```

[House Report 110-319]
[From the U.S. Government Publishing Office]

110th Congress                                                   Report
                        HOUSE OF REPRESENTATIVES
 1st Session                                                    110-319

======================================================================

 
PROVIDING FOR CONSIDERATION OF THE BILL (H.R. 1908) TO AMEND TITLE 35, 
            UNITED STATES CODE, TO PROVIDE FOR PATENT REFORM

                                _______
                                

 September 6, 2007.--Referred to the House Calendar and ordered to be 
                                printed

                                _______
                                

    Mr. Welch, from the Committee on Rules, submitted the following

                              R E P O R T

                       [To accompany H. Res. 636]

    The Committee on Rules, having had under consideration 
House Resolution 636, by a record vote of 8 to 4, report the 
same to the House with the recommendation that the resolution 
be adopted.

                SUMMARY OF PROVISIONS OF THE RESOLUTION

    The resolution provides for consideration of H.R. 1908, the 
``Patent Reform Act of 2007,'' under a structured rule. The 
resolution provides for one hour of general debate equally 
divided and controlled by the chairman and ranking minority 
member of the Committee on the Judiciary.
    The resolution waives all points of order against 
consideration of the bill except those arising under clause 9 
or 10 of rule XXI. The resolution provides that the amendment 
in the nature of a substitute recommended by the Committee on 
the Judiciary, now printed in the bill, shall be considered as 
an original bill and shall be considered as read. The 
resolution waives all points of order against the committee 
amendment in the nature of a substitute except those arising 
under clause 10 of rule XXI.
    The resolution makes in order only those amendments printed 
in this report. Such amendments may be offered only in the 
order printed in this report, only offered by the Member 
designated in this report, shall be considered as read, shall 
be debatable for the time specified in this report equally 
divided and controlled by the proponent and an opponent, shall 
not be subject to amendment, and shall not be subject to a 
demand for division of the question in the House or in the 
Committee of the Whole. The resolution waives all points of 
order against the amendments printed in this report except 
those arising under clause 9 or 10 of rule XXI. The resolution 
provides one motion to recommit with or without instructions. 
Finally, the resolution permits the Chair, during consideration 
of the bill in the House, to postpone further consideration of 
the bill to a time designated by the Speaker.

                         EXPLANATION OF WAIVERS

    Although the rule waives all points of order against the 
bill and its consideration (except for those arising under 
clause 9 or 10 of rule XXI), the Committee is not aware of any 
points of order against the bill or its consideration. The 
waivers of all points of order against the bill and its 
consideration (except those arising under clause 9 or 10 of 
rule XXI) are prophylactic in nature.

                            COMMITTEE VOTES

    The results of each record vote on an amendment or motion 
to report, together with the names of those voting for and 
against, are printed below:

Rules Committee record vote No. 291

    Date: September 6, 2007.
    Measure: H.R. 1908.
    Motion by: Mr. Dreier.
    Summary of motion: To grant an open rule.
    Results: Defeated 4-8.
    Vote by Members: McGovern--Nay; Matsui--Nay; Cardoza--Nay; 
Welch--Nay; Castor--Nay; Arcuri--Nay; Sutton--Nay; Dreier--Yea; 
Diaz-Balart--Yea; Hastings (WA)--Yea; Sessions--Yea; 
Slaughter--Nay.

Rules Committee record vote No. 292

    Date: September 6, 2007.
    Measure: H.R. 1908.
    Motion by: Mr. Dreier.
    Summary of motion: To grant two hours of general debate 
equally divided by a proponent and an opponent.
    Results: Defeated 4-8.
    Vote by Members: McGovern--Nay; Matsui--Nay; Cardoza--Nay; 
Welch--Nay; Castor--Nay; Arcuri--Nay; Sutton--Nay; Dreier--Yea; 
Diaz-Balart--Yea; Hastings (WA)--Yea; Sessions--Yea; 
Slaughter--Nay.

Rules Committee record vote No. 293

    Date: September 6, 2007.
    Measure: H.R. 1908.
    Motion by: Mr. Diaz-Balart.
