‘‘(B) For purposes of subparagraph (A), the 
term ‘joint research agreement’ means a written 
contract, grant, or cooperative agreement entered 
into by two or more persons or entities for the 
performance of experimental, developmental, or 
research work in the field of the claimed inven-
tion. 
‘‘(4) PATENTS
AND
PUBLISHED
APPLICATIONS 
EFFECTIVELY
FILED.—A patent or application for 
patent is effectively filed under subsection (a)(2) with 
respect to any subject matter described in the patent 
or application— 
‘‘(A) as of the filing date of the patent or 
the application for patent; or 
‘‘(B) if the patent or application for patent 
is entitled to claim a right of priority under sec-
tion 119, 365(a), or 365(b) or to claim the ben-
efit of an earlier filing date under section 120, 
121, or 365(c), based upon one or more prior 
filed applications for patent, as of the filing date 
of the earliest such application that describes the 
subject matter.’’. 
(2) CONFORMING AMENDMENT.—The item relat-
ing to section 102 in the table of sections for chapter 
10 is amended to read as follows: 
‘‘102. Conditions for patentability; novelty.’’. 
VerDate Aug 31 2005 
23:13 Sep 04, 2007
Jkt 059200
PO 00000
Frm 00007
Fmt 6652
Sfmt 6213
E:\BILLS\H1908.RH
H1908
hsrobinson on PROD1PC76 with BILLS
(c) CONDITIONS FOR PATENTABILITY; NON-OBVIOUS 
SUBJECT MATTER.—Section 103 is amended to read as fol-
lows: 
‘‘§ 103. Conditions for patentability; nonobvious sub-
ject matter 
‘‘A patent for a claimed invention may not be obtained 
though the claimed invention is not identically disclosed as 
set forth in section 102, if the differences between the 
claimed invention and the prior art are such that the 
claimed invention as a whole would have been obvious be-
fore the effective filing date of the claimed invention to a 
person having ordinary skill in the art to which the claimed 
invention pertains. Patentability shall not be negated by 
the manner in which the invention was made.’’. 
(d) REPEAL
OF REQUIREMENTS
FOR INVENTIONS 
MADE ABROAD.—Section 104, and the item relating to that 
section in the table of sections for chapter 10, are repealed. 
(e) REPEAL
OF STATUTORY INVENTION REGISTRA-
TION.— 
(1) IN GENERAL.—Section 157, and the item re-
lating to that section in the table of sections for chap-
ter 14, are repealed. 
(2) REMOVAL OF CROSS REFERENCES.—Section 
111(b)(8) is amended by striking ‘‘sections 115, 131, 
135, and 157’’ and inserting ‘‘sections 131 and 135’’. 
VerDate Aug 31 2005 
22:20 Sep 04, 2007
Jkt 059200
PO 00000
Frm 00008
Fmt 6652
Sfmt 6203
E:\BILLS\H1908.RH
H1908
hsrobinson on PROD1PC76 with BILLS
(f) EARLIER FILING DATE FOR INVENTOR AND JOINT 
INVENTOR.—Section 120 is amended by striking ‘‘which is 
filed by an inventor or inventors named’’ and inserting 
‘‘which names an inventor or joint inventor’’. 
(g) CONFORMING AMENDMENTS.— 
(1) RIGHT OF PRIORITY.—Section 172 is amend-
ed by striking ‘‘and the time specified in section 
102(d)’’. 
(2) 
LIMITATION
ON
REMEDIES.—Section 
287(c)(4) is amended by striking ‘‘the earliest effective 
filing date of which is prior to’’ and inserting ‘‘which 
has an effective filing date before’’. 
(3) INTERNATIONAL APPLICATION DESIGNATING 
THE
UNITED
STATES: 
EFFECT.—Section 363 is 
amended by striking ‘‘except as otherwise provided in 
section 102(e) of this title’’. 
(4) PUBLICATION OF INTERNATIONAL APPLICA-
TION: EFFECT.—Section 374 is amended by striking 
‘‘sections 102(e) and 154(d)’’ and inserting ‘‘section 
154(d)’’. 
(5) PATENT ISSUED ON INTERNATIONAL APPLICA-
TION: EFFECT.—The second sentence of section 375(a) 
is amended by striking ‘‘Subject to section 102(e) of 
this title, such’’ and inserting ‘‘Such’’. 
VerDate Aug 31 2005 
22:20 Sep 04, 2007
Jkt 059200
PO 00000
Frm 00009
Fmt 6652
Sfmt 6203
E:\BILLS\H1908.RH
H1908
hsrobinson on PROD1PC76 with BILLS
(6) LIMIT
ON
RIGHT
OF
PRIORITY.—Section 
119(a) is amended by striking ‘‘; but no patent shall 
be granted’’ and all that follows through ‘‘one year 
prior to such filing’’. 
