II 

Calendar No. 563 

110TH CONGRESS 

2D SESSION S. 1145 

[Report No. 110–259] 

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, Mr. 

WHITEHOUSE, Mr. CRAIG, Mr. CRAPO, Mr. BENNETT, Mr. SALAZAR, and 

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

JANUARY 24, 2008 

Reported by Mr. LEAHY, with an amendment 

[Strike out all after the enacting clause and insert the part printed in italic] 

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’’. 


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

2 this Act is as follows: 

Sec. 1. Short title; table of contents. 

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

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

Sec. 4. Inventor’s oath or declaration. 

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

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

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

Sec. 8. Study and report on reexamination proceedings. 

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

Sec. 10. Venue and jurisdiction. 

Sec. 11. Regulatory authority. 

Sec. 12. Technical amendments. 

Sec. 13. Effective date; rule of construction. 

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

4 Whenever in this Act a section or other provision is 

5 amended or repealed, that amendment or repeal shall be 

6 considered to be made to that section or other provision 

7 of title 35, United States Code. 

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

9 (a) DEFINITIONS.—Section 100 is amended by add10 ing at the end the following: 

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

12 a joint invention, the individuals collectively who invented 

13 or discovered the subject matter of the invention. 

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

15 any 1 of the individuals who invented or discovered the 

16 subject matter of a joint invention. 

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

18 is— 


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1 ‘‘(1) the filing date of the patent or the applica2 tion for patent containing the claim to the invention; 

3 or 

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

5 entitled to a right of priority of any other applica6 tion under section 119, 365(a), or 365(b) or to the 

7 benefit of an earlier filing date in the United States 

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

9 the earliest such application in which the claimed in10 vention is disclosed in the manner provided by the 

11 first paragraph of section 112. 

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

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

14 for a patent. 

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

16 resulting from the collaboration of inventive endeavors of 

17 2 or more persons working toward the same end and pro18 ducing an invention by their collective efforts.’’. 

19 (b) CONDITIONS FOR PATENTABILITY.— 

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

21 read as follows: 

22 ‘‘§ 102. Conditions for patentability; novelty 

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

24 invention may not be obtained if— 


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1 ‘‘(1) the claimed invention was patented, de2 scribed in a printed publication, or in public use or 

3 on sale— 

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

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

7 filing date of the claimed invention, other than 

8 through disclosures made by the inventor or a 

9 joint inventor or by others who obtained the 

10 subject matter disclosed directly or indirectly 

11 from the inventor or a joint inventor; or 

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

13 patent issued under section 151, or in an application 

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

16 the case may be, names another inventor and was 

17 effectively filed before the effective filing date of the 

18 claimed invention. 

19 ‘‘(b) EXCEPTIONS.— 

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

22 as prior art under subparagraph (B) of subsection 

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

24 under that subparagraph if the subject matter had, 

25 before the applicable date under such subparagraph 


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

2 joint inventor or others who obtained the subject 

3 matter disclosed directly or indirectly from the in4 ventor, joint inventor, or applicant. 

5 ‘‘(2) DERIVATION AND COMMON ASSIGNMENT

6 EXCEPTIONS.—Subject matter that would otherwise 

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

8 after taking into account the exception under para9 graph (1), shall not be prior art to a claimed inven10 tion if— 

11 ‘‘(A) the subject matter was obtained di12 rectly or indirectly from the inventor or a joint 

13 inventor; or 

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

15 invention, not later than the effective filing date 

16 of the claimed invention, were owned by the 

17 same person or subject to an obligation of as18 signment to the same person. 

19 ‘‘(3) JOINT RESEARCH AGREEMENT EXCEP20 TION.— 

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

22 claimed invention shall be deemed to have been 

23 owned by the same person or subject to an obli24 gation of assignment to the same person in ap25 plying the provisions of paragraph (2) if— 


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1 ‘‘(i) the claimed invention was made 

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

4 before the effective filing date of the 

5 claimed invention; 

6 ‘‘(ii) the claimed invention was made 

7 as a result of activities undertaken within 

8 the scope of the joint research agreement; 

9 and 

10 ‘‘(iii) the application for patent for 

11 the claimed invention discloses or is 

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

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

15 the term ‘joint research agreement’ means a 

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

18 entities for the performance of experimental, 

19 developmental, or research work in the field of 

20 the claimed invention. 

21 ‘‘(4) PATENTS AND PUBLISHED APPLICATIONS

22 EFFECTIVELY FILED.—A patent or application for 

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

24 with respect to any subject matter described in the 

25 patent or application— 


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

2 the application for patent; or 

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

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

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

8 filed applications for patent, as of the filing 

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

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

13 chapter 10 is amended to read as follows: 

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

14 (c) CONDITIONS FOR PATENTABILITY; NON-OBVIOUS

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

16 follows: 

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

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

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


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1 the claimed invention pertains. Patentability shall not be 

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

3 (d) REPEAL OF REQUIREMENTS FOR INVENTIONS

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

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

6 repealed. 

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

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

10 relating to that section in the table of sections for 

11 chapter 14, are repealed. 

12 (2) REMOVAL OF CROSS REFERENCES.—Section 

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

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

15 135’’. 

16 (f) EARLIER FILING DATE FOR INVENTOR AND

17 JOINT INVENTOR.—Section 120 is amended by striking 

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

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

20 (g) CONFORMING AMENDMENTS.— 

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

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

24 (2) LIMITATION ON REMEDIES.—Section 

25 287(c)(4) is amended by striking ‘‘the earliest effecVerDate Aug 31 2005 01:12 Jan 25, 2008 Jkt 069200 PO 00000 Frm 00008 Fmt 6652 Sfmt 6401 E:\BILLS\S1145.RS S1145

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

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

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

5 363 is amended by striking ‘‘except as otherwise 

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

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

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

10 154(d)’’. 

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

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

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

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

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

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

18 prior to such filing’’. 

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

21 (A) in paragraph (2)— 

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

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

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


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

2 that 2-year period’’; and 

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

4 inserting ‘‘that 1-year’’; and 

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

6 statutory bar date that may occur under this 

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

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

10 (h) REPEAL OF INTERFERING PATENT REMEDIES.— 

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

12 table of sections for chapter 29, are repealed. 

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

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

16 ‘‘(1) INSTITUTION OF DERIVATION PRO17 CEEDING.—An applicant may request initiation of a 

18 derivation proceeding to determine the right of the 

19 applicant to a patent by filing a request which sets 

20 forth with particularity the basis for finding that an 

21 earlier applicant derived the claimed invention from 

22 the applicant requesting the proceeding and, without 

23 authorization, filed an application claiming such in24 vention. Any such request may only be made within 

25 12 months after the date of first publication of an 


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1 application containing a claim that is the same or is 

2 substantially the same as the claimed invention, 

3 must be made under oath, and must be supported 

4 by substantial evidence. Whenever the Director de5 termines that patents or applications for patent 

6 naming different individuals as the inventor interfere 

7 with one another because of a dispute over the right 

8 to patent under section 101, the Director shall insti9 tute a derivation proceeding for the purpose of de10 termining which applicant is entitled to a patent. 

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

12 subsection may not be commenced unless the party 

13 requesting the proceeding has filed an application 

14 that was filed not later than 18 months after the ef15 fective filing date of the application or patent 

16 deemed to interfere with the subsequent application 

17 or patent. 

18 ‘‘(3) DETERMINATION BY PATENT TRIAL AND

19 APPEAL BOARD.—In any proceeding under this sub20 section, the Patent Trial and Appeal Board— 

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

22 right to patent; 

23 ‘‘(B) in appropriate circumstances, may 

24 correct the naming of the inventor in any appli25 cation or patent at issue; and 


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

2 right to patent. 

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

4 may defer action on a request to initiate a derivation 

5 proceeding until 3 months after the date on which 

6 the Director issues a patent to the applicant that 

7 filed the earlier application. 

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

9 decision of the Patent Trial and Appeal Board, if 

10 adverse to the claim of an applicant, shall constitute 

11 the final refusal by the Patent and Trademark Of12 fice on the claims involved. The Director may issue 

13 a patent to an applicant who is determined by the 

14 Patent Trial and Appeal Board to have the right to 

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

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

17 the decision has been or can be taken or had, con18 stitute cancellation of the claims involved in the pat19 ent, and notice of such cancellation shall be endorsed 

20 on copies of the patent distributed after such can21 cellation by the Patent and Trademark Office.’’. 

22 (j) ELIMINATION OF REFERENCES TO INTER23 FERENCES.—(1) Sections 6, 41, 134, 141, 145, 146, 154, 

24 305, and 314 are each amended by striking ‘‘Board of 


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1 Patent Appeals and Interferences’’ each place it appears 

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

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

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

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

6 and 

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

8 place it appears and inserting ‘‘derivation pro9 ceeding’’. 

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

11 to read as follows: 

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

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

14 to read as follows: 

15 ‘‘§ 135. Derivation proceedings’’. 

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

17 to read as follows: 

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

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

20 ‘‘INTERFERENCES’’ and inserting ‘‘DERIVATION PRO21 CEEDINGS’’. 

22 (7) The item relating to section 6 in the table of sec23 tions for chapter 1 is amended to read as follows: 

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


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

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

3 as follows: 

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

‘‘135. Derivation proceedings.’’. 

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

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

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

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

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

8 follows: 

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

10 the United States Patent and Trademark Office 

11 with respect to patent applications, derivation 

12 proceedings, and post-grant review proceedings, 

13 at the instance of an applicant for a patent or 

14 any party to a patent interference (commenced 

15 before the effective date of the Patent Reform 

16 Act of 2007), derivation proceeding, or post17 grant review proceeding, and any such appeal 

18 shall waive any right of such applicant or party 

19 to proceed under section 145 or 146 of title 

20 35;’’. 

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

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


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

2 read as follows: 

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

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

5 DECLARATION.—An application for patent that is filed 

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

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

8 invention for which an application has previously been 

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

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

11 claimed invention in the application. Except as otherwise 

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

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

14 for patent shall execute an oath or declaration in connec15 tion with the application. 

16 ‘‘(b) REQUIRED STATEMENTS.—An oath or declara17 tion under subsection (a) shall contain statements that— 

18 ‘‘(1) the application was made or was author19 ized to be made by the affiant or declarant; and 

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

21 to be the original inventor or an original joint inven22 tor of a claimed invention in the application. 

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

24 may specify additional information relating to the inventor 


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

2 oath or declaration under subsection (a). 

3 ‘‘(d) SUBSTITUTE STATEMENT.— 

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

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

6 patent may provide a substitute statement under the 

7 circumstances described in paragraph (2) and such 

8 additional circumstances that the Director may 

9 specify by regulation. 

10 ‘‘(2) PERMITTED CIRCUMSTANCES.—A sub11 stitute statement under paragraph (1) is permitted 

12 with respect to any individual who— 

13 ‘‘(A) is unable to file the oath or declara14 tion under subsection (a) because the indi15 vidual— 

16 ‘‘(i) is deceased; 

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

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

19 diligent effort; or 

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

21 invention but has refused to make the oath or 

22 declaration required under subsection (a). 

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

24 this subsection shall— 


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

2 whom the statement applies; 

3 ‘‘(B) set forth the circumstances rep4 resenting the permitted basis for the filing of 

5 the substitute statement in lieu of the oath or 

6 declaration under subsection (a); and 

7 ‘‘(C) contain any additional information, 

8 including any showing, required by the Direc9 tor. 

10 ‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGN11 MENT OF RECORD.—An individual who is under an obliga12 tion of assignment of an application for patent may in13 clude the required statements under subsections (b) and 

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

15 of filing such statements separately. 

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

17 section 151 may be provided to an applicant for patent 

18 only if the applicant for patent has filed each required 

19 oath or declaration under subsection (a) or has filed a sub20 stitute statement under subsection (d) or recorded an as21 signment meeting the requirements of subsection (e). 

22 ‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE23 QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.— 

24 The requirements under this section shall not apply to an 

25 individual with respect to an application for patent in 


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

2 inventor and that claims the benefit under section 120 or 

3 365(c) of the filing of an earlier-filed application, if— 

4 ‘‘(1) an oath or declaration meeting the require5 ments of subsection (a) was executed by the indi6 vidual and was filed in connection with the earlier7 filed application; 

8 ‘‘(2) a substitute statement meeting the re9 quirements of subsection (d) was filed in the earlier 

10 filed application with respect to the individual; or 

11 ‘‘(3) an assignment meeting the requirements 

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

13 earlier-filed application by the individual and was re14 corded in connection with the earlier-filed applica15 tion. 

16 ‘‘(h) SUPPLEMENTAL AND CORRECTED STATE17 MENTS; FILING ADDITIONAL STATEMENTS.— 

18 ‘‘(1) IN GENERAL.—Any person making a state19 ment required under this section may withdraw, re20 place, or otherwise correct the statement at any 

21 time. If a change is made in the naming of the in22 ventor requiring the filing of 1 or more additional 

23 statements under this section, the Director shall es24 tablish regulations under which such additional 

25 statements may be filed. 


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1 ‘‘(2) SUPPLEMENTAL STATEMENTS NOT RE2 QUIRED.—If an individual has executed an oath or 

3 declaration under subsection (a) or an assignment 

4 meeting the requirements of subsection (e) with re5 spect to an application for patent, the Director may 

6 not thereafter require that individual to make any 

7 additional oath, declaration, or other statement 

8 equivalent to those required by this section in con9 nection with the application for patent or any patent 

10 issuing thereon. 

11 ‘‘(3) SAVINGS CLAUSE.—No patent shall be in12 valid or unenforceable based upon the failure to 

13 comply with a requirement under this section if the 

14 failure is remedied as provided under paragraph 

15 (1).’’. 

16 (2) RELATIONSHIP TO DIVISIONAL APPLICA17 TIONS.—Section 121 is amended by striking ‘‘If a 

18 divisional application’’ and all that follows through 

19 ‘‘inventor.’’. 

20 (3) REQUIREMENTS FOR NONPROVISIONAL AP21 PLICATIONS.—Section 111(a) is amended— 

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

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

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

25 striking ‘‘AND OATH’’; and 


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

2 appears. 

3 (4) CONFORMING AMENDMENT.—The item re4 lating to section 115 in the table of sections for 

5 chapter 10 is amended to read as follows: 

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

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

7 118 is amended to read as follows: 

8 ‘‘§ 118. Filing by other than inventor 

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

10 under an obligation to assign the invention may make an 

11 application for patent. A person who otherwise shows suf12 ficient proprietary interest in the matter may make an ap13 plication for patent on behalf of and as agent for the in14 ventor on proof of the pertinent facts and a showing that 

15 such action is appropriate to preserve the rights of the 

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

17 filed under this section by a person other than the inven18 tor, the patent shall be granted to the real party in inter19 est and upon such notice to the inventor as the Director 

20 considers to be sufficient.’’. 