    Summary of motion: To make in order and provide appropriate 
waivers for an amendment by Rep. Latham (IA), #1, which 
increases to 15% (from 5%) of their budgets the amount in 
certain funding agreements relating to patents and nonprofit 
organizations to be used for scientific research, development, 
and education, and for other purposes, by organizations having 
budgets less than $40 million.
    Results: Defeated 4-8.
    Vote by Members: McGovern--Nay; Matsui--Nay; Cardoza--Nay; 
Welch--Nay; Castor--Nay; Arcuri--Nay; Sutton--Nay; Dreier--Yea; 
Diaz-Balart--Yea; Hastings (WA)--Yea; Sessions--Yea; 
Slaughter--Nay.

Rules Committee record vote No. 294

    Date: September 6, 2007.
    Measure: H.R. 1908.
    Motion by: Mr. Diaz-Balart.
    Summary of motion: To make in order and provide appropriate 
waivers for an amendment by Rep. Gohmert (TX), #7, which 
permits nonprofit organizations to file patent suits where they 
reside, and also allows the initial holder of a patent to file 
suit where he resides, is incorporated, or has a principal 
place of business.
    Results: Defeated 4-8.
    Vote by Members: McGovern--Nay; Matsui--Nay; Cardoza--Nay; 
Welch--Nay; Castor--Nay; Arcuri--Nay; Sutton--Nay; Dreier--Yea; 
Diaz-Balart--Yea; Hastings (WA)--Yea; Sessions--Yea; 
Slaughter--Nay.

Rules Committee record vote No. 295

    Date: September 6, 2007.
    Measure: H.R. 1908.
    Motion by: Mr. Hastings (WA).
    Summary of motion: To make in order and provide appropriate 
waivers for an amendment by Rep. Gohmert (TX), #8, which 
eliminates the requirement of a defendant having substantial 
evidence or witnesses before a request to transfer will be 
considered and substitutes a standard that substantial fairness 
would be accommodated.
    Results: Defeated 4-8.
    Vote by Members: McGovern--Nay; Matsui--Nay; Cardoza--Nay; 
Welch--Nay; Castor--Nay; Arcuri--Nay; Sutton--Nay; Dreier--Yea; 
Diaz-Balart--Yea; Hastings (WA)--Yea; Sessions--Yea; 
Slaughter--Nay.

Rules Committee record vote No. 296

    Date: September 6, 2007.
    Measure: H.R. 1908.
    Motion by: Mr. Sessions.
    Summary of motion: To make in order and provide appropriate 
waivers for an amendment by Rep. Gohmert (TX), #10, which would 
allow a patent suit to be filed in any district or division 
where the defendant committed a substantial portion of the acts 
of infringement.
    Results: Defeated 4-8.
    Vote by Members: McGovern--Nay; Matsui--Nay; Cardoza--Nay; 
Welch--Nay; Castor--Nay; Arcuri--Nay; Sutton--Nay; Dreier--Yea; 
Diaz-Balart--Yea; Hastings (WA)--Yea; Sessions--Yea; 
Slaughter--Nay.

Rules Committee record vote No. 297

    Date: September 6, 2007.
    Measure: H.R. 1908.
    Motion by: Mr. Sessions.
    Summary of motion: To make in order and provide appropriate 
waivers for a second degree amendment by Rep. Gohmert (TX), #9, 
which would add a venue transfer section to the bill and allows 
a court to consider the substantial fairness to the litigants 
as well as the case loads and potential delays of other courts 
when considering a request to transfer a patent case.
    Results: Defeated 4-8.
    Vote by Members: McGovern--Nay; Matsui--Nay; Cardoza--Nay; 
Welch--Nay; Castor--Nay; Arcuri--Nay; Sutton--Nay; Dreier--Yea; 
Diaz-Balart--Yea; Hastings (WA)--Yea; Sessions--Yea; 
Slaughter--Nay.

Rules Committee record vote No. 298

    Date: September 6, 2007.
    Measure: H.R. 1908.
    Motion by: Mr. McGovern.
    Summary of motion: To report the rule.
    Results: Adopted 8-4.
