 

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

14 (c) CONDITIONS FOR PATENTABILITY; NON-OBVIOUS

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

16 follows: 

17 ‘‘§ 103. Conditions for patentability; nonobvious sub18 ject matter 

19 ‘‘A patent for a claimed invention may not be ob20 tained though the claimed invention is not identically dis21 closed as set forth in section 102, if the differences be22 tween the claimed invention and the prior art are such 

23 that the claimed invention as a whole would have been ob24 vious before the effective filing date of the claimed inven25 tion to a person having ordinary skill in the art to which 


bajohnson on PROD1PC77 with BILLS
8 

HR 1908 PCS

1 the claimed invention pertains. Patentability shall not be 

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

3 (d) REPEAL OF REQUIREMENTS FOR INVENTIONS

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

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

6 repealed. 

7 (e) REPEAL OF STATUTORY INVENTION REGISTRA8 TION.— 

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

10 relating to that section in the table of sections for 

11 chapter 14, are repealed. 

12 (2) REMOVAL OF CROSS REFERENCES.—Section 

13 111(b)(8) is amended by striking ‘‘sections 115, 

14 131, 135, and 157’’ and inserting ‘‘sections 131 and 

15 135’’. 

16 (f) EARLIER FILING DATE FOR INVENTOR AND

17 JOINT INVENTOR.—Section 120 is amended by striking 

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

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

20 (g) CONFORMING AMENDMENTS.— 

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

22 amended by striking ‘‘and the time specified in sec23 tion 102(d)’’. 

24 (2) LIMITATION ON REMEDIES.—Section 

25 287(c)(4) is amended by striking ‘‘the earliest effecVerDate Aug 31 2005 03:18 Sep 12, 2007 Jkt 059200 PO 00000 Frm 00008 Fmt 6652 Sfmt 6201 E:\BILLS\H1908.PCS H1908

bajohnson on PROD1PC77 with BILLS
9 

HR 1908 PCS

1 tive filing date of which is prior to’’ and inserting 

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

3 (3) INTERNATIONAL APPLICATION DESIG4 NATING THE UNITED STATES: EFFECT.—Section 

5 363 is amended by striking ‘‘except as otherwise 

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

7 (4) PUBLICATION OF INTERNATIONAL APPLICA8 TION: EFFECT.—Section 374 is amended by striking 

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

10 154(d)’’. 

11 (5) PATENT ISSUED ON INTERNATIONAL APPLI12 CATION: EFFECT.—The second sentence of section 

13 375(a) is amended by striking ‘‘Subject to section 

14 102(e) of this title, such’’ and inserting ‘‘Such’’. 

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

16 119(a) is amended by striking ‘‘; but no patent shall 

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

18 prior to such filing’’. 

19 (7) INVENTIONS MADE WITH FEDERAL ASSIST20 ANCE.—Section 202(c) is amended— 

21 (A) in paragraph (2)— 

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

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

24 ‘‘obtained in the United States’’ and in25 serting ‘‘the 1-year period referred to in 


bajohnson on PROD1PC77 with BILLS
10 

HR 1908 PCS

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

2 that 2-year period’’; and 

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

4 inserting ‘‘that 1-year’’; and 

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

6 statutory bar date that may occur under this 

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

8 and inserting ‘‘the expiration of the 1-year pe9 riod referred to in section 102(a)’’. 

10 (h) REPEAL OF INTERFERING PATENT REMEDIES.— 

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

12 table of sections for chapter 29, are repealed. 

13 (i) ACTION FOR CLAIM TO PATENT ON DERIVED IN14 VENTION.—Section 135 is amended to read as follows: 

15 ‘‘§ 135. Derivation proceedings 

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

17 ‘‘(1) INSTITUTION OF DERIVATION PRO18 CEEDING.— 

19 ‘‘(A) REQUEST FOR PROCEEDING.—An ap20 plicant may request initiation of a derivation 

21 proceeding to determine the right of the appli22 cant to a patent by filing a request that sets 

23 forth with particularity the basis for finding 

24 that another applicant derived the claimed in25 vention from the applicant requesting the proVerDate Aug 31 2005 03:18 Sep 12, 2007 Jkt 059200 PO 00000 Frm 00010 Fmt 6652 Sfmt 6201 E:\BILLS\H1908.PCS H1908

bajohnson on PROD1PC77 with BILLS
11 

HR 1908 PCS

1 ceeding and, without authorization, filed an ap2 plication claiming such invention. 

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

4 request under subparagraph (A)— 

5 ‘‘(i) may only be made within 12 

6 months after the earlier of— 

7 ‘‘(I) the date on which a patent 

8 is issued containing a claim that is 

9 the same or substantially the same as 

10 the claimed invention; or 

11 ‘‘(II) the date of first publication 

12 of an application containing a claim 

13 that is the same or is substantially the 

14 same as the claimed invention; and 

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

16 must be supported by substantial evidence. 

17 ‘‘(C) DETERMINATION OF DIRECTOR.— 

18 Whenever the Director determines that patents 

19 or applications for patent naming different indi20 viduals as the inventor interfere with one an21 other because of a dispute over the right to pat22 ent on the basis of a request under subpara23 graph (A), the Director shall institute a deriva24 tion proceeding for the purpose of determining 

25 which applicant is entitled to a patent. 


bajohnson on PROD1PC77 with BILLS
12 

HR 1908 PCS

1 ‘‘(2) DETERMINATION BY PATENT TRIAL AND

2 APPEAL BOARD.—In any proceeding under this sub3 section, the Patent Trial and Appeal Board— 

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

5 right to patent; 

6 ‘‘(B) in appropriate circumstances, may 

7 correct the naming of the inventor in any appli8 cation or patent at issue; and 

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

10 right to patent. 

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

12 Trial and Appeal Board may defer action on a re13 quest to initiate a derivation proceeding for up to 

14 three months after the date on which the Director 

15 issues a patent to the applicant that filed the earlier 

16 application. 

17 ‘‘(4) EFFECT OF FINAL DECISION.—The final 

18 decision of the Patent Trial and Appeal Board in a 

19 derivation proceeding, if adverse to the claim of an 

20 applicant, shall constitute the final refusal by the 

21 Patent and Trademark Office on the claims involved. 

22 The Director may issue a patent to an applicant who 

23 is determined by the Patent Trial and Appeal Board 

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

25 the Board, if adverse to a patentee, shall, if no apVerDate Aug 31 2005 03:18 Sep 12, 2007 Jkt 059200 PO 00000 Frm 00012 Fmt 6652 Sfmt 6201 E:\BILLS\H1908.PCS H1908

bajohnson on PROD1PC77 with BILLS
13 

HR 1908 PCS

1 peal or other review of the decision has been or can 

2 be taken or had, constitute cancellation of the claims 

3 involved in the patent, and notice of such cancella4 tion shall be endorsed on copies of the patent dis5 tributed after such cancellation by the Patent and 

6 Trademark Office. 

7 ‘‘(b) SETTLEMENT.—Parties to a derivation pro8 ceeding may terminate the proceeding by filing a written 

9 statement reflecting the agreement of the parties as to the 

10 correct inventors of the claimed invention in dispute. Un11 less the Patent Trial and Appeal Board finds the agree12 ment to be inconsistent with the evidence of record, it shall 

13 take action consistent with the agreement. Any written 

14 settlement or understanding of the parties shall be filed 

15 with the Director. At the request of a party to the pro16 ceeding, the agreement or understanding shall be treated 

17 as business confidential information, shall be kept sepa18 rate from the file of the involved patents or applications, 

19 and shall be made available only to Government agencies 

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

21 cause. 

22 ‘‘(c) ARBITRATION.—Parties to a derivation pro23 ceeding, within such time as may be specified by the Di24 rector by regulation, may determine such contest or any 

25 aspect thereof by arbitration. Such arbitration shall be 


bajohnson on PROD1PC77 with BILLS
14 

HR 1908 PCS

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

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

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

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

5 be dispositive of the issues to which it relates. The arbitra6 tion award shall be unenforceable until such notice is 

7 given. Nothing in this subsection shall preclude the Direc8 tor from determining patentability of the invention in9 volved in the derivation proceeding.’’. 

10 (j) ELIMINATION OF REFERENCES TO INTER11 FERENCES.—(1) Sections 41(a)(6), 134, 141, 145, 146, 

12 154, 305, and 314 are each amended by striking ‘‘Board 

13 of Patent Appeals and Interferences’’ each place it ap14 pears and inserting ‘‘Patent Trial and Appeal Board’’. 

15 (2) Section 141 is amended— 

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

17 ‘‘a derivation proceeding’’; and 

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

19 place it appears and inserting ‘‘derivation pro20 ceeding’’. 

21 (3) Section 146 is amended— 

22 (A) in the first paragraph— 

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

24 ‘‘(a) IN GENERAL.—Any party’’; 


bajohnson on PROD1PC77 with BILLS
15 

HR 1908 PCS

1 (ii) by striking ‘‘an interference’’ and in2 serting ‘‘a derivation proceeding’’; and 

3 (iii) by striking ‘‘interference’’ each addi4 tional place it appears and inserting ‘‘derivation 

5 proceeding’’; and 

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

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

8 subsection (a)’’. 

