TRADING TECH EXHIBIT 2039
`TRADESTATION v TRADING TECH
`CBM2015-00161
`
`PAGE 1 OF 18
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`

`
`S937
`CONGRESSIONAL RECORD — SENATE
`February 28, 2011
`amendments
`(3) EFFECTIVE DATE.—'l‘he
`“(Al
`if subparagraph {B} does not apply.
`by. or on behalf of.
`l or more parties to a
`the actual filing date of the patent or the ap-
`joint research agreement that was in effect
`made by this subsection shall take effect 1
`plication for the patent containing a claim
`on or before the effective filing date of the
`year after the date of the enactment of this
`to the invention: or
`claimed invention:
`Act. and shall apply to any request for a
`"{2} the claimed invention was made as a.
`"(Bl the filing (late of the earliest applica-
`statutory invention registration filed on or
`result of activities undertaken within the
`after that date.
`tion for which the patent 01' application is
`(f) EARLIER FILING DATE FOR INVENTOII AND
`entitled. as to such invention. to a right of
`scope of the joint research agreement: and
`JOINT INvENTon.—Section 120 of
`title 35.
`priority under section 119. 365(a). or 365lbJ or
`"{3}
`the application for patent
`for
`the
`claimed invention discloses or is amended to
`United States Code. is amended by striking
`to the benefit of an earlier filing date under-
`section 120. 121. or 365(0).
`"which is filed by an inventor or inventors
`disclose the names of the parties to the joint
`“{2} The effective filing date for a claimed
`named" and inserting “which names an in-
`research agreement.
`“tdl PATENTS AND PUBLISHED APPLICATIONS
`ventor or joint inventor”.
`invention in an application for reissue or re-
`EFFECTIVE As PRIOR ART.—For purposes of
`(E) CCNFORMING A:\-'lENDMEl~"'l‘S.—
`issued patent shall be determined by deem-
`(1) RIGHT or PnIonITY.—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 (al(2l. such patent or appli-
`WELS sought.
`cation shall be considered to have been effec-
`1fl2{d)".
`"Ill The term ‘claimed invention‘ means
`ON REMEDIEs.—Section
`(2)
`LIl\-II"I‘A"I‘ION
`tively i‘iled. with respect to any subject mat-
`the subject matter defined by a claim in a
`28'l(cll<l] of title 35. United States Code.
`is
`patent or an application for a patent.“.
`ter described in the patent or applieation—
`(bi CONDITIONS FOR PATENTABI_LITY.—
`amended by striking "the earliest effective
`"(lj if paragraph (2) does not apply. as of
`filing date of which is prior to“ and inserting
`(1)
`IN CENERAL.—Section 102 of title 35.
`the actual filing date of the patent or the ap-
`United States Code.
`is amended to read as
`"which has an effective filing date before“.
`plication for patent: or
`follows:
`(3)
`INTERNATIONAL APPLICATION DEs1c-
`"(2) if the patent Or application for patent
`NATING THE UNITED sTATEs: EFFEC'I'.—Section
`is entitled to claim a right of priority under
`363 of title 35, United States Code. is amend-
`section 119. 355m). or 365(1)). or to claim the
`ed by striking "except as otherwise provided
`benefit of an earlier filing date under section
`in section l02(e) of this title".
`120, 121. or 36-5(c,1. based upon 1 or more prior
`(4) PUBLICATION OF INTERNATIONAL APPLICA-
`riled applications for patent. as of the filing
`TION: EFI=‘EC'I'.—Section 374 of title 35, United
`date of the earliest such application that de-
`States Code.
`is amended by striking "sec-
`scribes the subject matter“.
`tions l|]2leJ and l54:dl" and inserting “sec-
`(2) C'ON'l"l'NUlTY OF l'N'l"EN?" UNDER THE CHE.-ITE
`tion l54(dl".
`AcT.—The enactment of section I02(c) of title 35.
`(5) PATENT IssUED ON I:N'I'ERNATIONAI_. APPLI-
`United Slates Code. under the preceding para.-
`CATION: EFFEC'I‘.—The second sentence of sec-
`graph is done with the some intent to promote
`tion 3'l5{al of title 35. United States Code. is
`joint research activities that was expressed. in-
`cluding in the legislative hislory,
`lhroagli
`the
`amended by striking "Subject
`to section
`E?ltIC‘.|!?il.8?I.E of
`the Cooperative Research and
`152(8) of
`this title.