(7) INVENTIONS MADE WITH FEDERAL ASSIST-
ANCE.—Section 202(c) is amended— 
(A) in paragraph (2)— 
(i) by striking ‘‘publication, on sale, or 
public use,’’ and all that follows through 
‘‘obtained in the United States’’ and insert-
ing ‘‘the 1-year period referred to in section 
102(a) would end before the end of that 2- 
year period’’; and 
(ii) by striking ‘‘the statutory’’ and in-
serting ‘‘that 1-year’’; and 
(B) in paragraph (3), by striking ‘‘any 
statutory bar date that may occur under this 
title due to publication, on sale, or public use’’ 
and inserting ‘‘the expiration of the 1-year pe-
riod referred to in section 102(a)’’. 
(h) REPEAL OF INTERFERING PATENT REMEDIES.— 
Section 291, and the item relating to that section in the 
table of sections for chapter 29, are repealed. 
(i) ACTION FOR CLAIM TO PATENT ON DERIVED IN-
VENTION.— 
VerDate Aug 31 2005 
22:20 Sep 04, 2007
Jkt 059200
PO 00000
Frm 00010
Fmt 6652
Sfmt 6203
E:\BILLS\H1908.RH
H1908
hsrobinson on PROD1PC76 with BILLS
(1) IN GENERAL.—Section 135(a) is amended to 
read as follows: 
‘‘(a) DISPUTE OVER RIGHT TO PATENT.— 
‘‘(1) 
INSTITUTION
OF
DERIVATION
PRO-
CEEDING.— 
‘‘(A) REQUEST FOR PROCEEDING.—An ap-
plicant may request initiation of a derivation 
proceeding to determine the right of the appli-
cant to a patent by filing a request that sets 
forth with particularity the basis for finding 
that another applicant derived the claimed in-
vention from the applicant requesting the pro-
ceeding and, without authorization, filed an ap-
plication claiming such invention. Any such re-
quest— 
‘‘(i) may only be made within 12 
months after the earlier of— 
‘‘(I) the date on which a patent is 
issued containing a claim that is the 
same or substantially the same as the 
claimed invention; or 
‘‘(II) the date of first publication 
of an application containing a claim 
that is the same or is substantially the 
same as the claimed invention; and 
VerDate Aug 31 2005 
22:20 Sep 04, 2007
Jkt 059200
PO 00000
Frm 00011
Fmt 6652
Sfmt 6203
E:\BILLS\H1908.RH
H1908
hsrobinson on PROD1PC76 with BILLS
‘‘(ii) must be made under oath, and 
must be supported by substantial evidence. 
‘‘(B) 
DETERMINATION
OF
DIRECTOR.— 
Whenever the Director determines that patents or 
applications for patent naming different individ-
uals as the inventor interfere with one another 
because of a dispute over the right to patent 
under section 101 on the basis of a request under 
subparagraph (A), the Director shall institute a 
derivation proceeding for the purpose of deter-
mining which applicant is entitled to a patent. 
‘‘(2) DETERMINATION BY PATENT TRIAL AND AP-
PEAL
BOARD.—In any proceeding under this sub-
section, the Patent Trial and Appeal Board— 
‘‘(A) shall determine the question of the 
right to patent; 
‘‘(B) in appropriate circumstances, may 
correct the naming of the inventor in any appli-
cation or patent at issue; and 
‘‘(C) shall issue a final decision on the right 
to patent. 
‘‘(3) DERIVATION
PROCEEDING.—The Patent 
Trial and Appeal Board may defer action on a re-
quest to initiate a derivation proceeding for up to 
three months after the date on which the Director 
VerDate Aug 31 2005 
22:20 Sep 04, 2007
Jkt 059200
PO 00000
Frm 00012
Fmt 6652
Sfmt 6203
E:\BILLS\H1908.RH
H1908
hsrobinson on PROD1PC76 with BILLS
issues a patent to the applicant that filed the earlier 
application. 
‘‘(4) EFFECT OF FINAL DECISION.—The final de-
cision of the Patent Trial and Appeal Board in a 
derivation proceeding, if adverse to the claim of an 
applicant, shall constitute the final refusal by the 
Patent and Trademark Office on the claims involved. 
The Director may issue a patent to an applicant who 
is determined by the Patent Trial and Appeal Board 
to have the right to a patent. The final decision of the 
Board, if adverse to a patentee, shall, if no appeal or 
other review of the decision has been or can be taken 
or had, constitute cancellation of the claims involved 
in the patent, and notice of such cancellation shall be 
endorsed on copies of the patent distributed after such 
cancellation by the Patent and Trademark Office.’’. 