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

22 (1) in the first paragraph—— 

23 (A) by striking ‘‘The specification’’ and in24 serting ‘‘(a) IN GENERAL.—The specification’’; 

25 and 


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1 (B) by striking ‘‘of carrying out his inven2 tion’’ and inserting ‘‘or joint inventor of car3 rying out the invention’’; and 

4 (2) in the second paragraph— 

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

6 inserting ‘‘(b) CONCLUSION.—The specifica7 tions’’; and 

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

9 invention’’ and inserting ‘‘inventor or a joint in10 ventor regards as the invention’’; 

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

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

13 (4) in the fourth paragraph, by striking ‘‘Sub14 ject to the following paragraph,’’ and inserting ‘‘(d) 

15 REFERENCE IN DEPENDENT FORMS.—Subject to 

16 subsection (e),’’; 

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

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

19 DEPENDENT FORM.—A claim’’; and 

20 (6) in the last paragraph, by striking ‘‘An ele21 ment’’ and inserting ‘‘(f) ELEMENT IN CLAIM FOR

22 A COMBINATION.—An element’’. 

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

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

25 (1) in the first paragraph— 


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

2 AWARD OF DAMAGES.— 

3 ‘‘(1) IN GENERAL.—Upon’’; 

4 (B) by aligning the remaining text accord5 ingly; and 

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

7 ‘‘(2) RELATIONSHIP OF DAMAGES TO CON8 TRIBUTIONS OVER PRIOR ART.—The court shall con9 duct an analysis to ensure that a reasonable royalty 

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

11 value properly attributable to the patent’s specific 

12 contribution over the prior art. In a reasonable roy13 alty analysis, the court shall identify all factors rel14 evant to the determination of a reasonable royalty 

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

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

17 making the determination. The court shall exclude 

18 from the analysis the economic value properly attrib19 utable to the prior art, and other features or im20 provements, whether or not themselves patented, 

21 that contribute economic value to the infringing 

22 product or process. 

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

24 claimant shows that the patent’s specific contribu25 tion over the prior art is the predominant basis for 


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1 market demand for an infringing product or process, 

2 damages may not be based upon the entire market 

3 value of that infringing product or process. 

4 ‘‘(4) OTHER FACTORS.—In determining dam5 ages, the court may also consider, or direct the jury 

6 to consider, the terms of any nonexclusive market7 place licensing of the invention, where appropriate, 

8 as well as any other relevant factors under applica9 ble law.’’; 

10 (2) by amending the second undesignated para11 graph to read as follows: 

12 ‘‘(b) WILLFUL INFRINGEMENT .— 

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

14 determined that the infringer has willfully infringed 

15 a patent or patents may increase the damages up to 

16 three times the amount of damages found or as17 sessed under subsection (a), except that increased 

18 damages under this paragraph shall not apply to 

19 provisional rights under section 154(d). 

20 ‘‘(2) PERMITTED GROUNDS FOR WILLFUL21 NESS.—A court may find that an infringer has will22 fully infringed a patent only if the patent owner pre23 sents clear and convincing evidence that— 

24 ‘‘(A) after receiving written notice from 

25 the patentee— 


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

2 manner sufficient to give the infringer an 

3 objectively reasonable apprehension of suit 

4 on such patent, and 

5 ‘‘(ii) identifying with particularity 

6 each claim of the patent, each product or 

7 process that the patent owner alleges in8 fringes the patent, and the relationship of 

9 such product or process to such claim, 

10 the infringer, after a reasonable opportunity to 

11 investigate, thereafter performed one or more of 

12 the alleged acts of infringement; 

13 ‘‘(B) the infringer intentionally copied the 

14 patented invention with knowledge that it was 

15 patented; or 

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

17 have infringed that patent, the infringer en18 gaged in conduct that was not colorably dif19 ferent from the conduct previously found to 

20 have infringed the patent, and which resulted in 

21 a separate finding of infringement of the same 

22 patent. 

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

24 court may not find that an infringer has willfully in25 fringed a patent under paragraph (2) for any period 


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1 of time during which the infringer had an informed 

2 good faith belief that the patent was invalid or unen3 forceable, or would not be infringed by the conduct 

4 later shown to constitute infringement of the patent. 

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

6 meaning of subparagraph (A) may be established 

7 by— 

8 ‘‘(i) reasonable reliance on advice of coun9 sel; 

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

11 modify its conduct to avoid infringement once it 

12 had discovered the patent; or 

13 ‘‘(iii) other evidence a court may find suffi14 cient to establish such good faith belief. 

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

16 present evidence of advice of counsel is not relevant 

17 to a determination of willful infringement under 

18 paragraph (2). 

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

20 date on which a court determines that the patent in 

21 suit is not invalid, is enforceable, and has been in22 fringed by the infringer, a patentee may not plead 

23 and a court may not determine that an infringer has 

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1 tion of an infringer’s willfulness shall be made with2 out a jury.’’; and 

3 (3) in the third undesignated paragraph, by 

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

5 TESTIMONY.—The court’’. 

6 (b) DEFENSE TO INFRINGEMENT BASED ON EAR7 LIER INVENTOR.—Section 273 of title 35, United States 

8 Code, is amended— 

9 (1) in subsection (a)— 

10 (A) in paragraph (1)— 

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

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

13 inserting ‘‘review period; and’’; 

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

15 semicolon at the end and inserting a period; 

16 and 

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

18 (2) in subsection (b)— 

19 (A) in paragraph (1)— 

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

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

22 the effective filing date of such patent, 

23 and’’ and all that follows through the pe24 riod and inserting ‘‘and commercially used, 

25 or made substantial preparations for comVerDate Aug 31 2005 01:12 Jan 25, 2008 Jkt 069200 PO 00000 Frm 00026 Fmt 6652 Sfmt 6401 E:\BILLS\S1145.RS S1145

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1 mercial use of, the subject matter before 

2 the effective filing date of the claimed in3 vention.’’; 

4 (B) in paragraph (2)— 

5 (i) by striking ‘‘The sale or other dis6 position of a useful end result produced by 

7 a patented method’’ and inserting ‘‘The 

8 sale or other disposition of subject matter 

9 that qualifies for the defense set forth in 

10 this section’’; and 

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

12 section with respect to that useful end re13 sult’’ and inserting ‘‘such defense’’; and 

14 (C) in paragraph (3)— 

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

16 (ii) by redesignating subparagraphs 

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

18 (B), respectively; 

19 (3) in paragraph (7), by striking ‘‘of the pat20 ent’’ and inserting ‘‘of the claimed invention’’; and 

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


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1 ‘‘§ 273. Special defenses to and exemptions from in2 fringement’’. 

3 (c) TABLE OF SECTIONS.—The item relating to sec4 tion 273 in the table of sections for chapter 28 is amended 

5 to read as follows: 

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

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

7 this section shall apply to any civil action commenced on 

8 or after the date of enactment of this Act. 

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

10 ENHANCEMENTS. 

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

12 read as follows: 

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

14 files a request for reexamination under section 302, the 

15 Director shall determine whether a substantial new ques16 tion of patentability affecting any claim of the patent con17 cerned is raised by the request, with or without consider18 ation of other patents or printed publications. On the Di19 rector’s own initiative, and at any time, the Director may 

20 determine whether a substantial new question of patent21 ability is raised by patents and publications discovered by 

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

23 person other than the owner of the patent under section 

24 302 or section 311. The existence of a substantial new 

25 question of patentability is not precluded by the fact that 


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1 a patent or printed publication was previously cited by or 

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

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

4 striking ‘‘or could have raised’’. 

5 (c) REEXAMINATION PROHIBITED AFTER DISTRICT

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

7 (1) in the subsection heading, by striking 

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

9 DECISION’’; and 

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

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

12 district court has been entered’’. 

13 (d) EFFECTIVE DATES.—Notwithstanding any other 

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

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

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

17 enactment of this Act from an original application filed 

18 on any date. 

19 (e) POST-GRANT OPPOSITION PROCEDURES.— 

20 (1) IN GENERAL.—Part III is amended by add21 ing at the end the following new chapter: 

22 ‘‘CHAPTER 32—POST-GRANT REVIEW 

23 PROCEDURES 

‘‘Sec. 

‘‘321. Petition for post-grant review. 

‘‘322. Timing and bases of petition. 

‘‘323. Requirements of petition. 

‘‘324. Prohibited filings. 


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‘‘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. 

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

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

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

5 review proceeding to cancel as unpatentable any claim of 

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

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

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

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

12 ‘‘§ 322. Timing and bases of petition 

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

14 this chapter pursuant to a cancellation petition filed under 

15 section 321 only if— 

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

17 months after the grant of the patent or issuance of 

18 a reissue patent, as the case may be; 

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

20 reason to believe that the continued existence of the 


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1 challenged claim in the petition causes or is likely to 

2 cause the petitioner significant economic harm; or 

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

4 patent holder alleging infringement by the petitioner 

5 of the patent; or 

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

7 proceeding. 

8 ‘‘§ 323. Requirements of petition 

9 ‘‘A cancellation petition filed under section 321 may 

10 be considered only if— 

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

12 the fee established by the Director under section 

13 321; 

14 ‘‘(2) the petition identifies the cancellation peti15 tioner; and 

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

17 for the cancellation, identifying each claim chal18 lenged and providing such information as the Direc19 tor may require by regulation, and includes copies of 

20 patents and printed publications that the cancella21 tion petitioner relies upon in support of the petition; 

22 and 

23 ‘‘(4) the petitioner provides copies of those doc24 uments to the patent owner or, if applicable, the 

25 designated representative of the patent owner. 


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1 ‘‘§ 324. Prohibited filings 

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

4 the petition for cancellation requesting the proceeding 

5 identifies the same cancellation petitioner and the same 

6 patent as a previous petition for cancellation filed under 

7 the same paragraph of section 322. 

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

10 ‘‘The cancellation petitioner shall file such additional 

11 information with respect to the petition as the Director 

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

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

15 grounds to proceed. 

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

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

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

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

21 their relationship to other proceedings under this 

22 title; 

23 ‘‘(2) prescribe regulations setting forth the 

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

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


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

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

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

9 obtaining such evidence shall be consistent with the 

10 purpose and nature of the proceeding. 

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

12 under subsection (a)(1)— 

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

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

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

16 proceeding is instituted under this chapter, except 

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

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

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

20 the Director; 

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

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

25 of the proceeding; 


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

3 information; and 

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

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

8 of the patent. 

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

10 under this section, the Director shall consider the effect 

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

12 the efficient administration of the Office. 

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

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

15 conduct each post-grant review proceeding authorized by 

16 the Director. 

17 ‘‘§ 327. Patent owner response 

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

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

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

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

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

24 and expert opinions on which the patent owner relies in 

25 support of the response. 


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1 ‘‘§ 328. Proof and evidentiary standards 

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

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

4 patent claim under this chapter. 

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

6 proposition under this chapter shall have the burden of 

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

9 ‘‘§ 329. Amendment of the patent 

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

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

13 ways: 

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

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

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

18 amend the patent other than the claims. 

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

20 amend may be permitted only for good cause shown. 

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

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

24 ‘‘§ 330. Decision of the Board 

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

26 not dismissed under this chapter, the Patent Trial and 


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

3 and any new claim added under section 329. 

4 ‘‘§ 331. Effect of decision 

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

6 Board issues a final decision under section 330 and the 

7 time for appeal has expired or any appeal proceeding has 

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

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

12 patentable. 

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

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

18 within the United States, or imported into the United 

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

20 substantial preparations therefore, prior to issuance of a 

21 certificate under subsection (a) of this section. 

22 ‘‘§ 332. Relationship to other pending proceedings 

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

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

25 manner in which any reexamination proceeding, reissue 


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1 proceeding, interference proceeding (commenced before 

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

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

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

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

8 future post-grant review proceedings 

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

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

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

13 claim— 

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

15 privies of that party may not thereafter request a 

16 post-grant review proceeding on that patent claim on 

17 the basis of any grounds, under the provisions of 

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

19 party raised or had actual knowledge of; and 

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

21 a post-grant review proceeding previously requested 

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

23 basis of such grounds. 


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

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

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

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

6 based on any ground which the cancellation petitioner 

7 raised during the post-grant review proceeding— 

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

9 claim under chapter 31; 

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

11 with respect to such claim; 

12 ‘‘(3) request or pursue a post-grant review pro13 ceeding under this chapter with respect to such 

14 claim; or 

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

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

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

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

21 under this section shall extend to any ground which the 

22 cancellation petitioner raised during the post-grant review 

23 proceeding. 

24 ‘‘§ 335. Appeal 

25 ‘‘A party dissatisfied with the final determination of 

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1 ceeding under this chapter may appeal the determination 

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

4 appeal.’’. 

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

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

8 (g) REGULATIONS AND EFFECTIVE DATE.— 

9 (1) REGULATIONS.—The Under Secretary of 

10 Commerce for Intellectual Property and Director of 

11 the United States Patent and Trademark Office (in 

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

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

14 of the enactment of this Act, issue regulations to 

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

16 as added by subsection (e) of this section 

17 (2) APPLICABILITY.—The amendments made 

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

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

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

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

22 before that date, a petition for cancellation under 

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

24 filed only if a circumstance described in paragraph 


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

2 States Code, applies to the petition. 

3 (3) PENDING INTERFERENCES.—The Director 

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

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

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

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

11 Act had not been enacted. The Director shall include 

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

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

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

16 Act) is further amended— 

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

18 partes reexamination under section 311’’; and 

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

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

21 party in interest requesting cancellation of any claim of 

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

23 the real party in interest.’’. 

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

25 is amended to read as follows: 


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1 ‘‘§ 6. Patent Trial and Appeal Board 

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

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

4 The Director, the Deputy Director, the Commissioner for 

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

7 Trial and Appeal Board. The administrative patent judges 

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

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

14 Board. 

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

16 shall— 

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

18 adverse decisions of examiners upon application for 

19 patents; 

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

22 reexamination proceedings under chapter 30; and 

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

25 135(a); and 


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1 ‘‘(4) conduct post-grant opposition proceedings 

2 under chapter 32. 

3 Each appeal and derivation proceeding shall be heard by 

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

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

6 Trial and Appeal Board may grant rehearings. The Direc7 tor shall assign each post-grant review proceeding to a 

8 panel of 3 administrative patent judges. Once assigned, 

9 each such panel of administrative patent judges shall have 

10 the responsibilities under chapter 32 in connection with 

11 post-grant review proceedings.’’. 

12 SEC. 8. STUDY AND REPORT ON REEXAMINATION PRO13 CEEDINGS. 

14 The Under Secretary of Commerce for Intellectual 

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

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

22 (2) submit to the Committees on the Judiciary 

23 of the House of Representatives and the Senate a 

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

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


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1 any other recommendations the Director has with 

2 respect to patent reexamination proceedings. 