`such" and inserting
`"Such".
`Technology Enhancement Act of 2004 (Public
`(6) LIMIT oN RIGHT on PRIoRITv.—Secticn
`Law l05’—45.i‘; lne “CREATE Act”), the amend-
`ments of which are strlclccn by subsection (c).
`llfllai of
`title 35. United States Code.
`is
`The United Slates Pdlenl and Trademark Office
`amended by striking ": but no patent shall
`shall administer section Ill2(c) of Lille 35, United
`be granted" and all
`that
`follows through
`States Code.
`in a manner consistent with the
`"one year prior to such filing".
`(7) INVENTIDNS MADE WITH FEDERAII AssIsT—
`legislative history of the CREATE Acl lhol was
`relevant
`to its administration by the United
`ANcE.—Section 2ll2(cl of
`title 35. United
`States Code. is amended—
`States Patent and Tradernorlc Office.
`[2](3) CONFORMINC AMENDMENT.—'I‘he item
`(Al in paragraph (2}—
`relating to section 102 in the table of sec-
`(ii by striking "publication. on sale. or
`tions for chapter 10 of title 35. United States
`public use." and all
`that
`follows through
`“obtained in the United States" and insert-
`Code. is amended to read as follows:
`ing "the 1-year period referred to in section
`‘"102. Conditions for patentability: novelty.''.
`1[I2{bJ would end before the end of that 2-year
`to) CDNDl'I"iDNS FOR. PATENTABILITY: NON-
`oBvIOUs SUBJECT MATTER.-—Section 103 of
`period": and
`(ii) by striking “the statutory“ and insert-
`title 35. United States Code. is amended to
`ing "that 1-year“; and
`read as follows:
`(Bi in paragraph (3). by striking "any stat-
`for patentability;
`“ii 103. Conditions
`utory bar date that may occur under this
`obvious subject matter
`title due to publication. on sale. or public
`"A patent for a claimed invention may not
`use“ and inserting "the expiration Of the 1-
`obtained.
`notwithstanding
`that
`the
`be
`year period referred to in section 1ll2(bl".
`claimed invention is not
`identically dis-
`(hi DERIVED PA'I'EN'I‘s.—Section 291 of title
`Closed as set forth in section 102. if the dif-
`35. United States Code. is amended to read as
`ferences between the claimed invention and
`follows:
`the prior art are such that the claimed in-
`“E? 291. Derived patents
`vention as a. whole would have been obvious
`"(ai IN GEI~:ERAL.—The owner of a patent
`before the effective filing date of the claimed
`may have relief by civil action against the
`invention to a person having ordinary skill
`in the art to which the claimed invention
`owner of another patent
`that claims the
`same invention and has an earlier effective
`pertains. Patentability shall not be negated
`filing date if the invention claimed in such
`by the manner in which the invention was
`other patent was derived from the inventor
`made)‘.
`of the invention claimed in the patent owned
`id) REPEAL or REQUIREMENTS FOR INvr-:N—
`by the person seeking relief under this sec-
`TIONS MADE AeRoAn.—Section 104 of title 35.
`tion.
`United States Code. and the item relating to
`"(bl FIIANG Ll'l\‘llTATION.—All action under
`that section in the table Of sections fol‘ chap-
`this section may only be filed within 1 year
`ter lfl of title 35. United States Code. are re-
`after the issuance of the first patent con—
`pealed.
`taining a claim to the allegedly derived in-
`(el RFJPEAL OF STATUTORY INVENTION REG-
`IS'l'RATION.—
`vention and naming an individual alleged to
`have derived such invention as the inventor
`(1)
`IN GEN-ERAL.—SectiOn 157 of title 35.
`or joint inventor.“.
`United States Code. and the item relating to
`(ll DERIVATION PHOCEEDlNG$.—Se(:ti0n 135
`that section in the table of sections for chap-
`of title 35. United States Code. is amended to
`ter lrl of title 35. United States Code. are re-
`read as follows:
`pealed.
`(2) REMOVAL OF CROSS RE‘.FERENCES.—SE.'c-
`Ҥ 135. Derivation proceedings
`tion 111{b)tB) of title 35. United States Code.
