I 
112TH CONGRESS 
1ST SESSION H. R. 1249 
To amend title 35, United States Code, to provide for patent reform. 
IN THE HOUSE OF REPRESENTATIVES 
MARCH 30, 2011 
Mr. SMITH of Texas (for himself, Mr. GOODLATTE, and Mr. ISSA) introduced 
the following bill; which was referred to the Committee on the Judiciary, 
and in addition to the Committee on the Budget, for a period to be subse-
quently determined by the Speaker, in each case for consideration of such 
provisions as fall within the jurisdiction of the committee concerned 
A BILL 
To amend title 35, United States Code, to provide for patent 
reform. 
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled, 
SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 
(a) SHORT TITLE.—This Act may be cited as the 
‘‘America Invents Act’’. 
(b) TABLE OF CONTENTS.—The table of contents for 
this Act is as follows: 
Sec. 1. Short title; table of contents. 
Sec. 2. First inventor to file. 
Sec. 3. Inventor’s oath or declaration. 
Sec. 4. Defense to infringement based on earlier inventor. 
Sec. 5. Post-grant review proceedings. 
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Sec. 6. Patent Trial and Appeal Board. 
Sec. 7. Preissuance submissions by third parties. 
Sec. 8. Venue. 
Sec. 9. Fee setting authority. 
Sec. 10. Fees for patent services. 
Sec. 11. Supplemental examination. 
Sec. 12. Funding agreements. 
Sec. 13. Tax strategies deemed within the prior art. 
Sec. 14. Best mode requirement. 
Sec. 15. Marking. 
Sec. 16. Advice of counsel. 
Sec. 17. Ownership; assignment. 
Sec. 18. Transitional program for covered business method patents. 
Sec. 19. Clarification of jurisdiction. 
Sec. 20. Technical amendments. 
Sec. 21. Travel expenses and payment of administrative judges. 
Sec. 22. Patent and Trademark Office funding. 
Sec. 23. Satellite offices. 
Sec. 24. Patent Ombudsman Program for small business concerns. 
Sec. 25. Priority examination for technologies important to American competi-
tiveness. 
Sec. 26. Designation of Detroit satellite office. 
Sec. 27. Effective date. 
Sec. 28. Budgetary effects. 
SEC. 2. FIRST INVENTOR TO FILE. 
(a) DEFINITIONS.—Section 100 of title 35, United 
States Code, is amended by adding at the end the fol-
lowing: 
‘‘(f) The term ‘inventor’ means the individual or, if 
a joint invention, the individuals collectively who invented 
or discovered the subject matter of the invention. 
‘‘(g) The terms ‘joint inventor’ and ‘coinventor’ mean 
any 1 of the individuals who invented or discovered the 
subject matter of a joint invention. 
‘‘(h) The term ‘joint research agreement’ means a 
written contract, grant, or cooperative agreement entered 
into by 2 or more persons or entities for the performance 
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of experimental, developmental, or research work in the 
field of the claimed invention. 
‘‘(i)(1) The term ‘effective filing date’ for a claimed 
invention in a patent or application for patent means— 
‘‘(A) if subparagraph (B) does not apply, the 
actual filing date of the patent or the application for 
the patent containing a claim to the invention; or 
‘‘(B) the filing date of the earliest application 
for which the patent or application is entitled, as to 
such invention, to a right of priority under section 
119, 365(a), or 365(b) or to the benefit of an earlier 
filing date under section 120, 121, or 365(c). 
‘‘(2) The effective filing date for a claimed invention 
in an application for reissue or reissued patent shall be 
determined by deeming the claim to the invention to have 
been contained in the patent for which reissue was sought. 
‘‘(j) The term ‘claimed invention’ means the subject 
matter defined by a claim in a patent or an application 
for a patent.’’. 
