CONCLUSION OF MORNING
`BUSINESS
`The ACTING PRESIDENT pro tem-
`pore. Morning business is closed.
`f
`
`S936
`February 28, 2011
`CONGRESSIONAL RECORD — SENATE
`The assistant legislative clerk con-
`days, while traveling to these various
`people move on to other topics; that we
`tinued with the call of the roll.
`countries, that he, along with many of
`keep that straitjacket in place so we do
`Mr. LEAHY. Mr. President, I ask
`our other colleagues—I know I did my-
`those things that are, again, respon-
`unanimous consent that the order for
`self—came here to solve problems, not
`sible not only to this generation but
`the quorum call be rescinded.
`to message. In a body such as this, it is
`future generations.
`The ACTING PRESIDENT pro tem-
`Thirdly, I hope we figure out a way,
`tough to solve these kinds of problems,
`pore. Is there an objection?
`through some type of amendment, to
`but the only way to do it is to offer a
`Without objection, it is so ordered.
`ensure that, on into the future, we
`pragmatic solution.
`I know there are some people who are
`have put something in place at the
`f
`interested, sometimes, in messaging. I
`Federal level which causes us to be fis-
`have tried to offer something that I
`cally responsible in this country. All of
`think will take us from a place that is
`us know what it means to have to
`very much out of line in spending to a
`make choices. All of us have house-
`place that is more appropriate.
`holds. Many of us have led cities and
`I might also say I thought the Presi-
`States. Many of us have had busi-
`dent’s deficit reduction commission
`nesses. We all understand what hap-
`had some very good points as it relates
`pens in the real world, and it is some-
`to tax reform. I think all of us are
`thing that certainly needs to happen
`aware of the $1.2 trillion in tax expend-
`here. That has been sorely lacking for
`itures that exist.
`a long time.
`I was doing an event over the last
`So I thank the Chair for the time on
`several days, and a gentleman raised
`the floor today, and I hope to talk
`his hand and asked me: What do you
`about this many more times. I have
`mean by tax expenditures? Isn’t the
`been doing it, I assure you, throughout
`money ours until we give it to the Fed-
`the State of Tennessee and in multiple
`eral Government? Why would you call
`forums in the Senate.
`it a tax expenditure?
`I yield the floor, and I suggest the ab-
`I think people realize in our Tax Code
`sence of a quorum.
`there are all kinds of exclusions and
`The ACTING PRESIDENT pro tem-
`subsidies and favored companies and
`pore. The clerk will call the roll.
`The assistant legislative clerk pro-
`favored this and favored that. If we did
`ceeded to call the roll.
`away with all of those, there would be
`Mr. CORKER. Mr. President, I ask
`$1.2 trillion we could use to lower
`unanimous consent that the order for
`everybody’s rate, and we could make
`the quorum call be rescinded.
`our Tax Code much more simple. The
`The ACTING PRESIDENT pro tem-
`deficit reduction commission says we
`pore. Without objection, it is so or-
`could take our corporate rates from
`dered.
`where they are down to a level of about
`Mr. CORKER. Mr. President, I had
`26 percent—somewhere between 23 and
`the opportunity to speak with you in
`29 percent—and
`lower everybody’s
`the last several moments, and you had
`rates individually. I think most Ameri-
`a couple questions about the CAP Act
`cans, instead of filling out all these
`that I was just discussing on the floor.
`forms to see if they benefit from these
`The Presiding Officer had some great
`various subsidies and credits, would
`questions about what it takes to over-
`much rather know that everybody is on
`come the CAP Act, in the event we
`the same playing field; that some fa-
`were able to pass it.
`vored company is not in a situation
`It is just a 10-page bill. It is very elo-
`where they are more favored than an-
`quent. It doesn’t have a
`lot of
`other; that everybody is on the same
`‘‘whereases.’’ It is just a business docu-
`basis.
