II 

110TH CONGRESS 

1ST SESSION S. 1145 

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

IN THE SENATE OF THE UNITED STATES 

APRIL 18, 2007 

Mr. LEAHY (for himself, Mr. HATCH, Mr. SCHUMER, Mr. CORNYN, and Mr. 

WHITEHOUSE) introduced the following bill; which was read twice and referred to the Committee on the Judiciary 

A BILL 

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

reform. 

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

3 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

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

5 ‘‘Patent Reform Act of 2007’’. 

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

7 this Act is as follows: 

Sec. 1. Short title; table of contents. 

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

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

Sec. 4. Inventor’s oath or declaration. 

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

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

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


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Sec. 8. Study and report on reexamination proceedings. 

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

Sec. 10. Venue and jurisdiction. 

Sec. 11. Regulatory authority. 

Sec. 12. Technical amendments. 

Sec. 13. Effective date; rule of construction. 

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

2 Whenever in this Act a section or other provision is 

3 amended or repealed, that amendment or repeal shall be 

4 considered to be made to that section or other provision 

5 of title 35, United States Code. 

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

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

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

10 a joint invention, the individuals collectively who invented 

11 or discovered the subject matter of the invention. 

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

13 any 1 of the individuals who invented or discovered the 

14 subject matter of a joint invention. 

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

16 is— 

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

19 or 

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

21 entitled to a right of priority of any other applica22 tion under section 119, 365(a), or 365(b) or to the 


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1 benefit of an earlier filing date in the United States 

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

3 the earliest such application in which the claimed in4 vention is disclosed in the manner provided by the 

5 first paragraph of section 112. 

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

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

8 for a patent. 

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

10 resulting from the collaboration of inventive endeavors of 

11 2 or more persons working toward the same end and pro12 ducing an invention by their collective efforts.’’. 

13 (b) CONDITIONS FOR PATENTABILITY.— 

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

15 read as follows: 

16 ‘‘§ 102. Conditions for patentability; novelty 

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

18 invention may not be obtained if— 

19 ‘‘(1) the claimed invention was patented, de20 scribed in a printed publication, or in public use or 

21 on sale— 

22 ‘‘(A) more than one year before the effec23 tive filing date of the claimed invention; or 

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

25 filing date of the claimed invention, other than 


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1 through disclosures made by the inventor or a 

2 joint inventor or by others who obtained the 

3 subject matter disclosed directly or indirectly 

4 from the inventor or a joint inventor; or 

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

6 patent issued under section 151, or in an application 

7 for patent published or deemed published under sec8 tion 122(b), in which the patent or application, as 

9 the case may be, names another inventor and was 

10 effectively filed before the effective filing date of the 

11 claimed invention. 

12 ‘‘(b) EXCEPTIONS.— 

13 ‘‘(1) PRIOR INVENTOR DISCLOSURE EXCEP14 TION.—Subject matter that would otherwise qualify 

15 as prior art under subparagraph (B) of subsection 

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

17 under that subparagraph if the subject matter had, 

18 before the applicable date under such subparagraph 

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

20 joint inventor or others who obtained the subject 

21 matter disclosed directly or indirectly from the in22 ventor, joint inventor, or applicant. 

23 ‘‘(2) DERIVATION AND COMMON ASSIGNMENT

24 EXCEPTIONS.—Subject matter that would otherwise 

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


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1 after taking into account the exception under para2 graph (1), shall not be prior art to a claimed inven3 tion if— 

4 ‘‘(A) the subject matter was obtained di5 rectly or indirectly from the inventor or a joint 

6 inventor; or 

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

8 invention, not later than the effective filing date 

9 of the claimed invention, were owned by the 

10 same person or subject to an obligation of as11 signment to the same person. 

12 ‘‘(3) JOINT RESEARCH AGREEMENT EXCEP13 TION.— 

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

15 claimed invention shall be deemed to have been 

16 owned by the same person or subject to an obli17 gation of assignment to the same person in ap18 plying the provisions of paragraph (2) if— 

19 ‘‘(i) the claimed invention was made 

20 by or on behalf of parties to a joint re21 search agreement that was in effect on or 

22 before the effective filing date of the 

23 claimed invention; 

24 ‘‘(ii) the claimed invention was made 

25 as a result of activities undertaken within 


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1 the scope of the joint research agreement; 

2 and 

3 ‘‘(iii) the application for patent for 

4 the claimed invention discloses or is 

5 amended to disclose the names of the par6 ties to the joint research agreement. 

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

8 the term ‘joint research agreement’ means a 

9 written contract, grant, or cooperative agree10 ment entered into by two or more persons or 

11 entities for the performance of experimental, 

12 developmental, or research work in the field of 

13 the claimed invention. 

14 ‘‘(4) PATENTS AND PUBLISHED APPLICATIONS

15 EFFECTIVELY FILED.—A patent or application for 

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

17 with respect to any subject matter described in the 

18 patent or application— 

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

20 the application for patent; or 

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

22 is entitled to claim a right of priority under sec23 tion 119, 365(a), or 365(b) or to claim the ben24 efit of an earlier filing date under section 120, 

25 121, or 365(c), based upon one or more prior 


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1 filed applications for patent, as of the filing 

2 date of the earliest such application that de3 scribes the subject matter.’’. 