(2) CONFORMING
AMENDMENTS.—(A) Section 
135 is further amended— 
(i) in subsection (b)— 
(I) by striking ‘‘(b)(1) A claim’’ and 
inserting the following: 
‘‘(b) SAME CLAIMS.— 
‘‘(1) ISSUED PATENTS.—A claim’’; and 
(II) by striking ‘‘(2) A claim’’ and in-
serting the following: 
VerDate Aug 31 2005 
22:20 Sep 04, 2007
Jkt 059200
PO 00000
Frm 00013
Fmt 6652
Sfmt 6203
E:\BILLS\H1908.RH
H1908
hsrobinson on PROD1PC76 with BILLS
‘‘(2) PUBLISHED APPLICATIONS.—A claim’’; and 
(III) moving the remaining text of 
paragraphs (1) and (2) 2 ems to the right; 
(ii) in subsection (c)— 
(I) by striking ‘‘(c) Any agreement’’ 
and inserting the following: 
‘‘(c) AGREEMENTS TO TERMINATE PROCEEDINGS.— 
‘‘(1) IN GENERAL.—Any agreement’’; 
(II) by striking ‘‘an interference’’ and 
inserting ‘‘a derivation proceeding’’; 
(III) by striking ‘‘the interference’’ 
each place it appears and inserting ‘‘the 
derivation proceeding’’; 
(IV) in the second paragraph, by strik-
ing ‘‘The Director’’ and inserting the fol-
lowing: 
‘‘(2) NOTICE.—The Director’’; 
(V) by amending the third paragraph 
to read as follows: 
‘‘(3) JUDICIAL REVIEW.—Any discretionary ac-
tion of the Director under this subsection shall be re-
viewable under chapter 7 of title 5.’’; and 
(VI) by moving the remaining text of 
paragraphs (1) and (2) of subsection (c) 2 
ems to the right; and 
VerDate Aug 31 2005 
22:20 Sep 04, 2007
Jkt 059200
PO 00000
Frm 00014
Fmt 6652
Sfmt 6203
E:\BILLS\H1908.RH
H1908
hsrobinson on PROD1PC76 with BILLS
(iii) in subsection (d)— 
(I) by striking ‘‘(d) Parties’’ and in-
serting ‘‘(d) ARBITRATION.—Parties’’; 
(II) by striking ‘‘a patent interference’’ 
and inserting ‘‘a derivation proceeding’’; 
and 
(III) by striking ‘‘the interference’’ and 
inserting ‘‘the derivation proceeding’’. 
(j) 
ELIMINATION
OF
REFERENCES
TO
INTER-
FERENCES.—(1) Sections 41(a)(6), 134, 141, 145, 146, 154, 
305, and 314 are each amended by striking ‘‘Board of Pat-
ent Appeals and Interferences’’ each place it appears and 
inserting ‘‘Patent Trial and Appeal Board’’. 
(2) Section 141 is amended— 
(A) by striking ‘‘an interference’’ and inserting 
‘‘a derivation proceeding’’; and 
(B) by striking ‘‘interference’’ each additional 
place it appears and inserting ‘‘derivation pro-
ceeding’’. 
(3) Section 146 is amended— 
(A) in the first paragraph— 
(i) by striking ‘‘Any party’’ and inserting 
‘‘(a) IN GENERAL.—Any party’’; 
(ii) by striking ‘‘an interference’’ and in-
serting ‘‘a derivation proceeding’’; and 
VerDate Aug 31 2005 
22:20 Sep 04, 2007
Jkt 059200
PO 00000
Frm 00015
Fmt 6652
Sfmt 6203
E:\BILLS\H1908.RH
H1908
hsrobinson on PROD1PC76 with BILLS
(iii) by striking ‘‘interference’’ each addi-
tional place it appears and inserting ‘‘derivation 
proceeding’’; and 
(B) in the second paragraph, by striking ‘‘Such 
suit’’ and inserting ‘‘(b) PROCEDURE.—A suit under 
subsection (a)’’ 
(4) The section heading for section 134 is amended to 
read as follows: 
‘‘§ 134. Appeal to the Patent Trial and Appeal Board’’. 
(5) The section heading for section 135 is amended to 
read as follows: 
‘‘§ 135. Derivation proceedings’’. 
(6) The section heading for section 146 is amended to 
read as follows: 
‘‘§ 146. Civil action in case of derivation proceeding’’. 
(7) Section 154(b)(1)(C) is amended by striking 
‘‘INTERFERENCES’’ and inserting ‘‘DERIVATION
PRO-
CEEDINGS’’. 
(8) The item relating to section 6 in the table of sec-
tions for chapter 1 is amended to read as follows: 
‘‘6. Patent Trial and Appeal Board.’’. 
(9) The items relating to sections 134 and 135 in the 
table of sections for chapter 12 are amended to read as fol-
lows: 
‘‘134. Appeal to the Patent Trial and Appeal Board. 
‘‘135. Derivation proceedings.’’. 
VerDate Aug 31 2005 
22:20 Sep 04, 2007
Jkt 059200
PO 00000
Frm 00016
Fmt 6652
Sfmt 6213
E:\BILLS\H1908.RH
H1908
hsrobinson on PROD1PC76 with BILLS