3 SEC. 9. SUBMISSIONS BY THIRD PARTIES AND OTHER 

4 QUALITY ENHANCEMENTS. 

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

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

7 (2) in subparagraph (A)— 

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

9 inserting ‘‘An application’’; and 

10 (B) by redesignating clauses (i) through 

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

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

15 following: 

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

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

19 consideration and inclusion in the record of a patent 

20 application, any patent, published patent application 

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

23 made in writing before the earlier of— 


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

2 section 151 is mailed in the application for pat3 ent; or 

4 ‘‘(B) either— 

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

6 the application for patent is published 

7 under section 122, or 

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

9 under section 132 of any claim by the ex10 aminer during the examination of the ap11 plication for patent, 

12 whichever occurs later. 

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

14 under paragraph (1) shall— 

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

16 asserted relevance of each submitted document; 

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

18 Director may prescribe; and 

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

20 affirming that the submission was made in 

21 compliance with this section.’’. 

22 SEC. 10. VENUE AND JURISDICTION. 

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

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


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

4 of the Patent Trial and Appeal Board under chapter 13 

5 of title 35, may be brought only— 

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

7 resides; or 

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

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

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

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

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

14 the corporation has its principal place of business or in 

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

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

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

18 by adding at the end the following: 

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

20 or decree determining construction of claims in a 

21 civil action for patent infringement under section 

22 271 of title 35. 

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

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

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


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

3 SEC. 11. REGULATORY AUTHORITY. 

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

5 following: 

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

7 the authority conferred by other provisions of this 

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

11 any other law applicable to the United States Patent 

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

15 SEC. 12. TECHNICAL AMENDMENTS. 

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

17 (1) in the first paragraph, by striking 

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

20 (2) in the second paragraph, by striking 

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

23 (3) in the third paragraph, by striking 

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

25 ERRORS IN APPLICATION.—Whenever’’. 


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

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

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

5 COUNTRY.—Except when’’; 

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

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

8 term’’; and 

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

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

12 scope’’. 

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

14 is amended— 

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

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

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

19 PATENTS.—The Director’’; 

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

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

22 THIS TITLE.—The provisions’’; and 

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


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

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

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

7 and 

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

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

11 in subsection (a),’’. 

12 (e) CORRECTION OF NAMED INVENTOR.—Section 

13 256 is amended— 

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

16 and 

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

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

19 CORRECTED.—The error’’. 

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

21 amended— 

22 (1) in the first undesignated paragraph, by 

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


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1 (2) in the second undesignated paragraph, by 

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

4 (3) in the third undesignated paragraph, by 

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

6 ACTIONS; ACTIONS DURING EXTENSION OF PATENT

7 TERM.—In actions’’. 

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

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

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

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

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

13 date. 

14 (b) CONTINUITY OF INTENT UNDER THE CREATE

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

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

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

19 through the enactment of the Cooperative Research and 

20 Technology Enhancement Act of 2004 (Public Law 108– 

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

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

23 Patent and Trademark Office shall administer section 

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

25 consistent with the legislative history of the CREATE Act 


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1 that was relevant to its administration by the Patent and 

2 Trademark Office. 

3 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

4 (a) SHORT TITLE.—This Act may be cited as the ‘‘Pat5 ent Reform Act of 2007’’. 

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

7 this Act is as follows: 

Sec. 1. Short title; table of contents. 

Sec. 2. Right of the first inventor to file. 

Sec. 3. Inventor’s oath or declaration. 

Sec. 4. Right of the inventor to obtain damages. 

Sec. 5. Post-grant procedures and other quality enhancements. 

Sec. 6. Definitions; patent trial and appeal board. 

Sec. 7. Submissions by third parties and other quality enhancements. 

Sec. 8. Venue and jurisdiction. 

Sec. 9. Patent and trademark office regulatory authority. 

Sec. 10. Residency of Federal Circuit judges. 

Sec. 11. Applicant quality submissions. 

Sec. 12. Inequitable conduct. 

Sec. 13. Authority of the Director of the Patent and Trademark Office to accept 

late filings. 

Sec. 14. Limitation on damages and other remedies with respect to patents for 

methods in compliance with check imaging methods. 

Sec. 15. Patent and Trademark Office funding. 

Sec. 16. Technical amendments. 

Sec. 17. Effective date; rule of construction. 

8 SEC. 2. RIGHT OF THE FIRST INVENTOR TO FILE. 

9 (a) DEFINITIONS.—Section 100 of title 35, United 

10 States Code, is amended by adding at the end the following: 

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

12 a joint invention, the individuals collectively who invented 

13 or discovered the subject matter of the invention. 

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

15 any 1 of the individuals who invented or discovered the sub16 ject matter of a joint invention. 


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

2 is— 

3 ‘‘(1) the filing date of the patent or the applica4 tion for patent containing the claim to the invention; 

5 or 

6 ‘‘(2) if the patent or application for patent is en7 titled to a right of priority of any other application 

8 under section 119, 365(a), or 365(b) or to the benefit 

9 of an earlier filing date in the United States under 

10 section 120, 121, or 365(c), the filing date of the ear11 liest such application in which the claimed invention 

12 is disclosed in the manner provided by the first para13 graph of section 112. 

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

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

16 for a patent. 

17 ‘‘(j) The term ‘joint invention’ means an invention re18 sulting from the collaboration of inventive endeavors of 2 

19 or more persons working toward the same end and pro20 ducing an invention by their collective efforts.’’. 

21 (b) CONDITIONS FOR PATENTABILITY.— 

22 (1) IN GENERAL.—Section 102 of title 35, 

23 United States Code, is amended to read as follows: 


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1 ‘‘§ 102. Conditions for patentability; novelty 

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

3 invention may not be obtained if— 

4 ‘‘(1) the claimed invention was patented, de5 scribed in a printed publication, or in public use, on 

6 sale, or otherwise available to the public— 

7 ‘‘(A) more than 1 year before the effective 

8 filing date of the claimed invention; or 

9 ‘‘(B) 1 year or less before the effective filing 

10 date of the claimed invention, other than through 

11 disclosures made by the inventor or a joint in12 ventor or by others who obtained the subject mat13 ter disclosed directly or indirectly from the in14 ventor or a joint inventor; or 

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

16 patent issued under section 151, or in an application 

17 for patent published or deemed published under sec18 tion 122(b), in which the patent or application, as 

19 the case may be, names another inventor and was ef20 fectively filed before the effective filing date of the 

21 claimed invention. 

22 ‘‘(b) EXCEPTIONS.— 

23 ‘‘(1) PRIOR INVENTOR DISCLOSURE EXCEP24 TION.—Subject matter that would otherwise qualify 

25 as prior art based upon a disclosure under subpara26 graph (B) of subsection (a)(1) shall not be prior art 


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1 to a claimed invention under that subparagraph if 

2 the subject matter had, before such disclosure, been 

3 publicly disclosed by the inventor or a joint inventor 

4 or others who obtained the subject matter disclosed di5 rectly or indirectly from the inventor or a joint in6 ventor. 

7 ‘‘(2) DERIVATION, PRIOR DISCLOSURE, AND COM8 MON ASSIGNMENT EXCEPTIONS.—Subject matter that 

9 would otherwise qualify as prior art only under sub10 section (a)(2), after taking into account the exception 

11 under paragraph (1), shall not be prior art to a 

12 claimed invention if— 

13 ‘‘(A) the subject matter was obtained di14 rectly or indirectly from the inventor or a joint 

15 inventor; 

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

17 disclosed by the inventor or a joint inventor or 

18 others who obtained the subject matter disclosed, 

19 directly or indirectly, from the inventor or a 

20 joint inventor before the effective filing date of 

21 the application or patent set forth under sub22 section (a)(2); or 

23 ‘‘(C) the subject matter and the claimed in24 vention, not later than the effective filing date of 

25 the claimed invention, were owned by the same 


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1 person or subject to an obligation of assignment 

2 to the same person. 

3 ‘‘(3) JOINT RESEARCH AGREEMENT EXCEP4 TION.— 

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

6 claimed invention shall be deemed to have been 

7 owned by the same person or subject to an obli8 gation of assignment to the same person in ap9 plying the provisions of paragraph (2) if— 

10 ‘‘(i) the claimed invention was made 

11 by or on behalf of parties to a joint research 

12 agreement that was in effect on or before the 

13 effective filing date of the claimed invention; 

14 ‘‘(ii) the claimed invention was made 

15 as a result of activities undertaken within 

16 the scope of the joint research agreement; 

17 and 

18 ‘‘(iii) the application for patent for the 

19 claimed invention discloses or is amended to 

20 disclose the names of the parties to the joint 

21 research agreement. 

22 ‘‘(B) For purposes of subparagraph (A), the 

23 term ‘joint research agreement’ means a written 

24 contract, grant, or cooperative agreement entered 

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1 formance of experimental, developmental, or re2 search work in the field of the claimed invention. 

3 ‘‘(4) PATENTS AND PUBLISHED APPLICATIONS

4 EFFECTIVELY FILED.—A patent or application for 

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

6 respect to any subject matter described in the patent 

7 or application— 

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

9 the application for patent; or 

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

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

14 121, or 365(c), based upon 1 or more prior filed 

15 applications for patent, as of the filing date of 

16 the earliest such application that describes the 

17 subject matter.’’. 

18 (2) CONFORMING AMENDMENT.—The item relat19 ing to section 102 in the table of sections for chapter 

20 10 of title 35, United States Code, is amended to read 

21 as follows: 

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

22 (c) CONDITIONS FOR PATENTABILITY; NON-OBVIOUS

23 SUBJECT MATTER.—Section 103 of title 35, United States 

24 Code, is amended to read as follows: 


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

3 ‘‘A patent for a claimed invention may not be obtained 

4 though the claimed invention is not identically disclosed as 

5 set forth in section 102, if the differences between the 

6 claimed invention and the prior art are such that the 

7 claimed invention as a whole would have been obvious be8 fore the effective filing date of the claimed invention to a 

9 person having ordinary skill in the art to which the claimed 

10 invention pertains. Patentability shall not be negated by 

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

12 (d) REPEAL OF REQUIREMENTS FOR INVENTIONS

13 MADE ABROAD.—Section 104 of title 35, United States 

14 Code, and the item relating to that section in the table of 

15 sections for chapter 10 of title 35, United States Code, are 

16 repealed. 

17 (e) REPEAL OF STATUTORY INVENTION REGISTRA18 TION.— 

19 (1) IN GENERAL.—Section 157 of title 35, 

20 United States Code, and the item relating to that sec21 tion in the table of sections for chapter 14 of title 35, 

22 United States Code, are repealed. 

23 (2) REMOVAL OF CROSS REFERENCES.—Section 

24 111(b)(8) of title 35, United States Code, is amended 

25 by striking ‘‘sections 115, 131, 135, and 157’’ and in26 serting ‘‘sections 131 and 135’’. 


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1 (f) EARLIER FILING DATE FOR INVENTOR AND JOINT

2 INVENTOR.—Section 120 of title 35, United States Code, is 

3 amended by striking ‘‘which is filed by an inventor or in4 ventors named’’ and inserting ‘‘which names an inventor 

5 or joint inventor’’. 

6 (g) CONFORMING AMENDMENTS.— 

7 (1) RIGHT OF PRIORITY.—Section 172 of title 

8 35, United States Code, is amended by striking ‘‘and 

9 the time specified in section 102(d)’’. 

10 (2) LIMITATION ON REMEDIES.—Section 

11 287(c)(4) of title 35, United States Code, is amended 

12 by striking ‘‘the earliest effective filing date of which 

13 is prior to’’ and inserting ‘‘which has an effective fil14 ing date before’’. 

15 (3) INTERNATIONAL APPLICATION DESIGNATING

16 THE UNITED STATES: EFFECT.—Section 363 of title 

17 35, United States Code, is amended by striking ‘‘ex18 cept as otherwise provided in section 102(e) of this 

19 title’’. 

20 (4) PUBLICATION OF INTERNATIONAL APPLICA21 TION: EFFECT.—Section 374 of title 35, United States 

22 Code, is amended by striking ‘‘sections 102(e) and 

23 154(d)’’ and inserting ‘‘section 154(d)’’. 

24 (5) PATENT ISSUED ON INTERNATIONAL APPLICA25 TION: EFFECT.—The second sentence of section 375(a) 


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1 of title 35, United States Code, is amended by strik2 ing ‘‘Subject to section 102(e) of this title, such’’ and 

3 inserting ‘‘Such’’. 

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

5 119(a) of title 35, United States Code, is amended by 

6 striking ‘‘; but no patent shall be granted’’ and all 

7 that follows through ‘‘one year prior to such filing’’. 

8 (7) INVENTIONS MADE WITH FEDERAL ASSIST9 ANCE.—Section 202(c) of title 35, United States Code, 

10 is amended— 

11 (A) in paragraph (2)— 

12 (i) by striking ‘‘publication, on sale, or 

13 public use,’’ and all that follows through 

14 ‘‘obtained in the United States’’ and insert15 ing ‘‘the 1-year period referred to in section 

16 102(a) would end before the end of that 2- 

17 year period’’; and 

18 (ii) by striking ‘‘the statutory’’ and in19 serting ‘‘that 1-year’’; and 

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

21 statutory bar date that may occur under this 

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

23 and inserting ‘‘the expiration of the 1-year pe24 riod referred to in section 102(a)’’. 


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1 (h) REPEAL OF INTERFERING PATENT REMEDIES.— 

2 Section 291 of title 35, United States Code, and the item 

3 relating to that section in the table of sections for chapter 

4 29 of title 35, United States Code, are repealed. 

5 (i) ACTION FOR CLAIM TO PATENT ON DERIVED IN6 VENTION.—Section 135(a) of title 35, United States Code, 

7 is amended to read as follows: 

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

9 ‘‘(1) INSTITUTION OF DERIVATION PRO10 CEEDING.—An applicant may request initiation of a 

11 derivation proceeding to determine the right of the 

12 applicant to a patent by filing a request which sets 

13 forth with particularity the basis for finding that an 

14 earlier applicant derived the claimed invention from 

15 the applicant requesting the proceeding and, without 

16 authorization, filed an application claiming such in17 vention. Any such request may only be made within 

18 12 months after the date of first publication of an ap19 plication containing a claim that is the same or is 

20 substantially the same as the claimed invention, must 

21 be made under oath, and must be supported by sub22 stantial evidence. Whenever the Director determines 

23 that patents or applications for patent naming dif24 ferent individuals as the inventor interfere with one 

25 another because of a dispute over the right to patent 


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1 under section 101, the Director shall institute a deri2 vation proceeding for the purpose of determining 

3 which applicant is entitled to a patent. 

4 ‘‘(2) DETERMINATION BY PATENT TRIAL AND AP5 PEAL BOARD.—In any proceeding under this sub6 section, the Patent Trial and Appeal Board— 

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

8 right to patent; 

9 ‘‘(B) in appropriate circumstances, may 

10 correct the naming of the inventor in any appli11 cation or patent at issue; and 

12 ‘‘(C) shall issue a final decision on the right 

13 to patent. 