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

10 to read as follows: 

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

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

13 to read as follows: 

14 ‘‘§ 135. Derivation proceedings’’. 

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

16 to read as follows: 

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

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

19 ‘‘INTERFERENCES’’ and inserting ‘‘DERIVATION PRO20 CEEDINGS’’. 

21 (8) The item relating to section 6 in the table of sec22 tions for chapter 1 is amended to read as follows: 

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

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

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

25 as follows: 


bajohnson on PROD1PC77 with BILLS
16 

HR 1908 PCS

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

‘‘135. Derivation proceedings.’’. 

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

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

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

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

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

5 follows: 

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

7 the United States Patent and Trademark Office 

8 with respect to patent applications, derivation 

9 proceedings, and post-grant review proceedings, 

10 at the instance of an applicant for a patent or 

11 any party to a patent interference (commenced 

12 with respect to an application for patent filed 

13 before the effective date provided in section 

14 3(k) of the Patent Reform Act of 2007), deriva15 tion proceeding, or post-grant review pro16 ceeding, and any such appeal shall waive any 

17 right of such applicant or party to proceed 

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

19 (k) EFFECTIVE DATE.— 

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

21 this section— 

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

23 on which the President issues an Executive 


bajohnson on PROD1PC77 with BILLS
17 

HR 1908 PCS

1 order containing the President’s finding that 

2 major patenting authorities have adopted a 

3 grace period having substantially the same ef4 fect as that contained under the amendments 

5 made by this section; and 

6 (B) shall apply to all applications for pat7 ent that are filed on or after the effective date 

8 under subparagraph (A). 

9 (2) DEFINITIONS.—In this subsection: 

10 (A) MAJOR PATENTING AUTHORITIES.— 

11 The term ‘‘major patenting authorities’’ means 

12 at least the patenting authorities in Europe and 

13 Japan. 

14 (B) GRACE PERIOD.—The term ‘‘grace pe15 riod’’ means the 1-year period ending on the ef16 fective filing date of a claimed invention, during 

17 which disclosures of the subject matter by the 

18 inventor or a joint inventor, or by others who 

19 obtained the subject matter disclosed directly or 

20 indirectly from the inventor or a joint inventor, 

21 do not qualify as prior art to the claimed inven22 tion. 

23 (C) EFFECTIVE FILING DATE.—The term 

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

25 means, with respect to a patenting authority in 


bajohnson on PROD1PC77 with BILLS
18 

HR 1908 PCS

1 another country, a date equivalent to the effec2 tive filing date of a claimed invention as defined 

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

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

5 (3) RETENTION OF INTERFERENCE PROCE6 DURES WITH RESPECT TO APPLICATIONS FILED BE7 FORE EFFECTIVE DATE.—In the case of any applica8 tion for patent that is filed before the effective date 

9 under paragraph (1)(A), the provisions of law re10 pealed or amended by subsections (h), (i), and (j) 

11 shall apply to such application as such provisions of 

12 law were in effect on the day before such effective 

13 date. 

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

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

16 subsection (k), and the end of every 7-year period there17 after, the Under Secretary of Commerce for Intellectual 

18 Property and Director of the United States Patent and 

19 Trademark Office (in this subsection referred to as the 

20 ‘‘Director’’) shall— 

21 (1) conduct a study on the effectiveness and ef22 ficiency of the amendments made by this section; 

23 and 

24 (2) submit to the Committees on the Judiciary 

25 of the House of Representatives and the Senate a 


bajohnson on PROD1PC77 with BILLS
19 

HR 1908 PCS

1 report on the results of the study, including any rec2 ommendations the Director has on amendments to 

3 the law and other recommendations of the Director 

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

5 under the amendments made by this section. 

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

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

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

9 read as follows: 

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

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

12 DECLARATION.—An application for patent that is filed 

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

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

15 invention for which an application has previously been 

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

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

18 claimed invention in the application. Except as otherwise 

19 provided in this section, each individual who is the inven20 tor or a joint inventor of a claimed invention in an applica21 tion for patent shall execute an oath or declaration in con22 nection with the application. 

23 ‘‘(b) REQUIRED STATEMENTS.—An oath or declara24 tion by an individual under subsection (a) shall contain 

25 statements that— 


bajohnson on PROD1PC77 with BILLS
20 

HR 1908 PCS

1 ‘‘(1) the application was made or was author2 ized to be made by individual; and 

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

4 be the original inventor or an original joint inventor 

5 of a claimed invention in the application. 

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

7 may specify additional information relating to the inventor 

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

9 oath or declaration under subsection (a). 

10 ‘‘(d) SUBSTITUTE STATEMENT.— 

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

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

13 patent may provide a substitute statement under the 

14 circumstances described in paragraph (2) and such 

15 additional circumstances that the Director may 

16 specify by regulation. 

17 ‘‘(2) PERMITTED CIRCUMSTANCES.—A sub18 stitute statement under paragraph (1) is permitted 

19 with respect to any individual who— 

20 ‘‘(A) is unable to file the oath or declara21 tion under subsection (a) because the indi22 vidual— 

23 ‘‘(i) is deceased; 

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


bajohnson on PROD1PC77 with BILLS
21 

HR 1908 PCS

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

2 diligent effort; or 

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

4 invention and has refused to make the oath or 

5 declaration required under subsection (a). 

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

7 this subsection shall— 

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

9 whom the statement applies; 

10 ‘‘(B) set forth the circumstances rep11 resenting the permitted basis for the filing of 

12 the substitute statement in lieu of the oath or 

13 declaration under subsection (a); and 

14 ‘‘(C) contain any additional information, 

15 including any showing, required by the Direc16 tor. 

17 ‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGN18 MENT OF RECORD.—An individual who has assigned 

19 rights in an application for patent may include the re20 quired statements under subsections (b) and (c) in the as21 signment executed by the individual, in lieu of filing such 

22 statements separately. 

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

24 section 151 may be provided to an applicant for patent 

25 only if the applicant for patent has filed each required 


bajohnson on PROD1PC77 with BILLS
22 

HR 1908 PCS

1 oath or declaration under subsection (a) or has filed a sub2 stitute statement under subsection (d) or recorded an as3 signment meeting the requirements of subsection (e). 

4 ‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE5 QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.— 

6 The requirements under this section shall not apply to an 

7 individual with respect to an application for patent in 

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

9 inventor and that claims the benefit of an earlier filing 

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

11 ‘‘(1) an oath or declaration meeting the require12 ments of subsection (a) was executed by the indi13 vidual and was filed in connection with the earlier14 filed application; 

15 ‘‘(2) a substitute statement meeting the re16 quirements of subsection (d) was filed in the earlier 

17 filed application with respect to the individual; or 

18 ‘‘(3) an assignment meeting the requirements 

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

20 earlier-filed application by the individual and was re21 corded in connection with the earlier-filed applica22 tion. 

23 ‘‘(h) SUPPLEMENTAL AND CORRECTED STATE24 MENTS; FILING ADDITIONAL STATEMENTS.— 


bajohnson on PROD1PC77 with BILLS
23 

HR 1908 PCS

1 ‘‘(1) IN GENERAL.—Any person making a state2 ment required under this section may withdraw, re3 place, or otherwise correct the statement at any 

4 time. If a change is made in the naming of the in5 ventor requiring the filing of 1 or more additional 

6 statements under this section, such additional state7 ments shall be filed in accordance with regulations 

8 established by the Director. 

9 ‘‘(2) SUPPLEMENTAL STATEMENTS NOT RE10 QUIRED.—If an individual has executed an oath or 

11 declaration under subsection (a) or an assignment 

12 meeting the requirements of subsection (e) with re13 spect to an application for patent, the Director may 

14 not thereafter require that individual to make any 

15 additional oath, declaration, or other statement 

16 equivalent to those required by this section in con17 nection with the application for patent or any patent 

18 issuing thereon. 

19 ‘‘(3) SAVINGS CLAUSE.—No patent shall be in20 valid or unenforceable based upon the failure to 

21 comply with a requirement under this section if the 

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

23 ‘‘(i) ACKNOWLEDGMENT OF PENALTIES.—Any dec24 laration or statement filed under this section must contain 

25 an acknowledgment that any willful false statement is 


bajohnson on PROD1PC77 with BILLS
24 

HR 1908 PCS

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

2 1001 of title 18.’’. 

3 (2) RELATIONSHIP TO DIVISIONAL APPLICA4 TIONS.—Section 121 is amended by striking ‘‘If a 

5 divisional application’’ and all that follows through 

6 ‘‘inventor.’’. 

7 (3) REQUIREMENTS FOR NONPROVISIONAL AP8 PLICATIONS.—Section 111(a) is amended— 

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

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

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

12 striking ‘‘AND OATH’’; and 

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

14 appears. 

