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‘‘(1) the application was made or was author-
ized to be made by individual; and 
‘‘(2) the individual believes himself or herself to 
be the original inventor or an original joint inventor 
of a claimed invention in the application. 
‘‘(c) ADDITIONAL REQUIREMENTS.—The Director 
may specify additional information relating to the inventor 
and the invention that is required to be included in an 
oath or declaration under subsection (a). 
‘‘(d) SUBSTITUTE STATEMENT.— 
‘‘(1) IN GENERAL.—In lieu of executing an oath 
or declaration under subsection (a), the applicant for 
patent may provide a substitute statement under the 
circumstances described in paragraph (2) and such 
additional circumstances that the Director may 
specify by regulation. 
‘‘(2) PERMITTED
CIRCUMSTANCES.—A sub-
stitute statement under paragraph (1) is permitted 
with respect to any individual who— 
‘‘(A) is unable to file the oath or declara-
tion under subsection (a) because the indi-
vidual— 
‘‘(i) is deceased; 
‘‘(ii) is under legal incapacity; or 
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‘‘(iii) cannot be found or reached after 
diligent effort; or 
‘‘(B) is under an obligation to assign the 
invention and has refused to make the oath or 
declaration required under subsection (a). 
‘‘(3) CONTENTS.—A substitute statement under 
this subsection shall— 
‘‘(A) identify the individual with respect to 
whom the statement applies; 
‘‘(B) set forth the circumstances rep-
resenting the permitted basis for the filing of 
the substitute statement in lieu of the oath or 
declaration under subsection (a); and 
‘‘(C) contain any additional information, 
including any showing, required by the Direc-
tor. 
‘‘(e) MAKING REQUIRED STATEMENTS IN ASSIGN-
MENT
OF RECORD.—An individual who has assigned 
rights in an application for patent may include the re-
quired statements under subsections (b) and (c) in the as-
signment executed by the individual, in lieu of filing such 
statements separately. 
‘‘(f) TIME FOR FILING.—A notice of allowance under 
section 151 may be provided to an applicant for patent 
only if the applicant for patent has filed each required 
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oath or declaration under subsection (a) or has filed a sub-
stitute statement under subsection (d) or recorded an as-
signment meeting the requirements of subsection (e). 
‘‘(g) EARLIER-FILED APPLICATION CONTAINING RE-
QUIRED STATEMENTS
OR SUBSTITUTE STATEMENT.— 
The requirements under this section shall not apply to an 
individual with respect to an application for patent in 
which the individual is named as the inventor or a joint 
inventor and that claims the benefit of an earlier filing 
date under section 120 or 365(c), if— 
‘‘(1) an oath or declaration meeting the require-
ments of subsection (a) was executed by the indi-
vidual and was filed in connection with the earlier- 
filed application; 
‘‘(2) a substitute statement meeting the re-
quirements of subsection (d) was filed in the earlier 
filed application with respect to the individual; or 
‘‘(3) an assignment meeting the requirements 
of subsection (e) was executed with respect to the 
earlier-filed application by the individual and was re-
corded in connection with the earlier-filed applica-
tion. 
‘‘(h) SUPPLEMENTAL
AND
CORRECTED
STATE-
MENTS; FILING ADDITIONAL STATEMENTS.— 
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‘‘(1) IN GENERAL.—Any person making a state-
ment required under this section may withdraw, re-
place, or otherwise correct the statement at any 
time. If a change is made in the naming of the in-
ventor requiring the filing of 1 or more additional 
statements under this section, such additional state-
ments shall be filed in accordance with regulations 
established by the Director. 
‘‘(2) SUPPLEMENTAL
STATEMENTS
NOT
RE-
QUIRED.—If an individual has executed an oath or 
declaration under subsection (a) or an assignment 
meeting the requirements of subsection (e) with re-
spect to an application for patent, the Director may 
not thereafter require that individual to make any 
additional oath, declaration, or other statement 
equivalent to those required by this section in con-
nection with the application for patent or any patent 
issuing thereon. 
‘‘(3) SAVINGS CLAUSE.—No patent shall be in-
valid or unenforceable based upon the failure to 
comply with a requirement under this section if the 
failure is remedied as provided under paragraph (1). 
