(3) in the third undesignated paragraph— 
(A) by striking ‘‘In actions’’ and inserting 
‘‘(d) NOTICE OF ACTIONS; PLEADING.—In ac-
tions’’; 
(B) by inserting after the second sentence 
the following: ‘‘In an action involving any alle-
gation of inequitable conduct under subsection 
(c), the party asserting this defense or claim 
shall comply with the pleading requirements set 
forth in Rule 9(b) of the Federal Rules of Civil 
Procedure.’’; and 
(C) by striking ‘‘Invalidity’’ and inserting 
‘‘(e) EXTENSION
OF
PATENT
TERM.—Inva-
lidity’’; and 
(4) by inserting after subsection (b), as des-
ignated by paragraph (2) of this subsection, the fol-
lowing: 
‘‘(c) INEQUITABLE CONDUCT.— 
‘‘(1) DEFENSE.—A patent may be held to be un-
enforceable, or other remedy imposed under para-
graph (3), for inequitable conduct only if it is estab-
lished, by clear and convincing evidence, that— 
‘‘(A) the patentee, its agents, or another 
person with a duty of disclosure to the Office, 
with the intent to mislead or deceive the patent 
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examiner, misrepresented or failed to disclose 
material information concerning a matter or 
proceeding before the Office; and 
‘‘(B) in the absence of such deception, the 
Office, acting reasonably, would, on the record 
before it, have made a prima facie finding of 
unpatentability. 
‘‘(2) INTENT.—In order to prove intent to mis-
lead or deceive under paragraph (1), specific facts be-
yond materiality of the information submitted or not 
disclosed must be proven that support an inference of 
intent to mislead or deceive the Patent and Trade-
mark Office. Facts support an inference of intent if 
they show circumstances that indicate conscious or 
deliberate behavior on the part of the patentee, its 
agents, or another person with a duty of disclosure to 
the Office, to not disclose material information or to 
submit materially false information. 
‘‘(3) REMEDY.—Upon a finding of inequitable 
conduct, the court shall balance the equities to deter-
mine which of the following remedies to impose: 
‘‘(A) Denying equitable relief to the patent 
holder and limiting the remedy for infringement 
to damages. 
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‘‘(B) Holding the claims-in-suit, or the 
claims in which inequitable conduct occurred, 
unenforceable. 
‘‘(C) Holding the patent unenforceable. 
‘‘(D) Holding the claims of a related patent 
unenforceable. 
‘‘(4) ATTORNEY MISCONDUCT.—Upon a finding 
of inequitable conduct, if there is evidence that the 
conduct can be attributable to a person or persons au-
thorized to practice before the Office, the court shall 
refer the matter to the Office for appropriate discipli-
nary action under section 32, and shall order the par-
ties to preserve and make available to the Office any 
materials that may be relevant to the determination 
under section 32.’’. 
(c) EFFECTIVE DATE.— 
(1) SUBSECTION (a).—The amendments made by 
subsection (a)— 
(A) shall take effect at the end of the 1-year 
period beginning on the date of the enactment of 
this Act; and 
(B) shall apply to any application for pat-
ent filed on or after the effective date under sub-
paragraph (A). 
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(2) SUBSECTION (b).—The amendments made by 
subsection (b) shall apply to any civil action com-
menced on or after the date of the enactment of this 
Act. 
SEC. 13. BEST MODE REQUIREMENT. 
Section 282(b) (as designated by section 12(b) of this 
Act) is amended by striking paragraph (3) and inserting 
the following: 
‘‘(3) Invalidity of the patent or any claim in 
suit for failure to comply with— 
‘‘(A) any requirement of section 112 of this 
title, other than the requirement that the speci-
fication shall set forth the best mode con-
templated by the inventor of carrying out his in-
vention; or 
‘‘(B) any requirement of section 251 of this 
title.’’. 
SEC. 14. REGULATORY AUTHORITY. 
(a) 
REGULATORY
AUTHORITY.—Section 
2(c) 
is 
amended by adding at the end the following: 
‘‘(6) The powers granted under paragraph (2) of sub-
section (b) include the authority to promulgate regulations 
to ensure the quality and timeliness of applications and 
their examination, including specifying circumstances 
under which an application for patent may claim the ben-
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efit under sections 120, 121 and 365(c) of the filing date 
of a prior filed application for patent.’’. 
(b) CLARIFICATION.—The amendment made by sub-
section (a) clarifies the scope of power granted to the United 
States Patent and Trademark Office by paragraph (2) of 
section 2(b) of title 35, United States Code, as in effect since 
the enactment of Public Law 106–113. 
SEC. 15. TECHNICAL AMENDMENTS. 
(a) JOINT INVENTIONS.—Section 116 is amended— 
(1) in the first paragraph, by striking 
‘‘When’’ and inserting ‘‘(a) JOINT
INVEN-
TIONS.—When’’; 
(2) in the second paragraph, by striking ‘‘If 
a joint inventor’’ and inserting ‘‘(b) OMITTED 
INVENTOR.—If a joint inventor’’; and 
(3) in the third paragraph, by striking 
‘‘Whenever’’ and inserting ‘‘(c) CORRECTION OF 
ERRORS IN APPLICATION.—Whenever’’. 