14 ‘‘(3) DERIVATION PROCEEDING.—The Board 

15 may defer action on a request to initiate a derivation 

16 proceeding until 3 months after the date on which the 

17 Director issues a patent to the applicant that filed the 

18 earlier application. 

19 ‘‘(4) EFFECT OF FINAL DECISION.—The final de20 cision of the Patent Trial and Appeal Board, if ad21 verse to the claim of an applicant, shall constitute the 

22 final refusal by the United States Patent and Trade23 mark Office on the claims involved. The Director may 

24 issue a patent to an applicant who is determined by 

25 the Patent Trial and Appeal Board to have the right 


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1 to patent. The final decision of the Board, if adverse 

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

3 the decision has been or can be taken or had, con4 stitute cancellation of the claims involved in the pat5 ent, and notice of such cancellation shall be endorsed 

6 on copies of the patent distributed after such cancella7 tion by the United States Patent and Trademark Of8 fice.’’. 

9 (j) ELIMINATION OF REFERENCES TO INTER10 FERENCES.—(1) Sections 6, 41, 134, 141, 145, 146, 154, 

11 305, and 314 of title 35, United States Code, are each 

12 amended by striking ‘‘Board of Patent Appeals and Inter13 ferences’’ each place it appears and inserting ‘‘Patent Trial 

14 and Appeal Board’’. 

15 (2) Sections 141, 146, and 154 of title 35, United 

16 States Code, are each amended— 

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

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

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

20 place it appears and inserting ‘‘derivation pro21 ceeding’’. 

22 (3) The section heading for section 134 of title 35, 

23 United States Code, is amended to read as follows: 


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

2 (4) The section heading for section 135 of title 35, 

3 United States Code, is amended to read as follows: 

4 ‘‘§ 135. Derivation proceedings’’. 

5 (5) The section heading for section 146 of title 35, 

6 United States Code, is amended to read as follows: 

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

8 (6) Section 154(b)(1)(C) of title 35, United States 

9 Code, is amended by striking ‘‘INTERFERENCES’’ and in10 serting ‘‘DERIVATION PROCEEDINGS’’. 

11 (7) The item relating to section 6 in the table of sec12 tions for chapter 1 of title 35, United States Code, is 

13 amended to read as follows: 

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

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

15 table of sections for chapter 12 of title 35, United States 

16 Code, are amended to read as follows: 

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

‘‘135. Derivation proceedings.’’. 

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

18 sections for chapter 13 of title 35, United States Code, is 

19 amended to read as follows: 

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

20 (10) CERTAIN APPEALS.—Section 1295(a)(4)(A) of 

21 title 28, United States Code, is amended to read as follows: 

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

23 the United States Patent and Trademark Office 


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1 with respect to patent applications, derivation 

2 proceedings, and post-grant review proceedings, 

3 at the instance of an applicant for a patent or 

4 any party to a patent interference (commenced 

5 before the effective date of the Patent Reform Act 

6 of 2007), derivation proceeding, or post-grant re7 view proceeding, and any such appeal shall 

8 waive any right of such applicant or party to 

9 proceed under section 145 or 146 of title 35;’’. 

10 SEC. 3. INVENTOR’S OATH OR DECLARATION. 

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

12 (1) IN GENERAL.—Section 115 of title 35, 

13 United States Code, is amended to read as follows: 

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

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

16 DECLARATION.—An application for patent that is filed 

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

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

19 invention for which an application has previously been filed 

20 under this title by that inventor shall include, or be amend21 ed to include, the name of the inventor of any claimed in22 vention in the application. Except as otherwise provided 

23 in this section, an individual who is the inventor or a joint 

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1 ent shall execute an oath or declaration in connection with 

2 the application. 

3 ‘‘(b) REQUIRED STATEMENTS.—An oath or declara4 tion under subsection (a) shall contain statements that— 

5 ‘‘(1) the application was made or was authorized 

6 to be made by the affiant or declarant; and 

7 ‘‘(2) such individual believes himself or herself to 

8 be the original inventor or an original joint inventor 

9 of a claimed invention in the application. 

10 ‘‘(c) ADDITIONAL REQUIREMENTS.—The Director may 

11 specify additional information relating to the inventor and 

12 the invention that is required to be included in an oath 

13 or declaration under subsection (a). 

14 ‘‘(d) SUBSTITUTE STATEMENT.— 

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

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

17 patent may provide a substitute statement under the 

18 circumstances described in paragraph (2) and such 

19 additional circumstances that the Director may speci20 fy by regulation. 

21 ‘‘(2) PERMITTED CIRCUMSTANCES.—A substitute 

22 statement under paragraph (1) is permitted with re23 spect to any individual who— 

24 ‘‘(A) is unable to file the oath or declaration 

25 under subsection (a) because the individual— 


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1 ‘‘(i) is deceased; 

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

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

4 diligent effort; or 

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

6 invention but has refused to make the oath or 

7 declaration required under subsection (a). 

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

9 this subsection shall— 

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

11 whom the statement applies; 

12 ‘‘(B) set forth the circumstances rep13 resenting the permitted basis for the filing of the 

14 substitute statement in lieu of the oath or dec15 laration under subsection (a); and 

16 ‘‘(C) contain any additional information, 

17 including any showing, required by the Director. 

18 ‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGNMENT

19 OF RECORD.—An individual who is under an obligation 

20 of assignment of an application for patent may include the 

21 required statements under subsections (b) and (c) in the as22 signment executed by the individual, in lieu of filing such 

23 statements separately. 

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

25 section 151 may be provided to an applicant for patent only 


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1 if the applicant for patent has filed each required oath or 

2 declaration under subsection (a) or has filed a substitute 

3 statement under subsection (d) or recorded an assignment 

4 meeting the requirements of subsection (e). 

5 ‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE6 QUIRED STATEMENTS OR SUBSTITUTE STATEMENT.—The 

7 requirements under this section shall not apply to an indi8 vidual with respect to an application for patent in which 

9 the individual is named as the inventor or a joint inventor 

10 and that claims the benefit under section 120 or 365(c) of 

11 the filing of an earlier-filed application, if— 

12 ‘‘(1) an oath or declaration meeting the require13 ments of subsection (a) was executed by the indi14 vidual and was filed in connection with the earlier15 filed application; 

16 ‘‘(2) a substitute statement meeting the require17 ments of subsection (d) was filed in the earlier filed 

18 application with respect to the individual; or 

19 ‘‘(3) an assignment meeting the requirements of 

20 subsection (e) was executed with respect to the earlier21 filed application by the individual and was recorded 

22 in connection with the earlier-filed application. 

23 ‘‘(h) SUPPLEMENTAL AND CORRECTED STATEMENTS; 

24 FILING ADDITIONAL STATEMENTS.— 


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

4 If a change is made in the naming of the inventor re5 quiring the filing of 1 or more additional statements 

6 under this section, the Director shall establish regula7 tions under which such additional statements may be 

8 filed. 

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

11 declaration under subsection (a) or an assignment 

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

14 not thereafter require that individual to make any 

15 additional oath, declaration, or other statement equiv16 alent to those required by this section in connection 

17 with the application for patent or any patent issuing 

18 thereon. 

19 ‘‘(3) SAVINGS CLAUSE.—No patent shall be in20 valid or unenforceable based upon the failure to com21 ply with a requirement under this section if the fail22 ure is remedied as provided under paragraph (1). 

23 ‘‘(i) ACKNOWLEDGMENT OF PENALTIES.—Any dec24 laration or statement filed pursuant to this section shall 

25 contain an acknowledgment that any willful false statement 


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1 made in such declaration or statement is punishable under 

2 section 1001 of title 18 by fine or imprisonment of not more 

3 than 5 years, or both.’’. 

4 (2) RELATIONSHIP TO DIVISIONAL APPLICA5 TIONS.—Section 121 of title 35, United States Code, 

6 is amended by striking ‘‘If a divisional application’’ 

7 and all that follows through ‘‘inventor.’’. 

8 (3) REQUIREMENTS FOR NONPROVISIONAL APPLI9 CATIONS.—Section 111(a) of title 35, United States 

10 Code, is amended— 

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

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

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

14 striking ‘‘AND OATH’’; and 

15 (C) by striking ‘‘and oath’’ each place it ap16 pears. 

17 (4) CONFORMING AMENDMENT.—The item relat18 ing to section 115 in the table of sections for chapter 

19 10 of title 35, United States Code, is amended to read 

20 as follows: 

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

21 (b) FILING BY OTHER THAN INVENTOR.—Section 118 

22 of title 35, United States Code, is amended to read as fol23 lows: 


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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 suffi5 cient proprietary interest in the matter may make an ap6 plication for patent on behalf of and as agent for the inven7 tor on proof of the pertinent facts and a showing that such 

8 action is appropriate to preserve the rights of the parties. 

9 If the Director grants a patent on an application filed 

10 under this section by a person other than the inventor, the 

11 patent shall be granted to the real party in interest and 

12 upon such notice to the inventor as the Director considers 

13 to be sufficient.’’. 

14 (c) SPECIFICATION.—Section 112 of title 35, United 

15 States Code, is amended— 

16 (1) in the first paragraph— 

17 (A) by striking ‘‘The specification’’ and in18 serting ‘‘(a) IN GENERAL.—The specification’’; 

19 and 

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

23 (2) in the second paragraph— 

24 (A) by striking ‘‘The specifications’’ and in25 serting ‘‘(b) CONCLUSION.—The specifications’’; 

26 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 ‘‘Subject 

7 to the following paragraph,’’ and inserting ‘‘(d) REF8 ERENCE IN DEPENDENT FORMS.—Subject to sub9 section (e),’’; 

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

11 and inserting ‘‘(e) REFERENCE IN MULTIPLE DE12 PENDENT FORM.—A claim’’; and 

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

15 COMBINATION.—An element’’. 

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

17 (a) DAMAGES.—Section 284 of title 35, United States 

18 Code, is amended to read as follows: 

19 ‘‘§ 284. Damages 

20 ‘‘(a) IN GENERAL.—Upon finding for the claimant the 

21 court shall award the claimant damages adequate to com22 pensate for the infringement but in no event less than a 

23 reasonable royalty for the use made of the invention by the 

24 infringer, together with interest and costs as fixed by the 

25 court, subject to the provisions of this section. 


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1 ‘‘(b) DETERMINATION OF DAMAGES; EVIDENCE CON2 SIDERED; PROCEDURE.—The court may receive expert tes3 timony as an aid to the determination of damages or of 

4 what royalty would be reasonable under the circumstances. 

5 The admissibility of such testimony shall be governed by 

6 the rules of evidence governing expert testimony. When the 

7 damages are not found by a jury, the court shall assess 

8 them. 

9 ‘‘(c) STANDARD FOR CALCULATING REASONABLE ROY10 ALTY.— 

11 ‘‘(1) IN GENERAL.—The court shall determine, 

12 based on the facts of the case and after adducing any 

13 further evidence the court deems necessary, which of 

14 the following methods shall be used by the court or the 

15 jury in calculating a reasonable royalty pursuant to 

16 subsection (a). The court shall also identify the factors 

17 that are relevant to the determination of a reasonable 

18 royalty, and the court or jury, as the case may be, 

19 shall consider only those factors in making such deter20 mination. 

21 ‘‘(A) ENTIRE MARKET VALUE.—Upon a 

22 showing to the satisfaction of the court that the 

23 claimed invention’s specific contribution over the 

24 prior art is the predominant basis for market de25 mand for an infringing product or process, damVerDate Aug 31 2005 01:12 Jan 25, 2008 Jkt 069200 PO 00000 Frm 00071 Fmt 6652 Sfmt 6203 E:\BILLS\S1145.RS S1145

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1 ages may be based upon the entire market value 

2 of that infringing product or process. 

3 ‘‘(B) ESTABLISHED ROYALTY BASED ON

4 MARKETPLACE LICENSING.—Upon a showing to 

5 the satisfaction of the court that the claimed in6 vention has been the subject of a nonexclusive li7 cense for the use made of the invention by the in8 fringer, to a number of persons sufficient to indi9 cate a general marketplace recognition of the rea10 sonableness of the licensing terms, if the license 

11 was secured prior to the filing of the case before 

12 the court, and the court determines that the in13 fringer’s use is of substantially the same scope, 

14 volume, and benefit of the rights granted under 

15 such license, damages may be determined on the 

16 basis of the terms of such license. Upon a show17 ing to the satisfaction of the court that the 

18 claimed invention has sufficiently similar non19 infringing substitutes in the relevant market, 

20 which have themselves been the subject of such 

21 nonexclusive licenses, and the court determines 

22 that the infringer’s use is of substantially the 

23 same scope, volume, and benefit of the rights 

24 granted under such licenses, damages may be deVerDate Aug 31 2005 01:12 Jan 25, 2008 Jkt 069200 PO 00000 Frm 00072 Fmt 6652 Sfmt 6203 E:\BILLS\S1145.RS S1145

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1 termined on the basis of the terms of such li2 censes. 

3 ‘‘(C) VALUATION CALCULATION.—Upon a 

4 determination by the court that the showings re5 quired under subparagraphs (A) and (B) have 

6 not been made, the court shall conduct an anal7 ysis to ensure that a reasonable royalty is ap8 plied only to the portion of the economic value 

9 of the infringing product or process properly at10 tributable to the claimed invention’s specific con11 tribution over the prior art. In the case of a com12 bination invention whose elements are present 

13 individually in the prior art, the contribution 

14 over the prior art may include the value of the 

15 additional function resulting from the combina16 tion, as well as the enhanced value, if any, of 

17 some or all of the prior art elements as part of 

18 the combination, if the patentee demonstrates 

19 that value. 

20 ‘‘(2) ADDITIONAL FACTORS.—Where the court de21 termines it to be appropriate in determining a rea22 sonable royalty under paragraph (1), the court may 

23 also consider, or direct the jury to consider, any other 

24 relevant factors under applicable law. 


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1 ‘‘(d) INAPPLICABILITY TO OTHER DAMAGES ANAL2 YSIS.—The methods for calculating a reasonable royalty de3 scribed in subsection (c) shall have no application to the 

4 calculation of an award of damages that does not necessitate 

5 the determination of a reasonable royalty as a basis for 

6 monetary relief sought by the claimant 

7 ‘‘(e) WILLFUL INFRINGEMENT .— 

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

9 determined that an infringer has willfully infringed 

10 a patent or patents may increase damages up to 3 

11 times the amount of the damages found or assessed 

12 under subsection (a), except that increased damages 

13 under this paragraph shall not apply to provisional 

14 rights under section 154(d). 