(b) CONDITIONS FOR PATENTABILITY.— 
(1) IN
GENERAL.—Section 102 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 102. Conditions for patentability; novelty 
‘‘(a) NOVELTY; PRIOR ART.—A person shall be enti-
tled to a patent unless— 
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‘‘(1) the claimed invention was patented, de-
scribed in a printed publication, or in public use, on 
sale, or otherwise available to the public before the 
effective filing date of the claimed invention; or 
‘‘(2) the claimed invention was described in a 
patent issued under section 151, or in an application 
for patent published or deemed published under sec-
tion 122(b), in which the patent or application, as 
the case may be, names another inventor and was 
effectively filed before the effective filing date of the 
claimed invention. 
‘‘(b) EXCEPTIONS.— 
‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BE-
FORE
THE
EFFECTIVE
FILING
DATE
OF
THE 
CLAIMED INVENTION.—A disclosure made 1 year or 
less before the effective filing date of a claimed in-
vention shall not be prior art to the claimed inven-
tion under subsection (a)(1) if— 
‘‘(A) the disclosure was made by the inven-
tor or joint inventor or by another who obtained 
the subject matter disclosed directly or indi-
rectly from the inventor or a joint inventor; or 
‘‘(B) the subject matter disclosed had, be-
fore such disclosure, been publicly disclosed by 
the inventor or a joint inventor or another who 
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obtained the subject matter disclosed directly or 
indirectly from the inventor or a joint inventor. 
‘‘(2) DISCLOSURES
APPEARING
IN
APPLICA-
TIONS
AND
PATENTS.—A disclosure shall not be 
prior art to a claimed invention under subsection 
(a)(2) if— 
‘‘(A) the subject matter disclosed was ob-
tained directly or indirectly from the inventor or 
a joint inventor; 
‘‘(B) the subject matter disclosed had, be-
fore such subject matter was effectively filed 
under subsection (a)(2), been publicly disclosed 
by the inventor or a joint inventor or another 
who obtained the subject matter disclosed di-
rectly or indirectly from the inventor or a joint 
inventor; or 
‘‘(C) the subject matter disclosed and the 
claimed invention, not later than the effective 
filing date of the claimed invention, were owned 
by the same person or subject to an obligation 
of assignment to the same person. 
‘‘(c) COMMON OWNERSHIP UNDER JOINT RESEARCH 
AGREEMENTS.—Subject matter disclosed and a claimed 
invention shall be deemed to have been owned by the same 
person or subject to an obligation of assignment to the 
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same person in applying the provisions of subsection 
(b)(2)(C) if— 
‘‘(1) the subject matter disclosed was developed 
and the claimed invention was made by, or on behalf 
of, 1 or more parties to a joint research agreement 
that was in effect on or before the effective filing 
date of the claimed invention; 
‘‘(2) the claimed invention was made as a result 
of activities undertaken within the scope of the joint 
research agreement; and 
‘‘(3) the application for patent for the claimed 
invention discloses or is amended to disclose the 
names of the parties to the joint research agree-
ment. 
‘‘(d) PATENTS AND PUBLISHED APPLICATIONS EF-
FECTIVE AS PRIOR ART.—For purposes of determining 
whether a patent or application for patent is prior art to 
a claimed invention under subsection (a)(2), such patent 
or application shall be considered to have been effectively 
filed, with respect to any subject matter described in the 
patent or application— 
‘‘(1) if paragraph (2) does not apply, as of the 
actual filing date of the patent or the application for 
patent; or 
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‘‘(2) if the patent or application for patent is 
entitled to claim a right of priority under section 
119, 365(a), or 365(b), or to claim the benefit of an 
earlier filing date under section 120, 121, or 365(c), 
based upon 1 or more prior filed applications for 
patent, as of the filing date of the earliest such ap-
plication that describes the subject matter.’’. 