    Vote by Members: McGovern--Yea; Matsui--Yea; Cardoza--Yea; 
Welch--Yea; Castor--Yea; Arcuri--Yea; Sutton--Yea; Dreier--Nay; 
Diaz-Balart--Nay; Hastings (WA)--Nay; Sessions--Nay; 
Slaughter--Yea.

                  SUMMARY OF AMENDMENTS MADE IN ORDER

    1. Conyers (MI)/Smith (TX)/Berman (CA)/Coble (NC): 
Manager's amendment. The amendment incorporates a number of 
revisions. They include revisions to the sections on damages, 
willful infringement, prior user rights, post-grant review, 
venue, inequitable conduct, applicant disclosure information, 
inventor's oath requirements, among others. (20 minutes)
    2. Issa (CA): The bill eliminates provisions in the law 
permitting certain applicants to delay or prevent publication 
of their applications. This amendment would strike that 
provision and permit applicants to delay publication until the 
later of (1) three months after a second PTO decision or (2) 18 
months after the filing date. (10 minutes)
    3. Issa (CA): Amends the section relating to United States 
Patent and Trademark Office regulatory authority by adding the 
requirement that Congress be provided 60 days to review 
regulations before they take effect. Congress may bar 
implementation of the regulation by enactment of a joint 
resolution of disapproval. (10 minutes)
    4. Jackson-Lee (TX): This amendment requires the Director 
of the United States Patent and Trademark Office to conduct a 
study of patent damage awards in cases from at least 1990 to 
the present where such awards have been based on a reasonable 
royalty under Section 284 of Title 35 of the United States 
Code. The Director of the PTO would be required to submit the 
findings to Congress no later than one year after the Act's 
enactment. (10 minutes)
    5. Pence (IN): Amends the provisions governing post-grant 
review proceedings to prohibit a post-grant review from being 
instituted based upon the best mode requirement of patent law. 
(10 minutes)

            TEXT OF AMENDMENTS MADE IN ORDER UNDER THE RULE

1. An Amendment To Be Offered by Representative Conyers of Michigan, or 
                 His Designee, Debatable for 20 Minutes

  Page 3, strike lines 22 through 25.
  Page 3, line 21, insert quotation marks and a second period 
after ``patent.''.
  Page 10, strike line 24 and all that follows through page 11, 
line 2, and insert the following:
  (i) Action for Claim to Patent on Derived Invention.--Section 
135 is amended to read as follows:

``Sec. 135. Derivation proceedings''.

  Page 11, lines 14 and 15, strike ``Any such request--'' and 
insert the following:
                  ``(B) Requirements for request.--Any request 
                under subparagraph (A)--''.
  Page 12, line 3, strike ``(B)'' and insert ``(C)''.
  Page 12, line 8, strike ``under section 101''.
  Page 13, line 16, strike the quotation marks and second 
period.
  Page 13, insert the following after line 16:
  ``(b) Settlement.--Parties to a derivation proceeding may 
terminate the proceeding by filing a written statement 
reflecting the agreement of the parties as to the correct 
inventors of the claimed invention in dispute. Unless the 
Patent Trial and Appeal Board finds the agreement to be 
inconsistent with the evidence of record, it shall take action 
consistent with the agreement. Any written settlement or 
understanding of the parties shall be filed with the Director. 
At the request of a party to the proceeding, the agreement or 
understanding shall be treated as business confidential 
information, shall be kept separate from the file of the 
involved patents or applications, and shall be made available 
only to Government agencies on written request, or to any 
person on a showing of good cause.
  ``(c) Arbitration.--Parties to a derivation proceeding, 
within such time as may be specified by the Director by 
regulation, may determine such contest or any aspect thereof by 
arbitration. Such arbitration shall be governed by the 
provisions of title 9 to the extent such title is not 
inconsistent with this section. The parties shall give notice 
of any arbitration award to the Director, and such award shall, 
as between the parties to the arbitration, be dispositive of 
the issues to which it relates. The arbitration award shall be 
unenforceable until such notice is given. Nothing in this 
subsection shall preclude the Director from determining 
patentability of the invention involved in the derivation 
proceeding.''.
  Page 13, strike line 17 and all that follows through page 15, 
line 8.
  Page 17, line 10, insert ``with respect to an application for 
patent filed'' after ``commenced''.