4 (2) CONFORMING AMENDMENT.—The item re5 lating to section 102 in the table of sections for 

6 chapter 10 is amended to read as follows: 

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

7 (c) CONDITIONS FOR PATENTABILITY; NON-OBVIOUS

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

9 follows: 

10 ‘‘§ 103. Conditions for patentability; nonobvious sub11 ject matter 

12 ‘‘A patent for a claimed invention may not be ob13 tained though the claimed invention is not identically dis14 closed as set forth in section 102, if the differences be15 tween the claimed invention and the prior art are such 

16 that the claimed invention as a whole would have been ob17 vious before the effective filing date of the claimed inven18 tion to a person having ordinary skill in the art to which 

19 the claimed invention pertains. Patentability shall not be 

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

21 (d) REPEAL OF REQUIREMENTS FOR INVENTIONS

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

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

24 repealed. 


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1 (e) REPEAL OF STATUTORY INVENTION REGISTRA2 TION.— 

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

4 relating to that section in the table of sections for 

5 chapter 14, are repealed. 

6 (2) REMOVAL OF CROSS REFERENCES.—Section 

7 111(b)(8) is amended by striking ‘‘sections 115, 

8 131, 135, and 157’’ and inserting ‘‘sections 131 and 

9 135’’. 

10 (f) EARLIER FILING DATE FOR INVENTOR AND

11 JOINT INVENTOR.—Section 120 is amended by striking 

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

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

14 (g) CONFORMING AMENDMENTS.— 

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

16 amended by striking ‘‘and the time specified in sec17 tion 102(d)’’. 

18 (2) LIMITATION ON REMEDIES.—Section 

19 287(c)(4) is amended by striking ‘‘the earliest effec20 tive filing date of which is prior to’’ and inserting 

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

22 (3) INTERNATIONAL APPLICATION DESIG23 NATING THE UNITED STATES: EFFECT.—Section 

24 363 is amended by striking ‘‘except as otherwise 

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


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1 (4) PUBLICATION OF INTERNATIONAL APPLICA2 TION: EFFECT.—Section 374 is amended by striking 

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

4 154(d)’’. 

5 (5) PATENT ISSUED ON INTERNATIONAL APPLI6 CATION: EFFECT.—The second sentence of section 

7 375(a) is amended by striking ‘‘Subject to section 

8 102(e) of this title, such’’ and inserting ‘‘Such’’. 

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

10 119(a) is amended by striking ‘‘; but no patent shall 

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

12 prior to such filing’’. 

13 (7) INVENTIONS MADE WITH FEDERAL ASSIST14 ANCE.—Section 202(c) is amended— 

15 (A) in paragraph (2)— 

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

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

18 ‘‘obtained in the United States’’ and in19 serting ‘‘the 1-year period referred to in 

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

21 that 2-year period’’; and 

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

23 inserting ‘‘that 1-year’’; and 

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

25 statutory bar date that may occur under this 


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

2 and inserting ‘‘the expiration of the 1-year pe3 riod referred to in section 102(a)’’. 

4 (h) REPEAL OF INTERFERING PATENT REMEDIES.— 

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

6 table of sections for chapter 29, are repealed. 

7 (i) ACTION FOR CLAIM TO PATENT ON DERIVED IN8 VENTION.—Section 135(a) is amended to read as follows: 

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

10 ‘‘(1) INSTITUTION OF DERIVATION PRO11 CEEDING.—An applicant may request initiation of a 

12 derivation proceeding to determine the right of the 

13 applicant to a patent by filing a request which sets 

14 forth with particularity the basis for finding that an 

15 earlier applicant derived the claimed invention from 

16 the applicant requesting the proceeding and, without 

17 authorization, filed an application claiming such in18 vention. Any such request may only be made within 

19 12 months after the date of first publication of an 

20 application containing a claim that is the same or is 

21 substantially the same as the claimed invention, 

22 must be made under oath, and must be supported 

23 by substantial evidence. Whenever the Director de24 termines that patents or applications for patent 

25 naming different individuals as the inventor interfere 


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1 with one another because of a dispute over the right 

2 to patent under section 101, the Director shall insti3 tute a derivation proceeding for the purpose of de4 termining which applicant is entitled to a patent. 

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

6 subsection may not be commenced unless the party 

7 requesting the proceeding has filed an application 

8 that was filed not later than 18 months after the ef9 fective filing date of the application or patent 

10 deemed to interfere with the subsequent application 

11 or patent. 

12 ‘‘(3) DETERMINATION BY PATENT TRIAL AND

13 APPEAL BOARD.—In any proceeding under this sub14 section, the Patent Trial and Appeal Board— 

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

16 right to patent; 

17 ‘‘(B) in appropriate circumstances, may 

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

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

21 right to patent. 

