HR 1249 PCS
(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— 
‘‘(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— 
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‘‘(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 
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 
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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 
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 
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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 
‘‘(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, 
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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 
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; non-obvious 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 
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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.— 
(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.— 
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(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-
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 
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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— 
(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: 
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‘‘§ 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 
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 
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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 on the date of the 
first publication of a claim to an invention that is the same 
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. In appropriate circumstances, the Patent Trial and 
Appeal Board may correct the naming of the inventor in 
any application or patent at issue. The Director shall pre-
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scribe regulations setting forth standards for the conduct 
of derivation proceedings, including requiring parties to 
provide sufficient evidence to prove and rebut a claim of 
derivation. 
‘‘(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 
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. 
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‘‘(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 
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 
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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, and 305 
of title 35, United States Code, are each amended by strik-
ing ‘‘Board of Patent Appeals and Interferences’’ each 
place it appears and inserting ‘‘Patent Trial and Appeal 
Board’’. 
(2)(A) Section 146 of title 35, United States Code, 
is amended— 
(i) by striking ‘‘an interference’’ and in-
serting ‘‘a derivation proceeding’’; and 
(ii) by striking ‘‘the interference’’ and in-
serting ‘‘the 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: 
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‘‘§ 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.’’. 
(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).’’. 
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(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 
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 States 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 
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(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-
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-
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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-
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 
on 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-
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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 
European Union and Japan, Canada, and Aus-
tralia. 
(B) An analysis of the effect of prior user 
rights on innovation rates in the selected coun-
tries. 
(C) An analysis of the correlation, if any, 
between prior user rights and start-up enter-
prises and the ability to attract venture capital 
to start new companies. 
(D) An analysis of the effect of prior user 
rights, if any, on small businesses, universities, 
and individual inventors. 
(E) An analysis of legal and constitutional 
issues, if any, that arise from placing trade se-
cret law in patent law. 
(F) An analysis of whether the change to 
a first-to-file patent system creates a particular 
need for prior user rights. 
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(2) CONSULTATION WITH OTHER AGENCIES.— 
In preparing the report required under paragraph 
(1), the Director shall consult with the United 
States Trade Representative, the Secretary of State, 
and the Attorney General. 
(n) EFFECTIVE DATE.— 
(1) IN
GENERAL.—Except as otherwise pro-
vided in this section, the amendments made by this 
section shall take effect upon the expiration of the 
18-month period beginning on the date of the enact-
ment of this Act, and shall apply to any application 
for patent, and to any patent issuing thereon, that 
contains or contained at any time— 
(A) a claim to a claimed invention that has 
an effective filing date as defined in section 
100(i) of title 35, United States Code, that is 
on or after the effective date described in this 
paragraph; or 
(B) a specific reference under section 120, 
121, or 365(c) of title 35, United States Code, 
to any patent or application that contains or 
contained at any time such a claim. 
(2) INTERFERING PATENTS.—The provisions of 
sections 102(g), 135, and 291 of title 35, United 
States Code, as in effect on the day before the effec-
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tive date set forth in paragraph (1) of this sub-
section, shall apply to each claim of an application 
for patent, and any patent issued thereon, for which 
the amendments made by this section also apply, if 
such application or patent contains or contained at 
any time— 
(A) a claim to an invention having an ef-
fective filing date as defined in section 100(i) of 
title 35, United States Code, that occurs before 
the effective date set forth in paragraph (1) of 
this subsection; or 
(B) a specific reference under section 120, 
121, or 365(c) of title 35, United States Code, 
to any patent or application that contains or 
contained at any time such a claim. 
(o) SENSE OF CONGRESS.—It is the sense of the Con-
gress that converting the United States patent system 
from ‘‘first to invent’’ to a system of ‘‘first inventor to 
file’’ will promote the progress of science and the useful 
arts by securing for limited times to inventors the exclu-
sive rights to their discoveries and provide inventors with 
greater certainty regarding the scope of protection pro-
vided by the grant of exclusive rights to their discoveries. 
(p) SENSE OF CONGRESS.—It is the sense of the 
Congress that converting the United States patent system 
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from ‘‘first to invent’’ to a system of ‘‘first inventor to 
file’’ will improve the United States patent system and 
promote harmonization of the United States patent system 
with the patent systems commonly used in nearly all other 
countries throughout the world with whom the United 
States conducts trade and thereby promote greater inter-
national uniformity and certainty in the procedures used 
for securing the exclusive rights of inventors to their dis-
coveries. 