15 ‘‘(2) PERMITTED GROUNDS FOR WILLFULNESS.— 

16 A court may find that an infringer has willfully in17 fringed a patent only if the patent owner presents 

18 clear and convincing evidence that— 

19 ‘‘(A) after receiving written notice from the 

20 patentee— 

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

22 manner sufficient to give the infringer an 

23 objectively reasonable apprehension of suit 

24 on such patent, and 


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1 ‘‘(ii) identifying with particularity 

2 each claim of the patent, each product or 

3 process that the patent owner alleges in4 fringes the patent, and the relationship of 

5 such product or process to such claim, 

6 the infringer, after a reasonable opportunity to 

7 investigate, thereafter performed 1 or more of the 

8 alleged acts of infringement; 

9 ‘‘(B) the infringer intentionally copied the 

10 patented invention with knowledge that it was 

11 patented; or 

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

13 have infringed that patent, the infringer engaged 

14 in conduct that was not colorably different from 

15 the conduct previously found to have infringed 

16 the patent, and which resulted in a separate 

17 finding of infringement of the same patent. 

18 ‘‘(3) LIMITATIONS ON WILLFULNESS.— 

19 ‘‘(A) IN GENERAL.—A court may not find 

20 that an infringer has willfully infringed a pat21 ent under paragraph (2) for any period of time 

22 during which the infringer had an informed good 

23 faith belief that the patent was invalid or unen24 forceable, or would not be infringed by the conVerDate Aug 31 2005 01:12 Jan 25, 2008 Jkt 069200 PO 00000 Frm 00075 Fmt 6652 Sfmt 6203 E:\BILLS\S1145.RS S1145

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1 duct later shown to constitute infringement of 

2 the patent. 

3 ‘‘(B) GOOD FAITH ESTABLISHED.—An in4 formed good faith belief within the meaning of 

5 subparagraph (A) may be established by— 

6 ‘‘(i) reasonable reliance on advice of 

7 counsel; 

8 ‘‘(ii) evidence that the infringer sought 

9 to modify its conduct to avoid infringement 

10 once it had discovered the patent; or 

11 ‘‘(iii) other evidence a court may find 

12 sufficient to establish such good faith belief. 

13 ‘‘(C) RELEVANCE OF NOT PRESENTING CER14 TAIN EVIDENCE.—The decision of the infringer 

15 not to present evidence of advice of counsel is not 

16 relevant to a determination of willful infringe17 ment under paragraph (2). 

18 ‘‘(4) LIMITATION ON PLEADING.—Before the date 

19 on which a court determines that the patent in suit 

20 is not invalid, is enforceable, and has been infringed 

21 by the infringer, a patentee may not plead and a 

22 court may not determine that an infringer has will23 fully infringed a patent. The court’s determination of 

24 an infringer’s willfulness shall be made without a 

25 jury.’’. 


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1 (b) REPORT TO CONGRESSIONAL COMMITTEES.— 

2 (1) IN GENERAL.—Not later than 2 years after 

3 the date of enactment of this Act, the Director shall 

4 report to the Committee on the Judiciary of the Sen5 ate and the Committee on the Judiciary of the House 

6 of Representatives, the findings and recommendations 

7 of the Director on the operation of prior user rights 

8 in selected countries in the industrialized world. The 

9 report shall include the following: 

10 (A) A comparison between patent laws of 

11 the United States and the laws of other industri12 alized countries, including the European Union, 

13 Japan, Canada, and Australia. 

14 (B) An analysis of the effect of prior user 

15 rights on innovation rates in the selected coun16 tries. 

17 (C) An analysis of the correlation, if any, 

18 between prior user rights and start-up enter19 prises and the ability to attract venture capital 

20 to start new companies. 

21 (D) An analysis of the effect of prior user 

22 rights, if any, on small businesses, universities, 

23 and individual inventors. 


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1 (E) An analysis of legal and constitutional 

2 issues, if any, that arise from placing trade se3 cret law in patent law. 

4 (2) CONSULTATION WITH OTHER AGENCIES.—In 

5 preparing the report required under paragraph (1), 

6 the Director shall consult with the Secretary of State 

7 and the Attorney General. 

8 (c) LIMITATION ON DAMAGES AND OTHER REMEDIES; 

9 MARKING AND NOTICE.—Section 287(a) of title 35, United 

10 States Code, is amended to read as follows: 

11 ‘‘(a)(1) Patentees, and persons making, offering for 

12 sale, or selling within the United States any patented arti13 cle for or under them, or importing any patented article 

14 into the United States, may give notice to the public that 

15 the same is patented, either by fixing thereon the word ‘pat16 ent’ or the abbreviation ‘pat.’, together with the number of 

17 the patent, or when, from the character of the article, this 

18 cannot be done, by fixing to it, or to the package wherein 

19 1 or more of them is contained, a label containing a like 

20 notice. In the event of failure so to mark, no damages shall 

21 be recovered by the patentee in any action for infringement, 

22 except on proof that the infringer was notified of the in23 fringement and continued to infringe thereafter, in which 

24 event damages may be recovered only for infringement ocVerDate Aug 31 2005 01:12 Jan 25, 2008 Jkt 069200 PO 00000 Frm 00078 Fmt 6652 Sfmt 6203 E:\BILLS\S1145.RS S1145

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1 curring after such notice. Filing of an action for infringe2 ment shall constitute such notice. 

3 ‘‘(2) In the case of a patented invention not covered 

4 under paragraph (1), no recovery shall be had for any in5 fringement committed more than 2 years prior to the filing 

6 of the complaint or counterclaim for infringement in the 

7 action, except upon proof that the infringer was notified 

8 of the infringement by the patentee. Upon such proof, the 

9 patentee may recover damages for infringement for up to 

10 2 years prior to such notice, as well as for infringement 

11 after such notice. In no event may damages be recovered 

12 for more than 6 years prior to the filing of the complaint 

13 or counterclaim for infringement in the action.’’. 

14 (d) DEFENSE TO INFRINGEMENT BASED ON EARLIER

15 INVENTOR.—Section 273(b)(6) of title 35, United States 

16 Code, is amended to read as follows: 

17 ‘‘(6) PERSONAL DEFENSE.—The defense under 

18 this section may be asserted only by the person who 

19 performed or caused the performance of the acts nec20 essary to establish the defense as well as any other en21 tity that controls, is controlled by, or is under com22 mon control with such person and, except for any 

23 transfer to the patent owner, the right to assert the 

24 defense shall not be licensed or assigned or transferred 

25 to another person except as an ancillary and subordiVerDate Aug 31 2005 01:12 Jan 25, 2008 Jkt 069200 PO 00000 Frm 00079 Fmt 6652 Sfmt 6203 E:\BILLS\S1145.RS S1145

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1 nate part of a good faith assignment or transfer for 

2 other reasons of the entire enterprise or line of busi3 ness to which the defense relates. Notwithstanding the 

4 preceding sentence, any person may, on its own be5 half, assert a defense based on the exhaustion of rights 

6 provided under paragraph (3), including any nec7 essary elements thereof.’’. 

8 (e) EFFECTIVE DATE.—The amendments made by this 

9 section shall apply to any civil action commenced on or 

10 after the date of enactment of this Act. 

11 SEC. 5. POST-GRANT PROCEDURES AND OTHER QUALITY 

12 ENHANCEMENTS. 

13 (a) REEXAMINATION.—Section 303(a) of title 35, 

14 United States Code, is amended to read as follows: 

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

16 a request for reexamination under section 302, the Director 

17 shall determine whether a substantial new question of pat18 entability affecting any claim of the patent concerned is 

19 raised by the request, with or without consideration of other 

20 patents or printed publications. On the Director’s own ini21 tiative, and at any time, the Director may determine 

22 whether a substantial new question of patentability is 

23 raised by patents and publications discovered by the Direc24 tor, is cited under section 301, or is cited by any person 

25 other than the owner of the patent under section 302 or 


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1 section 311. The existence of a substantial new question of 

2 patentability is not precluded by the fact that a patent or 

3 printed publication was previously cited by or to the Office 

4 or considered by the Office.’’. 

5 (b) REPEAL OF OPTIONAL INTER PARTES REEXAMINA6 TION PROCEDURES.— 

7 (1) IN GENERAL.—Sections 311, 312, 313, 314, 

8 315, 316, 317, and 318 of title 35, United States 

9 Code, and the items relating to those sections in the 

10 table of sections, are repealed. 

11 (2) EFFECTIVE DATE.—Notwithstanding para12 graph (1), the provisions of sections 311, 312, 313, 

13 314, 315, 316, 317, and 318 of title 35, United States 

14 Code, shall continue to apply to any inter partes re15 examination determination request filed on or before 

16 the date of enactment of this Act. 

17 (c) POST-GRANT OPPOSITION PROCEDURES.— 

18 (1) IN GENERAL.—Part III of title 35, United 

19 States Code, is amended by adding at the end the fol20 lowing new chapter: 

21 ‘‘CHAPTER 32—POST-GRANT REVIEW 

22 PROCEDURES 

‘‘Sec. 

‘‘321. Petition for post-grant review. 

‘‘322. Timing and bases of petition. 

‘‘323. Requirements of petition. 

‘‘324. Publication and public availability of petition. 

‘‘325. Prohibited filings. 

‘‘326. Submission of additional information. 


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‘‘327. Institution of post-grant review proceedings. 

‘‘328. Consolidation of proceedings and joinder. 

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

‘‘330. Patent owner response. 

‘‘331. Proof and evidentiary standards. 

‘‘332. Amendment of the patent. 

‘‘333. Settlement. 

‘‘334. Decision of the board. 

‘‘335. Effect of decision. 

‘‘336. Relationship to other pending proceedings. 

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

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

‘‘339. Appeal. 

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

2 ‘‘Subject to sections 322, 324, 332, and 333 of this 

3 chapter, a person who is not the patent owner may file with 

4 the Office a petition seeking to institute a post-grant review 

5 proceeding to cancel as unpatentable any claim of a patent 

6 on any ground that could be raised under paragraph (2) 

7 or (3) of section 282(b) (relating to invalidity of the patent 

8 or any claim). The Director shall establish, by regulation, 

9 fees to be paid by the person requesting the proceeding, in 

10 such amounts as the Director determines to be reasonable, 

11 considering the aggregate costs of the post-grant review pro12 ceeding and the status of the petitioner. 

13 ‘‘§ 322. Timing and bases of petition 

14 ‘‘A post-grant proceeding may be instituted under this 

15 chapter pursuant to a petition filed under section 321 only 

16 if— 

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

18 months after the grant of the patent or issuance of a 

19 reissue patent, as the case may be; 


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1 ‘‘(2)(A) the petitioner establishes in the petition 

2 a substantial reason to believe that the continued ex3 istence of the challenged claim in the petition causes 

4 or is likely to cause the petitioner significant eco5 nomic harm; and 

6 ‘‘(B) the petitioner files a petition not later than 

7 12 months after receiving notice, explicitly or implic8 itly, that the patent holder alleges infringement; or 

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

10 proceeding. 

11 ‘‘§ 323. Requirements of petition 

12 ‘‘A petition filed under section 321 may be considered 

13 only if— 

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

15 the fee established by the Director under section 321; 

16 ‘‘(2) the petition identifies any real parties in 

17 interest; 

18 ‘‘(3) the petition identifies, in writing and with 

19 particularity, each claim challenged, the grounds on 

20 which the challenge to each claim is based, and the 

21 evidence that supports the grounds for each challenged 

22 claim, including— 

23 ‘‘(A) copies of patents and printed publica24 tions that the petitioner relies upon in support 

25 of the petition; and 


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1 ‘‘(B) affidavits or declarations of sup2 porting evidence and opinions, if the petitioner 

3 relies on other factual evidence or on expert 

4 opinions; 

5 ‘‘(4) the petition provides such information as 

6 the Director may require by regulation; and 

7 ‘‘(5) the petitioner provides copies of any of the 

8 documents required under paragraphs (3) and (4) to 

9 the patent owner or, if applicable, the designated rep10 resentative of the patent owner. 

11 ‘‘§ 324. Publication and public availability of petition 

12 ‘‘(a) IN GENERAL.—As soon as practicable after the 

13 receipt of a petition under section 321, the Director shall— 

14 ‘‘(1) publish the petition in the Federal Register; 

15 and 

16 ‘‘(2) make that petition available on the website 

17 of the United States Patent and Trademark Office. 

18 ‘‘(b) PUBLIC AVAILABILITY.—The file of any pro19 ceeding under this chapter shall be made available to the 

20 public except that any petition or document filed with the 

21 intent to be sealed shall be accompanied by a motion to 

22 seal. Such petition or document shall be treated as sealed, 

23 pending the outcome of the ruling on the motion. Failure 

24 to file a motion to seal will result in the pleading being 

25 placed in the public record. 


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1 ‘‘§ 325. Prohibited filings 

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

3 may not be instituted under paragraph (1), (2), or (3) of 

4 section 322 if the petition requesting the proceeding identi5 fies the same petitioner or real party in interest and the 

6 same patent as a previous petition filed under any para7 graph of section 322. 

8 ‘‘(b) PREVIOUSLY FILED CIVIL ACTIONS.—A post9 grant review proceeding may not be instituted or main10 tained under paragraph (1) or (2) of section 322 if the peti11 tioner or real party in interest has instituted a civil action 

12 challenging the validity of a claim of the patent. 

13 ‘‘§ 326. Submission of additional information 

14 ‘‘A petitioner under this chapter shall file such addi15 tional information with respect to the petition as the Direc16 tor may require by regulation. 

17 ‘‘§ 327. Institution of post-grant review proceedings 

18 ‘‘(a) IN GENERAL.—The Director may not authorize 

19 a post-grant review proceeding to commence unless the Di20 rector determines that the information presented in the peti21 tion raises a substantial new question of patentability for 

22 at least 1 of the challenged claims. The Director shall deter23 mine whether to authorize a post-grant proceeding within 

24 90 days after receiving a petition. 

25 ‘‘(b) NOTIFICATION.—The Director shall notify the pe26 titioner and patent owner, in writing, of the Director’s deVerDate Aug 31 2005 01:12 Jan 25, 2008 Jkt 069200 PO 00000 Frm 00085 Fmt 6652 Sfmt 6203 E:\BILLS\S1145.RS S1145

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1 termination under subsection (a). The Director shall pub2 lish each notice of institution of a post-grant review pro3 ceeding in the Federal Register and make such notice avail4 able on the website of the United States Patent and Trade5 mark Office. Such notice shall list the date on which the 

6 proceeding shall commence. 

7 ‘‘(c) DETERMINATION NOT APPEALABLE.—The deter8 mination by the Director regarding whether to authorize 

9 a post-grant review proceeding under subsection (a) shall 

10 not be appealable. 

11 ‘‘(d) ASSIGNMENT OF THE PROCEEDING TO A

12 PANEL.—Upon a determination of the Director to com13 mence a post-grant review proceeding, the Director shall as14 sign the proceeding to a panel of 3 administrative patent 

15 judges from the Patent Trial and Appeal Board. 