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

23 may defer action on a request to initiate a derivation 

24 proceeding until 3 months after the date on which 


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1 the Director issues a patent to the applicant that 

2 filed the earlier application. 

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

4 decision of the Patent Trial and Appeal Board, if 

5 adverse to the claim of an applicant, shall constitute 

6 the final refusal by the Patent and Trademark Of7 fice on the claims involved. The Director may issue 

8 a patent to an applicant who is determined by the 

9 Patent Trial and Appeal Board to have the right to 

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

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

12 the decision has been or can be taken or had, con13 stitute cancellation of the claims involved in the pat14 ent, and notice of such cancellation shall be endorsed 

15 on copies of the patent distributed after such can16 cellation by the Patent and Trademark Office.’’. 

17 (j) ELIMINATION OF REFERENCES TO INTER18 FERENCES.—(1) Sections 6, 41, 134, 141, 145, 146, 154, 

19 305, and 314 are each amended by striking ‘‘Board of 

20 Patent Appeals and Interferences’’ each place it appears 

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

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

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

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

25 and 


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

2 place it appears and inserting ‘‘derivation pro3 ceeding’’. 

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

5 to read as follows: 

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

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

8 to read as follows: 

9 ‘‘§ 135. Derivation proceedings’’. 

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

11 to read as follows: 

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

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

14 ‘‘INTERFERENCES’’ and inserting ‘‘DERIVATION PRO15 CEEDINGS’’. 

16 (7) The item relating to section 6 in the table of sec17 tions for chapter 1 is amended to read as follows: 

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

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

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

20 as follows: 

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

‘‘135. Derivation proceedings.’’. 

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

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

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


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

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

3 follows: 

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

5 the United States Patent and Trademark Office 

6 with respect to patent applications, derivation 

7 proceedings, and post-grant review proceedings, 

8 at the instance of an applicant for a patent or 

9 any party to a patent interference (commenced 

10 before the effective date of the Patent Reform 

11 Act of 2007), derivation proceeding, or post12 grant review proceeding, and any such appeal 

13 shall waive any right of such applicant or party 

14 to proceed under section 145 or 146 of title 

15 35;’’. 

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

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

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

19 read as follows: 

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

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

22 DECLARATION.—An application for patent that is filed 

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

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

25 invention for which an application has previously been 


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

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

3 claimed invention in the application. Except as otherwise 

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

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

6 for patent shall execute an oath or declaration in connec7 tion with the application. 

8 ‘‘(b) REQUIRED STATEMENTS.—An oath or declara9 tion under subsection (a) shall contain statements that— 

10 ‘‘(1) the application was made or was author11 ized to be made by the affiant or declarant; and 

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

13 to be the original inventor or an original joint inven14 tor of a claimed invention in the application. 

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

16 may specify additional information relating to the inventor 

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

18 oath or declaration under subsection (a). 

19 ‘‘(d) SUBSTITUTE STATEMENT.— 

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

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

22 patent may provide a substitute statement under the 

23 circumstances described in paragraph (2) and such 

24 additional circumstances that the Director may 

25 specify by regulation. 


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

3 with respect to any individual who— 

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

7 ‘‘(i) is deceased; 

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

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

10 diligent effort; or 

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

12 invention but has refused to make the oath or 

13 declaration required under subsection (a). 

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

15 this subsection shall— 

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

17 whom the statement applies; 

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

20 the substitute statement in lieu of the oath or 

21 declaration under subsection (a); and 

22 ‘‘(C) contain any additional information, 

23 including any showing, required by the Direc24 tor. 


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1 ‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGN2 MENT OF RECORD.—An individual who is under an obliga3 tion of assignment of an application for patent may in4 clude the required statements under subsections (b) and 

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

6 of filing such statements separately. 

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

8 section 151 may be provided to an applicant for patent 

9 only if the applicant for patent has filed each required 

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

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

15 The requirements under this section shall not apply to an 

16 individual with respect to an application for patent in 

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

18 inventor and that claims the benefit under section 120 or 

19 365(c) of the filing of an earlier-filed application, if— 

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


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1 ‘‘(2) a substitute statement meeting the re2 quirements of subsection (d) was filed in the earlier 

3 filed application with respect to the individual; or 

4 ‘‘(3) an assignment meeting the requirements 

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

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

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

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

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

16 statements under this section, the Director shall es17 tablish regulations under which such additional 

18 statements may be filed. 

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

21 declaration under subsection (a) or an assignment 

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

24 not thereafter require that individual to make any 

25 additional oath, declaration, or other statement 


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1 equivalent to those required by this section in con2 nection with the application for patent or any patent 

3 issuing thereon. 

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

6 comply with a requirement under this section if the 

7 failure is remedied as provided under paragraph 

8 (1).’’. 

9 (2) RELATIONSHIP TO DIVISIONAL APPLICA10 TIONS.—Section 121 is amended by striking ‘‘If a 

11 divisional application’’ and all that follows through 

12 ‘‘inventor.’’. 