15 (4) CONFORMING AMENDMENT.—The item re16 lating to section 115 in the table of sections for 

17 chapter 11 is amended to read as follows: 

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

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

19 (1) in the first paragraph—— 

20 (A) by striking ‘‘The specification’’ and in21 serting ‘‘(a) IN GENERAL.—The specification’’; 

22 and 

23 (B) by striking ‘‘of carrying out his inven24 tion’’ and inserting ‘‘or joint inventor of car25 rying out the invention’’; and 


bajohnson on PROD1PC77 with BILLS
25 

HR 1908 PCS

1 (2) in the second paragraph— 

2 (A) by striking ‘‘The specification’’ and in3 serting ‘‘(b) CONCLUSION.—The specification’’; 

4 and 

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

6 invention’’ and inserting ‘‘inventor or a joint in7 ventor regards as the invention’’; 

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

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

10 (4) in the fourth paragraph, by striking ‘‘Sub11 ject to the following paragraph,’’ and inserting ‘‘(d) 

12 REFERENCE IN DEPENDENT FORMS.—Subject to 

13 subsection (e),’’; 

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

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

16 DEPENDENT FORM.—A claim’’; and 

17 (6) in the last paragraph, by striking ‘‘An ele18 ment’’ and inserting ‘‘(f) ELEMENT IN CLAIM FOR

19 A COMBINATION.—An element’’. 

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

21 this section— 

22 (1) shall take effect at the end of the 1-year pe23 riod beginning on the date of the enactment of this 

24 Act; and 


bajohnson on PROD1PC77 with BILLS
26 

HR 1908 PCS

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

2 application for reissue patent, that is filed on or 

3 after the effective date under paragraph (1). 

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

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

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

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

8 (2) by designating the second undesignated 

9 paragraph as subsection (c); 

10 (3) by inserting after subsection (a) (as des11 ignated by paragraph (1) of this subsection) the fol12 lowing: 

13 ‘‘(b) REASONABLE ROYALTY.— 

14 ‘‘(1) IN GENERAL.—An award pursuant to sub15 section (a) that is based upon a reasonable royalty 

16 shall be determined in accordance with this sub17 section. Based on the facts of the case, the court 

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

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

20 a reasonable royalty. The court shall identify the 

21 factors that are relevant to the determination of a 

22 reasonable royalty under the applicable paragraph, 

23 and the court or jury, as the case may be, shall con24 sider only those factors in making the determination. 


bajohnson on PROD1PC77 with BILLS
27 

HR 1908 PCS

1 ‘‘(2) RELATIONSHIP OF DAMAGES TO CON2 TRIBUTIONS OVER PRIOR ART.—Upon a showing to 

3 the satisfaction of the court that a reasonable roy4 alty should be based on a portion of the value of the 

5 infringing product or process, the court shall con6 duct an analysis to ensure that a reasonable royalty 

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

8 value properly attributable to the patent’s specific 

9 contribution over the prior art. The court shall ex10 clude from the analysis the economic value properly 

11 attributable to the prior art, and other features or 

12 improvements, whether or not themselves patented, 

13 that contribute economic value to the infringing 

14 product or process. 

15 ‘‘(3) ENTIRE MARKET VALUE.—Upon a show16 ing to the satisfaction of the court that the patent’s 

17 specific contribution over the prior art is the pre18 dominant basis for market demand for an infringing 

19 product or process, damages may be based upon the 

20 entire market value of the products or processes in21 volved that satisfy that demand. 

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

23 (2) or (3) is appropriate for determining a reason24 able royalty, the court may consider, or direct the 

25 jury to consider, the terms of any nonexclusive marVerDate Aug 31 2005 03:18 Sep 12, 2007 Jkt 059200 PO 00000 Frm 00027 Fmt 6652 Sfmt 6201 E:\BILLS\H1908.PCS H1908

bajohnson on PROD1PC77 with BILLS
28 

HR 1908 PCS

1 ketplace licensing of the invention, where appro2 priate, as well as any other relevant factors under 

3 applicable law. 

4 ‘‘(5) COMBINATION INVENTIONS.—For pur5 poses of paragraphs (2) and (3), in the case of a 

6 combination invention the elements of which are 

7 present individually in the prior art, the patentee 

8 may show that the contribution over the prior art 

9 may include the value of the additional function re10 sulting from the combination, as well as the en11 hanced value, if any, of some or all of the prior art 

12 elements resulting from the combination.’’; 

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

14 by paragraph (1) of this subsection) to read as fol15 lows: 

16 ‘‘(c) WILLFUL INFRINGEMENT.— 

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

18 determined that the infringer has willfully infringed 

19 a patent or patents may increase the damages up to 

20 three times the amount of damages found or as21 sessed under subsection (a), except that increased 

22 damages under this paragraph shall not apply to 

23 provisional rights under section 154(d). 

24 ‘‘(2) PERMITTED GROUNDS FOR WILLFUL25 NESS.—A court may find that an infringer has willVerDate Aug 31 2005 03:18 Sep 12, 2007 Jkt 059200 PO 00000 Frm 00028 Fmt 6652 Sfmt 6201 E:\BILLS\H1908.PCS H1908

bajohnson on PROD1PC77 with BILLS
29 

HR 1908 PCS

1 fully infringed a patent only if the patent owner pre2 sents clear and convincing evidence that— 

3 ‘‘(A) after receiving written notice from 

4 the patentee— 

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

6 manner sufficient to give the infringer an 

7 objectively reasonable apprehension of suit 

8 on such patent, and 

9 ‘‘(ii) identifying with particularity 

10 each claim of the patent, each product or 

11 process that the patent owner alleges in12 fringes the patent, and the relationship of 

13 such product or process to such claim, 

14 the infringer, after a reasonable opportunity to 

15 investigate, thereafter performed one or more of 

16 the alleged acts of infringement; 

17 ‘‘(B) the infringer intentionally copied the 

18 patented invention with knowledge that it was 

19 patented; or 

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

21 have infringed that patent, the infringer en22 gaged in conduct that was not colorably dif23 ferent from the conduct previously found to 

24 have infringed the patent, and that resulted in 


bajohnson on PROD1PC77 with BILLS
30 

HR 1908 PCS

1 a separate finding of infringement of the same 

2 patent. 

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

4 court may not find that an infringer has willfully in5 fringed a patent under paragraph (2) for any period 

6 of time during which the infringer had an informed 

7 good faith belief that the patent was invalid or unen8 forceable, or would not be infringed by the conduct 

9 later shown to constitute infringement of the patent. 

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

11 meaning of subparagraph (A) may be established 

12 by— 

13 ‘‘(i) reasonable reliance on advice of coun14 sel; 

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

16 modify its conduct to avoid infringement once it 

17 had discovered the patent; or 

18 ‘‘(iii) other evidence a court may find suffi19 cient to establish such good faith belief. 

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

21 present evidence of advice of counsel is not relevant 

22 to a determination of willful infringement under 

23 paragraph (2). 

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

25 date on which a court determines that the patent in 


bajohnson on PROD1PC77 with BILLS
31 

HR 1908 PCS

1 suit is not invalid, is enforceable, and has been in2 fringed by the infringer, a patentee may not plead 

3 and a court may not determine that an infringer has 

4 willfully infringed a patent.’’; and 

5 (5) in the third undesignated paragraph, by 

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

7 TESTIMONY.—The court’’. 

8 (b) REPORT TO CONGRESSIONAL COMMITTEES.—Not 

9 later than June 30, 2009, the Under Secretary of Com10 merce for Intellectual Property and Director of the United 

11 States Patent and Trademark Office (in this subsection 

12 referred to as the ‘‘Director’’) shall report to the Com13 mittee on the Judiciary of the House of Representatives 

14 and the Committee on the Judiciary of the Senate the 

15 findings and recommendations of the Director on the oper16 ation of prior user rights in selected countries in the in17 dustrialized world. The report shall include the following: 

18 (1) A comparison between the patent laws of 

19 the United States and the laws of other industri20 alized countries, including the European Union, 

21 Japan, Canada, and Australia. 

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

23 on innovation rates in the selected countries. 

24 (3) An analysis of the correlation, if any, be25 tween prior user rights and start-up enterprises and 


bajohnson on PROD1PC77 with BILLS
32 

HR 1908 PCS

1 the ability to attract venture capital to start new 

2 companies. 

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

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

5 individual inventors. 

6 (5) An analysis of any legal or constitutional 

7 issues that arise from placing elements of trade se8 cret law, in the form of prior user rights, in patent 

9 law. 

10 In preparing the report, the Director shall consult with 

11 the Secretary of State and the Attorney General of the 

12 United States. 

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

14 this section shall apply to any civil action commenced on 

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

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

17 end of the 7-year period beginning on the date of the en18 actment of this Act, and the end of every 7-year period 

19 thereafter, the Under Secretary of Commerce for Intellec20 tual Property and Director of the United States Patent 

21 and Trademark Office (in this subsection referred to as 

22 the ‘‘Director’’) shall— 

23 (1) conduct a study on the effectiveness and ef24 ficiency of the amendments made by this section; 

25 and 


bajohnson on PROD1PC77 with BILLS
33 

HR 1908 PCS

1 (2) submit to the Committees on the Judiciary 

2 of the House of Representatives and the Senate a 

3 report on the results of the study, including any rec4 ommendations the Director has on amendments to 

5 the law and other recommendations of the Director 

6 with respect to the right of the inventor to obtain 

7 damages for patent infringement. 