(2) CONTINUITY OF INTENT UNDER THE CRE-
ATE ACT.—The enactment of section 102(c) of title 
35, United States Code, under paragraph (1) of this 
subsection is done with the same intent to promote 
joint research activities that was expressed, includ-
ing in the legislative history, through the enactment 
of the Cooperative Research and Technology En-
hancement Act of 2004 (Public Law 108–453; the 
‘‘CREATE Act’’), the amendments of which are 
stricken by subsection (c) of this section. The United 
States Patent and Trademark Office shall admin-
ister section 102(c) of title 35, United States Code, 
in a manner consistent with the legislative history of 
the CREATE Act that was relevant to its adminis-
tration by the United States Patent and Trademark 
Office. 
(3) CONFORMING AMENDMENT.—The item re-
lating to section 102 in the table of sections for 
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chapter 10 of title 35, United States Code, is 
amended to read as follows: 
‘‘102. Conditions for patentability; novelty.’’. 
(c) CONDITIONS FOR PATENTABILITY; NONOBVIOUS 
SUBJECT MATTER.—Section 103 of title 35, United 
States Code, is amended to read as follows: 
‘‘§ 103. Conditions for patentability; nonobvious sub-
ject matter 
‘‘A patent for a claimed invention may not be ob-
tained, notwithstanding that the claimed invention is not 
identically disclosed as set forth in section 102, if the dif-
ferences between the claimed invention and the prior art 
are such that the claimed invention as a whole would have 
been obvious before 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 of title 35, United States 
Code, and the item relating to that section in the table 
of sections for chapter 10 of title 35, United States Code, 
are repealed. 
(e) REPEAL OF STATUTORY INVENTION REGISTRA-
TION.— 
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(1) IN
GENERAL.—Section 157 of title 35, 
United States Code, and the item relating to that 
section in the table of sections for chapter 14 of title 
35, United States Code, are repealed. 
(2) REMOVAL OF CROSS REFERENCES.—Section 
111(b)(8) of title 35, United States Code, is amend-
ed by striking ‘‘sections 115, 131, 135, and 157’’ 
and inserting ‘‘sections 131 and 135’’. 
(3) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect upon the expira-
tion of the 18-month period beginning on the date 
of the enactment of this Act, and shall apply to any 
request for a statutory invention registration filed on 
or after that effective date. 
(f) EARLIER FILING DATE
FOR INVENTOR
AND 
JOINT INVENTOR.—Section 120 of title 35, United States 
Code, is amended by striking ‘‘which is filed by an inven-
tor or inventors named’’ and inserting ‘‘which names an 
inventor or joint inventor’’. 
(g) CONFORMING AMENDMENTS.— 
(1) RIGHT OF PRIORITY.—Section 172 of title 
35, United States Code, is amended by striking 
‘‘and the time specified in section 102(d)’’. 
(2) 
LIMITATION
ON
REMEDIES.—Section 
287(c)(4) of title 35, United States Code, is amend-
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ed by striking ‘‘the earliest effective filing date of 
which is prior to’’ and inserting ‘‘which has an effec-
tive filing date before’’. 
(3) 
INTERNATIONAL
APPLICATION
DESIG-
NATING
THE
UNITED
STATES: EFFECT.—Section 
363 of title 35, United States Code, is amended by 
striking ‘‘except as otherwise provided in section 
102(e) of this title’’. 
(4) PUBLICATION OF INTERNATIONAL APPLICA-
TION: EFFECT.—Section 374 of title 35, United 
States Code, is amended by striking ‘‘sections 102(e) 
and 154(d)’’ and inserting ‘‘section 154(d)’’. 
(5) PATENT ISSUED ON INTERNATIONAL APPLI-
CATION: EFFECT.—The second sentence of section 
375(a) of title 35, United States Code, is amended 
by striking ‘‘Subject to section 102(e) of this title, 
such’’ and inserting ‘‘Such’’. 
(6) LIMIT
ON
RIGHT
OF
PRIORITY.—Section 
119(a) of title 35, United States Code, is amended 
by striking ‘‘; but no patent shall be granted’’ and 
all that follows through ‘‘one year prior to such fil-
ing’’. 
