IB 
Union Calendar No. 200 
110TH CONGRESS 
1ST SESSION H. R. 1908 
[Report No. 110–314] 
To amend title 35, United States Code, to provide for patent reform. 
IN THE HOUSE OF REPRESENTATIVES 
APRIL 18, 2007 
Mr. BERMAN (for himself, Mr. SMITH of Texas, Mr. CONYERS, Mr. COBLE, 
Mr. BOUCHER, Mr. GOODLATTE, Ms. ZOE LOFGREN of California, Mr. 
ISSA, Mr. SCHIFF, Mr. CANNON, and Ms. JACKSON-LEE of Texas) intro-
duced the following bill; which was referred to the Committee on the Ju-
diciary 
SEPTEMBER 4, 2007 
Additional sponsors: Mr. SIMPSON, Ms. WASSERMAN SCHULTZ, Mr. EMAN-
UEL, Ms. ESHOO, Mr. WEXLER, Mr. MATHESON, Mr. CROWLEY, Mr. 
SMITH of Washington, Mr. MORAN of Virginia, Mr. SALI, Ms. HOOLEY, 
Mrs. JO ANN DAVIS of Virginia, and Mr. BACHUS 
SEPTEMBER 4, 2007 
Reported with an amendment, committed to the Committee of the Whole 
House on the State of the Union, and ordered to be printed 
[Strike out all after the enacting clause and insert the part printed in italic] 
[For text of introduced bill, see copy of bill as introduced on April 18, 2007] 
A BILL 
To amend title 35, United States Code, to provide for patent 
reform. 
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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 ‘‘Pat-
ent Reform Act of 2007’’. 
(b) TABLE OF CONTENTS.—The table of contents of 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. Tax planning methods not patentable. 
Sec. 11. Venue and jurisdiction. 
Sec. 12. Additional information; inequitable conduct as defense to infringement. 
Sec. 13. Best mode requirement. 
Sec. 14. Regulatory authority. 
Sec. 15. Technical amendments. 
Sec. 16. Study of special masters in patent cases. 
Sec. 17. Rule of construction. 
SEC. 2. REFERENCE TO TITLE 35, UNITED STATES CODE. 
Whenever in this Act a section or other provision is 
amended or repealed, that amendment or repeal shall be 
considered to be made to that section or other provision of 
title 35, United States Code. 
SEC. 3. RIGHT OF THE FIRST INVENTOR TO FILE. 
(a) DEFINITIONS.—Section 100 is amended by adding 
at the end the following: 
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‘‘(f) The term ‘inventor’ means the individual or, if 
a joint invention, the individuals collectively who invented 
or discovered the subject matter of an invention. 
‘‘(g) The terms ‘joint inventor’ and ‘coinventor’ mean 
any one of the individuals who invented or discovered the 
subject matter of a joint invention. 
‘‘(h) The ‘effective filing date of a claimed invention’ 
is— 
‘‘(1) the filing date of the patent or the applica-
tion for patent containing the claim to the invention; 
or 
‘‘(2) if the patent or application for patent is en-
titled to a right of priority of any other application 
under section 119, 365(a), or 365(b) or to the benefit 
of an earlier filing date in the United States under 
section 120, 121, or 365(c), the filing date of the ear-
liest such application in which the claimed invention 
is disclosed in the manner provided by section 112(a). 
‘‘(i) The term ‘claimed invention’ means the subject 
matter defined by a claim in a patent or an application 
for a patent. 
‘‘(j) The term ‘joint invention’ means an invention re-
sulting from the collaboration of inventive endeavors of two 
or more persons working toward the same end and pro-
ducing an invention by their collective efforts.’’. 
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(b) CONDITIONS FOR PATENTABILITY.— 
(1) IN GENERAL.—Section 102 is amended to 
read as follows: 
‘‘§ 102. Conditions for patentability; novelty 
‘‘(a) NOVELTY; PRIOR ART.—A patent for a claimed 
invention may not be obtained if— 
‘‘(1) the claimed invention was patented, de-
scribed in a printed publication, in public use, or on 
sale— 
‘‘(A) more than one year before the effective 
filing date of the claimed invention; or 
‘‘(B) one year or less before the effective fil-
ing date of the claimed invention, other than 
through disclosures made by the inventor or a 
joint inventor or by others who obtained the sub-
ject matter disclosed directly or indirectly from 
the inventor or a joint inventor; 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 ef-
fectively filed before the effective filing date of the 
claimed invention. 
‘‘(b) EXCEPTIONS.— 
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‘‘(1) PRIOR
INVENTOR
DISCLOSURE
EXCEP-
TION.—Subject matter that would otherwise qualify 
as prior art based upon a disclosure under subpara-
graph (B) of subsection (a)(1) shall not be prior art 
to a claimed invention under that subparagraph if 
the subject matter had, before such disclosure, been 
publicly disclosed by the inventor or a joint inventor 
or others who obtained the subject matter disclosed di-
rectly or indirectly from the inventor or a joint in-
ventor. 
‘‘(2) DERIVATION, PRIOR DISCLOSURE, AND COM-
MON ASSIGNMENT EXCEPTIONS.—Subject matter that 
would otherwise qualify as prior art only under sub-
section (a)(2) shall not be prior art to a claimed in-
vention if— 
‘‘(A) the subject matter was obtained di-
rectly or indirectly from the inventor or a joint 
inventor; 
‘‘(B) the subject matter had been publicly 
disclosed by the inventor or a joint inventor or 
others who obtained the subject matter disclosed 
directly or indirectly from the inventor or a joint 
inventor before the date on which the application 
or patent referred to in subsection (a)(2) was ef-
fectively filed; or 
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‘‘(C) the subject matter and the claimed in-
vention, 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. 
‘‘(3) JOINT
RESEARCH
AGREEMENT
EXCEP-
TION.— 
‘‘(A) IN GENERAL.—Subject matter and a 
claimed invention shall be deemed to have been 
owned by the same person or subject to an obli-
gation of assignment to the same person in ap-
plying the provisions of paragraph (2) if— 
‘‘(i) the claimed invention was made 
by or on behalf of parties to a joint research 
agreement that was in effect on or before the 
effective filing date of the claimed invention; 
‘‘(ii) the claimed invention was made 
as a result of activities undertaken within 
the scope of the joint research agreement; 
and 
‘‘(iii) the application for patent for the 
claimed invention discloses or is amended to 
disclose the names of the parties to the joint 
research agreement. 
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