  Page 17, lines 21 and 22, strike ``transmits to the Congress 
a finding'' and insert ``issues an Executive order containing 
the President's finding''.
  Page 18, insert the following after line 23:
          (3) Retention of interference procedures with respect 
        to applications filed before effective date.--In the 
        case of any application for patent that is filed before 
        the effective date under paragraph (1)(A), the 
        provisions of law repealed or amended by subsections 
        (h), (i), and (j) shall apply to such application as 
        such provisions of law were in effect on the day before 
        such effective date.
  Page 21, lines 24 and 25, strike ``is under an obligation of 
assignment of'' and insert ``has assigned rights in''.
  Page 24, strike line 23 and all that follows through page 25, 
line 13 and redesignate the succeeding subsections accordingly.
  Page 27, line 13, strike ``(5)'' and insert ``(4)''.
  Page 27, line 21, strike ``The court'' and insert ``Upon a 
showing to the satisfaction of the court that a reasonable 
royalty should be based on a portion of the value of the 
infringing product or process, the court''.
  Page 28, lines 5 and 6, strike ``Unless the claimant shows'' 
and insert ``Upon a showing to the satisfaction of the court''.
  Page 28, line 9, strike ``may not'' and insert ``may''.
  Page 28, strike line 12 and all that follows through page 29, 
line 2, and insert the following:
          ``(4) Other factors.--If neither paragraph (2) or (3) 
        is appropriate for determining a reasonable royalty, 
        the court may consider, or direct the jury to consider, 
        the terms of any nonexclusive marketplace licensing of 
        the invention, where appropriate, as well as any other 
        relevant factors under applicable law.
          ``(5) Combination inventions.--For purposes of 
        paragraphs (2) and (3), in the case of a combination 
        invention the elements of which are present 
        individually in the prior art, the patentee may show 
        that the contribution over the prior art may include 
        the value of the additional function resulting from the 
        combination, as well as the enhanced value, if any, of 
        some or all of the prior art elements resulting from 
        the combination.''
  Page 31, line 17, strike ``The court's'' and all that follows 
through ``jury.'' on line 19.
  Page 31, strike line 23 and all that follows through the 
matter following line 17 on page 33 and insert the following:
  (b) Report to Congressional Committees.--Not later than June 
30, 2009, the Under Secretary of Commerce for Intellectual 
Property and Director of the United States Patent and Trademark 
Office (in this subsection referred to as the ``Director'') 
shall report to the Committee on the Judiciary of the House of 
Representatives and the Committee on the Judiciary of the 
Senate the findings and recommendations of the Director on the 
operation of prior user rights in selected countries in the 
industrialized world. The report shall include the following:
          (1) A comparison between the patent laws of the 
        United States and the laws of other industrialized 
        countries, including the European Union, Japan, Canada, 
        and Australia.
          (2) An analysis of the effect of prior user rights on 
        innovation rates in the selected countries.
          (3) An analysis of the correlation, if any, between 
        prior user rights and start-up enterprises and the 
        ability to attract venture capital to start new 
        companies.
          (4) An analysis of the effect of prior user rights, 
        if any, on small businesses, universities, and 
        individual inventors.
          (5) An analysis of any legal or constitutional issues 
        that arise from placing elements of trade secret law, 
        in the form of prior user rights, in patent law.
In preparing the report, the Director shall consult with the 
Secretary of State and the Attorney General of the United 
States.
  Page 33, line 18, strike ``(d)'' and insert ``(c)''.
  Page 33, line 21, strike ``(e)'' and insert ``(d)''.
  Page 36, lines 22 and 23, strike ``cited by or to the Office 
or''.
  Page 39, line 10, strike ``grant of the patent or issuance 
of'' and insert ``issuance of the patent or''.
  Page 39, strike line 21 and all that follows through page 40, 
line 2 and insert the following:
          ``(3) for each claim sought to be canceled, the 
        petition sets forth in writing the basis for 
        cancellation and provides the evidence in support 
        thereof, including copies of patents and printed 
        publications, or written testimony of a witness 
        attested to under oath or declaration by the witness, 
        or any other information that the Director may require 
        by regulation; and''
  Page 40, lines 3 and 4, strike ``those documents'' and insert 
``the petition, including any evidence submitted with the 
petition and any other information submitted under paragraph 
(3),''.