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

9 ENHANCEMENTS. 

10 (a) CITATION OF PRIOR ART.— 

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

12 read as follows: 

13 ‘‘§ 301. Citation of prior art 

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

15 to the Office in writing— 

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

17 publications which that person believes to have a 

18 bearing on the patentability of any claim of a par19 ticular patent; or 

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

21 filed in a proceeding before a Federal court or the 

22 Patent and Trademark Office in which the patent 

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

24 patent claims. 


bajohnson on PROD1PC77 with BILLS
34 

HR 1908 PCS

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

2 person citing prior art or written submissions under sub3 section (a) explains in writing the pertinence and manner 

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

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

6 written submissions (as the case may be) and the expla7 nation thereof shall become a part of the official file of 

8 the patent. 

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

10 ‘‘(1) SUBMISSION OF ADDITIONAL MATE11 RIALS.—A party that submits written statements 

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

13 any other documents, pleadings, or evidence from 

14 the proceeding that address the patent owner’s 

15 statements or the claims addressed by the written 

16 statements. 

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

18 Written statements submitted under subsection 

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

20 than to determine the proper meaning of the claims 

21 that are the subject of the request in a proceeding 

22 ordered pursuant to section 304 or 313. Any such 

23 written statements, and any materials submitted 

24 under paragraph (1), that are subject to an applicaVerDate Aug 31 2005 03:18 Sep 12, 2007 Jkt 059200 PO 00000 Frm 00034 Fmt 6652 Sfmt 6201 E:\BILLS\H1908.PCS H1908

bajohnson on PROD1PC77 with BILLS
35 

HR 1908 PCS

1 ble protective order shall be redacted to exclude in2 formation subject to the order. 

3 ‘‘(d) IDENTITY WITHHELD.—Upon the written re4 quest of the person citing prior art or written statements 

5 under subsection (a), the person’s identity shall be ex6 cluded from the patent file and kept confidential.’’. 

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

8 read as follows: 

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

10 files a request for reexamination under section 302, the 

11 Director shall determine whether a substantial new ques12 tion of patentability affecting any claim of the patent con13 cerned is raised by the request, with or without consider14 ation of other patents or printed publications. On the Di15 rector’s own initiative, and at any time, the Director may 

16 determine whether a substantial new question of patent17 ability is raised by patents and publications discovered by 

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

19 person other than the owner of the patent under section 

20 302 or section 311. The existence of a substantial new 

21 question of patentability is not precluded by the fact that 

22 a patent or printed publication was previously considered 

23 by the Office.’’. 

24 (c) CONDUCT OF INTER PARTES PROCEEDINGS.— 

25 Section 314 is amended— 


bajohnson on PROD1PC77 with BILLS
36 

HR 1908 PCS

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

2 striking ‘‘conducted according to the procedures es3 tablished for initial examination under the provisions 

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

5 an administrative patent judge in accordance with 

6 procedures which the Director shall establish’’; 

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

8 and inserting the following: 

9 ‘‘(2) The third-party requester shall have the oppor10 tunity to file written comments on any action on the mer11 its by the Office in the inter partes reexamination pro12 ceeding, and on any response that the patent owner files 

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

14 by the Office within 60 days after the date of service on 

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

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

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

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

19 party requestor or the patent owner, the administrative 

20 patent judge shall conduct an oral hearing, unless the 

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

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

24 (e) REEXAMINATION PROHIBITED AFTER DISTRICT

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


bajohnson on PROD1PC77 with BILLS
37 

HR 1908 PCS

1 (1) in the subsection heading, by striking 

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

3 DECISION’’; and 

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

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

6 district court has been entered’’. 

7 (f) POST-GRANT OPPOSITION PROCEDURES.— 

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

10 ‘‘CHAPTER 32—POST-GRANT REVIEW 

11 PROCEDURES 

‘‘Sec. 

‘‘321. Petition for post-grant review. 

‘‘322. Timing and bases of petition. 

‘‘323. Requirements of petition. 

‘‘324. Prohibited filings. 

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

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

‘‘327. Patent owner response. 

‘‘328. Proof and evidentiary standards. 

‘‘329. Amendment of the patent. 

‘‘330. Decision of the Board. 

‘‘331. Effect of decision. 

‘‘332. Settlement. 

‘‘333. Relationship to other pending proceedings. 

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

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

‘‘336. Appeal. 

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

13 ‘‘Subject to sections 322, 324, 332, and 333, a per14 son who is not the patent owner may file with the Office 

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

16 review proceeding to cancel as unpatentable any claim of 

17 a patent on any ground that could be raised under paraVerDate Aug 31 2005 03:18 Sep 12, 2007 Jkt 059200 PO 00000 Frm 00037 Fmt 6652 Sfmt 6201 E:\BILLS\H1908.PCS H1908

bajohnson on PROD1PC77 with BILLS
38 

HR 1908 PCS

1 graph (2) or (3) of section 282(b) (relating to invalidity 

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

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

4 the proceeding, in such amounts as the Director deter5 mines to be reasonable. 

6 ‘‘§ 322. Timing and bases of petition 

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

8 this chapter pursuant to a cancellation petition filed under 

9 section 321 only if— 

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

11 months after the issuance of the patent or a reissue 

12 patent, as the case may be; or 

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

14 proceeding. 

15 ‘‘§ 323. Requirements of petition 

16 ‘‘A cancellation petition filed under section 321 may 

17 be considered only if— 

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

19 the fee established by the Director under section 

20 321; 

21 ‘‘(2) the petition identifies the cancellation peti22 tioner; 

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

24 petition sets forth in writing the basis for cancella25 tion and provides the evidence in support thereof, inVerDate Aug 31 2005 03:18 Sep 12, 2007 Jkt 059200 PO 00000 Frm 00038 Fmt 6652 Sfmt 6201 E:\BILLS\H1908.PCS H1908

bajohnson on PROD1PC77 with BILLS
39 

HR 1908 PCS

1 cluding copies of patents and printed publications, 

2 or written testimony of a witness attested to under 

3 oath or declaration by the witness, or any other in4 formation that the Director may require by regula5 tion; and 

6 ‘‘(4) the petitioner provides copies of the peti7 tion, including any evidence submitted with the peti8 tion and any other information submitted under 

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

10 the designated representative of the patent owner. 

11 ‘‘§ 324. Prohibited filings 

12 ‘‘A post-grant review proceeding may not be insti13 tuted under section 322 if the petition for cancellation re14 questing the proceeding— 

15 ‘‘(1) identifies the same cancellation petitioner 

16 and the same patent as a previous petition for can17 cellation filed under such section; or 

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

19 contained in section 112. 

20 ‘‘§ 325. Submission of additional information; show21 ing of sufficient grounds 

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

23 file such additional information with respect to the peti24 tion as the Director may require. For each petition sub25 mitted under section 321, the Director shall determine if 


bajohnson on PROD1PC77 with BILLS
40 

HR 1908 PCS

1 the written statement, and any evidence submitted with 

2 the request, establish that a substantial question of pat3 entability exists for at least one claim in the patent. The 

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

5 Director determines that the information presented pro6 vides sufficient grounds to believe that there is a substan7 tial question of patentability concerning one or more 

8 claims of the patent at issue. 

9 ‘‘(b) NOTIFICATION; DETERMINATIONS NOT RE10 VIEWABLE.—The Director shall notify the patent owner 

11 and each petitioner in writing of the Director’s determina12 tion under subsection (a), including a determination to 

13 deny the petition. The Director shall make that determina14 tion in writing not later than 60 days after receiving the 

15 petition. Any determination made by the Director under 

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

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

18 not be reviewable. 

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

20 ‘‘(a) IN GENERAL.—The Director shall prescribe reg21 ulations, in accordance with section 2(b)(2)— 

22 ‘‘(1) establishing and governing post-grant re23 view proceedings under this chapter and their rela24 tionship to other proceedings under this title; 


bajohnson on PROD1PC77 with BILLS
41 

HR 1908 PCS

1 ‘‘(2) establishing procedures for the submission 

2 of supplemental information after the petition for 

3 cancellation is filed; and 

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

5 relevant evidence, including that such discovery shall 

6 be limited to evidence directly related to factual as7 sertions advanced by either party in the proceeding, 

8 and the procedures for obtaining such evidence shall 

9 be consistent with the purpose and nature of the 

10 proceeding. 

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

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

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

14 under subsection (a)(1)— 

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

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

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

18 proceeding is instituted under this chapter, except 

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

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

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

22 the Director; 

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

24 the Federal Register of the filing of a petition for 

25 post-grant review under this chapter, for publication 


bajohnson on PROD1PC77 with BILLS
42 

HR 1908 PCS

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

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

3 and Trademark Office, and for filings under seal ex4 empt from publication requirements; 

5 ‘‘(4) shall prescribe sanctions for abuse of dis6 covery, abuse of process, or any other improper use 

7 of the proceeding, such as to harass or to cause un8 necessary delay or unnecessary increase in the cost 

9 of the proceeding; 

10 ‘‘(5) may provide for protective orders gov11 erning the exchange and submission of confidential 

12 information; and 

13 ‘‘(6) shall ensure that any information sub14 mitted by the patent owner in support of any 

15 amendment entered under section 329 is made avail16 able to the public as part of the prosecution history 

17 of the patent. 

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

19 under this section, the Director shall consider the effect 

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

21 the efficient administration of the Office. 