`ment that takes us from where we are
`I think there has been some good
`to where we need to be. But, in essence,
`work done there. I hope we are able to
`to override it, it would take a two-
`take votes on that over the next sev-
`thirds vote. It would take two-thirds of
`eral months. But there is a very ele-
`the House and the Senate to actually
`gant, pragmatic solution that has been
`override or get out of the straitjacket,
`offered that would go hand in hand
`if you will. There were previous bills,
`with these types of measures and would
`such as Gramm-Rudman and other
`cause us, over the next 10 years, to ex-
`types of bills that tried to keep Wash-
`ercise the kind of fiscal discipline this
`ington fiscally focused, and those bills
`country needs to confront what I think
`required 60 votes. So this would be a
`threatens our national security, cer-
`higher threshold.
`tainly our economic security, even
`So, yes, if there was some type of na-
`more than the things we saw on the
`tional emergency and we needed to
`ground in the Middle East last week.
`move beyond this straitjacket for 1
`With that, I suggest the absence of a
`year or 6 months or something like
`quorum.
`that, a two-thirds vote could do that. I
`The ACTING PRESIDENT pro tem-
`mean, 67 votes is a pretty tough thresh-
`pore. The clerk will call the roll.
`old, and hopefully it is the kind of
`The assistant legislative clerk pro-
`threshold necessary to keep the kind of
`ceeded to call the roll.
`discipline in place that we need.
`Mr. LEAHY. Mr. President, I ask
`So it is a 10-page bill. Again, it is
`unanimous consent that the order for
`very eloquent. I think it lays out a so-
`the quorum call be rescinded.
`lution for us that hopefully will be a
`Mr. VITTER. I object.
`The ACTING PRESIDENT pro tem-
`part of anything we do over the next
`pore. Objection is heard.
`several months.
`The clerk will continue to call the
`I understand, after talking with the
`roll.
`Presiding Officer over the last several
`
`PATENT REFORM ACT OF 2011
`The ACTING PRESIDENT pro tem-
`pore. Under the previous order, the
`Senate will now proceed to the consid-
`eration of S. 23, which the clerk will re-
`port.
`The assistant legislative clerk read
`as follows:
`A bill (S. 23) to amend title 35, United
`States Code, to provide for patent reform.
`The Senate proceeded to consider the
`bill, which had been reported from the
`Committee on the Judiciary with
`amendments; as follows:
`(The parts of the bill intended to be strick-
`en are shown in boldface brackets and the
`parts of the bill intended to be inserted are
`shown in italics.)
`Be it enacted by the Senate and House of Rep-
`resentatives 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 2011’’.
`(b) TABLE OF CONTENTS.—The table of con-
`tents 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. Damages.
`Sec. 5. Post-grant review proceedings.
`Sec. 6. Patent Trial and Appeal Board.
`Sec. 7. Preissuance submissions by third
`parties.
`Sec. 8. Venue.
`Sec. 9. Fee setting authority.
`Sec. 10. Supplemental examination.
`Sec. 11. Residency of Federal Circuit judges.
`Sec. 12. Micro entity defined.
`Sec. 13. Funding agreements.
`Sec. 14. Tax strategies deemed within the
`prior art.
`Sec. 15. Best mode requirement.
`Sec. 16. Technical amendments.
`Sec. 17. Clarification of jurisdiction.
`Sec. [17]18. Effective date; [rule of construc-
`tion.]
`SEC. 2. FIRST INVENTOR TO FILE.
`(a) DEFINITIONS.—Section 100 of title 35,
`United States Code, is amended by adding at
`the end the following:
`‘‘(f) The term ‘inventor’ means the indi-
`vidual or, if a joint invention, the individ-
`uals collectively who invented or discovered
`the subject matter of the invention.
`‘‘(g) The terms ‘joint inventor’ and ‘co-
`inventor’ 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 coopera-
`tive agreement entered into by 2 or more
`persons or entities for the performance of ex-
`perimental, developmental, or research work
`in the field of the claimed invention.