‘‘(i) ACKNOWLEDGMENT OF PENALTIES.—Any dec-
laration or statement filed under this section must contain 
an acknowledgment that any willful false statement is 
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punishable by fine or imprisonment, or both, under section 
1001 of title 18.’’. 
(2) RELATIONSHIP
TO
DIVISIONAL
APPLICA-
TIONS.—Section 121 is amended by striking ‘‘If a 
divisional application’’ and all that follows through 
‘‘inventor.’’. 
(3) REQUIREMENTS FOR NONPROVISIONAL AP-
PLICATIONS.—Section 111(a) is amended— 
(A) in paragraph (2)(C), by striking ‘‘by 
the applicant’’ and inserting ‘‘or declaration’’; 
(B) in the heading for paragraph (3), by 
striking ‘‘AND OATH’’; and 
(C) by striking ‘‘and oath’’ each place it 
appears. 
(4) CONFORMING AMENDMENT.—The item re-
lating to section 115 in the table of sections for 
chapter 11 is amended to read as follows: 
‘‘115. Inventor’s oath or declaration.’’. 
(b) SPECIFICATION.—Section 112 is amended— 
(1) in the first paragraph—— 
(A) by striking ‘‘The specification’’ and in-
serting ‘‘(a) IN GENERAL.—The specification’’; 
and 
(B) by striking ‘‘of carrying out his inven-
tion’’ and inserting ‘‘or joint inventor of car-
rying out the invention’’; and 
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(2) in the second paragraph— 
(A) by striking ‘‘The specification’’ and in-
serting ‘‘(b) CONCLUSION.—The specification’’; 
and 
(B) by striking ‘‘applicant regards as his 
invention’’ and inserting ‘‘inventor or a joint in-
ventor regards as the invention’’; 
(3) in the third paragraph, by striking ‘‘A 
claim’’ and inserting ‘‘(c) FORM.—A claim’’; 
(4) in the fourth paragraph, by striking ‘‘Sub-
ject to the following paragraph,’’ and inserting ‘‘(d) 
REFERENCE
IN DEPENDENT FORMS.—Subject to 
subsection (e),’’; 
(5) in the fifth paragraph, by striking ‘‘A 
claim’’ and inserting ‘‘(e) REFERENCE IN MULTIPLE 
DEPENDENT FORM.—A claim’’; and 
(6) in the last paragraph, by striking ‘‘An ele-
ment’’ and inserting ‘‘(f) ELEMENT IN CLAIM FOR 
A COMBINATION.—An element’’. 
(c) EFFECTIVE DATE.—The amendments made by 
this section— 
(1) shall take effect at the end of the 1-year pe-
riod beginning on the date of the enactment of this 
Act; and 
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(2) shall apply to any application for patent, or 
application for reissue patent, that is filed on or 
after the effective date under paragraph (1). 
SEC. 5. RIGHT OF THE INVENTOR TO OBTAIN DAMAGES. 
(a) DAMAGES.—Section 284 is amended— 
(1) in the first paragraph, by striking ‘‘Upon’’ 
and inserting ‘‘(a) IN GENERAL.—Upon’’; 
(2) by designating the second undesignated 
paragraph as subsection (c); 
(3) by inserting after subsection (a) (as des-
ignated by paragraph (1) of this subsection) the fol-
lowing: 
‘‘(b) REASONABLE ROYALTY.— 
‘‘(1) IN GENERAL.—An award pursuant to sub-
section (a) that is based upon a reasonable royalty 
shall be determined in accordance with this sub-
section. Based on the facts of the case, the court 
shall determine whether paragraph (2), (3), or (4) 
will be used by the court or the jury in calculating 
a reasonable royalty. The court shall identify the 
factors that are relevant to the determination of a 
reasonable royalty under the applicable paragraph, 
and the court or jury, as the case may be, shall con-
sider only those factors in making the determination. 
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‘‘(2) RELATIONSHIP
OF
DAMAGES
TO
CON-
TRIBUTIONS OVER PRIOR ART.—Upon a showing to 
the satisfaction of the court that a reasonable roy-
alty should be based on a portion of the value of the 
infringing product or process, the court shall con-
duct an analysis to ensure that a reasonable royalty 
under subsection (a) is applied only to that economic 
value properly attributable to the patent’s specific 
contribution over the prior art. The court shall ex-
clude from the analysis the economic value properly 
attributable to the prior art, and other features or 
improvements, whether or not themselves patented, 
that contribute economic value to the infringing 
product or process. 