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

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

24 conduct each post-grant review proceeding authorized by 

25 the Director. 


bajohnson on PROD1PC77 with BILLS
43 

HR 1908 PCS

1 ‘‘§ 327. Patent owner response 

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

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

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

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

6 The patent owner shall file with the response, through af7 fidavits or declarations, any additional factual evidence 

8 and expert opinions on which the patent owner relies in 

9 support of the response. 

10 ‘‘§ 328. Proof and evidentiary standards 

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

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

13 patent claim under this chapter. 

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

15 proposition under this chapter shall have the burden of 

16 proving that proposition by a preponderance of the evi17 dence. 

18 ‘‘§ 329. Amendment of the patent 

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

20 petition for cancellation, the patent owner may file one 

21 motion to amend the patent in one or more of the fol22 lowing ways: 

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

24 ‘‘(2) For each challenged claim, propose a sub25 stitute claim. 


bajohnson on PROD1PC77 with BILLS
44 

HR 1908 PCS

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

2 amend the patent other than the claims. 

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

4 amend may be permitted only for good cause shown. 

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

6 section may not enlarge the scope of the claims of the pat7 ent or introduce new matter. 

8 ‘‘§ 330. Decision of the Board 

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

10 not dismissed under this chapter, the Patent Trial and 

11 Appeal Board shall issue a final written decision address12 ing the patentability of any patent claim challenged and 

13 any new claim added under section 329. 

14 ‘‘§ 331. Effect of decision 

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

16 Board issues a final decision under section 330 and the 

17 time for appeal has expired or any appeal proceeding has 

18 terminated, the Director shall issue and publish a certifi19 cate canceling any claim of the patent finally determined 

20 to be unpatentable and incorporating in the patent by op21 eration of the certificate any new claim determined to be 

22 patentable. 

23 ‘‘(b) NEW CLAIMS.—Any new claim held to be pat24 entable and incorporated into a patent in a post-grant re25 view proceeding shall have the same effect as that speciVerDate Aug 31 2005 03:18 Sep 12, 2007 Jkt 059200 PO 00000 Frm 00044 Fmt 6652 Sfmt 6201 E:\BILLS\H1908.PCS H1908

bajohnson on PROD1PC77 with BILLS
45 

HR 1908 PCS

1 fied in section 252 for reissued patents on the right of 

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

3 within the United States, or imported into the United 

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

5 substantial preparations therefor, before a certificate 

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

7 ‘‘§ 332. Settlement 

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

9 shall be terminated with respect to any petitioner upon 

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

11 unless the Patent Trial and Appeal Board has issued a 

12 written decision before the request for termination is filed. 

13 If the post-grant review proceeding is terminated with re14 spect to a petitioner under this paragraph, no estoppel 

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

16 the proceeding, the panel of administrative patent judges 

17 assigned to the proceeding shall terminate the proceeding. 

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

19 understanding between the patent owner and a petitioner, 

20 including any collateral agreements referred to in the 

21 agreement or understanding, that is made in connection 

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

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

24 proceeding as between the parties to the agreement or un25 derstanding may not be terminated until a copy of the 


bajohnson on PROD1PC77 with BILLS
46 

HR 1908 PCS

1 agreement or understanding, including any such collateral 

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

3 such an agreement or understanding requests, the agree4 ment or understanding shall be kept separate from the 

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

6 available only to Government agencies on written request, 

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

8 ‘‘§ 333. Relationship to other proceedings 

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

10 135(a), sections 251 and 252, and chapter 30, the Direc11 tor may determine the manner in which any reexamination 

12 proceeding, reissue proceeding, interference proceeding 

13 (commenced with respect to an application for patent filed 

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

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

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

17 post-grant review proceeding, may proceed, including pro18 viding for stay, transfer, consolidation, or termination of 

19 any such proceeding. 

20 ‘‘(b) STAYS.—The Director may stay a post-grant re21 view proceeding if a pending civil action for infringement 

22 of a patent addresses the same or substantially the same 

23 questions of patentability raised against the patent in a 

24 petition for post-grant review. 


bajohnson on PROD1PC77 with BILLS
47 

HR 1908 PCS

1 ‘‘(c) EFFECT OF COMMENCEMENT OF PRO2 CEEDING.—The commencement of a post-grant review 

3 proceeding— 

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

5 patent owner to commence an action for infringe6 ment of the patent; and 

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

8 the validity of any claim of the patent in any pro9 ceeding before a court or the International Trade 

10 Commission concerning the patent. 

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

12 post-grant review proceedings 

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

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

15 of title 28 establishing that the party has not sustained 

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

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

18 privies of that party may not thereafter request a 

19 post-grant review proceeding on that patent claim on 

20 the basis of any grounds, under the provisions of 

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

22 party raised or could have raised; and 

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

24 a post-grant review proceeding that was requested, 

25 before the final decision was so entered, by that 


bajohnson on PROD1PC77 with BILLS
48 

HR 1908 PCS

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

2 such grounds. 

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

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

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

6 challenged by the cancellation petitioner, the cancellation 

7 petitioner may not thereafter, based on any ground that 

8 the cancellation petitioner raised during the post-grant re9 view proceeding— 

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

11 claim under chapter 31; 

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

13 with respect to such claim; 

14 ‘‘(3) request or pursue a post-grant review pro15 ceeding under this chapter with respect to such 

16 claim; 

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

18 any civil action arising in whole or in part under sec19 tion 1338 of title 28; or 

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

21 defense to an action brought under section 337 of 

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

23 ‘‘§ 336. Appeal 

24 ‘‘A party dissatisfied with the final determination of 

25 the Patent Trial and Appeal Board in a post-grant proVerDate Aug 31 2005 03:18 Sep 12, 2007 Jkt 059200 PO 00000 Frm 00048 Fmt 6652 Sfmt 6201 E:\BILLS\H1908.PCS H1908

bajohnson on PROD1PC77 with BILLS
49 

HR 1908 PCS

1 ceeding under this chapter may appeal the determination 

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

4 appeal.’’. 

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

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

8 (h) REPEAL.—Section 4607 of the Intellectual Prop9 erty and Communications Omnibus Reform Act of 1999, 

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

11 is repealed. 

12 (i) EFFECTIVE DATES.— 

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

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

15 the 1-year period beginning on the date of the enact16 ment of this Act. 

17 (2) APPLICABILITY TO EX PARTE AND INTER

18 PARTES PROCEEDINGS.—Notwithstanding any other 

19 provision of law, sections 301 and 311 through 318 

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

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

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

23 from an original application filed on any date. 

24 (3) APPLICABILITY TO POST-GRANT PRO25 CEEDINGS.—The amendments made by subsections 


bajohnson on PROD1PC77 with BILLS
50 

HR 1908 PCS

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

2 the effective date under paragraph (1). 

3 (j) REGULATIONS.—The Under Secretary of Com4 merce for Intellectual Property and Director of the United 

5 States Patent and Trademark Office (in this subsection 

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

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

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

9 United States Code, as added by subsection (f) of this sec10 tion. 

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

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

13 Act) is further amended by adding at the end the fol14 lowing: 

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

16 party in interest requesting cancellation of any claim of 

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

18 the real party in interest.’’. 

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

20 is amended to read as follows: 

21 ‘‘§ 6. Patent Trial and Appeal Board 

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

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

24 The administrative patent judges shall constitute the Pat25 ent Trial and Appeal Board. The administrative patent 


bajohnson on PROD1PC77 with BILLS
51 

HR 1908 PCS

1 judges shall be persons of competent legal knowledge and 

2 scientific ability who are appointed by the Secretary of 

3 Commerce. Any reference in any Federal law, Executive 

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

5 document of or pertaining to the Board of Patent Appeals 

6 and Interferences is deemed to refer to the Patent Trial 

7 and Appeal Board. 

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

9 shall— 

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

11 adverse decisions of examiners upon application for 

12 patents; 

13 ‘‘(2) on written appeal of a patent owner, re14 view adverse decisions of examiners upon patents in 

15 reexamination proceedings under chapter 30; 

16 ‘‘(3) review appeals by patent owners and third17 party requesters under section 315; 

18 ‘‘(4) determine priority and patentability of in19 vention in derivation proceedings under section 

20 135(a); and 

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

22 under chapter 32. 

23 Each appeal and derivation proceeding shall be heard by 

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

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


bajohnson on PROD1PC77 with BILLS
52 

HR 1908 PCS

1 Trial and Appeal Board may grant rehearings. The Direc2 tor shall assign each post-grant review proceeding to a 

3 panel of 3 administrative patent judges. Once assigned, 

4 each such panel of administrative patent judges shall have 

5 the responsibilities under chapter 32 in connection with 

6 post-grant review proceedings.’’. 

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

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

9 beginning on the date of the enactment of this Act. 