(7) INVENTIONS MADE WITH FEDERAL ASSIST-
ANCE.—Section 202(c) of title 35, United States 
Code, is amended— 
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(A) in paragraph (2)— 
(i) by striking ‘‘publication, on sale, 
or public use,’’ and all that follows through 
‘‘obtained in the United States’’ and in-
serting ‘‘the 1-year period referred to in 
section 102(b) would end before the end of 
that 2-year period’’; and 
(ii) by striking ‘‘prior to the end of 
the statutory’’ and inserting ‘‘before the 
end of 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(b)’’. 
(h) DERIVED PATENTS.— 
(1) IN
GENERAL.—Section 291 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 291. Derived Patents 
‘‘(a) IN GENERAL.—The owner of a patent may have 
relief by civil action against the owner of another patent 
that claims the same invention and has an earlier effective 
filing date if the invention claimed in such other patent 
was derived from the inventor of the invention claimed in 
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the patent owned by the person seeking relief under this 
section. 
‘‘(b) FILING LIMITATION.—An action under this sec-
tion may be filed only before the end of the 1-year period 
beginning on the date of the issuance of the first patent 
containing a claim to the allegedly derived invention and 
naming an individual alleged to have derived such inven-
tion as the inventor or joint inventor.’’. 
(2) CONFORMING AMENDMENT.—The item re-
lating to section 291 in the table of sections for 
chapter 29 of title 35, United States Code, is 
amended to read as follows: 
‘‘291. Derived patents.’’. 
(i) DERIVATION PROCEEDINGS.—Section 135 of title 
35, United States Code, is amended to read as follows: 
‘‘§ 135. Derivation proceedings 
‘‘(a) INSTITUTION OF PROCEEDING.—An applicant 
for patent may file a petition to institute a derivation pro-
ceeding in the Office. The petition shall set forth with par-
ticularity the basis for finding that an inventor named in 
an earlier application derived the claimed invention from 
an inventor named in the petitioner’s application and, 
without authorization, the earlier application claiming 
such invention was filed. Any such petition may be filed 
only within the 1-year period beginning the date of the 
first publication of a claim to an invention that is the same 
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or substantially the same as the earlier application’s claim 
to the invention, shall be made under oath, and shall be 
supported by substantial evidence. Whenever the Director 
determines that a petition filed under this subsection dem-
onstrates that the standards for instituting a derivation 
proceeding are met, the Director may institute a deriva-
tion proceeding. The determination by the Director wheth-
er to institute a derivation proceeding shall be final and 
nonappealable. 
‘‘(b) DETERMINATION BY PATENT TRIAL AND AP-
PEAL BOARD.—In a derivation proceeding instituted 
under subsection (a), the Patent Trial and Appeal Board 
shall determine whether an inventor named in the earlier 
application derived the claimed invention from an inventor 
named in the petitioner’s application and, without author-
ization, the earlier application claiming such invention was 
filed. The Director shall prescribe regulations setting forth 
standards for the conduct of derivation proceedings. 
‘‘(c) DEFERRAL OF DECISION.—The Patent Trial 
and Appeal Board may defer action on a petition for a 
derivation proceeding until the expiration of the 3-month 
period beginning on the date on which the Director issues 
a patent that includes the claimed invention that is the 
subject of the petition. The Patent Trial and Appeal 
Board also may defer action on a petition for a derivation 
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proceeding, or stay the proceeding after it has been insti-
tuted, until the termination of a proceeding under chapter 
30, 31, or 32 involving the patent of the earlier applicant. 
‘‘(d) EFFECT OF FINAL DECISION.—The final deci-
sion of the Patent Trial and Appeal Board, if adverse to 
claims in an application for patent, shall constitute the 
final refusal by the Office on those claims. The final deci-
sion of the Patent Trial and Appeal Board, if adverse to 
claims in a patent, shall, if no appeal or other review of 
the decision has been or can be taken or had, constitute 
cancellation of those claims, and notice of such cancella-
tion shall be endorsed on copies of the patent distributed 
after such cancellation. 