‘‘(3) ENTIRE MARKET VALUE.—Upon a show-
ing to the satisfaction of the court that the patent’s 
specific contribution over the prior art is the pre-
dominant basis for market demand for an infringing 
product or process, damages may be based upon the 
entire market value of the products or processes in-
volved that satisfy that demand. 
‘‘(4) OTHER
FACTORS.—If neither paragraph 
(2) or (3) is appropriate for determining a reason-
able royalty, the court may consider, or direct the 
jury to consider, the terms of any nonexclusive mar-
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ketplace licensing of the invention, where appro-
priate, as well as any other relevant factors under 
applicable law. 
‘‘(5) COMBINATION
INVENTIONS.—For pur-
poses of paragraphs (2) and (3), in the case of a 
combination invention the elements of which are 
present individually in the prior art, the patentee 
may show that the contribution over the prior art 
may include the value of the additional function re-
sulting from the combination, as well as the en-
hanced value, if any, of some or all of the prior art 
elements resulting from the combination.’’; 
(4) by amending subsection (c) (as designated 
by paragraph (1) of this subsection) to read as fol-
lows: 
‘‘(c) WILLFUL INFRINGEMENT.— 
‘‘(1) INCREASED DAMAGES.—A court that has 
determined that the infringer has willfully infringed 
a patent or patents may increase the damages up to 
three times the amount of damages found or as-
sessed under subsection (a), except that increased 
damages under this paragraph shall not apply to 
provisional rights under section 154(d). 
‘‘(2) PERMITTED
GROUNDS
FOR
WILLFUL-
NESS.—A court may find that an infringer has will-
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fully infringed a patent only if the patent owner pre-
sents clear and convincing evidence that— 
‘‘(A) after receiving written notice from 
the patentee— 
‘‘(i) alleging acts of infringement in a 
manner sufficient to give the infringer an 
objectively reasonable apprehension of suit 
on such patent, and 
‘‘(ii) identifying with particularity 
each claim of the patent, each product or 
process that the patent owner alleges in-
fringes the patent, and the relationship of 
such product or process to such claim, 
the infringer, after a reasonable opportunity to 
investigate, thereafter performed one or more of 
the alleged acts of infringement; 
‘‘(B) the infringer intentionally copied the 
patented invention with knowledge that it was 
patented; or 
‘‘(C) after having been found by a court to 
have infringed that patent, the infringer en-
gaged in conduct that was not colorably dif-
ferent from the conduct previously found to 
have infringed the patent, and that resulted in 
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a separate finding of infringement of the same 
patent. 
‘‘(3) LIMITATIONS
ON
WILLFULNESS.—(A) A 
court may not find that an infringer has willfully in-
fringed a patent under paragraph (2) for any period 
of time during which the infringer had an informed 
good faith belief that the patent was invalid or unen-
forceable, or would not be infringed by the conduct 
later shown to constitute infringement of the patent. 
‘‘(B) An informed good faith belief within the 
meaning of subparagraph (A) may be established 
by— 
‘‘(i) reasonable reliance on advice of coun-
sel; 
‘‘(ii) evidence that the infringer sought to 
modify its conduct to avoid infringement once it 
had discovered the patent; or 
‘‘(iii) other evidence a court may find suffi-
cient to establish such good faith belief. 
‘‘(C) The decision of the infringer not to 
present evidence of advice of counsel is not relevant 
to a determination of willful infringement under 
paragraph (2). 
‘‘(4) LIMITATION
ON
PLEADING.—Before the 
date on which a court determines that the patent in 
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suit is not invalid, is enforceable, and has been in-
fringed by the infringer, a patentee may not plead 
and a court may not determine that an infringer has 
willfully infringed a patent.’’; and 
(5) in the third undesignated paragraph, by 
striking ‘‘The court’’ and inserting ‘‘(d) EXPERT 
TESTIMONY.—The court’’. 
(b) REPORT TO CONGRESSIONAL COMMITTEES.—Not 
later than June 30, 2009, the Under Secretary of Com-
merce for Intellectual Property and Director of the United 
States Patent and Trademark Office (in this subsection 
referred to as the ‘‘Director’’) shall report to the Com-
mittee on the Judiciary of the House of Representatives 
and the Committee on the Judiciary of the Senate the 
findings and recommendations of the Director on the oper-
ation of prior user rights in selected countries in the in-
dustrialized world. The report shall include the following: 
(1) A comparison between the patent laws of 
the United States and the laws of other industri-
alized countries, including the European Union, 
Japan, Canada, and Australia. 