13 (3) REQUIREMENTS FOR NONPROVISIONAL AP14 PLICATIONS.—Section 111(a) is amended— 

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

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

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

18 striking ‘‘AND OATH’’; and 

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

20 appears. 

21 (4) CONFORMING AMENDMENT.—The item re22 lating to section 115 in the table of sections for 

23 chapter 10 is amended to read as follows: 

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

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

25 118 is amended to read as follows: 


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1 ‘‘§ 118. Filing by other than inventor 

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

3 under an obligation to assign the invention may make an 

4 application for patent. A person who otherwise shows suf5 ficient proprietary interest in the matter may make an ap6 plication for patent on behalf of and as agent for the in7 ventor on proof of the pertinent facts and a showing that 

8 such action is appropriate to preserve the rights of the 

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

10 filed under this section by a person other than the inven11 tor, the patent shall be granted to the real party in inter12 est and upon such notice to the inventor as the Director 

13 considers to be sufficient.’’. 

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

15 (1) in the first paragraph—— 

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

18 and 

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

22 (2) in the second paragraph— 

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

24 inserting ‘‘(b) CONCLUSION.—The specifica25 tions’’; and 


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

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

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

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

6 (4) in the fourth paragraph, by striking ‘‘Sub7 ject to the following paragraph,’’ and inserting ‘‘(d) 

8 REFERENCE IN DEPENDENT FORMS.—Subject to 

9 subsection (e),’’; 

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

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

12 DEPENDENT FORM.—A claim’’; and 

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

15 A COMBINATION.—An element’’. 

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

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

18 (1) in the first paragraph— 

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

20 AWARD OF DAMAGES.— 

21 ‘‘(1) IN GENERAL.—Upon’’; 

22 (B) by aligning the remaining text accord23 ingly; and 

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


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1 ‘‘(2) RELATIONSHIP OF DAMAGES TO CON2 TRIBUTIONS OVER PRIOR ART.—The court shall con3 duct an analysis to ensure that a reasonable royalty 

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

5 value properly attributable to the patent’s specific 

6 contribution over the prior art. In a reasonable roy7 alty analysis, the court shall identify all factors rel8 evant to the determination of a reasonable royalty 

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

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

11 making the determination. The court shall exclude 

12 from the analysis the economic value properly attrib13 utable to the prior art, and other features or im14 provements, whether or not themselves patented, 

15 that contribute economic value to the infringing 

16 product or process. 

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

18 claimant shows that the patent’s specific contribu19 tion over the prior art is the predominant basis for 

20 market demand for an infringing product or process, 

21 damages may not be based upon the entire market 

22 value of that infringing product or process. 

23 ‘‘(4) OTHER FACTORS.—In determining dam24 ages, the court may also consider, or direct the jury 

25 to consider, the terms of any nonexclusive marketVerDate Aug 31 2005 01:54 Apr 21, 2007 Jkt 059200 PO 00000 Frm 00022 Fmt 6652 Sfmt 6201 E:\BILLS\S1145.IS S1145

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1 place licensing of the invention, where appropriate, 

2 as well as any other relevant factors under applica3 ble law.’’; 

4 (2) by amending the second undesignated para5 graph to read as follows: 

6 ‘‘(b) WILLFUL INFRINGEMENT .— 

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

8 determined that the infringer has willfully infringed 

9 a patent or patents may increase the damages up to 

10 three times the amount of damages found or as11 sessed under subsection (a), except that increased 

12 damages under this paragraph shall not apply to 

13 provisional rights under section 154(d). 

14 ‘‘(2) PERMITTED GROUNDS FOR WILLFUL15 NESS.—A court may find that an infringer has will16 fully infringed a patent only if the patent owner pre17 sents clear and convincing evidence that— 

18 ‘‘(A) after receiving written notice from 

19 the patentee— 

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

21 manner sufficient to give the infringer an 

22 objectively reasonable apprehension of suit 

23 on such patent, and 

24 ‘‘(ii) identifying with particularity 

25 each claim of the patent, each product or 


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1 process that the patent owner alleges in2 fringes the patent, and the relationship of 

3 such product or process to such claim, 

4 the infringer, after a reasonable opportunity to 

5 investigate, thereafter performed one or more of 

6 the alleged acts of infringement; 

7 ‘‘(B) the infringer intentionally copied the 

8 patented invention with knowledge that it was 

9 patented; or 

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

11 have infringed that patent, the infringer en12 gaged in conduct that was not colorably dif13 ferent from the conduct previously found to 

14 have infringed the patent, and which resulted in 

15 a separate finding of infringement of the same 

16 patent. 

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

18 court may not find that an infringer has willfully in19 fringed a patent under paragraph (2) for any period 

20 of time during which the infringer had an informed 

21 good faith belief that the patent was invalid or unen22 forceable, or would not be infringed by the conduct 

23 later shown to constitute infringement of the patent. 


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

2 meaning of subparagraph (A) may be established 

3 by— 

4 ‘‘(i) reasonable reliance on advice of coun5 sel; 

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

7 modify its conduct to avoid infringement once it 

8 had discovered the patent; or 

9 ‘‘(iii) other evidence a court may find suffi10 cient to establish such good faith belief. 