`‘‘(i)(1) The term ‘effective filing date’ of a
`claimed invention in a patent or application
`for patent means—
`
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`Smartflash - Exhibit 2104
`Apple v. Smartflash
`CBM2015-00016
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`S937
`February 28, 2011
`CONGRESSIONAL RECORD — SENATE
`‘‘(A) if subparagraph (B) does not apply,
`(3) EFFECTIVE DATE.—The amendments
`by, or on behalf of, 1 or more parties to a
`the actual filing date of the patent or the ap-
`made by this subsection shall take effect 1
`joint research agreement that was in effect
`plication for the patent containing a claim
`year after the date of the enactment of this
`on or before the effective filing date of the
`to the invention; or
`Act, and shall apply to any request for a
`claimed invention;
`‘‘(B) the filing date of the earliest applica-
`statutory invention registration filed on or
`‘‘(2) the claimed invention was made as a
`tion for which the patent or application is
`after that date.
`result of activities undertaken within the
`(f) EARLIER FILING DATE FOR INVENTOR AND
`entitled, as to such invention, to a right of
`scope of the joint research agreement; and
`JOINT INVENTOR.—Section 120 of title 35,
`priority under section 119, 365(a), or 365(b) or
`‘‘(3) the application for patent for the
`United States Code, is amended by striking
`to the benefit of an earlier filing date under
`claimed invention discloses or is amended to
`‘‘which is filed by an inventor or inventors
`section 120, 121, or 365(c).
`disclose the names of the parties to the joint
`named’’ and inserting ‘‘which names an in-
`‘‘(2) The effective filing date for a claimed
`research agreement.
`‘‘(d) PATENTS AND PUBLISHED APPLICATIONS
`ventor or joint inventor’’.
`invention in an application for reissue or re-
`(g) CONFORMING AMENDMENTS.—
`EFFECTIVE AS PRIOR ART.—For purposes of
`issued patent shall be determined by deem-
`(1) RIGHT OF PRIORITY.—Section 172 of title
`determining whether a patent or application
`ing the claim to the invention to have been
`35, United States Code, is amended by strik-
`for patent is prior art to a claimed invention
`contained in the patent for which reissue
`ing
`‘‘and the time specified in section
`under subsection (a)(2), such patent or appli-
`was sought.
`102(d)’’.
`cation shall be considered to have been effec-
`‘‘(j) The term ‘claimed invention’ means
`REMEDIES.—Section
`(2) LIMITATION
`tively filed, with respect to any subject mat-
`the subject matter defined by a claim in a
`ON
`287(c)(4) of title 35, United States Code, is
`ter described in the patent or application—
`patent or an application for a patent.’’.
`amended by striking ‘‘the earliest effective
`(b) CONDITIONS FOR PATENTABILITY.—
`‘‘(1) if paragraph (2) does not apply, as of
`filing date of which is prior to’’ and inserting
`(1) IN GENERAL.—Section 102 of title 35,
`the actual filing date of the patent or the ap-
`‘‘which has an effective filing date before’’.
`United States Code, is amended to read as
`plication for patent; or
`DESIG-
`(3)
`INTERNATIONAL
`follows:
`‘‘(2) if the patent or application for patent
`APPLICATION
`NATING THE UNITED STATES: EFFECT.—Section
`is entitled to claim a right of priority under
`‘‘§ 102. Conditions for patentability; novelty
`363 of title 35, United States Code, is amend-
`section 119, 365(a), or 365(b), or to claim the
`‘‘(a) NOVELTY; PRIOR ART.—A person shall
`ed by striking ‘‘except as otherwise provided
`benefit of an earlier filing date under section
`be entitled to a patent unless—
`in section 102(e) of this title’’.
`120, 121, or 365(c), based upon 1 or more prior
`‘‘(1) the claimed invention was patented,
`(4) PUBLICATION OF INTERNATIONAL APPLICA-
`filed applications for patent, as of the filing
`described in a printed publication, or in pub-
`TION: EFFECT.—Section 374 of title 35, United
`date of the earliest such application that de-
`lic use, on sale, or otherwise available to the
`States Code, is amended by striking ‘‘sec-
`scribes the subject matter.’’.
