(3) 
INTERNATIONAL
APPLICATION
DESIG-
NATING
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 APPLI-
CATION: EFFECT.—The second sentence of section 
375(a) 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) 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 in-
serting ‘‘the 1-year period referred to in 
section 102(a) would end before the end of 
that 2-year period’’; and 
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(ii) by striking ‘‘the statutory’’ and 
inserting ‘‘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table of sections for chapter 29, are repealed.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.—Section 135(a) is amended to read as follows: 
‘‘(a) DISPUTE OVER RIGHT TO PATENT.— 
‘‘(1) 
INSTITUTION
OF
DERIVATION
PRO-
CEEDING.—An applicant may request initiation of a 
derivation proceeding to determine the right of the 
applicant to a patent by filing a request which sets 
forth with particularity the basis for finding that an 
earlier applicant derived the claimed invention from 
the applicant requesting the proceeding and, without 
authorization, filed an application claiming such in-
vention. Any such request may only be made within 
12 months after the date of first publication of an 
application containing a claim that is the same or is 
substantially the same as the claimed invention, 
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must be made under oath, and must be supported 
by substantial evidence. Whenever the Director de-
termines that patents or applications for patent 
naming different individuals as the inventor interfere 
with one another because of a dispute over the right 
to patent under section 101, the Director shall insti-
tute a derivation proceeding for the purpose of de-
termining which applicant is entitled to a patent. 
‘‘(2) REQUIREMENTS.—A proceeding under this 
subsection may not be commenced unless the party 
requesting the proceeding has filed an application 
that was filed not later than 18 months after the ef-
fective filing date of the application or patent 
deemed to interfere with the subsequent application 
or patent. 
‘‘(3) DETERMINATION BY PATENT TRIAL AND 
APPEAL 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. 
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‘‘(4) DERIVATION
PROCEEDING.—The Board 
may defer action on a request to initiate a derivation 
proceeding until 3 months after the date on which 
the Director issues a patent to the applicant that 
filed the earlier application. 
‘‘(5) EFFECT OF FINAL DECISION.—The final 
decision of the Patent Trial and Appeal Board, if 
adverse to the claim of an applicant, shall constitute 
the final refusal by the Patent and Trademark Of-
fice 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 
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, con-
stitute cancellation of the claims involved in the pat-
ent, and notice of such cancellation shall be endorsed 
on copies of the patent distributed after such can-
cellation by the Patent and Trademark Office.’’. 
(j) ELIMINATION
OF
REFERENCES
TO
INTER-
FERENCES.—(1) Sections 6, 41, 134, 141, 145, 146, 154, 
305, and 314 are each amended by striking ‘‘Board of 
Patent Appeals and Interferences’’ each place it appears 
and inserting ‘‘Patent Trial and Appeal Board’’. 
(2) Sections 141, 146, and 154 are each amended— 
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(A) by striking ‘‘an interference’’ each place it 
appears and inserting ‘‘a derivation proceeding’’; 
and 
(B) by striking ‘‘interference’’ each additional 
place it appears and inserting ‘‘derivation pro-
ceeding’’. 
(3) The section heading for section 134 is amended 
to read as follows: 
‘‘§ 134. Appeal to the Patent Trial and Appeal Board’’. 
(4) The section heading for section 135 is amended 
to read as follows: 
‘‘§ 135. Derivation proceedings’’. 
(5) The section heading for section 146 is amended 
to read as follows: 
‘‘§ 146. Civil action in case of derivation proceeding’’. 
(6) Section 154(b)(1)(C) is amended by striking 
‘‘INTERFERENCES’’ and inserting ‘‘DERIVATION
PRO-
CEEDINGS’’. 
(7) 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.’’. 
(8) The items relating to sections 134 and 135 in 
the table of sections for chapter 12 are amended to read 
as follows: 
‘‘134. Appeal to the Patent Trial and Appeal Board. 
‘‘135. Derivation proceedings.’’. 
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(9) The item relating to section 146 in the table of 
sections for chapter 13 is amended to read as follows: 
‘‘146. Civil action in case of derivation proceeding.’’. 
(10) CERTAIN APPEALS.—Subsection 1295(a)(4)(A) 
of title 28, United States Code, is amended to read as 
follows: 
‘‘(A) the Patent Trial and Appeal Board of 
the United States Patent and Trademark Office 
with respect to patent applications, derivation 
proceedings, and post-grant review proceedings, 
at the instance of an applicant for a patent or 
any party to a patent interference (commenced 
before the effective date of the Patent Reform 
Act of 2007), derivation proceeding, or post- 
grant review proceeding, and any such appeal 
shall waive any right of such applicant or party 
to proceed under section 145 or 146 of title 
35;’’. 
SEC. 4. INVENTOR’S OATH OR DECLARATION. 
