I 
111TH CONGRESS 
1ST SESSION H. R. 1260 
To amend title 35, United States Code, to provide for patent reform. 
IN THE HOUSE OF REPRESENTATIVES 
MARCH 3, 2009 
Mr. CONYERS (for himself, Mr. SMITH of Texas, Mr. BERMAN, Mr. GOOD-
LATTE, and Ms. JACKSON-LEE of Texas) introduced the following bill; 
which was referred to the Committee on the Judiciary 
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 
‘‘Patent Reform Act of 2009’’. 
(b) TABLE OF CONTENTS.—The table of contents for 
this Act is as follows: 
Sec. 1. Short title; table of contents. 
Sec. 2. Definition. 
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. 
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Sec. 8. Study and report on reexamination proceedings. 
Sec. 9. Preissuance submissions by third parties. 
Sec. 10. Venue and jurisdiction. 
Sec. 11. Patent and trademark office regulatory authority. 
Sec. 12. Residency of Federal Circuit judges. 
Sec. 13. Micro-entity defined. 
Sec. 14. Technical amendments. 
Sec. 15. Effective date; rule of construction. 
Sec. 16. Study of special masters in patent cases. 
Sec. 17. Study on workplace conditions. 
Sec. 18. Study on patent damages. 
Sec. 19. Severability. 
SEC. 2. DEFINITION. 
In this Act, the term ‘‘Director’’ means the Under 
Secretary of Commerce for Intellectual Property and Di-
rector of the United States Patent and Trademark Office. 
SEC. 3. RIGHT OF THE 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 ‘effective filing date of a claimed invention’ 
is— 
‘‘(1) the filing date of the patent or the applica-
tion for the patent containing the claim to the inven-
tion; or 
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‘‘(2) if the patent or application for patent is 
entitled to a right of priority of any other applica-
tion 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 earliest such application in which the claimed in-
vention is disclosed in the manner provided by the 
first paragraph of section 112. 
‘‘(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 
resulting from the collaboration of inventive endeavors of 
2 or more persons working toward the same end and pro-
ducing an invention by their collective efforts.’’. 
(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 patent for a claimed 
invention may not be obtained if— 
‘‘(1) the claimed invention was patented, de-
scribed in a printed publication, or in public use, on 
sale, or otherwise available to the public— 
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‘‘(A) more than 1 year before the effective 
filing date of the claimed invention; or 
‘‘(B) 1 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 
subject 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 
effectively filed before the effective filing date of the 
claimed invention. 
‘‘(b) EXCEPTIONS.— 
‘‘(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 
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directly or indirectly from the inventor or a joint in-
ventor. 
‘‘(2) DERIVATION, PRIOR
DISCLOSURE, AND 
COMMON ASSIGNMENT EXCEPTIONS.—Subject mat-
ter that would otherwise qualify as prior art only 
under subsection (a)(2) shall not be prior art to a 
claimed invention 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 dis-
closed, directly or indirectly, from the inventor 
or a joint inventor before the effective filing 
date of the application or patent set forth under 
subsection (a)(2); or 
‘‘(C) the subject matter 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 as-
signment to the same person. 
‘‘(3) JOINT
RESEARCH
AGREEMENT
EXCEP-
TION.— 
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(h) REPEAL OF INTERFERING PATENT REMEDIES.— 
Section 291 of title 35, United States Code, and the item 
relating to that section in the table of sections for chapter 
29 of title 35, United States Code, are repealed. 
(i) ACTION FOR CLAIM TO PATENT ON DERIVED IN-
VENTION.—Section 135 of title 35, United States Code, 
is amended to read as follows: 
‘‘§ 135. Derivation proceedings 
‘‘(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, 
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 
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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) 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. 
‘‘(3) 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. 
‘‘(4) 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 United States Patent and 
Trademark Office on the claims involved. The Direc-
tor may issue a patent to an applicant who is deter-
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mined 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, constitute cancellation of the claims involved in 
the patent, and notice of such cancellation shall be 
endorsed on copies of the patent distributed after 
such cancellation by the United States Patent and 
Trademark Office. 
‘‘(b) SETTLEMENT.—Parties to a derivation pro-
ceeding may terminate the proceeding by filing a written 
statement reflecting the agreement of the parties as to the 
correct inventors of the claimed invention in dispute. Un-
less the Patent Trial and Appeal Board finds the agree-
ment to be inconsistent with the evidence of record, 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 pro-
ceeding, the agreement or understanding shall be treated 
as business confidential information, shall be kept sepa-
rate from the file of the involved patents or applications, 
and shall be made available only to Government agencies 
on written request. 