‘‘(e) SETTLEMENT.—Parties to a proceeding insti-
tuted under subsection (a) may terminate the proceeding 
by filing a written statement reflecting the agreement of 
the parties as to the correct inventors of the claimed inven-
tion in dispute. Unless the Patent Trial and Appeal Board 
finds the agreement to be inconsistent with the evidence 
of record, if any, it shall take action consistent with the 
agreement. Any written settlement or understanding of 
the parties shall be filed with the Director. At the request 
of a party to the proceeding, the agreement or under-
standing shall be treated as business confidential informa-
tion, shall be kept separate from the file of the involved 
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patents or applications, and shall be made available only 
to Government agencies on written request, or to any per-
son on a showing of good cause. 
‘‘(f) ARBITRATION.—Parties to a proceeding insti-
tuted under subsection (a) may, within such time as may 
be specified by the Director by regulation, determine such 
contest or any aspect thereof by arbitration. Such arbitra-
tion shall be governed by the provisions of title 9, to the 
extent such title is not inconsistent with this section. The 
parties shall give notice of any arbitration award to the 
Director, and such award shall, as between the parties to 
the arbitration, be dispositive of the issues to which it re-
lates. The arbitration award shall be unenforceable until 
such notice is given. Nothing in this subsection shall pre-
clude the Director from determining the patentability of 
the claimed inventions involved in the proceeding.’’. 
(j) ELIMINATION
OF
REFERENCES
TO
INTER-
FERENCES.—(1) Sections 134, 145, 146, 154, 305, and 
314 of title 35, United States Code, are each amended 
by striking ‘‘Board of Patent Appeals and Interferences’’ 
each place it appears and inserting ‘‘Patent Trial and Ap-
peal Board’’. 
(2)(A) Sections 146 and 157(a) of title 35, United 
States Code, are each amended— 
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(i) by striking ‘‘an interference’’ each place 
it appears and inserting ‘‘a derivation pro-
ceeding’’; and 
(ii) by striking ‘‘interference’’ each addi-
tional place it appears and inserting ‘‘derivation 
proceeding’’. 
(B) The subparagraph heading for section 
154(b)(1)(C) of title 35, United States Code, is 
amended to read as follows: 
‘‘(C) GUARANTEE
OF
ADJUSTMENTS 
FOR
DELAYS
DUE
TO
DERIVATION
PRO-
CEEDINGS, SECRECY
ORDERS, AND
AP-
PEALS.—’’. 
(3) The section heading for section 134 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 134. Appeal to the Patent Trial and Appeal Board’’. 
(4) The section heading for section 146 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 146. Civil action in case of derivation proceeding’’. 
(5) The items relating to sections 134 and 135 in 
the table of sections for chapter 12 of title 35, United 
States Code, are amended to read as follows: 
‘‘134. Appeal to the Patent Trial and Appeal Board. 
‘‘135. Derivation proceedings.’’. 
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(6) The item relating to section 146 in the table of 
sections for chapter 13 of title 35, United States Code, 
is amended to read as follows: 
‘‘146. Civil action in case of derivation proceeding.’’. 
(k) STATUTE OF LIMITATIONS.— 
(1) IN
GENERAL.—Section 32 of title 35, 
United States Code, is amended by inserting be-
tween the third and fourth sentences the following: 
‘‘A proceeding under this section shall be com-
menced not later than the earlier of either the date 
that is 10 years after the date on which the mis-
conduct forming the basis for the proceeding oc-
curred, or 1 year after the date on which the mis-
conduct forming the basis for the proceeding is 
made known to an officer or employee of the Office 
as prescribed in the regulations established under 
section 2(b)(2)(D).’’. 
(2) REPORT TO CONGRESS.—The Director shall 
provide on a biennial basis to the Judiciary Commit-
tees of the Senate and House of Representatives a 
report providing a short description of incidents 
made known to an officer or employee of the Office 
as prescribed in the regulations established under 
section 2(b)(2)(D) of title 35, United States Code, 
that reflect substantial evidence of misconduct be-
fore the Office but for which the Office was barred 
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from commencing a proceeding under section 32 of 
title 35, United States Code, by the time limitation 
established by the fourth sentence of that section. 