  Page 41, add the following after line 25:
In carrying out paragraph (3), the Director shall bear in mind 
that discovery must be in the interests of justice.
  Page 44, lines 23 and 24, strike ``with respect to'' and 
insert ``addressing''.
  Page 46, line 1, strike ``of administrative patent judges''.
  Page 46, line 18, strike ``pending''.
  Page 46, line 23, insert ``with respect to an application for 
patent filed'' after ``commenced''.
  Page 47, line 5, insert ``of a patent'' after 
``infringement''.
  Page 47, line 7, insert after ``patentability'' the 
following: ``raised against the patent in a petition for post-
grant review''.
  Page 47, insert the following after line 7:
  ``(c) Effect of Commencement of Proceeding.--The commencement 
of a post-grant review proceeding--
          ``(1) shall not limit in any way the right of the 
        patent owner to commence an action for infringement of 
        the patent; and
          ``(2) shall not be cited as evidence relating to the 
        validity of any claim of the patent in any proceeding 
        before a court or the International Trade Commission 
        concerning the patent.
  Page 48, line 14, strike ``or''.
  Page 48, line 17, strike the period and insert ``; or''.
  Page 48, insert the following after line 17:
          ``(5) assert the invalidity of any such claim in 
        defense to an action brought under section 337 of the 
        Tariff Act of 1930 (19 U.S.C. 1337).
  Page 49, line 18, strike ``subsection (f)'' and insert 
``subsections (f) and (g)''.
  Page 49, strike lines 21 and 22 and insert the following:
  (j) Regulations.--The Under Secretary of
  Page 49, lines 23 through 25, and page 50, lines 1 through 4, 
move the text 2 ems to the left.
  Page 50, strike lines 5 through 15.
  Page 51, lines 3 through 5, strike ``The Director, the 
Deputy, the Commissioner for Patents, and the Commissioner for 
Trademarks, and the'' and insert ``The''.
  Page 51, line 9, strike ``Director'' and insert ``Secretary 
of Commerce''.
  Page 54, line 18, strike ``and''.
  Page 54, line 21, strike the 2 periods and quotation marks 
and insert ``; and''.
  Page 54, insert the following after line 21:
                  ``(D) identify the real party-in-interest 
                making the submission.''.
  Page 57, strike line 12 and all that follows through page 59, 
line 7, and insert the following:
  ``(b) In any civil action arising under any Act of Congress 
relating to patents, a party shall not manufacture venue by 
assignment, incorporation, joinder, or otherwise primarily to 
invoke the venue of a specific district court.
  ``(c) Notwithstanding section 1391 of this title, except as 
provided in paragraph (3) of this subsection, any civil action 
for patent infringement or any action for declaratory judgment 
relating to a patent may be brought only in a judicial 
district--
          ``(1) where the defendant has its principal place of 
        business or is incorporated, or, for foreign 
        corporations with a United States subsidiary, where the 
        defendant's primary United States subsidiary has its 
        principal place of business or is incorporated;
          ``(2) where the defendant has committed a substantial 
        portion of the acts of infringement and has a regular 
        and established physical facility that the defendant 
        controls and that constitutes a substantial portion of 
        the defendant's operations;
          ``(3) for cases involving only foreign defendants 
        with no United States subsidiary, according to section 
        1391(d) of this title;
          ``(4) where the plaintiff resides, if the plaintiff 
        is--
                  ``(A) an institution of higher education as 
                defined under section 101(a) of the Higher 
                Education Act of 1965 (20 U.S.C. section 
                1001(a)); or
                  ``(B) a nonprofit organization that--
                          ``(i) is described in section 
                        501(c)(3) of the Internal Revenue Code 
                        of 1986;
                          ``(ii) is exempt from taxation under 
                        section 501(a) of such Code; and
                          ``(iii) serves primarily as the 
                        patent and licensing organization for 
                        an institution of higher education as 
                        defined under section 101(a) of the 
                        Higher Education Act of 1965 (20 U.S.C. 