‘‘(c) ARBITRATION.—Parties to a derivation pro-
ceeding, within such time as may be specified by the Di-
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rector by regulation, may determine such contest or any 
aspect thereof by arbitration. Such arbitration 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 relates. The arbitra-
tion award shall be unenforceable until such notice is 
given. Nothing in this subsection shall preclude the Direc-
tor from determining patentability of the invention in-
volved in the derivation proceeding.’’. 
(j) ELIMINATION
OF
REFERENCES
TO
INTER-
FERENCES.—(1) Sections 6, 41, 134, 141, 145, 146, 154, 
305, and 314 of title 35, United States Code, are each 
amended by striking ‘‘Board of Patent Appeals and Inter-
ferences’’ each place it appears and inserting ‘‘Patent 
Trial and Appeal Board’’. 
(2) Sections 141, 146, and 154 of title 35, United 
States Code, are each amended— 
(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’’. 
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(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) Section 154(b)(1)(C) of title 35, United States 
Code, is amended by striking ‘‘INTERFERENCES’’ and in-
serting ‘‘DERIVATION PROCEEDINGS’’. 
(6) The item relating to section 6 in the table of sec-
tions for chapter 1 of title 35, United States Code, is 
amended to read as follows: 
‘‘6. Patent Trial and Appeal Board.’’. 
(7) 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.’’. 
(8) 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.’’. 
(9) CERTAIN APPEALS.—Section 1295(a)(4)(A) of 
title 28, United States Code, is amended to read as fol-
lows: 
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‘‘(A) the Patent Trial and Appeal Board of 
the United States Patent and Trademark Office 
with respect to patent applications, interference 
proceedings (commenced before the date of en-
actment of the Patent Reform Act of 2009), 
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 2009), derivation pro-
ceeding, 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;’’. 
(k) EFFECTIVE DATE.— 
(1) IN GENERAL.—The amendments made by 
this section— 
(A) shall take effect 90 days after the date 
on which the President issues an Executive 
order containing the President’s finding that 
major patenting authorities have adopted a 
grace period having substantially the same ef-
fect as that contained under the amendments 
made by this section; and 
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(B) shall apply to all applications for pat-
ent that are filed on or after the effective date 
under subparagraph (A). 
(2) DEFINITIONS.—In this subsection: 
(A) MAJOR
PATENTING
AUTHORITIES.— 
The term ‘‘major patenting authorities’’ means 
at least the patenting authorities in Europe and 
Japan. 
(B) GRACE PERIOD.—The term ‘‘grace pe-
riod’’ means the 1-year period ending on the ef-
fective filing date of a claimed invention, during 
which disclosures of the subject matter by the 
inventor or a joint inventor, or by others who 
obtained the subject matter disclosed directly or 
indirectly from the inventor or a joint inventor, 
do not qualify as prior art to the claimed inven-
tion. 
(C) EFFECTIVE FILING DATE.—The term 
‘‘effective filing date of a claimed invention’’ 
means, with respect to a patenting authority in 
another country, a date equivalent to the effec-
tive filing date of a claimed invention as defined 
in section 100(h) of title 35, United States 
Code, as added by subsection (a) of this section. 
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(3) RETENTION
OF
INTERFERENCE
PROCE-
DURES WITH RESPECT TO APPLICATIONS FILED BE-
FORE EFFECTIVE DATE.—In the case of any applica-
tion for patent that is filed before the effective date 
under paragraph (1)(A), the provisions of law re-
pealed or amended by subsections (h), (i), and (j) 
shall apply to such application as such provisions of 
law were in effect on the day before such effective 
date. 
(l) REVIEW EVERY 7 YEARS.—Not later than the end 
of the 7-year period beginning on the effective date under 
subsection (k), and the end of every 7-year period there-
after, the Director shall— 
(1) conduct a study on the effectiveness and ef-
ficiency of the amendments made by this section; 
and 
(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 first-to-file system implemented 
under the amendments made by this section. 
SEC. 4. INVENTOR’S OATH OR DECLARATION. 
(a) INVENTOR’S OATH OR DECLARATION.— 
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(1) IN
GENERAL.—Section 115 of title 35, 
United States Code, 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 
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 
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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 
‘‘(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— 
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‘‘(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 
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 
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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-
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. 
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