(a) INVENTOR’S OATH OR DECLARATION.— 
(1) IN GENERAL.—Section 115 is amended to 
read as follows: 
‘‘§ 115. Inventor’s oath or declaration 
‘‘(a) NAMING THE INVENTOR; INVENTOR’S OATH OR 
DECLARATION.—An application for patent that is filed 
under section 111(a), that commences the national stage 
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under section 363, or that is filed by an inventor for an 
invention for which an application has previously been 
filed under this title by that inventor shall include, or be 
amended to include, the name of the inventor of any 
claimed invention in the application. Except as otherwise 
provided in this section, an individual who is the inventor 
or a joint inventor of a claimed invention in an application 
for patent shall execute an oath or declaration in connec-
tion with the application. 
‘‘(b) REQUIRED STATEMENTS.—An oath or declara-
tion under subsection (a) shall contain statements that— 
‘‘(1) the application was made or was author-
ized to be made by the affiant or declarant; and 
‘‘(2) such individual believes himself or herself 
to be the original inventor or an original joint inven-
tor 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 
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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 
‘‘(iii) cannot be found or reached after 
diligent effort; or 
‘‘(B) is under an obligation to assign the 
invention but 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 
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‘‘(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 is under an obliga-
tion of assignment of an application for patent may in-
clude the required statements under subsections (b) and 
(c) in the assignment 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 
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 under section 120 or 
365(c) of the filing of an earlier-filed application, if— 
‘‘(1) an oath or declaration meeting the require-
ments of subsection (a) was executed by the indi-
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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.— 
‘‘(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, the Director shall es-
tablish regulations under which such additional 
statements may be filed. 
‘‘(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 
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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).’’. 
(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 10 is amended to read as follows: 
‘‘115. Inventor’s oath or declaration.’’. 
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(b) FILING BY OTHER THAN INVENTOR.—Section 
118 is amended to read as follows: 
‘‘§ 118. Filing by other than inventor 
‘‘A person to whom the inventor has assigned or is 
under an obligation to assign the invention may make an 
application for patent. A person who otherwise shows suf-
ficient proprietary interest in the matter may make an ap-
plication for patent on behalf of and as agent for the in-
ventor on proof of the pertinent facts and a showing that 
such action is appropriate to preserve the rights of the 
parties. If the Director grants a patent on an application 
filed under this section by a person other than the inven-
tor, the patent shall be granted to the real party in inter-
est and upon such notice to the inventor as the Director 
considers to be sufficient.’’. 
(c) SPECIFICATION.—Section 112 is amended— 
(1) in the first paragraph—— 
(A) by striking ‘‘The specification’’ and in-
serting ‘‘(a) IN GENERAL.—The specification’’; 
(B) by striking ‘‘of carrying out his inven-
tion’’ and inserting ‘‘or joint inventor of car-
rying out the invention’’; and 
(2) in the second paragraph— 
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(A) by striking ‘‘The specifications’’ and 
inserting ‘‘(b) CONCLUSION.—The specifica-
tions’’; 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’’. 
SEC. 5. RIGHT OF THE INVENTOR TO OBTAIN DAMAGES. 
(a) DAMAGES.—Section 284 is amended— 
(1) in the first paragraph— 
(A) by striking ‘‘Upon’’ and inserting ‘‘(a) 
AWARD OF DAMAGES.— 
‘‘(1) IN GENERAL.—Upon’’; 
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(B) by aligning the remaining text accord-
ingly; and 
(C) by adding at the end the following: 
‘‘(2) RELATIONSHIP
OF
DAMAGES
TO
CON-
TRIBUTIONS OVER PRIOR ART.—The court shall con-
duct an analysis to ensure that a reasonable royalty 
under paragraph (1) is applied only to that economic 
value properly attributable to the patent’s specific 
contribution over the prior art. In a reasonable roy-
alty analysis, the court shall identify all factors rel-
evant to the determination of a reasonable royalty 
under this subsection, and the court or the jury, as 
the case may be, shall consider only those factors in 
making the determination. The court shall exclude 
from the analysis the economic value properly attrib-
utable to the prior art, and other features or im-
provements, whether or not themselves patented, 
that contribute economic value to the infringing 
product or process. 
‘‘(3) ENTIRE
MARKET
VALUE.—Unless the 
claimant shows that the patent’s specific contribu-
tion over the prior art is the predominant basis for 
market demand for an infringing product or process, 
damages may not be based upon the entire market 
value of that infringing product or process. 
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‘‘(4) OTHER FACTORS.—In determining dam-
ages, the court may also consider, or direct the jury 
to consider, the terms of any nonexclusive market-
place licensing of the invention, where appropriate, 
as well as any other relevant factors under applica-
ble law.’’; 
(2) by amending the second undesignated para-
graph to read as follows: 
‘‘(b) 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-
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 
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