                        1001(a));
          ``(5) where the plaintiff or a subsidiary has a place 
        of business that is engaged in substantial--
                  ``(A) research and development,
                  ``(B) manufacturing activities, or
                  ``(C) management of research and development 
                or manufacturing activities,
        related to the patent or patents in dispute;
          ``(6) where the plaintiff resides if the plaintiff is 
        named as inventor or co-inventor on the patent and has 
        not assigned, granted, conveyed, or licensed, and is 
        under no obligation to assign, grant, convey, or 
        license, any rights in the patent or in enforcement of 
        the patent, including the results of any such 
        enforcement; or
          ``(7) where any of the defendants has substantial 
        evidence and witnesses if there is no other district in 
        which the action may be brought under this section.''.
  Page 60, strike lines 1 through 3 and insert the following:
  (c) Effective Date.--
          (1) In general.--The amendments made by this 
        section--
                  (A) shall take effect on the date of the 
                enactment of this Act; and
                  (B) shall apply to any civil action commenced 
                on or after such date of enactment.
          (2) Pending cases.--Any case commenced in a United 
        States district court on or after September 7, 2007, in 
        which venue is improper under section 1400 of title 28, 
        United States Code, as amended by this section, shall 
        be transferred pursuant to section 1404 of such title, 
        unless--
                  (A) one or more substantive rulings on the 
                merits, or other substantial litigation, has 
                occurred; and
                  (B) the court finds that transfer would not 
                serve the interests of justice.
  Page 60, line 10, strike ``shall'' and insert ``may''.
  Page 60, line 12, insert after ``patentability.'' the 
following: ``If the Director requires a search report to be 
submitted by applicants, and an applicant does not itself 
perform the search, the search must be performed by one or more 
individuals who are United States citizens or by a commercial 
entity that is organized under the laws of the United States or 
any State and employs United States citizens to perform such 
searches.''.
  Page 60, line 14, strike ``the required search report, 
information, and'' and insert ``a search report, information, 
or an''.
  Page 60, line 16, add after the period the following: ``Any 
search report required by the Director may not substitute in 
any way for a search by an examiner of the prior art during 
examination.''.
  Page 63, strike line 19 and all that follows through line 15 
on page 65 and insert the following:
          ``(1) Defense.--One or more claims of a patent may be 
        held to be unenforceable, or other remedy imposed under 
        paragraph (4), for inequitable conduct only if it is 
        established, by clear and convincing evidence, that a 
        person with a duty of disclosure to the Office, with 
        the intent to mislead or deceive the patent examiner, 
        misrepresented or failed to disclose material 
        information to the examiner during examination of the 
        patent.
          ``(2) Materiality.--
                  ``(A) In general.--Information is material 
                under this section if--
                          ``(i) a reasonable examiner would 
                        have made a prima facie finding of 
                        unpatentability, or maintained a 
                        finding of unpatentability, of one or 
                        more of the patent claims based on the 
                        information, and the information is not 
                        cumulative to information already of 
                        record or previously considered by the 
                        Office; or
                          ``(ii) information that is otherwise 
                        material refutes or is inconsistent 
                        with a position the applicant takes in 
                        opposing a rejection of the claim or in 
                        asserting an argument of patentability.
                  ``(B) Prima facie finding.--A prima facie 
                finding of unpatentability under this section 
                is shown if a reasonable examiner, based on a 
                preponderance of the evidence, would conclude 
                that the claim is unpatentable based on the 
                information misrepresented or not disclosed, 
                when that information is considered alone or in 
                conjunction with other information or record. 
                In determining whether there is a prima facie 
                finding of unpatentability, each term in the 
                claim shall be given its broadest reasonable 
                construction consistent with the specification, 
                and rebuttal evidence shall not be considered.
          ``(3) Intent.--To prove a person with a duty of 
        disclosure to the Office intended to mislead or deceive 
        the examiner under paragraph (1), specific facts beyond 
        materiality of the information misrepresented or not 
        disclosed must be proven that establish the intent of 
        the person to mislead or deceive the examiner by the 
        actions of the person. Facts support an intent to 
        mislead or deceive if they show circumstances that 
        indicate conscious or deliberate behavior on the part 
        of the person to not disclose material information or 
        to submit false material information in order to 
        mislead or deceive the examiner. Circumstantial 
        evidence may be used to prove that a person had the 
        intent to mislead or deceive the examiner under 
        paragraph (1).