16 ‘‘§ 328. Consolidation of proceedings and joinder 

17 ‘‘(a) CONSOLIDATION OF POST-GRANT PRO18 CEEDINGS.—If more than 1 petition is submitted under sec19 tion 322(1) against the same patent and the Director deter20 mines that each raises a substantial new question of patent21 ability warranting the commencement of a post-grant re22 view proceeding under section 327, the Director may con23 solidate such proceedings into a single post-grant review 

24 proceeding. 


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1 ‘‘(b) JOINDER.—If the Director commences a post2 grant review proceeding on the basis of a petition filed 

3 under section 322(2), any person who files in compliance 

4 with section 322(2)(A) a petition that the Director finds 

5 sufficient to proceed under section 327 may be joined at 

6 the discretion of the Director, and such person shall partici7 pate in such post-grant review proceeding. 

8 ‘‘§ 329. Conduct of post-grant review proceedings 

9 ‘‘(a) IN GENERAL.—The Director shall prescribe regu10 lations— 

11 ‘‘(1) in accordance with section 2(b)(2), estab12 lishing and governing post-grant review proceedings 

13 under this chapter and their relationship to other 

14 proceedings under this title; 

15 ‘‘(2) for setting forth the standards for showings 

16 of substantial reason to believe and significant eco17 nomic harm under section 322(2) and substantial 

18 new question of patentability under section 327(a); 

19 ‘‘(3) providing for the publication in the Federal 

20 Register all requests for the institution of post-grant 

21 proceedings; 

22 ‘‘(4) establishing procedures for the submission of 

23 supplemental information after the petition is filed; 

24 and 


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1 ‘‘(5) setting forth procedures for discovery of rel2 evant evidence, including that such discovery shall be 

3 limited to evidence directly related to factual asser4 tions advanced by either party in the proceeding. 

5 ‘‘(b) POST-GRANT REVIEW REGULATIONS.—Regula6 tions under subsection (a)(1) shall— 

7 ‘‘(1) require that the final determination in a 

8 post-grant review proceeding issue not later than 1 

9 year after the date on which the Director notices the 

10 institution of a post-grant proceeding under this 

11 chapter, except that, for good cause shown, the Direc12 tor may extend the 1-year period by not more than 

13 6 months; 

14 ‘‘(2) provide for discovery upon order of the Di15 rector, as required in the interests of justice; 

16 ‘‘(3) prescribe sanctions for abuse of discovery, 

17 abuse of process, or any other improper use of the 

18 proceeding, such as to harass or to cause unnecessary 

19 delay or unnecessary increase in the cost of the pro20 ceeding; 

21 ‘‘(4) provide for protective orders governing the 

22 exchange and submission of confidential information; 

23 and 

24 ‘‘(5) ensure that any information submitted by 

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1 tered under section 332 is made available to the pub2 lic as part of the prosecution history of the patent. 

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

4 under this section, the Director shall consider the effect on 

5 the economy, the integrity of the patent system, and the effi6 cient 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 proceeding authorized by the Director. 

10 ‘‘§ 330. Patent owner response 

11 ‘‘After a post-grant review proceeding under this chap12 ter has been instituted with respect to a patent, the patent 

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

14 by the Director, a response to the petition. The patent owner 

15 shall file with the response, through affidavits or declara16 tions, any additional factual evidence and expert opinions 

17 on which the patent owner relies in support of the response. 

18 ‘‘§ 331. Proof and evidentiary standards 

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

20 forth in section 282 of this title shall not apply to challenges 

21 brought under section 322(1) but shall apply in a challenge 

22 brought under paragraph (2) or (3) of section 322 to any 

23 patent claim under this chapter. 

24 ‘‘(b) BURDEN OF PROOF.—The petitioner under sec25 tion 322(1) shall have the burden of proving a proposition 


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1 of invalidity by a preponderance of the evidence. For peti2 tions filed under paragraphs (2) or (3) of section 322, the 

3 existence, authentication, availability, and scope of any evi4 dence offered to establish invalidity shall be established by 

5 clear and convincing evidence. If such predicate facts are 

6 so established, invalidity shall be proven only if the persua7 sive force of such facts demonstrates invalidity by a prepon8 derance of the evidence. 

9 ‘‘§ 332. Amendment of the patent 

10 ‘‘(a) IN GENERAL.—During a post-grant review pro11 ceeding, the patent owner may file 1 motion to amend the 

12 patent in 1 or more of the following ways: 

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

14 ‘‘(2) For each challenged claim, propose a sub15 stitute claim. 

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

17 amend the patent other than the claims. 

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

19 amend may be permitted only for good cause shown. 

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

21 section may not enlarge the scope of the claims of the patent 

22 or introduce new matter. 

23 ‘‘§ 333. Settlement 

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

25 under this chapter shall be terminated with respect to any 


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1 petitioner upon the joint request of the petitioner and the 

2 patent owner, unless the Office has decided the matter before 

3 the request for termination is filed. If the post-grant review 

4 proceeding is terminated with respect to a petitioner under 

5 this section, no estoppel under this chapter shall apply to 

6 that petitioner. If no petitioner remains in the post-grant 

7 review proceeding, the Office shall terminate the post-grant 

8 review proceeding. 

9 ‘‘(b) AGREEMENTS IN WRITING.—Any agreement or 

10 understanding between the patent owner and a petitioner, 

11 including any collateral agreements referred to in such 

12 agreement or understanding, made in connection with, or 

13 in contemplation of, the termination of a post-grant review 

14 proceeding under this section shall be in writing and a true 

15 copy of such agreement or understanding shall be filed in 

16 the United States Patent and Trademark Office before the 

17 termination of the post-grant review proceeding as between 

18 the parties to the agreement or understanding. If any party 

19 filing such agreement or understanding so requests, the copy 

20 shall be kept separate from the file of the post-grant review 

21 proceeding, and made available only to Federal Government 

22 agencies upon written request, or to any other person on 

23 a showing of good cause. 


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1 ‘‘§ 334. Decision of the board 

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

3 not dismissed under this chapter, the Patent Trial and Ap4 peal Board shall issue a final written decision with respect 

5 to the patentability of any patent claim challenged and any 

6 new claim added under section 332. 

7 ‘‘§ 335. Effect of decision 

8 ‘‘If the Patent Trial and Appeal Board issues a final 

9 decision under section 334 and the time for appeal has ex10 pired or any appeal proceeding has terminated, the Direc11 tor shall issue and publish a certificate canceling any claim 

12 of the patent finally determined to be unpatentable and in13 corporating in the patent by operation of the certificate any 

14 new claim determined to be patentable. 

15 ‘‘§ 336. Relationship to other pending proceedings 

16 ‘‘Notwithstanding section 135(a), 251, and 252, and 

17 chapter 30, the Director may determine the manner in 

18 which any ex parte reexamination proceeding, reissue pro19 ceeding, interference proceeding (commenced before the effec20 tive date of the Patent Reform Act of 2007), derivation pro21 ceeding, or post-grant review proceeding, that is pending 

22 during a post-grant review proceeding, may proceed, in23 cluding providing for stay, transfer, consolidation, or ter24 mination of any such proceeding. 


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1 ‘‘§ 337. Effect of decisions rendered in civil action on 

2 future post-grant review proceedings 

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

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

5 1338 of title 28 establishing that the party has not sus6 tained its burden of proving the invalidity of any patent 

7 claim— 

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

9 privies of that party may not thereafter request a 

10 post-grant review proceeding on that patent claim on 

11 the basis of any grounds under section 322; and 

12 ‘‘(2) the Director may not thereafter maintain a 

13 post-grant review proceeding previously requested by 

14 that party or the real parties in interest of that 

15 party. 

16 ‘‘§ 338. Effect of final decision on future proceedings 

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

18 334 is favorable to the patentability of any original or new 

19 claim of the patent challenged by the petitioner, the peti20 tioner may not thereafter, based on any ground which the 

21 petitioner raised during the post-grant review proceeding— 

22 ‘‘(1) request or pursue a derivation proceeding 

23 with respect to such claim; or 

24 ‘‘(2) assert the invalidity of any such claim in 

25 any civil action arising in whole or in part under 

26 section 1338 of title 28. 


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1 ‘‘(b) EXTENSION OF PROHIBITION.—If the final deci2 sion is the result of a petition filed on the basis of section 

3 322(2), the prohibition under this section shall extend to 

4 any ground which the petitioner raised during the post5 grant review proceeding. 

6 ‘‘§ 339. Appeal 

7 ‘‘A party dissatisfied with the final determination of 

8 the Patent Trial and Appeal Board in a post-grant pro9 ceeding under this chapter may appeal the determination 

10 under sections 141 through 144. Any party to the post-grant 

11 proceeding shall have the right to be a party to the appeal.’’. 

12 (d) TECHNICAL AND CONFORMING AMENDMENT.—The 

13 table of chapters for part III of title 35, United States Code, 

14 is amended by adding at the end the following: 

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

15 (e) REGULATIONS AND EFFECTIVE DATE.— 

16 (1) REGULATIONS.—The Under Secretary of 

17 Commerce for Intellectual Property and the Director 

18 of the United States Patent and Trademark Office (in 

19 this subsection referred to as the ‘‘Director’’) shall, not 

20 later than the date that is 1 year after the date of the 

21 enactment of this Act, issue regulations to carry out 

22 chapter 32 of title 35, United States Code, as added 

23 by subsection (c) of this section. 

24 (2) APPLICABILITY.—The amendments made by 

25 subsection (c) shall take effect on the date that is 1 


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1 year after the date of the enactment of this Act and 

2 shall apply to patents issued on or after that date, ex3 cept that, in the case of a patent issued before the ef4 fective date of this Act on an application filed be5 tween November 29, 1999 and the effective date of this 

6 Act, a petition for post-grant review under section 

7 321 of title 35, United States Code, may only be filed 

8 under paragraph (2) or (3) of section 322 of title 35, 

9 United States Code. 

10 (3) PENDING INTERFERENCES.—The Director 

11 shall determine the procedures under which inter12 ferences commenced before the effective date under 

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

14 such interference is to be dismissed without prejudice 

15 to the filing of a petition for a post-grant review pro16 ceeding under chapter 32 of title 35, United States 

17 Code, or is to proceed as if this Act had not been en18 acted. The Director shall include such procedures in 

19 regulations issued under paragraph (1). 

20 SEC. 6. DEFINITIONS; PATENT TRIAL AND APPEAL BOARD. 

21 (a) DEFINITIONS.—Section 100 of title 35, United 

22 States Code, (as amended by section 2 of this Act) is further 

23 amended— 

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

25 reexamination under section 311’’; and 


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

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

3 party in interest requesting cancellation of any claim of 

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

5 the real party in interest.’’. 

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

7 of title 35, United States Code, is amended to read as fol8 lows: 

9 ‘‘§ 6. Patent Trial and Appeal Board 

10 ‘‘(a) ESTABLISHMENT AND COMPOSITION.—There shall 

11 be in the Office a Patent Trial and Appeal Board. The Di12 rector, the Deputy Director, the Commissioner for Patents, 

13 the Commissioner for Trademarks, and the administrative 

14 patent judges shall constitute the Patent Trial and Appeal 

15 Board. The administrative patent judges shall be persons 

16 of competent legal knowledge and scientific ability who are 

17 appointed by the Director. Any reference in any Federal 

18 law, Executive order, rule, regulation, or delegation of au19 thority, or any document of or pertaining to the Board of 

20 Patent Appeals and Interferences is deemed to refer to the 

21 Patent Trial and Appeal Board. 

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

23 shall— 


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

2 adverse decisions of examiners upon application for 

3 patents; 

4 ‘‘(2) on written appeal of a patent owner, review 

5 adverse decisions of examiners upon patents in reex6 amination proceedings under chapter 30; 

7 ‘‘(3) determine priority and patentability of in8 vention in derivation proceedings under subsection 

9 135(a); and 

10 ‘‘(4) conduct post-grant opposition proceedings 

11 under chapter 32. 

12 Each appeal and derivation proceeding shall be heard by 

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

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

15 Trial and Appeal Board may grant rehearings. The Direc16 tor shall assign each post-grant review proceeding to a 

17 panel of 3 administrative patent judges. Once assigned, 

18 each such panel of administrative patent judges shall have 

19 the responsibilities under chapter 32 in connection with 

20 post-grant review proceedings.’’. 

21 SEC. 7. SUBMISSIONS BY THIRD PARTIES AND OTHER 

22 QUALITY ENHANCEMENTS. 

23 (a) PUBLICATION.—Section 122(b)(2) of title 35, 

24 United States Code, is amended— 

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


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1 (2) in subparagraph (A)— 

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

3 inserting ‘‘An application’’; and 

4 (B) by redesignating clauses (i) through (iv) 

5 as subparagraphs (A) through (D), respectively. 

6 (b) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.— 

7 Section 122 of title 35, United States Code, is amended by 

8 adding at the end the following: 

9 ‘‘(e) PREISSUANCE SUBMISSIONS BY THIRD PAR10 TIES.— 

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

12 consideration and inclusion in the record of a patent 

13 application, any patent, published patent applica14 tion, or other publication of potential relevance to the 

15 examination of the application, if such submission is 

16 made in writing before the earlier of— 

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

18 section 151 is mailed in the application for pat19 ent; or 

20 ‘‘(B) either— 

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

22 the application for patent is published 

23 under section 122, or 

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

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1 aminer during the examination of the ap2 plication for patent, 

3 whichever occurs later. 

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

5 under paragraph (1) shall— 

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

7 asserted relevance of each submitted document; 

8 ‘‘(B) be accompanied by such fee as the Di9 rector may prescribe; and 

10 ‘‘(C) include a statement by the person 

11 making such submission affirming that the sub12 mission was made in compliance with this sec13 tion.’’. 

14 SEC. 8. VENUE AND JURISDICTION. 

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

16 28, United States Code, is amended by striking subsection 

17 (b) and inserting the following: 

18 ‘‘(b) Notwithstanding section 1391 of this title, in any 

19 civil action arising under any Act of Congress relating to 

20 patents, a party shall not manufacture venue by assign21 ment, incorporation, or otherwise to invoke the venue of a 

22 specific district court. 