(2) An analysis of the effect of prior user rights 
on innovation rates in the selected countries. 
(3) An analysis of the correlation, if any, be-
tween prior user rights and start-up enterprises and 
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the ability to attract venture capital to start new 
companies. 
(4) An analysis of the effect of prior user 
rights, if any, on small businesses, universities, and 
individual inventors. 
(5) An analysis of any legal or constitutional 
issues that arise from placing elements of trade se-
cret law, in the form of prior user rights, in patent 
law. 
In preparing the report, the Director shall consult with 
the Secretary of State and the Attorney General of the 
United States. 
(c) EFFECTIVE DATE.—The amendments made by 
this section shall apply to any civil action commenced on 
or after the date of the enactment of this Act. 
(d) REVIEW EVERY 7 YEARS.—Not later than the 
end of the 7-year period beginning on the date of the en-
actment of this Act, and the end of every 7-year period 
thereafter, the Under Secretary of Commerce for Intellec-
tual Property and Director of the United States Patent 
and Trademark Office (in this subsection referred to as 
the ‘‘Director’’) shall— 
(1) conduct a study on the effectiveness and ef-
ficiency of the amendments made by this section; 
and 
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(2) submit to the Committees on the Judiciary 
of the House of Representatives and the Senate a 
report on the results of the study, including any rec-
ommendations the Director has on amendments to 
the law and other recommendations of the Director 
with respect to the right of the inventor to obtain 
damages for patent infringement. 
SEC. 6. POST-GRANT PROCEDURES AND OTHER QUALITY 
ENHANCEMENTS. 
(a) CITATION OF PRIOR ART.— 
(1) IN GENERAL.—Section 301 is amended to 
read as follows: 
‘‘§ 301. Citation of prior art 
‘‘(a) IN GENERAL.—Any person at any time may cite 
to the Office in writing— 
‘‘(1) prior art consisting of patents or printed 
publications which that person believes to have a 
bearing on the patentability of any claim of a par-
ticular patent; or 
‘‘(2) written statements of the patent owner 
filed in a proceeding before a Federal court or the 
Patent and Trademark Office in which the patent 
owner takes a position on the scope of one or more 
patent claims. 
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‘‘(b) SUBMISSIONS PART OF OFFICIAL FILE.—If the 
person citing prior art or written submissions under sub-
section (a) explains in writing the pertinence and manner 
of applying the prior art or written submissions to at least 
one claim of the patent, the citation of the prior art or 
written submissions (as the case may be) and the expla-
nation thereof shall become a part of the official file of 
the patent. 
‘‘(c) PROCEDURES FOR WRITTEN STATEMENTS.— 
‘‘(1) 
SUBMISSION
OF
ADDITIONAL
MATE-
RIALS.—A party that submits written statements 
under subsection (a)(2) in a proceeding shall include 
any other documents, pleadings, or evidence from 
the proceeding that address the patent owner’s 
statements or the claims addressed by the written 
statements. 
‘‘(2) LIMITATION ON USE OF STATEMENTS.— 
Written statements submitted under subsection 
(a)(2) shall not be considered for any purpose other 
than to determine the proper meaning of the claims 
that are the subject of the request in a proceeding 
ordered pursuant to section 304 or 313. Any such 
written statements, and any materials submitted 
under paragraph (1), that are subject to an applica-
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ble protective order shall be redacted to exclude in-
formation subject to the order. 
‘‘(d) IDENTITY WITHHELD.—Upon the written re-
quest of the person citing prior art or written statements 
under subsection (a), the person’s identity shall be ex-
cluded from the patent file and kept confidential.’’. 
(b) REEXAMINATION.—Section 303(a) is amended to 
read as follows: 
‘‘(a) Within three months after the owner of a patent 
files a request for reexamination under section 302, the 
Director shall determine whether a substantial new ques-
tion of patentability affecting any claim of the patent con-
cerned is raised by the request, with or without consider-
ation of other patents or printed publications. On the Di-
rector’s own initiative, and at any time, the Director may 
determine whether a substantial new question of patent-
ability is raised by patents and publications discovered by 
the Director, is cited under section 301, or is cited by any 
person other than the owner of the patent under section 
302 or section 311. The existence of a substantial new 
question of patentability is not precluded by the fact that 
a patent or printed publication was previously considered 
by the Office.’’. 