`public before the effective filing date of the
`(2) CONTINUITY OF INTENT UNDER THE CREATE
`tions 102(e) and 154(d)’’ and inserting ‘‘sec-
`claimed invention; or
`ACT.—The enactment of section 102(c) of title 35,
`tion 154(d)’’.
`‘‘(2) the claimed invention was described in
`United States Code, under the preceding para-
`(5) PATENT ISSUED ON INTERNATIONAL APPLI-
`a patent issued under section 151, or in an ap-
`graph is done with the same intent to promote
`CATION: EFFECT.—The second sentence of sec-
`plication for patent published or deemed
`joint research activities that was expressed, in-
`tion 375(a) of title 35, United States Code, is
`published under section 122(b), in which the
`cluding in the legislative history, through the
`amended by striking ‘‘Subject to section
`patent or application, as the case may be,
`enactment of the Cooperative Research and
`102(e) of this title, such’’ and inserting
`names another inventor and was effectively
`Technology Enhancement Act of 2004 (Public
`‘‘Such’’.
`filed before the effective filing date of the
`Law 108–453; the ‘‘CREATE Act’’), the amend-
`(6) LIMIT ON RIGHT OF PRIORITY.—Section
`claimed invention.
`ments of which are stricken by subsection (c).
`119(a) of title 35, United States Code, is
`‘‘(b) EXCEPTIONS.—
`The United States Patent and Trademark Office
`amended by striking ‘‘; but no patent shall
`‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BE-
`shall administer section 102(c) of title 35, United
`be granted’’ and all that follows through
`FORE THE EFFECTIVE FILING DATE OF THE
`States Code, in a manner consistent with the
`‘‘one year prior to such filing’’.
`CLAIMED INVENTION.—A disclosure made 1
`legislative history of the CREATE Act that was
`(7) INVENTIONS MADE WITH FEDERAL ASSIST-
`year or less before the effective filing date of
`relevant to its administration by the United
`ANCE.—Section 202(c) of title 35, United
`a claimed invention shall not be prior art to
`States Patent and Trademark Office.
`States Code, is amended—
`the claimed invention under subsection (a)(1)
`ø2¿(3) CONFORMING AMENDMENT.—The item
`(A) in paragraph (2)—
`if—
`relating to section 102 in the table of sec-
`(i) by striking ‘‘publication, on sale, or
`‘‘(A) the disclosure was made by the inven-
`tions for chapter 10 of title 35, United States
`public use,’’ and all that follows through
`tor or joint inventor or by another who ob-
`Code, is amended to read as follows:
`‘‘obtained in the United States’’ and insert-
`tained the subject matter disclosed directly
`ing ‘‘the 1-year period referred to in section
`‘‘102. Conditions for patentability; novelty.’’.
`or indirectly from the inventor or a joint in-
`102(b) would end before the end of that 2-year
`(c) CONDITIONS FOR PATENTABILITY; NON-
`ventor; or
`period’’; and
`OBVIOUS SUBJECT MATTER.—Section 103 of
`‘‘(B) the subject matter disclosed had, be-
`(ii) by striking ‘‘the statutory’’ and insert-
`title 35, United States Code, is amended to
`fore such disclosure, been publicly disclosed
`ing ‘‘that 1-year’’; and
`read as follows:
`by the inventor or a joint inventor or an-
`(B) in paragraph (3), by striking ‘‘any stat-
`for patentability; non-
`‘‘§ 103. Conditions
`other who obtained the subject matter dis-
`utory bar date that may occur under this
`obvious subject matter
`closed directly or indirectly from the inven-
`title due to publication, on sale, or public
`tor or a joint inventor.
`‘‘A patent for a claimed invention may not
`use’’ and inserting ‘‘the expiration of the 1-
`‘‘(2) DISCLOSURES APPEARING IN APPLICA-
`be obtained, notwithstanding that the
`year period referred to in section 102(b)’’.