`--(aj INSTITUTION or PnccEEDINo.—An appli-
`is amended by striking "sections 115. 131, 135.
`cant for patent may file a petition to insti-
`and 151'" and inserting “sections 131 and 135“.
`tute a derivation proceeding in the Office.
`
`Ҥ 102. Conditions for patentability; novelty
`"tal NOVELTY; PRIOR AR’I‘.—A person shall
`be entitled to a. patent unless-—
`"(ll the claimed invention was patented.
`described in a printed publication. or in pub-
`lic 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 ap-
`plication for patent published or deemed
`published under section 122th). 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.
`"(bi EXCEP"l‘ICNS.—
`"(ll DISCLOSURES MADE 1 YEAR OR LESS BE-
`FORE THE EFFECTIVE FILING DATE OF THE
`CLAIMED INvEN'I'ION.—A disclosure made 1
`year or less before the effective filing date of
`a claimed invention shall not be prior art to
`the claimed invention under subsection (allll
`if-
`"(AJ the disclosure was made by the inven-
`tor or joint inventor or by another who ob-
`tained the subject matter disclosed directly
`or indirectly from the inventor or a joint in-
`ventor: or
`"(Bl the subject matter disclosed had. be-
`fore such disclosure. been publicly disclosed
`by the inventor or a joint inventor or an-
`other who obtained the subject matter dis-
`closed directly or indirectly from the inven-
`tor or a joint inventor.
`"{2} DIscLosURns APPEARING IN APPLICA-
`TIoNs AND PATENTs.—A disclosure shall not
`be prior art to a claimed invention under
`subsection (al(2) if—
`"(Al the subject matter disclosed was ob-
`tained directly or indirectly from the inven-
`tor or a joint inventor:
`"(Bl the subject matter disclosed had. be-
`fore such subject matter was effectively filed
`under subsection ta)(2). been publicly dis-
`closed by the inventor or a joint inventor or
`another who obtained the subject matter (lis-
`closed directly or indirectly from the inven-
`tor or a joint inventor: or
`"(Cl the subject matter disclosed and the
`claimed invention. not later than the effec-
`tive filiug date of the claimed invention.
`were owned by the same person or subject to
`an obligation of assignment to the same per-
`son.
`"(cl COMMON OwNEnsHIP UNDER JOINT RE-
`SEARCH AGREEMEN'I‘s.—Subject matter dis-
`closed and a claimed invention shall be
`deemed to have been owned by the same per-
`son or subject to an obligation of assignment
`to the same person in applying the provi-
`sions of subsection Eb‘.I(2}(C) if—
`"{1} the subject matter disclosed was de-
`veloped and the claimed invention was made
`
`HD11-
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`PAGE2OF18
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`PAGE 2 OF 18
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`

`
`S938
`CONGRESSIONAL RECORD — SENATE
`February 28, 2011
`arbitration award shall be unenforceable
`The petition shall set forth with particu-
`the misconduct forming the basis for
`the
`larity the basis for finding that an inventor
`until such notice is given. Nothing in this
`proceeding occurred. or 1 year after the date
`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-
`(jl ELIMINATION or REFERENCES To INTER-
`the regulations established under section
`2(bll2l(Dl.".
`ing such invention was filed. Any such peti-
`E‘ERENCES.—(1) Sections 41. 134. 145. 146. 154.
`(2) REPORT To CONGRESS.—The Director
`305. and 314 of title 35. United States Code.
`tion may only be filed within 1 year after the
`first publication of a claim to an invention
`shall provide on a biennial basis to the Judi-
`are each amended by striking “Board of Pat-
`that is the same or substantially the same as
`ent Appeals and interferences" each place it
`ciary Committees of the Senate and House of
`the ea.rlier application‘s claim to the inven-
`Representatives a report providing a short
`appears and inserting "Patent Trial and Ap-
`tion. shall he made u_nder oath. and shall be
`description of incidents made known to an
`peal Board".
`supported by substantial evidence. Whenever
`officer or employee of the Office as pre-
`title 35.
`(2)( A) Sections 146 and 154 of
`the Director determines that a petition filed
`United States Code. are each amended-
`scribed in the regulations established under
`under this subsection demonstrates that the
`section 2rblt2)lDi of title 35. United States
`lil 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
`a derivation proceeding. The determination
`the Office was barred from commencing 3.