23 ‘‘(c) Notwithstanding section 1391 of this title, any 

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1 claratory judgment may be brought only in a judicial dis2 trict— 

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

4 of business or in the location or place in which the 

5 defendant is incorporated or formed, or, for foreign 

6 corporations with a United States subsidiary, where 

7 the defendant’s primary United States subsidiary has 

8 its principal place of business or is incorporated or 

9 formed; 

10 ‘‘(2) where the defendant has committed substan11 tial acts of infringement and has a regular and estab12 lished physical facility that the defendant controls 

13 and that constitutes a substantial portion of the oper14 ations of the defendant; 

15 ‘‘(3) where the primary plaintiff resides, if the 

16 primary plaintiff in the action is— 

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

18 defined under section 101(a) of the Higher Edu19 cation Act of 1965 (20 U.S.C. 1001(a)); or 

20 ‘‘(B) a nonprofit organization that— 

21 ‘‘(i) qualifies for treatment under sec22 tion 501(c)(3) of the Internal Revenue Code 

23 (26 U.S.C. 501(c)(3)); 

24 ‘‘(ii) is exempt from taxation under 

25 section 501(a) of such Code; and 


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1 ‘‘(iii) serves as the patent and licens2 ing organization for an institution of higher 

3 education as defined under section 101(a) of 

4 the Higher Education Act of 1965 (20 

5 U.S.C. 1001(a)); or 

6 ‘‘(4) where the plaintiff resides, if the sole plain7 tiff in the action is an individual inventor who is a 

8 natural person and who qualifies at the time such ac9 tion is filed as a micro-entity pursuant to section 123 

10 of title 35. 

11 ‘‘(d) If a plaintiff brings a civil action for patent in12 fringement or declaratory judgment relief under subsection 

13 (c), then the defendant may request the district court to 

14 transfer that action to another district or division where, 

15 in the court’s determination— 

16 ‘‘(1) any of the parties has substantial evidence 

17 or witnesses that otherwise would present considerable 

18 evidentiary burdens to the defendant if such transfer 

19 were not granted; 

20 ‘‘(2) such transfer would not cause undue hard21 ship to the plaintiff; and 

22 ‘‘(3) venue would be otherwise appropriate under 

23 section 1391 of this title.’’. 


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

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

3 by adding at the end the following: 

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

5 decree determining construction of claims in a civil 

6 action for patent infringement under section 271 of 

7 title 35. 

8 Application for an appeal under paragraph (3) shall 

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

10 order or decree. The district court shall have discre11 tion whether to approve the application and, if so, 

12 whether to stay proceedings in the district court dur13 ing the pendency of such appeal.’’. 

14 (c) TECHNICAL AMENDMENTS RELATING TO VENUE.— 

15 Sections 32, 145, 146, 154(b)(4)(A), and 293 of title 35, 

16 United States Code, and section 1071(b)(4) of an Act to 

17 provide for the registration and protection of trademarks 

18 used in commerce, to carry out the provisions of certain 

19 international conventions, and for other purposes, approved 

20 July 5, 1946 (15 U.S.C. 1051 et seq.) (commonly referred 

21 to as the Trademark Act of 1946 or the Lanham Act) are 

22 each amended by striking ‘‘United States District Court for 

23 the District of Columbia’’ each place that term appears and 

24 inserting ‘‘United States District Court for the Eastern Dis25 trict of Virginia’’. 


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1 SEC. 9. PATENT AND TRADEMARK OFFICE REGULATORY AU2 THORITY. 

3 (a) FEE SETTING.— 

4 (1) IN GENERAL.—The Director shall have au5 thority to set or adjust by rule any fee established or 

6 charged by the Office under sections 41 and 376 of 

7 title 35, United States Code or under section 31 of the 

8 Trademark Act of 1946 (15 U.S.C. 1113) for the fil9 ing or processing of any submission to, and for all 

10 other services performed by or materials furnished by, 

11 the Office, provided that such fee amounts are set to 

12 reasonably compensate the Office for the services per13 formed. 

14 (2) REDUCTION OF FEES IN CERTAIN FISCAL

15 YEARS.—In any fiscal year, the Director— 

16 (A) shall consult with the Patent Public Ad17 visory Committee and the Trademark Public Ad18 visory Committee on the advisability of reducing 

19 any fees described in paragraph (1); and 

20 (B) after that consultation may reduce such 

21 fees. 

22 (3) ROLE OF THE PUBLIC ADVISORY COM23 MITTEE.—The Director shall— 

24 (A) submit to the Patent or Trademark 

25 Public Advisory Committee, or both, as appro26 priate, any proposed fee under paragraph (1) 


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1 not less than 45 days before publishing any pro2 posed fee in the Federal Register; 

3 (B) provide the relevant advisory committee 

4 described in subparagraph (A) a 30-day period 

5 following the submission of any proposed fee, on 

6 which to deliberate, consider, and comment on 

7 such proposal, and require that— 

8 (i) during such 30-day period, the rel9 evant advisory committee hold a public 

10 hearing related to such proposal; and 

11 (ii) the Director shall assist the rel12 evant advisory committee in carrying out 

13 such public hearing, including by offering 

14 the use of Office resources to notify and pro15 mote the hearing to the public and inter16 ested stakeholders; 

17 (C) require the relevant advisory committee 

18 to make available to the public a written report 

19 detailing the comments, advice, and rec20 ommendations of the committee regarding any 

21 proposed fee; 

22 (D) consider and analyze any comments, 

23 advice, or recommendations received from the 

24 relevant advisory committee before setting or ad25 justing any fee; and 


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1 (E) notify, through the Chair and Ranking 

2 Member of the Senate and House Judiciary 

3 Committees, the Congress of any final decision 

4 regarding proposed fees. 

5 (4) PUBLICATION IN THE FEDERAL REGISTER.— 

6 (A) IN GENERAL.—Any rules prescribed 

7 under this subsection shall be published in the 

8 Federal Register. 

9 (B) RATIONALE.—Any proposal for a 

10 change in fees under this section shall— 

11 (i) be published in the Federal Reg12 ister; and 

13 (ii) include, in such publication, the 

14 specific rationale and purpose for the pro15 posal, including the possible expectations or 

16 benefits resulting from the proposed change. 

17 (C) PUBLIC COMMENT PERIOD.—Following 

18 the publication of any proposed fee in the Fed19 eral Register pursuant to subparagraph (A), the 

20 Director shall seek public comment for a period 

21 of not less than 45 days. 

22 (5) CONGRESSIONAL COMMENT PERIOD.—Fol23 lowing the notification described in paragraph 

24 (3)(E), Congress shall have not more than 45 days to 

25 consider and comment on any proposed fee under 


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1 paragraph (1). No proposed fee shall be effective prior 

2 to the end of such 45-day comment period. 

3 (6) RULE OF CONSTRUCTION.—No rules pre4 scribed under this subsection may diminish— 

5 (A) an applicant’s rights under this title or 

6 the Trademark Act of 1946; or 

7 (B) any rights under a ratified treaty. 

8 (b) FEES FOR PATENT SERVICES.—Division B of Pub9 lic Law 108–447 is amended in title VIII of the Depart10 ments of Commerce, Justice and State, the Judiciary, and 

11 Related Agencies Appropriations Act, 2005, in section 

12 801(a) by striking ‘‘During fiscal years 2005, 2006 and 

13 2007’’, and inserting ‘‘Until such time as the Director sets 

14 or adjusts the fees otherwise,’’. 

15 (c) ADJUSTMENT OF TRADEMARK FEES.—Division B 

16 of Public Law 108–447 is amended in title VIII of the De17 partments of Commerce, Justice and State, the Judiciary 

18 and Related Agencies Appropriations Act, 2005, in section 

19 802(a) by striking ‘‘During fiscal years 2005, 2006 and 

20 2007’’, and inserting ‘‘Until such time as the Director sets 

21 or adjusts the fees otherwise,’’. 

22 (d) EFFECTIVE DATE, APPLICABILITY, AND TRANSI23 TIONAL PROVISION.—Division B of Public Law 108–447 is 

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1 priations Act, 2005, in section 803(a) by striking ‘‘and 

2 shall apply only with respect to the remaining portion of 

3 fiscal year 2005, 2006 and 2007.’’. 

4 (e) RULE OF CONSTRUCTION.—Nothing in this section 

5 shall be construed to affect any other provision of Division 

6 B of Public Law 108–447, including section 801(c) of title 

7 VII of the Departments of Commerce, Justice and State, 

8 the Judiciary and Related Agencies Appropriations Act, 

9 2005. 

10 (f) DEFINITIONS.—In this section: 

11 (1) DIRECTOR.—The term ‘‘Director’’ means the 

12 Director of the United States Patent and Trademark 

13 Office. 

14 (2) OFFICE.—The term ‘‘Office’’ means the 

15 United States Patent and Trademark Office. 

16 (3) TRADEMARK ACT OF 1946.—The term ‘‘Trade17 mark Act of 1946’’ means an Act entitled ‘‘Act to pro18 vide for the registration and protection of trademarks 

19 used in commerce, to carry out the provisions of cer20 tain international conventions, and for other pur21 poses’’, approved July 5, 1946 (15 U.S.C. 1051 et 

22 seq.) (commonly referred to as the Trademark Act of 

23 1946 or the Lanham Act). 


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1 SEC. 10. RESIDENCY OF FEDERAL CIRCUIT JUDGES. 

2 The second sentence of section 44(c) of title 28, United 

3 States Code, is repealed. 

4 SEC. 11. APPLICANT QUALITY SUBMISSIONS. 

5 Chapter 11 of title 35, United States Code, is amended 

6 by adding at the end the following new section: 

7 ‘‘§ 123. Additional information; micro-entity exception 

8 ‘‘(a) IN GENERAL.—The Director shall, by regulation, 

9 require that an applicant for a patent under this title sub10 mit to the Director— 

11 ‘‘(1) a search report and analysis relevant to 

12 patentability; and 

13 ‘‘(2) any other information relevant to patent14 ability that the Director, in his discretion, determines 

15 necessary. 

16 ‘‘(b) FAILURE TO COMPLY.—If an applicant fails to 

17 submit the search report, analysis, or information required 

18 under subsection (a) in the manner and within the time 

19 period prescribed by the Director, such application shall be 

20 regarded as abandoned. 

21 ‘‘(c) EXCEPTION.—Any application for a patent sub22 mitted by a micro-entity shall not be subject to the require23 ments of this section. 

24 ‘‘(d) MICRO-ENTITY DEFINED.— 

25 ‘‘(1) IN GENERAL.—For purposes of this section, 

26 the term ‘micro-entity’ means an applicant who 


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1 makes a certification under either paragraph (2) or 

2 (3). 

3 ‘‘(2) UNASSIGNED APPLICATION.—For an unas4 signed application, each applicant shall certify that 

5 the applicant— 

6 ‘‘(A) qualifies as a small entity, as defined 

7 in regulations issued by the Director; 

8 ‘‘(B) has not been named on 5 or more pre9 viously filed patent applications; 

10 ‘‘(C) has not assigned, granted, or conveyed, 

11 and is not under an obligation by contract or 

12 law to assign, grant, or convey, a license or any 

13 other ownership interest in the particular appli14 cation; and 

15 ‘‘(D) does not have a gross income, as de16 fined in section 61(a) of the Internal Revenue 

17 Code (26 U.S.C. 61(a)), exceeding 2.5 times the 

18 average gross income, as reported by the Depart19 ment of Labor, in the calendar year immediately 

20 preceding the calendar year in which the exam21 ination fee is being paid. 

22 ‘‘(3) ASSIGNED APPLICATION.—For an assigned 

23 application, each applicant shall certify that the ap24 plicant— 


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1 ‘‘(A) qualifies as a small entity, as defined 

2 in regulations issued by the Director, and meets 

3 the requirements of paragraph (2)(D); 

4 ‘‘(B) has not been named on 5 or more pre5 viously filed patent applications; and 

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

7 under an obligation by contract or law to assign, 

8 grant, or convey, a license or other ownership in9 terest in the particular application to an entity 

10 that has 5 or fewer employees and that such enti11 ty has a gross income, as defined in section 

12 61(a) of the Internal Revenue Code (26 U.S.C. 

13 61(a)), that does not exceed 2.5 times the average 

14 gross income, as reported by the Department of 

15 Labor, in the calendar year immediately pre16 ceding the calendar year in which the examina17 tion fee is being paid. 

18 ‘‘(4) INCOME LEVEL ADJUSTMENT.—The gross 

19 income levels established under paragraphs (2) and 

20 (3) shall be adjusted by the Director on October 1, 

21 2009, and every year thereafter, to reflect any fluctua22 tions occurring during the previous 12 months in the 

23 Consumer Price Index, as determined by the Sec24 retary of Labor.’’. 


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1 SEC. 12. INEQUITABLE CONDUCT. 

2 Chapter 29 of title 35, United States Code, is amended 

3 by adding at the end the following new section: 

4 ‘‘§ 298. Inequitable conduct 

5 ‘‘(a) IN GENERAL.—A party advancing the propo6 sition that a patent should be cancelled or held unenforce7 able due to inequitable conduct in connection with a matter 

8 or proceeding before the United States Patent and Trade9 mark Office shall prove independently by clear and con10 vincing evidence that material information was misrepre11 sented or omitted from the patent application of such patent 

12 with the intention of deceiving the Office. 

13 ‘‘(b) MATERIALITY.—Information shall be considered 

14 material for purposes of subsection (a) if— 

15 ‘‘(1) a reasonable patent examiner would con16 sider such information important in deciding whether 

17 to allow the patent application; and 

18 ‘‘(2) such information is not cumulative to infor19 mation already of record in the application. 

20 ‘‘(c) INTENT.—Intent to deceive the Office may be in21 ferred under subsection (a), but the inference may not be 

22 based solely on the gross negligence of the patent owner or 

23 its representative, or on the materiality of the information 

24 misrepresented or not disclosed. 

25 ‘‘(d) PLEADING.—In actions involving allegations of 

26 inequitable conduct before the Office, the party asserting the 


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1 defense or claim shall comply with the pleading require2 ments set forth under Federal Rules of Civil Procedure 9(b). 

3 ‘‘(e) REMEDIES.—If the court finds both that material 

4 information was misrepresented to, or withheld from, the 

5 Office and an intent to deceive, after balancing the equities, 

6 the court, using its discretion, shall impose 1 or more of 

7 the following remedies as it deems appropriate: 

8 ‘‘(1) Hold the patent unenforceable. 

9 ‘‘(2) Hold 1 or more claims of the patent unen10 forceable. 

11 ‘‘(3) Order that the patentee is not entitled to eq12 uitable relief and that the sole and exclusive remedy 

13 for infringement of the patent shall be a reasonable 

14 royalty.’’. 

15 SEC. 13. AUTHORITY OF THE DIRECTOR OF THE PATENT 

16 AND TRADEMARK OFFICE TO ACCEPT LATE 

17 FILINGS. 

18 (a) AUTHORITY.—Section 2 of title 35, United States 

19 Code, is amended by adding at the end the following: 

20 ‘‘(e) DISCRETION TO ACCEPT LATE FILINGS IN CER21 TAIN CASES OF UNINTENTIONAL DELAY.— 

22 ‘‘(1) IN GENERAL.—The Director may accept 

23 any application or other filing made by— 


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1 ‘‘(A) an applicant for, or owner of, a patent 

2 after the applicable deadline set forth in this title 

3 with respect to the application or patent; or 

4 ‘‘(B) an applicant for, or owner of, a mark 

5 after the applicable deadline under the Trade6 mark Act of 1946 with respect to the registration 

7 or other filing of the mark, 

8 to the extent that the Director considers appropriate, 

9 if the applicant or owner files a petition within 30 

10 days after such deadline showing, to the satisfaction 

11 of the Director, that the delay was unintentional. 