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

12 present evidence of advice of counsel is not relevant 

13 to a determination of willful infringement under 

14 paragraph (2). 

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

16 date on which a court determines that the patent in 

17 suit is not invalid, is enforceable, and has been in18 fringed by the infringer, a patentee may not plead 

19 and a court may not determine that an infringer has 

20 willfully infringed a patent. The court’s determina21 tion of an infringer’s willfulness shall be made with22 out a jury.’’; and 

23 (3) in the third undesignated paragraph, by 

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

25 TESTIMONY.—The court’’. 


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1 (b) DEFENSE TO INFRINGEMENT BASED ON EAR2 LIER INVENTOR.—Section 273 of title 35, United States 

3 Code, is amended— 

4 (1) in subsection (a)— 

5 (A) in paragraph (1)— 

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

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

8 inserting ‘‘review period; and’’; 

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

10 semicolon at the end and inserting a period; 

11 and 

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

13 (2) in subsection (b)— 

14 (A) in paragraph (1)— 

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

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

17 the effective filing date of such patent, 

18 and’’ and all that follows through the pe19 riod and inserting ‘‘and commercially used, 

20 or made substantial preparations for com21 mercial use of, the subject matter before 

22 the effective filing date of the claimed in23 vention.’’; 

24 (B) in paragraph (2)— 


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1 (i) by striking ‘‘The sale or other dis2 position of a useful end result produced by 

3 a patented method’’ and inserting ‘‘The 

4 sale or other disposition of subject matter 

5 that qualifies for the defense set forth in 

6 this section’’; and 

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

8 section with respect to that useful end re9 sult’’ and inserting ‘‘such defense’’; and 

10 (C) in paragraph (3)— 

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

12 (ii) by redesignating subparagraphs 

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

14 (B), respectively; 

15 (3) in paragraph (7), by striking ‘‘of the pat16 ent’’ and inserting ‘‘of the claimed invention’’; and 

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

18 ‘‘§ 273. Special defenses to and exemptions from in19 fringement’’. 

20 (c) TABLE OF SECTIONS.—The item relating to sec21 tion 273 in the table of sections for chapter 28 is amended 

22 to read as follows: 

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

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

24 this section shall apply to any civil action commenced on 

25 or after the date of enactment of this Act. 


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

2 ENHANCEMENTS. 

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

4 read as follows: 

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

6 files a request for reexamination under section 302, the 

7 Director shall determine whether a substantial new ques8 tion of patentability affecting any claim of the patent con9 cerned is raised by the request, with or without consider10 ation of other patents or printed publications. On the Di11 rector’s own initiative, and at any time, the Director may 

12 determine whether a substantial new question of patent13 ability is raised by patents and publications discovered by 

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

15 person other than the owner of the patent under section 

16 302 or section 311. The existence of a substantial new 

17 question of patentability is not precluded by the fact that 

18 a patent or printed publication was previously cited by or 

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

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

21 striking ‘‘or could have raised’’. 

22 (c) REEXAMINATION PROHIBITED AFTER DISTRICT

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

24 (1) in the subsection heading, by striking 

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

26 DECISION’’; and 


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

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

3 district court has been entered’’. 

4 (d) EFFECTIVE DATES.—Notwithstanding any other 

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

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

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

8 enactment of this Act from an original application filed 

9 on any date. 

10 (e) POST-GRANT OPPOSITION PROCEDURES.— 

11 (1) IN GENERAL.—Part III is amended by add12 ing at the end the following new chapter: 

13 ‘‘CHAPTER 32—POST-GRANT REVIEW 

14 PROCEDURES 

‘‘Sec. 

‘‘321. Petition for post-grant review. 

‘‘322. Timing and bases of petition. 

‘‘323. Requirements of petition. 

‘‘324. Prohibited filings. 

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

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

‘‘327. Patent owner response. 

‘‘328. Proof and evidentiary standards. 

‘‘329. Amendment of the patent. 

‘‘330. Decision of the Board. 

‘‘331. Effect of decision. 

‘‘332. Relationship to other pending proceedings. 

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

proceedings. 

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

‘‘335. Appeal. 

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

16 ‘‘Subject to sections 322, 324, 332, and 333, a per17 son who is not the patent owner may file with the Office 


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

2 review proceeding to cancel as unpatentable any claim of 

3 a patent on any ground that could be raised under para4 graph (2) or (3) of section 282(b) (relating to invalidity 

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

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

7 the proceeding, in such amounts as the Director deter8 mines to be reasonable. 

9 ‘‘§ 322. Timing and bases of petition 

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

11 this chapter pursuant to a cancellation petition filed under 

12 section 321 only if— 

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

14 months after the grant of the patent or issuance of 

15 a reissue patent, as the case may be; 

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

17 reason to believe that the continued existence of the 

18 challenged claim in the petition causes or is likely to 

19 cause the petitioner significant economic harm; or 

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

21 patent holder alleging infringement by the petitioner 

22 of the patent; or 

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

24 proceeding. 