          ``(4) Remedy.--Upon a finding of inequitable conduct, 
        the court shall balance the equities to determine which 
        of the following remedies to impose:
                  ``(A) Denying equitable relief to the patent 
                holder and limiting the remedy for infringement 
                to reasonable royalties.
                  ``(B) Holding the claims-in-suit, or the 
                claims in which inequitable conduct occurred, 
                unenforceable.
                  ``(C) Holding the patent unenforceable.
                  ``(D) Holding the claims of a related patent 
                unenforceable.
          ``(5) Attorney misconduct.--Upon a finding of 
        inequitable conduct, if there is evidence that the 
        conduct is attributable to a person or persons 
        authorized to practice before the Office, the court 
        shall refer the matter to the Office for appropriate 
        disciplinary action under section 32, and shall order 
        the parties to preserve and make available to the 
        Office any materials that may be relevant to the 
        determination under section 32.''.
  Page 69, line 17, strike ``180 days'' and insert ``1 year''.
  Page 71, insert the following after line 6 and redesignate 
the succeeding section accordingly:

SEC. 17. STUDY ON WORKPLACE CONDITIONS.

  The Comptroller General shall, not later than 2 years after 
the date of the enactment of this Act--
          (1) conduct a study of workplace conditions for the 
        examiner corps of the United States Patent and 
        Trademark Office, including the effect, if any, of this 
        Act and the amendments made by this Act on--
                  (A) recruitment, retention, and promotion of 
                employees; and
                  (B) workload, quality assurance, and employee 
                grievances; and
          (2) submit to the Committees on the Judiciary of the 
        House of Representatives and the Senate a report on the 
        results of the study, including any suggestions for 
        improving workplace conditions, together with any other 
        recommendations that the Comptroller General has with 
        respect to patent reexamination proceedings.
  Page 71, add the following after line 19:

SEC. 19. SEVERABILITY.

  If any provision of this Act or of any amendment or repeals 
made by this Act, or the application of such a provision to any 
person or circumstance, is held to be invalid or unenforceable, 
the remainder of this Act and the amendments and repeals made 
by this Act, and the application of this Act and such 
amendments and repeals to any other person or circumstance, 
shall not be affected by such holding.
                              ----------                              

2. An Amendment To Be Offered by Representative Issa of California, or 
                 His Designee, Debatable for 10 Minutes

  Page 53, strike lines 9 through 15 and insert the following:
  (a) Publication.--Section 122(b)(2)(B)(i) is amended by 
striking ``published as provided in paragraph (1).'' and 
inserting the following: ``published until the later of--
                  ``(I) three months after a second action is 
                taken pursuant to section 132 on the 
                application, of which notice has been given or 
                mailed to the applicant; or
                  ``(II) the date specified in paragraph 
                (1).''.
                              ----------                              

3. An Amendment To Be Offered by Representative Issa of California, or 
                 His Designee, Debatable for 10 Minutes

  Page 67, insert the following after line 7:
  (c) Effective Date of Regulations.--
          (1) Review by congress.--A regulation promulgated by 
        the United States Patent and Trademark Office under 
        section 2(b)(2) of title 35, United States Code, with 
        respect to any matter described in section 2(c)(6) of 
        such title, as added by subsection (a) of this section, 
        may not take effect before the end of a period of 60 
        days beginning on the date on which the Under Secretary 
        of Commerce for Intellectual Property and Director of 
        the United States Patent and Trademark Office submits 
        to each House of Congress a copy of the regulation, 
        together with a report containing the reasons for its 
        adoption. The regulation and report so submitted shall 
        be referred to the Committee on the Judiciary of the 
        House of Representatives and the Committee on the 
        Judiciary of the Senate.
          (2) Joint resolution of disapproval.--If a joint 
        resolution of disapproval with respect to the 
        regulation is enacted into law, the regulation shall 
        not become effective or continue in effect.