`(iii by striking "'interference" each addi-
`by the Director whether to institute a deri-
`proceeding under
`section 32 of
`title 35.
`tional place it appears and inserting “deriva-
`vation proceeding shall be final and non-
`United States Code. by the time limitation
`tion proceeding".
`appealable.
`established by the fourth sentence of that
`(B) The subparagraph heading for section
`“(bl DETERMINATION BY PATENT TRIAL AND
`section.
`l5=i(b}(1l(Cl of title 35, United States Code. as
`APPEAL BOARD.—In a derivation proceeding
`amendment
`(3)
`EFFECTIVE DA'I‘E.—The
`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-
`til striking "DR" and inserting "or": 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“.
`to the date of the enactment of this Act.
`an inventor named in the petitioner's appli-
`(3) The section heading for section 134 of
`cm) SMALL BosINr:ss STUDY.-
`cation and. without authorization. the ear-
`title 35. United States Code. is amended to
`i’ ll DErINITIoNs.—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-
`“ii 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.
`“(cl DEFERRAL or DEClSION.—The Patent
`(4) The section heading for section 146 of
`(B) the term “General Counsel" means the
`General Counsel of the United States Patent
`title 35. United States Code. is amended to
`Trial and Appeal Board may defer action on
`read as follows:
`and Trademark Office: and
`a petition for a derivation proceeding until 3
`months after the date on which the Director
`(C) the term "small business concern" has
`Ҥ 146. Civil action in case of derivation pro-
`the meaning given that term under section 3
`issues a patent that includes the claimed in-
`ceecling”.
`of the Small Business Act (15 U.S.C. E32).
`vention that is the subject of the petition.
`(5) Section 15/i(bl(1l(C) of title 35. United
`(2) STUDY.—
`The Patent Trial and Appeal Board also may
`States Code. is amended by striking "INTER-
`in
`(A)
`In cnNERAL.—The Chief Counsel,
`defer action on a petition for a derivation
`rERsNcr:s" and inserting "ci~:ervATIoN PRO-
`consultation with the General Counsel. shall
`proceeding, or stay the proceeding after it
`oer-:oINos".
`has been instituted. until the termination of
`conduct a study of the effects of eliminating
`(ti) The item relating to section 6 in the
`the use of dates of invention in determining
`a proceeding under chapter 3|). 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.
`--(di EFFECT or FINAL DEClSION.—-The final
`follows:
`(B) Aeeas or sTUov.—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
`('1') The items relating to sections 134 and
`ination of the effects of eliminating the use
`for patent. shall constitute the final refusal
`by the Office on those claims. The final deci-
`135 in the table of sections for chapter 12 of
`ofinvention dates. including exsLmining—
`title 35. United States Code. are amended to
`sion of the Patent Trial and Appeal Board. if
`(1) how the change would affect the ability
`read as follows:
`adverse to claims in a patent. shall. if no ap-
`of small business concerns to obtain patents
`peal or other review of the decision has been
`and their costs of obtaining patents:
`‘"134. Appeal to the Patent Trial and Appeal
`Board.
`or can be taken or had, constitute cancella-
`(ii) whether the change would create. miti-
`tion of those claims. and notice of such can-
`gate. or exacerbate any disadvantage for ap-
`"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.
`that are not small business concerns. and
`“tel SE‘I‘TLEMENT.—Parties to a proceeding
`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
`concerns:
`(kl FALSE MAnxINc.—
`vention in dispute. Unless the Patent Trial
`(1)
`IN oENERAL.—Section 292 of title 35.
`and Appeal Board finds the agreement to be
`(iii) the cost savings and other potential
`benefits to small business concerns of the
`inconsistent with the evidence of record. if
`United States Code, is amendede
`(Al in subsection vial. by adding at the end
`any. it shall take action consistent with the
`change: and
`agreement. Any written settlement or under-
`the following:
`(iv) the feasibility and costs and benefits
`to small business concerns of alternative
`standing of the parties shall be filed with the
`"Only the United States may sue for the
`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 lb) and inserting
`proceeding. the agreement or understanding
`is entitled to a patent under title 35. United
`shall be treated as business confidential in-
`States Code.