`TIONS AND PATENTS.—A disclosure shall not
`claimed invention is not identically dis-
`(h) DERIVED PATENTS.—Section 291 of title
`be prior art to a claimed invention under
`closed as set forth in section 102, if the dif-
`35, United States Code, is amended to read as
`subsection (a)(2) if—
`ferences between the claimed invention and
`follows:
`‘‘(A) the subject matter disclosed was ob-
`the prior art are such that the claimed in-
`‘‘§ 291. Derived patents
`tained directly or indirectly from the inven-
`vention as a whole would have been obvious
`‘‘(a) IN GENERAL.—The owner of a patent
`tor or a joint inventor;
`before the effective filing date of the claimed
`may have relief by civil action against the
`‘‘(B) the subject matter disclosed had, be-
`invention to a person having ordinary skill
`owner of another patent that claims the
`fore such subject matter was effectively filed
`in the art to which the claimed invention
`same invention and has an earlier effective
`under subsection (a)(2), been publicly dis-
`pertains. Patentability shall not be negated
`filing date if the invention claimed in such
`closed by the inventor or a joint inventor or
`by the manner in which the invention was
`other patent was derived from the inventor
`another who obtained the subject matter dis-
`made.’’.
`of the invention claimed in the patent owned
`closed directly or indirectly from the inven-
`(d) REPEAL OF REQUIREMENTS FOR INVEN-
`by the person seeking relief under this sec-
`tor or a joint inventor; or
`TIONS MADE ABROAD.—Section 104 of title 35,
`tion.
`‘‘(C) the subject matter disclosed and the
`United States Code, and the item relating to
`‘‘(b) FILING LIMITATION.—An action under
`claimed invention, not later than the effec-
`that section in the table of sections for chap-
`this section may only be filed within 1 year
`tive filing date of the claimed invention,
`ter 10 of title 35, United States Code, are re-
`after the issuance of the first patent con-
`were owned by the same person or subject to
`pealed.
`taining a claim to the allegedly derived in-
`(e) REPEAL OF STATUTORY INVENTION REG-
`an obligation of assignment to the same per-
`vention and naming an individual alleged to
`ISTRATION.—
`son.
`have derived such invention as the inventor
`‘‘(c) COMMON OWNERSHIP UNDER JOINT RE-
`(1) IN GENERAL.—Section 157 of title 35,
`or joint inventor.’’.
`SEARCH AGREEMENTS.—Subject matter dis-
`United States Code, and the item relating to
`(i) DERIVATION PROCEEDINGS.—Section 135
`closed and a claimed invention shall be
`that section in the table of sections for chap-
`of title 35, United States Code, is amended to
`deemed to have been owned by the same per-
`ter 14 of title 35, United States Code, are re-
`read as follows:
`son or subject to an obligation of assignment
`pealed.
`‘‘§ 135. Derivation proceedings
`(2) REMOVAL OF CROSS REFERENCES.—Sec-
`to the same person in applying the provi-
`‘‘(a) INSTITUTION OF PROCEEDING.—An appli-
`tion 111(b)(8) of title 35, United States Code,
`sions of subsection (b)(2)(C) if—
`cant for patent may file a petition to insti-
`is amended by striking ‘‘sections 115, 131, 135,
`‘‘(1) the subject matter disclosed was de-
`tute a derivation proceeding in the Office.
`and 157’’ and inserting ‘‘sections 131 and 135’’.
`veloped and the claimed invention was made
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`S938
`February 28, 2011
`CONGRESSIONAL RECORD — SENATE
`The petition shall set forth with particu-
`the misconduct forming the basis for the
`arbitration award shall be unenforceable
`larity the basis for finding that an inventor
`proceeding occurred, or 1 year after the date
`until such notice is given. Nothing in this
`named in an earlier application derived the
`on which the misconduct forming the basis
`subsection shall preclude the Director from
`claimed invention from an inventor named
`for the proceeding is made known to an offi-
`determining the patentability of the claimed
`in the petitioner’s application and, without
`cer or employee of the Office as prescribed in
`inventions involved in the proceeding.’’.
`authorization, the earlier application claim-
`the regulations established under section
`(j) ELIMINATION OF REFERENCES TO INTER-
`ing such invention was filed. Any such peti-
`2(b)(2)(D).’’.