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1 ‘‘§ 323. Requirements of petition 

2 ‘‘A cancellation petition filed under section 321 may 

3 be considered only if— 

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

5 the fee established by the Director under section 

6 321; 

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

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

10 for the cancellation, identifying each claim chal11 lenged and providing such information as the Direc12 tor may require by regulation, and includes copies of 

13 patents and printed publications that the cancella14 tion petitioner relies upon in support of the petition; 

15 and 

16 ‘‘(4) the petitioner provides copies of those doc17 uments to the patent owner or, if applicable, the 

18 designated representative of the patent owner. 

19 ‘‘§ 324. Prohibited filings 

20 ‘‘A post-grant review proceeding may not be insti21 tuted under paragraph (1), (2), or (3) of section 322 if 

22 the petition for cancellation requesting the proceeding 

23 identifies the same cancellation petitioner and the same 

24 patent as a previous petition for cancellation filed under 

25 the same paragraph of section 322. 


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1 ‘‘§ 325. Submission of additional information; show2 ing of sufficient grounds 

3 ‘‘The cancellation petitioner shall file such additional 

4 information with respect to the petition as the Director 

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

6 review proceeding to commence unless the Director deter7 mines that the information presented provides sufficient 

8 grounds to proceed. 

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

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

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

12 section 2(b)(2), establishing and governing post13 grant review proceedings under this chapter and 

14 their relationship to other proceedings under this 

15 title; 

16 ‘‘(2) prescribe regulations setting forth the 

17 standards for showings of substantial reason to be18 lieve and significant economic harm under section 

19 322(2) and sufficient grounds under section 325; 

20 ‘‘(3) prescribe regulations establishing proce21 dures for the submission of supplemental informa22 tion after the petition for cancellation is filed; and 

23 ‘‘(4) prescribe regulations setting forth proce24 dures for discovery of relevant evidence, including 

25 that such discovery shall be limited to evidence di26 rectly related to factual assertions advanced by eiVerDate Aug 31 2005 01:54 Apr 21, 2007 Jkt 059200 PO 00000 Frm 00032 Fmt 6652 Sfmt 6201 E:\BILLS\S1145.IS S1145

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1 ther party in the proceeding, and the procedures for 

2 obtaining such evidence shall be consistent with the 

3 purpose and nature of the proceeding. 

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

5 under subsection (a)(1)— 

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

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

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

9 proceeding is instituted under this chapter, except 

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

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

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

13 the Director; 

14 ‘‘(3) shall prescribe sanctions for abuse of dis15 covery, abuse of process, or any other improper use 

16 of the proceeding, such as to harass or to cause un17 necessary delay or unnecessary increase in the cost 

18 of the proceeding; 

19 ‘‘(4) may provide for protective orders gov20 erning the exchange and submission of confidential 

21 information; and 

22 ‘‘(5) shall ensure that any information sub23 mitted by the patent owner in support of any 

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1 able to the public as part of the prosecution history 

2 of the patent. 

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

4 under this section, the Director shall consider the effect 

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

6 the efficient administration of the Office. 

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

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

9 conduct each post-grant review proceeding authorized by 

10 the Director. 

11 ‘‘§ 327. Patent owner response 

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

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

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

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

16 The patent owner shall file with the response, through af17 fidavits or declarations, any additional factual evidence 

18 and expert opinions on which the patent owner relies in 

19 support of the response. 

20 ‘‘§ 328. Proof and evidentiary standards 

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

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

23 patent claim under this chapter. 

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

25 proposition under this chapter shall have the burden of 


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1 proving that proposition by a preponderance of the evi2 dence. 

3 ‘‘§ 329. Amendment of the patent 

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

5 petition for cancellation, the patent owner may file 1 mo6 tion to amend the patent in 1 or more of the following 

7 ways: 

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

9 ‘‘(2) For each challenged claim, propose a sub10 stitute claim. 

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

12 amend the patent other than the claims. 

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

14 amend may be permitted only for good cause shown. 

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

16 section may not enlarge the scope of the claims of the pat17 ent or introduce new matter. 

18 ‘‘§ 330. Decision of the Board 

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

20 not dismissed under this chapter, the Patent Trial and 

21 Appeal Board shall issue a final written decision with re22 spect to the patentability of any patent claim challenged 

23 and any new claim added under section 329. 


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1 ‘‘§ 331. Effect of decision 

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

3 Board issues a final decision under section 330 and the 

4 time for appeal has expired or any appeal proceeding has 

5 terminated, the Director shall issue and publish a certifi6 cate canceling any claim of the patent finally determined 

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

9 patentable. 

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

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

15 within the United States, or imported into the United 

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

17 substantial preparations therefore, prior to issuance of a 

18 certificate under subsection (a) of this section. 

19 ‘‘§ 332. Relationship to other pending proceedings 

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

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

22 manner in which any reexamination proceeding, reissue 

23 proceeding, interference proceeding (commenced before 

24 the effective date of the Patent Reform Act of 2007), deri25 vation proceeding, or post-grant review proceeding, that 

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


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1 proceed, including providing for stay, transfer, consolida2 tion, or termination of any such proceeding. 