SEC. 4. INVENTOR’S OATH OR DECLARATION. 
(a) INVENTOR’S OATH OR DECLARATION.— 
(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) or commences the national stage 
under section 371 shall include, or be amended to include, 
the name of the inventor for any invention claimed in the 
application. Except as otherwise provided in this section, 
each individual who is the inventor or a joint inventor of 
a claimed invention in an application for patent shall exe-
cute an oath or declaration in connection with the applica-
tion. 
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‘‘(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 
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; 
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‘‘(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 
‘‘(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 
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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.— 
‘‘(1) EXCEPTION.—The requirements under 
this section shall not apply to an individual with re-
spect to an application for patent in which the indi-
vidual is named as the inventor or a joint inventor 
and who claims the benefit under section 120, 121, 
or 365(c) of the filing of an earlier-filed application, 
if— 
‘‘(A) an oath or declaration meeting the 
requirements of subsection (a) was executed by 
the individual and was filed in connection with 
the earlier-filed application; 
‘‘(B) a substitute statement meeting the 
requirements of subsection (d) was filed in con-
nection with the earlier filed application with 
respect to the individual; or 
‘‘(C) an assignment meeting the require-
ments of subsection (e) was executed with re-
spect to the earlier-filed application by the indi-
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vidual and was recorded in connection with the 
earlier-filed application. 
‘‘(2) COPIES OF OATHS, DECLARATIONS, STATE-
MENTS, OR ASSIGNMENTS.—Notwithstanding para-
graph (1), the Director may require that a copy of 
the executed oath or declaration, the substitute 
statement, or the assignment filed in connection 
with the earlier-filed application be included in the 
later-filed application. 
‘‘(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 meeting the requirements of subsection 
(a) or an assignment meeting the requirements of 
subsection (e) with respect to an application for pat-
ent, the Director may not thereafter require that in-
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dividual to make any additional oath, declaration, or 
other statement equivalent to those required by this 
section in connection with the application for patent 
or any patent issuing thereon. 
‘‘(3) SAVINGS CLAUSE.—A patent shall not be 
invalid 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 pursuant to this section shall 
contain an acknowledgment that any willful false state-
ment made in such declaration or statement is punishable 
under section 1001 of title 18 by fine or imprisonment 
of not more than 5 years, or both.’’. 
(2) RELATIONSHIP
TO
DIVISIONAL
APPLICA-
TIONS.—Section 121 of title 35, United States Code, 
is amended by striking ‘‘If a divisional application’’ 
and all that follows through ‘‘inventor.’’. 
(3) REQUIREMENTS FOR NONPROVISIONAL AP-
PLICATIONS.—Section 111(a) of title 35, United 
States Code, is amended— 
(A) in paragraph (2)(C), by striking ‘‘by 
the applicant’’ and inserting ‘‘or declaration’’; 
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(B) in the heading for paragraph (3), by 
inserting 
‘‘OR
DECLARATION’’ 
after 
‘‘AND 
OATH’’; and 
(C) by inserting ‘‘or declaration’’ after 
‘‘and oath’’ each place it appears. 
(4) CONFORMING AMENDMENT.—The item re-
lating to section 115 in the table of sections for 
chapter 11 of title 35, United States Code, is 
amended to read as follows: 
‘‘115. Inventor’s oath or declaration.’’. 
(b) FILING BY OTHER THAN INVENTOR.— 
(1) IN
GENERAL.—Section 118 of title 35, 
United States Code, 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.’’. 
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(2) CONFORMING
AMENDMENT.—Section 251 
of title 35, United States Code, is amended in the 
third undesignated paragraph by inserting ‘‘or the 
application for the original patent was filed by the 
assignee of the entire interest’’ after ‘‘claims of the 
original patent’’. 
(c) SPECIFICATION.—Section 112 of title 35, United 
States Code, is amended— 
(1) in the first undesignated 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’’; 
(2) in the second undesignated 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 undesignated paragraph, by 
striking ‘‘A claim’’ and inserting ‘‘(c) FORM.—A 
claim’’; 
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(4) in the fourth undesignated paragraph, by 
striking ‘‘Subject to the following paragraph,’’ and 
inserting 
‘‘(d) 
REFERENCE
IN
DEPENDENT 
FORMS.—Subject to subsection (e),’’; 
(5) in the fifth undesignated paragraph, by 
striking ‘‘A claim’’ and inserting ‘‘(e) REFERENCE 
IN MULTIPLE DEPENDENT FORM.—A claim’’; and 
(6) in the last undesignated paragraph, by 
striking ‘‘An element’’ and inserting ‘‘(f) ELEMENT 
IN CLAIM FOR A COMBINATION.—An element’’. 