10 SEC. 8. STUDY AND REPORT ON REEXAMINATION PRO11 CEEDINGS. 

12 The Under Secretary of Commerce for Intellectual 

13 Property and Director of the Patent and Trademark Of14 fice shall, not later than 2 years after the date of the en15 actment of this Act— 

16 (1) conduct a study of the effectiveness and ef17 ficiency of the different forms of proceedings avail18 able under title 35, United States Code, for the re19 examination of patents; and 

20 (2) submit to the Committees on the Judiciary 

21 of the House of Representatives and the Senate a 

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

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

24 any other recommendations the Director has with 

25 respect to patent reexamination proceedings. 


bajohnson on PROD1PC77 with BILLS
53 

HR 1908 PCS

1 SEC. 9. SUBMISSIONS BY THIRD PARTIES AND OTHER 

2 QUALITY ENHANCEMENTS. 

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

4 amended by striking ‘‘published as provided in paragraph 

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

6 of— 

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

8 taken pursuant to section 132 on the applica9 tion, of which notice has been given or mailed 

10 to the applicant; or 

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

12 (b) PREISSUANCE SUBMISSIONS BY THIRD PAR13 TIES.—Section 122 is amended by adding at the end the 

14 following: 

15 ‘‘(e) PREISSUANCE SUBMISSIONS BY THIRD PAR16 TIES.— 

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

18 consideration and inclusion in the record of a patent 

19 application, any patent, published patent application, 

20 or other publication of potential relevance to the ex21 amination of the application, if such submission is 

22 made in writing before the earlier of— 

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

24 section 151 is mailed in the application for pat25 ent; or 

26 ‘‘(B) either— 


bajohnson on PROD1PC77 with BILLS
54 

HR 1908 PCS

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

2 the application for patent is published 

3 under section 122, or 

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

5 under section 132 of any claim by the ex6 aminer during the examination of the ap7 plication for patent, 

8 whichever occurs later. 

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

10 under paragraph (1) shall— 

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

12 asserted relevance of each submitted document; 

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

14 Director may prescribe; 

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

16 affirming that the submission was made in 

17 compliance with this section; and 

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

19 making the submission.’’. 

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

21 this section— 

22 (1) shall take effect at the end of the 1-year pe23 riod beginning on the date of the enactment of this 

24 Act; and 


bajohnson on PROD1PC77 with BILLS
55 

HR 1908 PCS

1 (2) shall apply to any application for patent 

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

3 paragraph (1). 

4 SEC. 10. TAX PLANNING METHODS NOT PATENTABLE. 

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

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

7 PATENTABLE INVENTIONS.—Whoever’’; and 

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

9 ‘‘(b) TAX PLANNING METHODS.— 

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

11 patent may not be obtained for a tax planning meth12 od. 

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

14 (1)— 

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

16 means a plan, strategy, technique, or scheme 

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

18 or has, when implemented, the effect of reduc19 ing, minimizing, or deferring, a taxpayer’s tax 

20 liability, but does not include the use of tax 

21 preparation software or other tools used solely 

22 to perform or model mathematical calculations 

23 or prepare tax or information returns; 

24 ‘‘(B) the term ‘taxpayer’ means an indi25 vidual, entity, or other person (as defined in 


bajohnson on PROD1PC77 with BILLS
56 

HR 1908 PCS

1 section 7701 of the Internal Revenue Code of 

2 1986) that is subject to taxation directly, is re3 quired to prepare a tax return or information 

4 statement to enable one or more other persons 

5 to determine their tax liability, or is otherwise 

6 subject to a tax law; 

7 ‘‘(C) the terms ‘tax’, ‘tax laws’, ‘tax liabil8 ity’, and ‘taxation’ refer to any Federal, State, 

9 county, city, municipality, or other govern10 mental levy, assessment, or imposition, whether 

11 measured by income, value, or otherwise; and 

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

13 several States, the District of Columbia, and 

14 any commonwealth, territory, or possession of 

15 the United States.’’. 

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

17 section— 

18 (1) shall take effect on the date of the enact19 ment of this Act; 

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

21 application for a reissue patent that is— 

22 (A) filed on or after the date of the enact23 ment of this Act; or 


bajohnson on PROD1PC77 with BILLS
57 

HR 1908 PCS

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

3 the application as of that date; and 

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

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

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

8 section. 

9 SEC. 11. VENUE AND JURISDICTION. 

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

11 title 28, United States Code, is amended by striking sub12 section (b) and inserting the following: 

13 ‘‘(b) In any civil action arising under any Act of Con14 gress relating to patents, a party shall not manufacture 

15 venue by assignment, incorporation, joinder, or otherwise 

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

17 ‘‘(c) Notwithstanding section 1391 of this title, ex18 cept as provided in paragraph (3) of this subsection, any 

19 civil action for patent infringement or any action for de20 claratory judgment relating to a patent may be brought 

21 only in a judicial district— 

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

23 of business or is incorporated, or, for foreign cor24 porations with a United States subsidiary, where the 


bajohnson on PROD1PC77 with BILLS
58 

HR 1908 PCS

1 defendant’s primary United States subsidiary has its 

2 principal place of business or is incorporated; 

3 ‘‘(2) where the defendant has committed a sub4 stantial portion of the acts of infringement and has 

5 a regular and established physical facility that the 

6 defendant controls and that constitutes a substantial 

7 portion of the defendant’s operations; 

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

9 with no United States subsidiary, according to sec10 tion 1391(d) of this title; 

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

12 is— 

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

14 defined under section 101(a) of the Higher 

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

16 1001(a)); or 

17 ‘‘(B) a nonprofit organization that— 

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

19 of the Internal Revenue Code of 1986; 

20 ‘‘(ii) is exempt from taxation under 

21 section 501(a) of such Code; and 

22 ‘‘(iii) serves primarily as the patent 

23 and licensing organization for an institu24 tion of higher education as defined under 


bajohnson on PROD1PC77 with BILLS
59 

HR 1908 PCS

1 section 101(a) of the Higher Education 

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

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

4 place of business that is engaged in substantial— 

5 ‘‘(A) research and development, 

6 ‘‘(B) manufacturing activities, or 

7 ‘‘(C) management of research and develop8 ment or manufacturing activities, 

9 related to the patent or patents in dispute; 

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

11 is named as inventor or co-inventor on the patent 

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

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

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

15 of the patent, including the results of any such en16 forcement; or 

17 ‘‘(7) where any of the defendants has substan18 tial evidence and witnesses if there is no other dis19 trict in which the action may be brought under this 

20 section.’’. 

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

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

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

24 (1); 


bajohnson on PROD1PC77 with BILLS
60 

HR 1908 PCS

1 (2) by striking the period at the end of para2 graph (2) and inserting ‘‘; and’’; and 

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

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

5 or decree determining construction of claims in a 

6 civil action for patent infringement under section 

7 271 of title 35. 

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

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

10 or decree. The district court shall have discretion whether 

11 to approve the application and, if so, whether to stay pro12 ceedings in the district court during pendency of the ap13 peal.’’. 

14 (c) EFFECTIVE DATE.— 

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

16 this section— 

17 (A) shall take effect on the date of the en18 actment of this Act; and 

19 (B) shall apply to any civil action com20 menced on or after such date of enactment. 

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

22 a United States district court on or after September 

23 7, 2007, in which venue is improper under section 

24 1400 of title 28, United States Code, as amended by 


bajohnson on PROD1PC77 with BILLS
61 

HR 1908 PCS

1 this section, shall be transferred pursuant to section 

2 1404 of such title, unless— 

3 (A) one or more substantive rulings on the 

4 merits, or other substantial litigation, has oc5 curred; and 

6 (B) the court finds that transfer would not 

7 serve the interests of justice. 

8 SEC. 12. ADDITIONAL INFORMATION; INEQUITABLE CON9 DUCT AS DEFENSE TO INFRINGEMENT. 

10 (a) DISCLOSURE REQUIREMENTS FOR APPLI11 CANTS.— 

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

13 adding at the end the following new section: 

14 ‘‘§ 123. Additional information 

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

16 require that applicants submit a search report and other 

17 information and analysis relevant to patentability. If the 

18 Director requires a search report to be submitted by appli19 cants, and an applicant does not itself perform the search, 

20 the search must be performed by one or more individuals 

21 who are United States citizens or by a commercial entity 

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

23 any State and employs United States citizens to perform 

24 such searches. An application shall be regarded as aban25 doned if the applicant fails to submit a search report, inVerDate Aug 31 2005 03:18 Sep 12, 2007 Jkt 059200 PO 00000 Frm 00061 Fmt 6652 Sfmt 6201 E:\BILLS\H1908.PCS H1908

bajohnson on PROD1PC77 with BILLS
62 

HR 1908 PCS

1 formation, or an analysis in the manner and within the 

2 time period prescribed by the Director. Any search report 

3 required by the Director may not substitute in any way 

4 for a search by an examiner of the prior art during exam5 ination. 

6 ‘‘(b) EXCEPTION FOR MICRO ENTITIES.—Applica7 tions from micro-entities shall not be subject to the re8 quirements of regulations issued under subsection (a). 

9 ‘‘§ 124. Micro entities 

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

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

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

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

14 under this subsection is a certification by each inventor 

15 named in the application that the inventor— 

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

17 regulations issued by the Director; 

18 ‘‘(2) has not been named on five or more pre19 viously filed patent applications; 

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

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

22 assign, grant, or convey, a license or any other own23 ership interest in the application; and 

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

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


bajohnson on PROD1PC77 with BILLS
63 

HR 1908 PCS

1 1986, exceeding 2.5 times the median household in2 come, as reported by the Bureau of the Census, for 

3 the most recent calendar year preceding the calendar 

4 year in which the examination fee is being paid. 