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

4 future post-grant review proceedings 

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

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

7 1338 of title 28 establishing that the party has not sus8 tained its burden of proving the invalidity of any patent 

9 claim— 

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

11 privies of that party may not thereafter request a 

12 post-grant review proceeding on that patent claim on 

13 the basis of any grounds, under the provisions of 

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

15 party raised or had actual knowledge of; and 

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

17 a post-grant review proceeding previously requested 

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

19 basis of such grounds. 

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

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

22 330 is favorable to the patentability of any original or new 

23 claim of the patent challenged by the cancellation peti24 tioner, the cancellation petitioner may not thereafter, 


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1 based on any ground which the cancellation petitioner 

2 raised during the post-grant review proceeding— 

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

4 claim under chapter 31; 

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

6 with respect to such claim; 

7 ‘‘(3) request or pursue a post-grant review pro8 ceeding under this chapter with respect to such 

9 claim; or 

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

11 any civil action arising in whole or in part under sec12 tion 1338 of title 28. 

13 ‘‘(b) EXTENSION OF PROHIBITION.—If the final deci14 sion is the result of a petition for cancellation filed on the 

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

16 under this section shall extend to any ground which the 

17 cancellation petitioner raised during the post-grant review 

18 proceeding. 

19 ‘‘§ 335. Appeal 

20 ‘‘A party dissatisfied with the final determination of 

21 the Patent Trial and Appeal Board in a post-grant pro22 ceeding under this chapter may appeal the determination 

23 under sections 141 through 144. Any party to the post24 grant proceeding shall have the right to be a party to the 

25 appeal.’’. 


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1 (f) CONFORMING AMENDMENT.—The table of chap2 ters for part III is amended by adding at the end the fol3 lowing: 

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

4 (g) REGULATIONS AND EFFECTIVE DATE.— 

5 (1) REGULATIONS.—The Under Secretary of 

6 Commerce for Intellectual Property and Director of 

7 the United States Patent and Trademark Office (in 

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

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

10 of the enactment of this Act, issue regulations to 

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

12 as added by subsection (e) of this section 

13 (2) APPLICABILITY.—The amendments made 

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

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

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

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

18 before that date, a petition for cancellation under 

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

20 filed only if a circumstance described in paragraph 

21 (2), (3), or (4) of section 322 of title 35, United 

22 States Code, applies to the petition. 

23 (3) PENDING INTERFERENCES.—The Director 

24 shall determine the procedures under which inter25 ferences commenced before the effective date under 


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

2 such interference is to be dismissed without preju3 dice to the filing of a cancellation petition for a post4 grant opposition proceeding under chapter 32 of title 

5 35, United States Code, or is to proceed as if this 

6 Act had not been enacted. The Director shall include 

7 such procedures in regulations issued under para8 graph (1). 

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

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

11 Act) is further amended— 

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

13 partes reexamination under section 311’’; and 

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

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

16 party in interest requesting cancellation of any claim of 

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

18 the real party in interest.’’. 

19 (b) 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 Director, the Deputy Director, the Commissioner for 

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1 ministrative patent judges shall constitute the Patent 

2 Trial and Appeal Board. The administrative patent judges 

3 shall be persons of competent legal knowledge and sci4 entific ability who are appointed by the Director. Any ref5 erence in any Federal law, Executive order, rule, regula6 tion, or delegation of authority, or any document of or 

7 pertaining to the Board of Patent Appeals and Inter8 ferences is deemed to refer to the Patent Trial and Appeal 

9 Board. 

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

11 shall— 

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

13 adverse decisions of examiners upon application for 

14 patents; 

15 ‘‘(2) on written appeal of a patent owner, re16 view adverse decisions of examiners upon patents in 

17 reexamination proceedings under chapter 30; and 

18 ‘‘(3) determine priority and patentability of in19 vention in derivation proceedings under subsection 

20 135(a); and 

21 ‘‘(4) 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 


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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 SEC. 8. STUDY AND REPORT ON REEXAMINATION PRO8 CEEDINGS. 

9 The Under Secretary of Commerce for Intellectual 

10 Property and Director of the Patent and Trademark Of11 fice shall, not later than 3 years after the date of the en12 actment of this Act— 

13 (1) conduct a study of the effectiveness and ef14 ficiency of the different forms of proceedings avail15 able under title 35, United States Code, for the re16 examination of patents; and 

17 (2) submit to the Committees on the Judiciary 

18 of the House of Representatives and the Senate a 

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

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

21 any other recommendations the Director has with 

22 respect to patent reexamination proceedings. 

23 SEC. 9. SUBMISSIONS BY THIRD PARTIES AND OTHER 

24 QUALITY ENHANCEMENTS. 

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


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

2 (2) in subparagraph (A)— 

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

4 inserting ‘‘An application’’; and 

5 (B) by redesignating clauses (i) through 

6 (iv) as subparagraphs (A) through (D), respec7 tively. 