`FERENCES.—(1) Sections 41, 134, 145, 146, 154,
`(2) REPORT TO CONGRESS.—The Director
`tion may only be filed within 1 year after the
`305, and 314 of title 35, United States Code,
`shall provide on a biennial basis to the Judi-
`first publication of a claim to an invention
`are each amended by striking ‘‘Board of Pat-
`ciary Committees of the Senate and House of
`that is the same or substantially the same as
`ent Appeals and Interferences’’ each place it
`Representatives a report providing a short
`the earlier application’s claim to the inven-
`appears and inserting ‘‘Patent Trial and Ap-
`description of incidents made known to an
`tion, shall be made under oath, and shall be
`peal Board’’.
`officer or employee of the Office as pre-
`supported by substantial evidence. Whenever
`(2)(A) Sections 146 and 154 of title 35,
`scribed in the regulations established under
`the Director determines that a petition filed
`United States Code, are each amended—
`section 2(b)(2)(D) of title 35, United States
`under this subsection demonstrates that the
`(i) by striking ‘‘an interference’’ each place
`Code, that reflect substantial evidence of
`standards for instituting a derivation pro-
`it appears and inserting ‘‘a derivation pro-
`misconduct before the Office but for which
`ceeding are met, the Director may institute
`ceeding’’; and
`the Office was barred from commencing a
`a derivation proceeding. The determination
`(ii) by striking ‘‘interference’’ each addi-
`proceeding under section 32 of title 35,
`by the Director whether to institute a deri-
`tional place it appears and inserting ‘‘deriva-
`United States Code, by the time limitation
`vation proceeding shall be final and non-
`tion proceeding’’.
`established by the fourth sentence of that
`appealable.
`(B) The subparagraph heading for section
`‘‘(b) DETERMINATION BY PATENT TRIAL AND
`section.
`154(b)(1)(C) of title 35, United States Code, as
`APPEAL BOARD.—In a derivation proceeding
`DATE.—The amendment
`(3) EFFECTIVE
`amended by this paragraph,
`is
`further
`instituted under subsection (a), the Patent
`made by paragraph (1) shall apply in all
`amended by—
`Trial and Appeal Board shall determine
`cases in which the time period for insti-
`(i) striking ‘‘OR’’ and inserting ‘‘OF’’; and
`whether an inventor named in the earlier ap-
`tuting a proceeding under section 32 of title
`(ii) striking ‘‘SECRECY ORDER’’ and insert-
`plication derived the claimed invention from
`35, United State Code, had not lapsed prior
`ing ‘‘SECRECY ORDERS’’.
`an inventor named in the petitioner’s appli-
`to the date of the enactment of this Act.
`(3) The section heading for section 134 of
`(m) SMALL BUSINESS STUDY.—
`cation and, without authorization, the ear-
`title 35, United States Code, is amended to
`(1) DEFINITIONS.—In this subsection—
`lier application claiming such invention was
`read as follows:
`(A) the term ‘‘Chief Counsel’’ means the
`filed. The Director shall prescribe regula-
`‘‘§ 134. Appeal to the Patent Trial and Appeal
`Chief Counsel for Advocacy of the Small
`tions setting forth standards for the conduct
`Board’’.
`Business Administration;
`of derivation proceedings.
`(4) The section heading for section 146 of
`(B) the term ‘‘General Counsel’’ means the
`‘‘(c) DEFERRAL OF DECISION.—The Patent
`title 35, United States Code, is amended to
`General Counsel of the United States Patent
`Trial and Appeal Board may defer action on
`read as follows:
`and Trademark Office; and
`a petition for a derivation proceeding until 3
`(C) the term ‘‘small business concern’’ has
`months after the date on which the Director
`‘‘§ 146. Civil action in case of derivation pro-
`the meaning given that term under section 3
`issues a patent that includes the claimed in-
`ceeding’’.
`of the Small Business Act (15 U.S.C. 632).
`vention that is the subject of the petition.