(3) EFFECTIVE DATE.—The amendment made 
by paragraph (1) shall apply in any case in which 
the time period for instituting a proceeding under 
section 32 of title 35, United State Code, had not 
lapsed before the date of the enactment of this Act. 
(l) SMALL BUSINESS STUDY.— 
(1) DEFINITIONS.—In this subsection— 
(A) the term ‘‘Chief Counsel’’ means the 
Chief Counsel for Advocacy of the Small Busi-
ness Administration; 
(B) the term ‘‘General Counsel’’ means the 
General Counsel of the United States Patent 
and Trademark Office; and 
(C) the term ‘‘small business concern’’ has 
the meaning given that term under section 3 of 
the Small Business Act (15 U.S.C. 632). 
(2) STUDY.— 
(A) IN GENERAL.—The Chief Counsel, in 
consultation with the General Counsel, shall 
conduct a study of the effects of eliminating the 
use of dates of invention in determining wheth-
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er an applicant is entitled to a patent under 
title 35, United States Code. 
(B) AREAS
OF
STUDY.—The study con-
ducted under subparagraph (A) shall include 
examination of the effects of eliminating the use 
of invention dates, including examining— 
(i) how the change would affect the 
ability of small business concerns to obtain 
patents and their costs of obtaining pat-
ents; 
(ii) whether the change would create, 
mitigate, or exacerbate any disadvantages 
for applicants for patents that are small 
business concerns relative to applicants for 
patents that are not small business con-
cerns, and whether the change would cre-
ate any advantages for applicants for pat-
ents that are small business concerns rel-
ative to applicants for patents that are not 
small business concerns; 
(iii) the cost savings and other poten-
tial benefits to small business concerns of 
the change; and 
(iv) the feasibility and costs and bene-
fits to small business concerns of alter-
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native means of determining whether an 
applicant is entitled to a patent under title 
35, United States Code. 
(3) REPORT.—Not later than the date that is 
1 year after the date of the enactment of this Act, 
the Chief Counsel shall submit to the Committee on 
Small Business and Entrepreneurship and the Com-
mittee on the Judiciary of the Senate and the Com-
mittee on Small Business and the Committee on the 
Judiciary of the House of Representatives a report 
regarding the results of the study under paragraph 
(2). 
(m) REPORT ON PRIOR USER RIGHTS.— 
(1) IN GENERAL.—Not later than the end of 
the 4-month period beginning on the date of the en-
actment of this Act, the Director shall report, to the 
Committee on the Judiciary of the Senate and the 
Committee on the Judiciary of the House of Rep-
resentatives, the findings and recommendations of 
the Director on the operation of prior user rights in 
selected countries in the industrialized world. The 
report shall include the following: 
(A) A comparison between patent laws of 
the United States and the laws of other indus-
trialized countries, including members of the 
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‘‘(A) on filing a first petition, $130; 
‘‘(B) on filing a second petition, $360; and 
‘‘(C) on filing a third or subsequent peti-
tion, $620. 
‘‘(b) MAINTENANCE FEES.— 
‘‘(1) IN GENERAL.—The Director shall charge 
the following fees for maintaining in force all pat-
ents based on applications filed on or after Decem-
ber 12, 1980: 
‘‘(A) Three years and 6 months after 
grant, $980. 
‘‘(B) Seven years and 6 months after 
grant, $2,480. 
‘‘(C) Eleven years and 6 months after 
grant, $4,110. 
‘‘(2) GRACE PERIOD; SURCHARGE.—Unless pay-
ment of the applicable maintenance fee under para-
graph (1) is received in the Office on or before the 
date the fee is due or within a grace period of 6 
months thereafter, the patent shall expire as of the 
end of such grace period. The Director may require 
the payment of a surcharge as a condition of accept-
ing within such 6-month grace period the payment 
of an applicable maintenance fee. 
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