8 (b) PREISSUANCE SUBMISSIONS BY THIRD PAR9 TIES.—Section 122 is amended by adding at the end the 

10 following: 

11 ‘‘(e) PREISSUANCE SUBMISSIONS BY THIRD PAR12 TIES.— 

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

14 consideration and inclusion in the record of a patent 

15 application, any patent, published patent application 

16 or other publication of potential relevance to the ex17 amination of the application, if such submission is 

18 made in writing before the earlier of— 

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

20 section 151 is mailed in the application for pat21 ent; or 

22 ‘‘(B) either— 

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

24 the application for patent is published 

25 under section 122, or 


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

2 under section 132 of any claim by the ex3 aminer during the examination of the ap4 plication for patent, 

5 whichever occurs later. 

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

7 under paragraph (1) shall— 

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

9 asserted relevance of each submitted document; 

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

11 Director may prescribe; and 

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

13 affirming that the submission was made in 

14 compliance with this section.’’. 

15 SEC. 10. VENUE AND JURISDICTION. 

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

17 title 28, United States Code, is amended by striking sub18 section (b) and inserting the following: 

19 ‘‘(b) Any civil action arising under any Act of Con20 gress relating to patents, other than an action for declara21 tory judgment or an action seeking review of a decision 

22 of the Patent Trial and Appeal Board under chapter 13 

23 of title 35, may be brought only— 

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

25 resides; or 


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

2 has committed acts of infringement and has a reg3 ular and established place of business. 

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

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

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

7 the corporation has its principal place of business or in 

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

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

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

11 by adding at the end the following: 

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

13 or decree determining construction of claims in a 

14 civil action for patent infringement under section 

15 271 of title 35. 

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

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

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

19 paragraph shall be stayed during pendency of the ap20 peal.’’. 

21 SEC. 11. REGULATORY AUTHORITY. 

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

23 following: 

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

25 the authority conferred by other provisions of this 


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1 title, the Director may promulgate such rules, regu2 lations, and orders that the Director determines ap3 propriate to carry out the provisions of this title or 

4 any other law applicable to the United States Patent 

5 and Trademark Office or that the Director deter6 mines necessary to govern the operation and organi7 zation of the Office.’’. 

8 SEC. 12. TECHNICAL AMENDMENTS. 

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

10 (1) in the first paragraph, by striking 

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

13 (2) in the second paragraph, by striking 

14 ‘‘If a joint inventor’’ and inserting ‘‘(b) OMIT15 TED INVENTOR.—If a joint inventor’’; and 

16 (3) in the third paragraph, by striking 

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

18 ERRORS IN APPLICATION.—Whenever’’. 

19 (b) FILING OF APPLICATION IN FOREIGN COUN20 TRY.—Section 184 is amended— 

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

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

23 COUNTRY.—Except when’’; 


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•S 1145 IS

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

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

3 term’’; and 

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

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

7 scope’’. 

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

9 is amended— 

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

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

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

14 PATENTS.—The Director’’; 

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

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

17 THIS TITLE.—The provisions’’; and 

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

20 ENLARGING SCOPE OF CLAIMS.—No reissued pat21 ent’’. 

22 (d) EFFECT OF REISSUE.—Section 253 is amend23 ed— 


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•S 1145 IS

1 (1) in the first paragraph, by striking ‘‘When2 ever’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; 

3 and 

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

5 like manner’’ and inserting ‘‘(b) ADDITIONAL DIS6 CLAIMER OR DEDICATION.—In the manner set forth 

7 in subsection (a),’’. 

8 (e) CORRECTION OF NAMED INVENTOR.—Section 

9 256 is amended— 

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

12 and 

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

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

15 CORRECTED.—The error’’. 

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

17 amended— 

18 (1) in the first undesignated paragraph, by 

19 striking ‘‘A patent’’ and inserting ‘‘(a) IN GEN20 ERAL.—A patent’’; 

21 (2) in the second undesignated paragraph, by 

22 striking ‘‘The following’’ and inserting ‘‘(b) DE23 FENSES.—The following’’; and 

24 (3) in the third undesignated paragraph, by 

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


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•S 1145 IS

1 ACTIONS; ACTIONS DURING EXTENSION OF PATENT

2 TERM.—In actions’’. 

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

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

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

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

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

8 date. 

9 (b) CONTINUITY OF INTENT UNDER THE CREATE

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

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

12 done with the same intent to promote joint research activi13 ties that was expressed, including in the legislative history, 

14 through the enactment of the Cooperative Research and 

15 Technology Enhancement Act of 2004 (Public Law 108– 

16 453; the ‘‘CREATE Act’’), the amendments of which are 

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

18 Patent and Trademark Office shall administer section 

19 102(b)(3) of title 35, United States Code, in a manner 

20 consistent with the legislative history of the CREATE Act 

21 that was relevant to its administration by the Patent and 

22 Trademark Office. 

Æ 


bajohnson on PROD1PC77 with BILLS