`(5) Section 154(b)(1)(C) of title 35, United
`(2) STUDY.—
`The Patent Trial and Appeal Board also may
`States Code, is amended by striking ‘‘INTER-
`(A) IN GENERAL.—The Chief Counsel, in
`defer action on a petition for a derivation
`FERENCES’’ and inserting ‘‘DERIVATION PRO-
`consultation with the General Counsel, shall
`proceeding, or stay the proceeding after it
`CEEDINGS’’.
`conduct a study of the effects of eliminating
`has been instituted, until the termination of
`(6) The item relating to section 6 in the
`the use of dates of invention in determining
`a proceeding under chapter 30, 31, or 32 in-
`table of sections for chapter 1 of title 35,
`whether an applicant is entitled to a patent
`volving the patent of the earlier applicant.
`United States Code, is amended to read as
`under title 35, United States Code.
`‘‘(d) EFFECT OF FINAL DECISION.—The final
`follows:
`(B) AREAS OF STUDY.—The study conducted
`decision of the Patent Trial and Appeal
`‘‘6. Patent Trial and Appeal Board.’’.
`under subparagraph (A) shall include exam-
`Board, if adverse to claims in an application
`ination of the effects of eliminating the use
`(7) The items relating to sections 134 and
`for patent, shall constitute the final refusal
`of invention dates, including examining—
`135 in the table of sections for chapter 12 of
`by the Office on those claims. The final deci-
`(i) how the change would affect the ability
`title 35, United States Code, are amended to
`sion of the Patent Trial and Appeal Board, if
`of small business concerns to obtain patents
`read as follows:
`adverse to claims in a patent, shall, if no ap-
`and their costs of obtaining patents;
`peal or other review of the decision has been
`‘‘134. Appeal to the Patent Trial and Appeal
`(ii) whether the change would create, miti-
`or can be taken or had, constitute cancella-
`Board.
`gate, or exacerbate any disadvantage for ap-
`tion of those claims, and notice of such can-
`‘‘135. Derivation proceedings.’’.
`plicants for patents that are small business
`cellation shall be endorsed on copies of the
`(8) The item relating to section 146 in the
`concerns relative to applicants for patents
`patent distributed after such cancellation.
`table of sections for chapter 13 of title 35,
`‘‘(e) SETTLEMENT.—Parties to a proceeding
`that are not small business concerns, and
`United States Code, is amended to read as
`instituted under subsection (a) may termi-
`whether the change would create any advan-
`follows:
`nate the proceeding by filing a written state-
`tages for applicants for patents that are
`‘‘146. Civil action in case of derivation pro-
`ment reflecting the agreement of the parties
`small business concerns relative to appli-
`ceeding.’’.
`as to the correct inventors of the claimed in-
`cants for patents that are not small business
`(k) FALSE MARKING.—
`vention in dispute. Unless the Patent Trial
`concerns;
`(1) IN GENERAL.—Section 292 of title 35,
`and Appeal Board finds the agreement to be
`(iii) the cost savings and other potential
`United States Code, is amended—
`inconsistent with the evidence of record, if
`benefits to small business concerns of the
`(A) in subsection (a), by adding at the end
`any, it shall take action consistent with the
`change; and
`the following:
`agreement. Any written settlement or under-
`(iv) the feasibility and costs and benefits
`‘‘Only the United States may sue for the
`standing of the parties shall be filed with the
`to small business concerns of alternative
`penalty authorized by this subsection.’’; and
`Director. At the request of a party to the
`means of determining whether an applicant
`(B) by striking subsection (b) and inserting
`proceeding, the agreement or understanding
`is entitled to a patent under title 35, United
`the following:
`shall be treated as business confidential in-
`States Code.
`‘‘(b) Any person who has suffered a com-
`(3) REPORT.—Not later than 1 year after
`formation, shall be kept separate from the
`petitive injury as a result of a violation of
`the date of enactment of this Act, the Chief
`file of the involved patents or applications,
`this section may file a civil action in a dis-
`Counsel shall submit to the Committee on
`and shall be made available only to Govern-
`trict court of the United States for recovery
`Small Business and Entrepreneurship and
`ment agencies on written request, or to any
`of damages adequate to compensate for the
`the Committee on the Judiciary of the Sen-
`person on a showing of good cause.