(c) CONDUCT OF INTER PARTES PROCEEDINGS.— 
Section 314 is amended— 
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(1) in the first sentence of subsection (a), by 
striking ‘‘conducted according to the procedures es-
tablished for initial examination under the provisions 
of sections 132 and 133’’ and inserting ‘‘heard by 
an administrative patent judge in accordance with 
procedures which the Director shall establish’’; 
(2) in subsection (b), by striking paragraph (2) 
and inserting the following: 
‘‘(2) The third-party requester shall have the oppor-
tunity to file written comments on any action on the mer-
its by the Office in the inter partes reexamination pro-
ceeding, and on any response that the patent owner files 
to such an action, if those written comments are received 
by the Office within 60 days after the date of service on 
the third-party requester of the Office action or patent 
owner response, as the case may be.’’; and 
(3) by adding at the end the following: 
‘‘(d) ORAL HEARING.—At the request of a third 
party requestor or the patent owner, the administrative 
patent judge shall conduct an oral hearing, unless the 
judge finds cause lacking for such hearing.’’. 
(d) ESTOPPEL.—Section 315(c) is amended by strik-
ing ‘‘or could have raised’’. 
(e) REEXAMINATION PROHIBITED AFTER DISTRICT 
COURT DECISION.—Section 317(b) is amended— 
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(1) in the subsection heading, by striking 
‘‘FINAL DECISION’’ and inserting ‘‘DISTRICT COURT 
DECISION’’; and 
(2) by striking ‘‘Once a final decision has been 
entered’’ and inserting ‘‘Once the judgment of the 
district court has been entered’’. 
(f) POST-GRANT OPPOSITION PROCEDURES.— 
(1) IN GENERAL.—Part III is amended by add-
ing at the end the following new chapter: 
‘‘CHAPTER 32—POST-GRANT REVIEW 
PROCEDURES 
‘‘Sec. 
‘‘321. Petition for post-grant review. 
‘‘322. Timing and bases of petition. 
‘‘323. Requirements of petition. 
‘‘324. Prohibited filings. 
‘‘325. Submission of additional information; showing of sufficient grounds. 
‘‘326. Conduct of post-grant review proceedings. 
‘‘327. Patent owner response. 
‘‘328. Proof and evidentiary standards. 
‘‘329. Amendment of the patent. 
‘‘330. Decision of the Board. 
‘‘331. Effect of decision. 
‘‘332. Settlement. 
‘‘333. Relationship to other pending proceedings. 
‘‘334. Effect of decisions rendered in civil action on post-grant review pro-
ceedings. 
‘‘335. Effect of final decision on future proceedings. 
‘‘336. Appeal. 
‘‘§ 321. Petition for post-grant review 
‘‘Subject to sections 322, 324, 332, and 333, a per-
son who is not the patent owner may file with the Office 
a petition for cancellation seeking to institute a post-grant 
review proceeding to cancel as unpatentable any claim of 
a patent on any ground that could be raised under para-
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graph (2) or (3) of section 282(b) (relating to invalidity 
of the patent or any claim). The Director shall establish, 
by regulation, fees to be paid by the person requesting 
the proceeding, in such amounts as the Director deter-
mines to be reasonable. 
‘‘§ 322. Timing and bases of petition 
‘‘A post-grant proceeding may be instituted under 
this chapter pursuant to a cancellation petition filed under 
section 321 only if— 
‘‘(1) the petition is filed not later than 12 
months after the issuance of the patent or a reissue 
patent, as the case may be; or 
‘‘(2) the patent owner consents in writing to the 
proceeding. 
‘‘§ 323. Requirements of petition 
‘‘A cancellation petition filed under section 321 may 
be considered only if— 
‘‘(1) the petition is accompanied by payment of 
the fee established by the Director under section 
321; 
‘‘(2) the petition identifies the cancellation peti-
tioner; 
‘‘(3) for each claim sought to be canceled, the 
petition sets forth in writing the basis for cancella-
tion and provides the evidence in support thereof, in-
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