(d) CONFORMING AMENDMENTS.— 
(1) Sections 111(b)(1)(A) of title 35, United 
States Code, is amended by striking ‘‘the first para-
graph of section 112 of this title’’ and inserting 
‘‘section 112(a)’’. 
(2) Section 111(b)(2) of title 35, United States 
Code, is amended by striking ‘‘the second through 
fifth paragraphs of section 112,’’ and inserting 
‘‘subsections (b) through (e) of section 112,’’. 
(e) EFFECTIVE DATE.—The amendments made by 
this section shall take effect upon the expiration of the 
1-year period beginning on the date of the enactment of 
this Act and shall apply to any patent application that 
is filed on or after that effective date. 
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SEC. 5. DEFENSE TO INFRINGEMENT BASED ON PRIOR 
COMMERCIAL USE. 
(a) IN GENERAL.—Section 273 of title 35, United 
States Code, is amended to read as follows: 
‘‘§ 273. Defense to infringement based on prior com-
mercial use 
‘‘(a) IN GENERAL.—A person shall be entitled to a 
defense under section 282(b) with respect to subject mat-
ter consisting of a process, or consisting of a machine, 
manufacture, or composition of matter used in a manufac-
turing or other commercial process, that would otherwise 
infringe a claimed invention being asserted against the 
person if— 
‘‘(1) such person, acting in good faith, commer-
cially used the subject matter in the United States, 
either in connection with an internal commercial use 
or an actual arm’s length sale or other arm’s length 
commercial transfer of a useful end result of such 
commercial use; and 
‘‘(2) such commercial use occurred at least 1 
year before the earlier of either— 
‘‘(A) the effective filing date of the claimed 
invention; or 
‘‘(B) the date on which the claimed inven-
tion was disclosed to the public in a manner 
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that qualified for the exception from prior art 
under section 102(b). 
‘‘(b) BURDEN OF PROOF.—A person asserting a de-
fense under this section shall have the burden of estab-
lishing the defense by clear and convincing evidence. 
‘‘(c) ADDITIONAL COMMERCIAL USES.— 
‘‘(1) PREMARKETING REGULATORY REVIEW.— 
Subject matter for which commercial marketing or 
use is subject to a premarketing regulatory review 
period during which the safety or efficacy of the sub-
ject matter is established, including any period speci-
fied in section 156(g), shall be deemed to be com-
mercially used for purposes of subsection (a)(1) dur-
ing such regulatory review period. 
‘‘(2) NONPROFIT LABORATORY USE.—A use of 
subject matter by a nonprofit research laboratory or 
other nonprofit entity, such as a university or hos-
pital, for which the public is the intended bene-
ficiary, shall be deemed to be a commercial use for 
purposes of subsection (a)(1), except that a defense 
under this section may be asserted pursuant to this 
paragraph only for continued and noncommercial 
use by and in the laboratory or other nonprofit enti-
ty. 
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‘‘(d) EXHAUSTION
OF
RIGHTS.—Notwithstanding 
subsection (e)(1), the sale or other disposition of a useful 
end result by a person entitled to assert a defense under 
this section in connection with a patent with respect to 
that useful end result shall exhaust the patent owner’s 
rights under the patent to the extent that such rights 
would have been exhausted had such sale or other disposi-
tion been made by the patent owner. 
‘‘(e) LIMITATIONS AND EXCEPTIONS.— 
‘‘(1) PERSONAL DEFENSE.— 
‘‘(A) IN GENERAL.—A defense under this 
section may be asserted only by the person who 
performed or directed the performance of the 
commercial use described in subsection (a), or 
by an entity that controls, is controlled by, or 
is under common control with such person. 
‘‘(B) TRANSFER
OF
RIGHT.—Except for 
any transfer to the patent owner, the right to 
assert a defense under this section shall not be 
licensed or assigned or transferred to another 
person except as an ancillary and subordinate 
part of a good-faith assignment or transfer for 
other reasons of the entire enterprise or line of 
business to which the defense relates. 
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