`‘‘(f) ARBITRATION.—Parties to a proceeding
`injury.’’.
`ate and the Committee on Small Business
`instituted under subsection (a) may, within
`(2) EFFECTIVE DATE.—The amendments
`and the Committee on the Judiciary of the
`such time as may be specified by the Direc-
`made by this subsection shall apply to all
`House of Representatives a report regarding
`tor by regulation, determine such contest or
`cases, without exception, pending on or after
`the results of the study under paragraph (2).
`(n) REPORT ON PRIOR USER RIGHTS.—
`any aspect thereof by arbitration. Such arbi-
`the date of the enactment of this Act.
`(1) IN GENERAL.—Not later than 1 year after
`(l) STATUTE OF LIMITATIONS.—
`tration shall be governed by the provisions
`(1) IN GENERAL.—Section 32 of title 35,
`the date of the enactment of this Act, the
`of title 9, to the extent such title is not in-
`United States Code, is amended by inserting
`Director shall report, to the Committee on
`consistent with this section. The parties
`between the third and fourth sentences the
`the Judiciary of the Senate and the Com-
`shall give notice of any arbitration award to
`following: ‘‘A proceeding under this section
`mittee on the Judiciary of the House of Rep-
`the Director, and such award shall, as be-
`shall be commenced not later than the ear-
`resentatives, the findings and recommenda-
`tween the parties to the arbitration, be dis-
`lier of either 10 years after the date on which
`tions of the Director on the operation of
`positive of the issues to which it relates. The
`
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`

`
`S939
`February 28, 2011
`CONGRESSIONAL RECORD — SENATE
`prior user rights in selected countries in the
`‘‘(1) the application was made or was au-
`assignment filed in the earlier-filed applica-
`industrialized world. The report shall include
`thorized to be made by the affiant or declar-
`tion be included in the later-filed applica-
`the following:
`ant; and
`tion.
`‘‘(h) SUPPLEMENTAL AND CORRECTED STATE-
`(A) A comparison between patent laws of
`‘‘(2) such individual believes himself or
`MENTS; FILING ADDITIONAL STATEMENTS.—
`the United States and the laws of other in-
`herself to be the original inventor or an
`‘‘(1) IN GENERAL.—Any person making a
`dustrialized countries, including members of
`original joint inventor of a claimed inven-
`statement required under this section may
`the European Union and Japan, Canada, and
`tion in the application.
`withdraw, replace, or otherwise correct the
`‘‘(c) ADDITIONAL REQUIREMENTS.—The Di-
`Australia.
`rector may specify additional information
`statement at any time. If a change is made
`(B) An analysis of the effect of prior user
`relating to the inventor and the invention
`in the naming of the inventor requiring the
`rights on innovation rates in the selected
`that is required to be included in an oath or
`filing of 1 or more additional statements
`countries.
`declaration under subsection (a).
`under this section, the Director shall estab-
`(C) An analysis of the correlation, if any,
`‘‘(d) SUBSTITUTE STATEMENT.—
`lish regulations under which such additional
`between prior user rights and start-up enter-
`‘‘(1) IN GENERAL.—In lieu of executing an
`statements may be filed.
`prises and the ability to attract venture cap-
`oath or declaration under subsection (a), the
`‘‘(2) SUPPLEMENTAL STATEMENTS NOT RE-
`ital to start new companies.
`applicant for patent may provide a sub-
`QUIRED.—If an individual has executed an
`(D) An analysis of the effect of prior user
`stitute statement under the circumstances
`oath or declaration meeting the require-
`rights, if any, on small businesses, univer-
`described in paragraph (2) and such addi-
`ments of subsection (a) or an assignment
`sities, and individual inventors.
`tional circumstances that the Director may
`meeting the requirements of subsection (e)
`(E) An analysis of legal and constitutional
`speci