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

6 this subsection is a certification by each inventor named 

7 in the application that the inventor— 

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

9 regulations issued by the Director and meets the re10 quirements of subsection (b)(4); 

11 ‘‘(2) has not been named on five or more pre12 viously filed patent applications; and 

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

14 under an obligation by contract or law to assign, 

15 grant, or convey, a license or other ownership inter16 est in the application to an entity that has five or 

17 fewer employees and has a gross taxable income, as 

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

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

20 median household income, as reported by the Bu21 reau of the Census, for the most recent calendar 

22 year preceding the calendar year in which the exam23 ination fee is being paid.’’. 


bajohnson on PROD1PC77 with BILLS
64 

HR 1908 PCS

1 (2) CONFORMING AMENDMENT.—The table of 

2 sections for chapter 11 is amended by adding at the 

3 end the following new items: 

‘‘123. Additional information. 

‘‘124. Micro entities.’’. 

4 (b) INEQUITABLE CONDUCT AS DEFENSE TO IN5 FRINGEMENT.—Section 282 is amended— 

6 (1) in the first undesignated paragraph, by 

7 striking ‘‘A patent’’ and inserting ‘‘(a) IN GEN8 ERAL.—A patent’’; 

9 (2) in the second undesignated paragraph— 

10 (A) by striking ‘‘The following’’ and insert11 ing ‘‘(b) DEFENSES.—The following’’; and 

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

13 each of paragraphs (1), (2), and (3) and insert14 ing a period; 

15 (3) in the third undesignated paragraph— 

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

17 ‘‘(d) NOTICE OF ACTIONS; PLEADING.—In ac18 tions’’; 

19 (B) by inserting after the second sentence 

20 the following: ‘‘In an action involving any alle21 gation of inequitable conduct under subsection 

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

23 shall comply with the pleading requirements set 


bajohnson on PROD1PC77 with BILLS
65 

HR 1908 PCS

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

2 Procedure.’’; and 

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

4 ‘‘(e) EXTENSION OF PATENT TERM.—Inva5 lidity’’; and 

6 (4) by inserting after subsection (b), as des7 ignated by paragraph (2) of this subsection, the fol8 lowing: 

9 ‘‘(c) INEQUITABLE CONDUCT.— 

10 ‘‘(1) DEFENSE.—One or more claims of a pat11 ent may be held to be unenforceable, or other rem12 edy imposed under paragraph (4), for inequitable 

13 conduct only if it is established, by clear and con14 vincing evidence, that a person with a duty of disclo15 sure to the Office, with the intent to mislead or de16 ceive the patent examiner, misrepresented or failed 

17 to disclose material information to the examiner dur18 ing examination of the patent. 

19 ‘‘(2) MATERIALITY.— 

20 ‘‘(A) IN GENERAL.—Information is mate21 rial under this section if— 

22 ‘‘(i) a reasonable examiner would have 

23 made a prima facie finding of 

24 unpatentability, or maintained a finding of 

25 unpatentability, of one or more of the patVerDate Aug 31 2005 03:18 Sep 12, 2007 Jkt 059200 PO 00000 Frm 00065 Fmt 6652 Sfmt 6201 E:\BILLS\H1908.PCS H1908

bajohnson on PROD1PC77 with BILLS
66 

HR 1908 PCS

1 ent claims based on the information, and 

2 the information is not cumulative to infor3 mation already of record or previously con4 sidered by the Office; or 

5 ‘‘(ii) information that is otherwise ma6 terial refutes or is inconsistent with a posi7 tion the applicant takes in opposing a re8 jection of the claim or in asserting an ar9 gument of patentability. 

10 ‘‘(B) PRIMA FACIE FINDING.—A prima 

11 facie finding of unpatentability under this sec12 tion is shown if a reasonable examiner, based 

13 on a preponderance of the evidence, would con14 clude that the claim is unpatentable based on 

15 the information misrepresented or not disclosed, 

16 when that information is considered alone or in 

17 conjunction with other information or record. In 

18 determining whether there is a prima facie find19 ing of unpatentability, each term in the claim 

20 shall be given its broadest reasonable construc21 tion consistent with the specification, and re22 buttal evidence shall not be considered. 

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

24 of disclosure to the Office intended to mislead or de25 ceive the examiner under paragraph (1), specific 


bajohnson on PROD1PC77 with BILLS
67 

HR 1908 PCS

1 facts beyond materiality of the information misrepre2 sented or not disclosed must be proven that establish 

3 the intent of the person to mislead or deceive the ex4 aminer by the actions of the person. Facts support 

5 an intent to mislead or deceive if they show cir6 cumstances that indicate conscious or deliberate be7 havior on the part of the person to not disclose ma8 terial information or to submit false material infor9 mation in order to mislead or deceive the examiner. 

10 Circumstantial evidence may be used to prove that 

11 a person had the intent to mislead or deceive the ex12 aminer under paragraph (1). 

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

14 conduct, the court shall balance the equities to de15 termine which of the following remedies to impose: 

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

17 holder and limiting the remedy for infringement 

18 to reasonable royalties. 

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

20 claims in which inequitable conduct occurred, 

21 unenforceable. 

22 ‘‘(C) Holding the patent unenforceable. 

23 ‘‘(D) Holding the claims of a related pat24 ent unenforceable. 


bajohnson on PROD1PC77 with BILLS
68 

HR 1908 PCS

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

2 of inequitable conduct, if there is evidence that the 

3 conduct is attributable to a person or persons au4 thorized to practice before the Office, the court shall 

5 refer the matter to the Office for appropriate dis6 ciplinary action under section 32, and shall order the 

7 parties to preserve and make available to the Office 

8 any materials that may be relevant to the determina9 tion under section 32.’’. 

10 (c) EFFECTIVE DATE.— 

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

12 by subsection (a)— 

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

14 year period beginning on the date of the enact15 ment of this Act; and 

16 (B) shall apply to any application for pat17 ent filed on or after the effective date under 

18 subparagraph (A). 

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

20 by subsection (b) shall apply to any civil action com21 menced on or after the date of the enactment of this 

22 Act. 


bajohnson on PROD1PC77 with BILLS
69 

HR 1908 PCS

1 SEC. 13. BEST MODE REQUIREMENT. 

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

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

4 the following: 

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

6 suit for failure to comply with— 

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

8 this title, other than the requirement that the 

9 specification shall set forth the best mode con10 templated by the inventor of carrying out his 

11 invention; or 

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

13 this title.’’. 

14 SEC. 14. REGULATORY AUTHORITY. 

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

16 amended by adding at the end the following: 

17 ‘‘(6) The powers granted under paragraph (2) of sub18 section (b) include the authority to promulgate regulations 

19 to ensure the quality and timeliness of applications and 

20 their examination, including specifying circumstances 

21 under which an application for patent may claim the ben22 efit under sections 120, 121 and 365(c) of the filing date 

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

24 (b) CLARIFICATION.—The amendment made by sub25 section (a) clarifies the scope of power granted to the 

26 United States Patent and Trademark Office by paragraph 


bajohnson on PROD1PC77 with BILLS
70 

HR 1908 PCS

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

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

3 (c) EFFECTIVE DATE OF REGULATIONS.— 

4 (1) REVIEW BY CONGRESS.—A regulation pro5 mulgated by the United States Patent and Trade6 mark Office under section 2(b)(2) of title 35, United 

7 States Code, with respect to any matter described in 

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

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

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

11 which the Under Secretary of Commerce for Intellec12 tual Property and Director of the United States Pat13 ent and Trademark Office submits to each House of 

14 Congress a copy of the regulation, together with a 

15 report containing the reasons for its adoption. The 

16 regulation and report so submitted shall be referred 

17 to the Committee on the Judiciary of the House of 

18 Representatives and the Committee on the Judiciary 

19 of the Senate. 

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

21 joint resolution of disapproval with respect to the 

22 regulation is enacted into law, the regulation shall 

23 not become effective or continue in effect. 

24 (3) JOINT RESOLUTION DEFINED.—For pur25 poses of this subsection, the term a ‘‘joint resolution 


bajohnson on PROD1PC77 with BILLS
71 

HR 1908 PCS

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

2 after the resolving clause of which is as follows: 

3 ‘‘That Congress disapproves the regulation sub4 mitted by the Under Secretary of Commerce for In5 tellectual Property and Director of the United States 

6 Patent and Trademark Office on lll relating to 

7 lll, and such regulation shall have no force or 

8 effect.’’, with the first space being filled with the ap9 propriate date, and the second space being filled 

10 with a description of the regulation at issue. 

11 (4) REFERRAL.—A joint resolution of dis12 approval shall be referred in the House of Rep13 resentatives to the Committee on the Judiciary and 

14 in the Senate to the Committee on the Judiciary. 

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

16 passage of a joint resolution of disapproval shall be 

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

18 15th day after the bill or resolution is reported by 

19 the committee of that House to which it was re20 ferred or after such committee has been discharged 

21 from further consideration of the joint resolution of 

22 disapproval. 

23 (6) NO INFERENCES.—If the Congress does not 

24 enact a joint resolution of disapproval, no court or 


bajohnson on PROD1PC77 with BILLS
72 

HR 1908 PCS

1 agency may infer therefrom any intent of the Con2 gress with regard to such regulation or action. 