12 ‘‘(2) TREATMENT OF DIRECTOR’S ACTIONS ON

13 PETITION.—If the Director has not made a deter14 mination on a petition filed under paragraph (1) 

15 within 60 days after the date on which the petition 

16 is filed, the petition shall be deemed to be denied. A 

17 decision by the Director not to exercise, or a failure 

18 to exercise, the discretion provided by this subsection 

19 shall not be subject to judicial review. 

20 ‘‘(3) OTHER PROVISIONS NOT AFFECTED.—This 

21 subsection shall not apply to any other provision of 

22 this title, or to any provision of the Trademark Act 

23 of 1946, that authorizes the Director to accept, under 

24 certain circumstances, applications or other filings 

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1 lines that are required by reason of the obligations of 

2 the United States under any treaty. 

3 ‘‘(4) DEFINITION.—In this subsection, the term 

4 ‘Trademark Act of 1946’ means the Act entitled ‘An 

5 Act to provide for the registration and protection of 

6 trademarks used in commerce, to carry out the provi7 sions of certain international conventions, and for 

8 other purposes’, approved July 5, 1946 (15 U.S.C. 

9 1051 et seq.) (commonly referred to as the Trademark 

10 Act of 1946 or the Lanham Act).’’. 

11 (b) APPLICABILITY.— 

12 (1) IN GENERAL.—The amendment made by sub13 section (a) shall apply to any application or other fil14 ing that— 

15 (A) is filed on or after the date of the enact16 ment of this Act; or 

17 (B) on such date of enactment, is pending 

18 before the Director or is subject to judicial re19 view. 

20 (2) TREATMENT OF PENDING APPLICATIONS AND

21 FILINGS.—In the case of any application or filing de22 scribed in paragraph (1)(B), the 30-day period pre23 scribed in section 2(e)(1) of title 35, United States 

24 Code, as added by subsection (a) of this section, shall 


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1 be deemed to be the 30-day period beginning on the 

2 date of the enactment of this Act. 

3 SEC. 14. LIMITATION ON DAMAGES AND OTHER REMEDIES 

4 WITH RESPECT TO PATENTS FOR METHODS 

5 IN COMPLIANCE WITH CHECK IMAGING 

6 METHODS. 

7 (a) LIMITATION.—Section 287 of title 35, United 

8 States Code, is amended by adding at the end the following: 

9 ‘‘(d)(1) With respect to the use by a financial institu10 tion of a check collection system that constitutes an in11 fringement under subsection (a) or (b) of section 271, the 

12 provisions of sections 281, 283, 284, and 285 shall not 

13 apply against the financial institution with respect to such 

14 a check collection system. 

15 ‘‘(2) For the purposes of this subsection— 

16 ‘‘(A) the term ‘check’ has the meaning given 

17 under section 3(6) of the Check Clearing for the 21st 

18 Century Act (12 U.S.C. 5002(6)); 

19 ‘‘(B) the term ‘check collection system’ means the 

20 use, creation, transmission, receipt, storing, settling, 

21 or archiving of truncated checks, substitute checks, 

22 check images, or electronic check data associated with 

23 or related to any method, system, or process that fur24 thers or effectuates, in whole or in part, any of the 


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1 purposes of the Check Clearing for the 21st Century 

2 Act (12 U.S.C. 5001 et seq.); 

3 ‘‘(C) the term ‘financial institution’ has the 

4 meaning given under section 509 of the Gramm5 Leach-Bliley Act (15 U.S.C. 6809); 

6 ‘‘(D) the term ‘substitute check’ has the meaning 

7 given under section 3(16) of the Check Clearing for 

8 the 21st Century Act (12 U.S.C. 5002(16)); and 

9 ‘‘(E) the term ‘truncate’ has the meaning given 

10 under section 3(18) of the Check Clearing for the 21st 

11 Century Act (12 U.S.C. 5002(18)).’’. 

12 (b) EFFECTIVE DATE.—The amendment made by sub13 section (a) shall apply to any civil action for patent in14 fringement pending or filed on or after the date of enact15 ment of this Act. 

16 SEC. 15. PATENT AND TRADEMARK OFFICE FUNDING. 

17 (a) DEFINITIONS.—In this section: 

18 (1) DIRECTOR.—The term ‘‘Director’’ means the 

19 Director of the United States Patent and Trademark 

20 Office. 

21 (2) FUND.—The term ‘‘Fund’’ means the public 

22 enterprise revolving fund established under subsection 

23 (c). 

24 (3) OFFICE.—The term ‘‘Office’’ means the 

25 United States Patent and Trademark Office. 


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1 (4) TRADEMARK ACT OF 1946.—The term ‘‘Trade2 mark Act of 1946’’ means an Act entitled ‘‘Act to pro3 vide for the registration and protection of trademarks 

4 used in commerce, to carry out the provisions of cer5 tain international conventions, and for other pur6 poses’’, approved July 5, 1946 (15 U.S.C. 1051 et 

7 seq.) (commonly referred to as the Trademark Act of 

8 1946 or the Lanham Act). 

9 (5) UNDERSECRETARY.—The term ‘‘Undersecre10 tary’’ means the Under Secretary of Commerce for In11 tellectual Property. 

12 (b) FUNDING.— 

13 (1) IN GENERAL.—Section 42 of title 35, United 

14 States Code, is amended— 

15 (A) in subsection (b), by striking ‘‘Patent 

16 and Trademark Office Appropriation Account’’ 

17 and inserting ‘‘United States Patent and Trade18 mark Office Public Enterprise Fund’’; and 

19 (B) in subsection (c), in the first sentence— 

20 (i) by striking ‘‘To the extent’’ and all 

21 that follows through ‘‘fees’’ and inserting 

22 ‘‘Fees’’; and 

23 (ii) by striking ‘‘shall be collected by 

24 and shall be available to the Director’’ and 


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1 inserting ‘‘shall be collected by the Director 

2 and shall be available until expended’’. 

3 (2) EFFECTIVE DATE.— 

4 (A) IN GENERAL.—The amendments made 

5 by paragraph (1) shall take effect on October 1, 

6 2008. 

7 (B) TERMINATION OF APPROPRIATION.—The 

8 provisions of any prior appropriation Act that 

9 makes amounts available pursuant to section 

10 42(c) of title 35, United States Code, and are in 

11 effect on the effective date set forth in subpara12 graph (A) shall cease to be effective on that effec13 tive date, and any unexpended amounts made 

14 available pursuant to such section shall be trans15 ferred in accordance with subsection (c)(5). 

16 (c) USPTO REVOLVING FUND.— 

17 (1) ESTABLISHMENT.—There is established in 

18 the Treasury of the United States a revolving fund to 

19 be known as the ‘‘United States Patent and Trade20 mark Office Public Enterprise Fund’’. Any amounts 

21 in the Fund shall be available for use by the Director 

22 without fiscal year limitation. 

23 (2) DERIVATION OF RESOURCES.—There shall be 

24 deposited into the Fund— 


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1 (A) any fees collected under sections 41, 42, 

2 and 376 of title 35, United States Code, provided 

3 that notwithstanding any other provision of law, 

4 if such fees are collected by, and payable to, the 

5 Director, the Director shall transfer such 

6 amounts to the Fund; and 

7 (B) any fees collected under section 31 of 

8 the Trademark Act of 1946 (15 U.S.C. 1113). 

9 (3) EXPENSES.—Amounts deposited into the 

10 Fund under paragraph (2) shall be available, without 

11 fiscal year limitation, to cover— 

12 (A) all expenses to the extent consistent with 

13 the limitation on the use of fees set forth in sec14 tion 42(c) of title 35, United States Code, includ15 ing all administrative and operating expenses, 

16 determined in the discretion of the Under Sec17 retary to be ordinary and reasonable, incurred 

18 by the Under Secretary and the Director for the 

19 continued operation of all services, programs, ac20 tivities, and duties of the Office, as such services, 

21 programs, activities, and duties are described 

22 under— 

23 (i) title 35, United States Code; and 

24 (ii) the Trademark Act of 1946; and 


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1 (B) all expenses incurred pursuant to any 

2 obligation, representation, or other commitment 

3 of the Office. 

4 (4) CUSTODIANS OF MONEY.—Notwithstanding 

5 section 3302 of title 31, United States Code, any 

6 funds received by the Director and transferred to 

7 Fund, or any amounts directly deposited into the 

8 Fund, may be used— 

9 (A) to cover the expenses described in para10 graph (3); and 

11 (B) to purchase obligations of the United 

12 States, or any obligations guaranteed by the 

13 United States. 

14 (5) UNEXPENDED BALANCES.—Any unexpended 

15 balances in any accounts held on behalf of the Direc16 tor, or the Office, including in the Patent and Trade17 mark Office Appropriation Account in the Treasury 

18 of the United States, shall be transferred to the Fund 

19 and shall remain available until expended. 

20 (d) ANNUAL REPORT.—Not later than 60 days after 

21 the end of each fiscal year, the Under Secretary and the 

22 Director shall submit a report to Congress which shall— 

23 (1) summarize the operations of the Office for the 

24 preceding fiscal year, including financial details and 


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1 staff levels broken down by each major activity of the 

2 Office; 

3 (2) detail the operating plan of the Office, in4 cluding specific expense and staff needs for the up5 coming fiscal year; 

6 (3) describe the long term modernization plans of 

7 the Office; 

8 (4) set forth details of any progress towards such 

9 modernization plans made in the previous fiscal year; 

10 and 

11 (5) include the results of the most recent audit 

12 carried out under subsection (f). 

13 (e) ANNUAL SPENDING PLAN.— 

14 (1) IN GENERAL.—Not later than 30 days after 

15 the beginning of each fiscal year, the Director shall 

16 notify the Committees on Appropriations of both 

17 Houses of Congress of the plan for the obligation and 

18 expenditure of the total amount of the funds for that 

19 fiscal year in accordance with section 605 of the 

20 Science, State, Justice, Commerce, and Related Agen21 cies Appropriations Act, 2006 (Public Law 109–108; 

22 119 Stat. 2334). 

23 (2) CONTENTS.—Each plan under paragraph (1) 

24 shall— 


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1 (A) summarize the operations of the Office 

2 for the current fiscal year, including financial 

3 details and staff levels with respect to major ac4 tivities; and 

5 (B) detail the operating plan of the Office, 

6 including specific expense and staff needs, for the 

7 current fiscal year. 

8 (f) AUDIT.—The Under Secretary shall, on an annual 

9 basis, provide for an independent audit of the financial 

10 statements of the Office. Such audit shall be conducted in 

11 accordance with generally acceptable accounting proce12 dures. 

13 (g) BUDGET.—In accordance with section 9301 of title 

14 31, United States Code, the Fund shall prepare and submit 

15 each year to the President a business-type budget in such 

16 manner, and before such date, as the President prescribes 

17 by regulation for the budget program. 

18 SEC. 16. TECHNICAL AMENDMENTS. 

19 (a) JOINT INVENTIONS.—Section 116 of title 35, 

20 United States Code, is amended— 

21 (1) in the first paragraph, by striking 

22 ‘‘When’’ and inserting ‘‘(a) JOINT INVEN23 TIONS.—When’’; 


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

2 a joint inventor’’ and inserting ‘‘(b) OMITTED

3 INVENTOR.—If a joint inventor’’; and 

4 (3) in the third paragraph, by striking 

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

6 ERRORS IN APPLICATION.—Whenever’’. 

7 (b) FILING OF APPLICATION IN FOREIGN COUNTRY.— 

8 Section 184 of title 35, United States Code, is amended— 

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

10 when’’ and inserting ‘‘(a) FILING IN FOREIGN COUN11 TRY.—Except when’’; 

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

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

14 and 

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

16 scope’’ and inserting ‘‘(c) SUBSEQUENT MODIFICA17 TIONS, AMENDMENTS, AND SUPPLEMENTS.—The 

18 scope’’. 

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

20 of title 35, United States Code, is amended— 

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

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

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

25 PATENTS.—The Director’’; 


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

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

3 THIS TITLE.—The provisions’’; and 

4 (4) in the last paragraph, by striking ‘‘No re5 issued patent’’ and inserting ‘‘(d) REISSUE PATENT

6 ENLARGING SCOPE OF CLAIMS.—No reissued patent’’. 

7 (d) EFFECT OF REISSUE.—Section 253 of title 35, 

8 United States Code, is amended— 

9 (1) in the first paragraph, by striking ‘‘When10 ever’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; 

11 and 

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

13 manner’’ and inserting ‘‘(b) ADDITIONAL DISCLAIMER

14 OR DEDICATION.—In the manner set forth in sub15 section (a),’’. 

16 (e) CORRECTION OF NAMED INVENTOR.—Section 256 

17 of title 35, United States Code, is amended— 

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

20 and 

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

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

23 CORRECTED.—The error’’. 

24 (f) PRESUMPTION OF VALIDITY.—Section 282 of title 

25 35, United States Code, is amended— 


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1 (1) in the first undesignated paragraph, by 

2 striking ‘‘A patent’’ and inserting ‘‘(a) IN GEN3 ERAL.—A patent’’; 

4 (2) in the second undesignated paragraph, by 

5 striking ‘‘The following’’ and inserting ‘‘(b) DE6 FENSES.—The following’’; and 

7 (3) in the third undesignated paragraph, by 

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

9 ACTIONS; ACTIONS DURING EXTENSION OF PATENT

10 TERM.—In actions’’. 

11 SEC. 17. EFFECTIVE DATE; RULE OF CONSTRUCTION. 

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

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

14 months after the date of the enactment of this Act and shall 

15 apply to any patent issued on or after that effective date. 

16 (b) CONTINUITY OF INTENT UNDER THE CREATE

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

18 United States Code, under section (2)(b) of this Act is done 

19 with the same intent to promote joint research activities 

20 that was expressed, including in the legislative history, 

21 through the enactment of the Cooperative Research and 

22 Technology Enhancement Act of 2004 (Public Law 108– 

23 453; the ‘‘CREATE Act’’), the amendments of which are 

24 stricken by section 2(c) of this Act. The United States Pat25 ent and Trademark Office shall administer section 


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1 102(b)(3) of title 35, United States Code, in a manner con2 sistent with the legislative history of the CREATE Act that 

3 was relevant to its administration by the United States 

4 Patent and Trademark Office. 


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Calendar No. 563 

110TH CONGRESS 

2D SESSION S. 1145 

[Report No. 110

–259] 

A BILL 

To amend title 35, United States Code, to provide 

J

for patent reform. 

ANUARY 24, 2008 

Reported with an amendment 


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