          (3) Joint resolution defined.--For purposes of this 
        subsection, the term a ``joint resolution of 
        disapproval'' means a joint resolution, the matter 
        after the resolving clause of which is as follows: 
        ``That Congress disapproves the regulation submitted by 
        the Under Secretary of Commerce for Intellectual 
        Property and Director of the United States Patent and 
        Trademark Office on ___ relating to ___, and such 
        regulation shall have no force or effect.'', with the 
        first space being filled with the appropriate date, and 
        the second space being filled with a description of the 
        regulation at issue.
          (4) Referral.--A joint resolution of disapproval 
        shall be referred in the House of Representatives to 
        the Committee on the Judiciary and in the Senate to the 
        Committee on the Judiciary.
          (5) Floor consideration.--A vote on final passage of 
        a joint resolution of disapproval shall be taken in 
        each House on or before the close of the 15th day after 
        the bill or resolution is reported by the committee of 
        that House to which it was referred or after such 
        committee has been discharged from further 
        consideration of the joint resolution of disapproval.
          (6) No inferences.-- If the Congress does not enact a 
        joint resolution of disapproval, no court or agency may 
        infer therefrom any intent of the Congress with regard 
        to such regulation or action.
          (7) Calculation of days.--The 60-day period referred 
        to in paragraph (1) and the 15-day period referred to 
        in paragraph (5) shall be computed by excluding--
                  (A) the days on which either House of 
                Congress is not in session because of an 
                adjournment of the Congress sine die; and
                  (B) any Saturday and Sunday, not excluded 
                under subparagraph (A), when either House is 
                not in session.
          (8) Rulemaking authority.--This subsection is enacted 
        by the Congress as an exercise of the rulemaking power 
        of the Senate and House of Representatives 
        respectively, and as such it is deemed a part of the 
        rules of each House, respectively.
                              ----------                              

 4. An Amendment To Be Offered by Representative Jackson-Lee of Texas, 
               or Her Designee, Debatable for 10 Minutes

  At the end of the bill insert the following new section:

SEC. 18. STUDY ON PATENT DAMAGES.

  (a) In General.--The Under Secretary of Commerce for 
Intellectual Property and Director of the United States Patent 
and Trademark Office (in this section referred to as the 
``Director'') shall conduct a study of patent damage awards in 
cases where such awards have been based on a reasonable royalty 
under section 284 of title 35, United States Code. The study 
should, at a minimum, consider cases from 1990 to the present.
  (b) Conduct.--In conducting the study under subsection (a), 
the Director shall investigate, at a minimum, the following:
          (1) Whether the mean or median dollar amount of 
        reasonable-royalty-based patent damages awarded by 
        courts or juries, as the case may be, has significantly 
        increased on a per case basis during the period covered 
        by the study, taking into consideration adjustments for 
        inflation and other relevant economic factors.
          (2) Whether there has been a pattern of excessive and 
        inequitable reasonable-royalty-based damages during the 
        period covered by the study and, if so, any 
        contributing factors, including, for example, evidence 
        that Federal courts have routinely and inappropriately 
        broadened the scope of the ``entire market value 
        rule'', or that juries have routinely misapplied the 
        entire market value rule to the facts at issue.
          (3) To the extent that a pattern of excessive and 
        inequitable damage awards exists, measures that could 
        guard against such inappropriate awards without unduly 
        prejudicing the rights and remedies of patent holders 
        or significantly increasing litigation costs, including 
        legislative reforms or improved model jury 
        instructions.
          (4) To the extent that a pattern of excessive and 
        inequitable damage awards exists, whether legislative 
        proposals that would mandate, or create a presumption 
        in favor of, apportionment of reasonable-royalty-based 
        patent damages would effectively guard against such 
        inappropriate awards without unduly prejudicing the 
        rights and remedies of patent holders or significantly 
        increasing litigation costs.
  (c) Report.--Not later than 1 year after the date of the 
enactment of this Act, the Director shall submit to the 
Congress a report on the study conducted under this section.
                              ----------                              

 5. An Amendment To Be Offered by Representative Pence of Indiana, or 
                 His Designee, Debatable for 10 Minutes

  Page 40, line 9, strike ``identifies'' and all that follows 
through line 11 and insert the following:
          ``(1) identifies the same cancellation petitioner and 
        the same patent as a previous petition for cancellation 
        filed under such section; or
          ``(2) is based on the best mode requirement contained 
        in section 112.

                                  

```