3 (7) CALCULATION OF DAYS.—The 60-day pe4 riod referred to in paragraph (1) and the 15-day pe5 riod referred to in paragraph (5) shall be computed 

6 by excluding— 

7 (A) the days on which either House of 

8 Congress is not in session because of an ad9 journment of the Congress sine die; and 

10 (B) any Saturday and Sunday, not ex11 cluded under subparagraph (A), when either 

12 House is not in session. 

13 (8) RULEMAKING AUTHORITY.—This subsection 

14 is enacted by the Congress as an exercise of the 

15 rulemaking power of the Senate and House of Rep16 resentatives respectively, and as such it is deemed a 

17 part of the rules of each House, respectively. 

18 SEC. 15. TECHNICAL AMENDMENTS. 

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

20 (1) in the first paragraph, by striking 

21 ‘‘When’’ and inserting ‘‘(a) JOINT INVEN22 TIONS.—When’’; 

23 (2) in the second paragraph, by striking 

24 ‘‘If a joint inventor’’ and inserting ‘‘(b) OMIT25 TED INVENTOR.—If a joint inventor’’; and 


bajohnson on PROD1PC77 with BILLS
73 

HR 1908 PCS

1 (3) in the third paragraph, by striking 

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

3 ERRORS IN APPLICATION.—Whenever’’. 

4 (b) FILING OF APPLICATION IN FOREIGN COUN5 TRY.—Section 184 is amended— 

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

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

8 COUNTRY.—Except when’’; 

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

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

11 term’’; and 

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

13 scope’’ and inserting ‘‘(c) SUBSEQUENT MODIFICA14 TIONS, AMENDMENTS, AND SUPPLEMENTS.—The 

15 scope’’. 

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

17 is amended— 

18 (1) in the first paragraph, by striking ‘‘When19 ever’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; 

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

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

22 PATENTS.—The Director’’; 

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

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

25 THIS TITLE.—The provisions’’; and 


bajohnson on PROD1PC77 with BILLS
74 

HR 1908 PCS

1 (4) in the last paragraph, by striking ‘‘No re2 issued patent’’ and inserting ‘‘(d) REISSUE PATENT

3 ENLARGING SCOPE OF CLAIMS.—No reissued pat4 ent’’. 

5 (d) EFFECT OF REISSUE.—Section 253 is amend6 ed— 

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

9 and 

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

11 like manner’’ and inserting ‘‘(b) ADDITIONAL DIS12 CLAIMER OR DEDICATION.—In the manner set forth 

13 in subsection (a),’’. 

14 (e) CORRECTION OF NAMED INVENTOR.—Section 

15 256 is amended— 

16 (1) in the first paragraph, by striking ‘‘When17 ever’’ and inserting ‘‘(a) CORRECTION.—Whenever’’; 

18 and 

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

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

21 CORRECTED.—The error’’. 

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

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

24 of this Act. 


bajohnson on PROD1PC77 with BILLS
75 

HR 1908 PCS

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

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

3 date of the enactment of this Act, the Director of the Ad4 ministrative Office of the United States Courts shall con5 duct a study of, and submit to the Committee on the Judi6 ciary of the House of Representatives and the Committee 

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

8 special masters in patent litigation who are appointed in 

9 accordance with Rule 53 of the Federal Rules of Civil Pro10 cedure. 

11 (b) OBJECTIVE.—In conducting the study under sub12 section (a), the Director shall consider whether the use 

13 of special masters has been beneficial in patent litigation 

14 and what, if any, program should be undertaken to facili15 tate the use by the judiciary of special masters in patent 

16 litigation. 

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

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

19 with the Federal Judicial Center, shall consider— 

20 (1) the basis upon which courts appoint special 

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

22 Civil Procedure; 

23 (2) the frequency with which special masters 

24 have been used by the courts; 

25 (3) the role and powers special masters are 

26 given by the courts; 


bajohnson on PROD1PC77 with BILLS
76 

HR 1908 PCS

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

2 special masters; 

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

4 where a special master is used as compared to cases 

5 where no special master is used; 

6 (6) the legal and technical training and experi7 ence of special masters; 

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

9 impact on the reversal rate of district court decisions 

10 at the Court of Appeals for the Federal Circuit; and 

11 (8) any other factors that the Director believes 

12 would assist in gauging the effectiveness of special 

13 masters in patent litigation. 

14 SEC. 17. STUDY ON WORKPLACE CONDITIONS. 

15 The Comptroller General shall, not later than 2 years 

16 after the date of the enactment of this Act— 

17 (1) conduct a study of workplace conditions for 

18 the examiner corps of the United States Patent and 

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

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

21 (A) recruitment, retention, and promotion 

22 of employees; and 

23 (B) workload, quality assurance, and em24 ployee grievances; and 


bajohnson on PROD1PC77 with BILLS
77 

HR 1908 PCS

1 (2) submit to the Committees on the Judiciary 

2 of the House of Representatives and the Senate a 

3 report on the results of the study, including any sug4 gestions for improving workplace conditions, to5 gether with any other recommendations that the 

6 Comptroller General has with respect to patent reex7 amination proceedings. 

8 SEC. 18. RULE OF CONSTRUCTION. 

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

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

11 done with the same intent to promote joint research activi12 ties that was expressed, including in the legislative history, 

13 through the enactment of the Cooperative Research and 

14 Technology Enhancement Act of 2004 (Public Law 108– 

15 453; the ‘‘CREATE Act’’), the amendments of which are 

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

17 Patent and Trademark Office shall administer section 

18 102(b)(3) of title 35, United States Code, in a manner 

19 consistent with the legislative history of the CREATE Act 

20 that was relevant to its administration by the Patent and 

21 Trademark Office. 

22 SEC. 19. STUDY ON PATENT DAMAGES. 

23 (a) IN GENERAL.—The Under Secretary of Com24 merce for Intellectual Property and Director of the United 

25 States Patent and Trademark Office (in this section reVerDate Aug 31 2005 03:18 Sep 12, 2007 Jkt 059200 PO 00000 Frm 00077 Fmt 6652 Sfmt 6201 E:\BILLS\H1908.PCS H1908

bajohnson on PROD1PC77 with BILLS
78 

HR 1908 PCS

1 ferred to as the ‘‘Director’’) shall conduct a study of pat2 ent damage awards in cases where such awards have been 

3 based on a reasonable royalty under section 284 of title 

4 35, United States Code. The study should, at a minimum, 

5 consider cases from 1990 to the present. 

6 (b) CONDUCT.—In conducting the study under sub7 section (a), the Director shall investigate, at a minimum, 

8 the following: 

9 (1) Whether the mean or median dollar amount 

10 of reasonable-royalty-based patent damages awarded 

11 by courts or juries, as the case may be, has signifi12 cantly increased on a per case basis during the pe13 riod covered by the study, taking into consideration 

14 adjustments for inflation and other relevant eco15 nomic factors. 

16 (2) Whether there has been a pattern of exces17 sive and inequitable reasonable-royalty-based dam18 ages during the period covered by the study and, if 

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

20 evidence that Federal courts have routinely and in21 appropriately broadened the scope of the ‘‘entire 

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

23 misapplied the entire market value rule to the facts 

24 at issue. 


bajohnson on PROD1PC77 with BILLS
79 

HR 1908 PCS

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

2 and inequitable damage awards exists, measures 

3 that could guard against such inappropriate awards 

4 without unduly prejudicing the rights and remedies 

5 of patent holders or significantly increasing litigation 

6 costs, including legislative reforms or improved 

7 model jury instructions. 

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

9 and inequitable damage awards exists, whether legis10 lative proposals that would mandate, or create a pre11 sumption in favor of, apportionment of reasonable12 royalty-based patent damages would effectively 

13 guard against such inappropriate awards without 

14 unduly prejudicing the rights and remedies of patent 

15 holders or significantly increasing litigation costs. 

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

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

18 to the Congress a report on the study conducted under 

19 this section. 

20 SEC. 20. SEVERABILITY. 

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

22 repeals made by this Act, or the application of such a pro23 vision to any person or circumstance, is held to be invalid 

24 or unenforceable, the remainder of this Act and the 

25 amendments and repeals made by this Act, and the appliVerDate Aug 31 2005 03:18 Sep 12, 2007 Jkt 059200 PO 00000 Frm 00079 Fmt 6652 Sfmt 6201 E:\BILLS\H1908.PCS H1908

bajohnson on PROD1PC77 with BILLS
80 

HR 1908 PCS

1 cation of this Act and such amendments and repeals to 

2 any other person or circumstance, shall not be affected 

3 by such holding. 

Passed the House of Representatives September 7, 

2007. 

Attest: LORRAINE C. MILLER, 

Clerk. 


bajohnson on PROD1PC77 with BILLS

bajohnson on PROD1PC77 with BILLS
Calendar No. 348 

110TH CONGRESS 

1ST SESSION H. R. 1908 

AN ACT 

To amend title 35, United States Code, to provide 

for patent reform. 

SEPTEMBER 11, 2007 

Read the second time and placed on the calendar 


bajohnson on PROD1PC77 with BILLS