(b) FILING OF APPLICATION IN FOREIGN COUNTRY.— 
Section 184 is amended— 
(1) in the first paragraph, by striking ‘‘Except 
when’’ and inserting ‘‘(a) FILING IN FOREIGN COUN-
TRY.—Except when’’; 
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(2) in the second paragraph, by striking ‘‘The 
term’’ and inserting ‘‘(b) APPLICATION.—The term’’; 
and 
(3) in the third paragraph, by striking ‘‘The 
scope’’ and inserting ‘‘(c) SUBSEQUENT MODIFICA-
TIONS, 
AMENDMENTS, 
AND
SUPPLEMENTS.—The 
scope’’. 
(c) REISSUE OF DEFECTIVE PATENTS.—Section 251 
is amended— 
(1) in the first paragraph, by striking ‘‘When-
ever’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; 
(2) in the second paragraph, by striking ‘‘The 
Director’’ and inserting ‘‘(b) MULTIPLE REISSUED 
PATENTS.—The Director’’; 
(3) in the third paragraph, by striking ‘‘The 
provisions’’ and inserting ‘‘(c) APPLICABILITY
OF 
THIS TITLE.—The provisions’’; and 
(4) in the last paragraph, by striking ‘‘No re-
issued patent’’ and inserting ‘‘(d) REISSUE PATENT 
ENLARGING SCOPE OF CLAIMS.—No reissued patent’’. 
(d) EFFECT OF REISSUE.—Section 253 is amended— 
(1) in the first paragraph, by striking ‘‘When-
ever’’ and inserting ‘‘(a) IN GENERAL.—Whenever’’; 
and 
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(2) in the second paragraph, by striking ‘‘In like 
manner’’ and inserting ‘‘(b) ADDITIONAL DISCLAIMER 
OR DEDICATION.—In the manner set forth in sub-
section (a),’’. 
(e) CORRECTION OF NAMED INVENTOR.—Section 256 
is amended— 
(1) in the first paragraph, by striking ‘‘When-
ever’’ and inserting ‘‘(a) CORRECTION.—Whenever’’; 
and 
(2) in the second paragraph, by striking ‘‘The 
error’’ and inserting ‘‘(b) PATENT VALID IF ERROR 
CORRECTED.—The error’’. 
(f) EFFECTIVE DATE.—The amendments made by this 
section shall take effect on the date of the enactment of this 
Act. 
SEC. 16. STUDY OF SPECIAL MASTERS IN PATENT CASES. 
(a) IN GENERAL.—Not later than 180 days after the 
date of the enactment of this Act, the Director of the Admin-
istrative Office of the United States Courts shall conduct 
a study of, and submit to the Committee on the Judiciary 
of the House of Representatives and the Committee on the 
Judiciary of the Senate a report on, the use of special mas-
ters in patent litigation who are appointed in accordance 
with Rule 53 of the Federal Rules of Civil Procedure. 
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(b) OBJECTIVE.—In conducting the study under sub-
section (a), the Director shall consider whether the use of 
special masters has been beneficial in patent litigation and 
what, if any, program should be undertaken to facilitate 
the use by the judiciary of special masters in patent litiga-
tion. 
(c) FACTORS TO CONSIDER.—In conducting the study 
under subsection (a), the Director, in consultation with the 
Federal Judicial Center, shall consider— 
(1) the basis upon which courts appoint special 
masters under Rule 53(b) of the Federal Rules of 
Civil Procedure; 
(2) the frequency with which special masters 
have been used by the courts; 
(3) the role and powers special masters are given 
by the courts; 
(4) the subject matter at issue in cases that use 
special masters; 
(5) the impact on court time and costs in cases 
where a special master is used as compared to cases 
where no special master is used; 
(6) the legal and technical training and experi-
ence of special masters; 
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(7) whether the use of special masters has an im-
pact on the reversal rate of district court decisions at 
the Court of Appeals for the Federal Circuit; and 
(8) any other factors that the Director believes 
would assist in gauging the effectiveness of special 
masters in patent litigation. 
SEC. 17. RULE OF CONSTRUCTION. 
The enactment of section 102(b)(3) of title 35, United 
States Code, under section (3)(b) of this Act is done with 
the same intent to promote joint research activities that was 
expressed, including in the legislative history, through the 
enactment of the Cooperative Research and Technology En-
hancement Act of 2004 (Public Law 108–453; the ‘‘CRE-
ATE Act’’), the amendments of which are stricken by sec-
tion 3(c) of this Act. The United States Patent and Trade-
mark Office shall administer section 102(b)(3) of title 35, 
United States Code, in a manner consistent with the legisla-
tive history of the CREATE Act that was relevant to its 
administration by the Patent and Trademark Office. 
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Union Calendar No. 200 
110TH CONGRESS 
1ST SESSION 
H. R. 1908 
[Report No. 110–314] 
A BILL 
To amend title 35, United States Code, to provide 
for patent reform. 
SEPTEMBER 4, 2007 
Reported with an amendment, committed to the Com-
mittee of the Whole House on the State of the Union, 
and ordered to be printed 
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