`the following:
`formation. shall be kept separate from the
`“(bi Any person who has suffered a com-
`(3) REPORT.—Not later than 1 year after
`the date of enactment of this Act. the Chief
`petitive injury as a result of a violation of
`file of the involved patents or applications.
`Counsel shall submit to the Committee on
`this section may file a civil action in a dis-
`and shall be made available only to Govern-
`trict court of the United States for recovery
`ment agencies on written request. or to any
`Small Business and Entrepreneurship and
`of damages adequate to compensate for the
`person on a showing of good cause.
`the Committee on the Judiciary of the Sen-
`ate and the Committee on Small Business
`injury."_
`"m ARBITRA'rioN.—Parties to a proceeding
`amendments
`{2} EFFECTIVE oA'rE.—The
`instituted under subsection (a) may. within
`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
`cases. without exception. pending on or after
`tor by regulation, determine such contest or
`the results of the study under paragraph (21.
`the date of the enactment of this Act.
`(n) REPORT ON PRIOR USER RIGHTS.-
`any aspect thereof by arbitration. Such arbi-
`(1) STATUTE OF‘ LIMITATIONS.-
`tration shall be governed by the provisions
`(1) IN Gm.‘-ERAL.—Not later than 1 year after
`title 35.
`of title 9. to the extent such title is not in-
`tll
`IN GE‘.NEI-‘r.AL.—Section 32 of
`the date of the enactment of this Act. the
`consistent with |.?h‘1S S9Ct10‘f'l. The parties
`United States Code. is amended by inserting
`Director shall report. to the Committee on
`between the third and fourth sentences the
`shall give notice of any arbitration award to
`the Judiciary of the Senate and the Com-
`the Director. and such award shall. as be-
`following: "A proceeding under this section
`mittee on the J udiciary of the House of Rep-
`shall be commenced not later than the ear-
`tween the parties to the arbitration. be dis-
`resentatives.
`the findings and recommenda-
`positive of the issues to which it relates. The
`lier of either 10 years after the date on which
`tions of the Director on the operation of
`
`PAGE 3 OF 18
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`PAGE 3 OF 18
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`

`
`S939
`CONGRESSIONAL RECORD — SENATE
`February 28, 2011
`prior user rights in selected countries in the
`“ill the application was made or was an-
`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-
`tion.
`ant: and
`the following:
`“{2} such individual believes himself or
`"$11) SUPPLEMENTAL AND CORRECTED STATE-
`(A) A comparison between patent laws of
`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.
`Australia.
`“(cl ADDITIONAL R.Equ'InEMENTs.—The Di-
`withdraw. replace. or otherwise correct the
`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
`countries.
`filing of 1 or more additional statements
`that is required to be included in an oath or
`under this section. the Director shall estab-
`declaration under subsection ta).
`(C) An analysis of the correlation. if any.
`"I d) SUBSTITUTE ST.-\_TEMl3lNT,—
`lish regulations under which such additional
`between prior user rights and start—up enter-
`“{1} IN oENERAL.—In lieu of executing an
`statements may be filed.
`prises and the ability to attract venture cap-
`oath or declaration under subsection ia). the
`"{2} SUPPLEl\'iF:NTAI.. STATEMENTS NOT RE-
`ital to start new companies.
`applicant
`for patent may provide a sub-
`QUIii.T:‘.D.—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-
`sities. and individual inventors.
`ments of subsection (a) or an assignment
`tional circumstances that the Director may
`meeting the requirements of subsection (c)
`(E) An analysis of legal and constitutional
`specify by regulation.
`with respect to an application for patent. the
`issues. if any. that arise from placing trade
`“{2} PERMITTED cIRcUMsTANcEs.—A sub-
`Director may not thereafter require that in-
`secret law in patent law.
`stitute statement under paragraph (1) is per-
`dividual to make any additional oath, dec-
`(F) An analysis of whether the change to a
`mitted with respect to any individual who-
`first—to—file patent system creates a par-
`laration. or other statement equivalent
`to
`“iA} is unable to file the oath or declara-
`those required by this section in connection
`ticular need for prior user rights.
`tion under subsection (3.) because the indi-
`(2) CONSULTATION \vrTH OTHER AoENcIEs.—In
`with the application for patent or any patent
`vidual—
`issuing thereon.
`preparing the report required under para-
`“(ii is deceased:
`"£3: SAVINGS CLAUsE.—No patent shall be
`graph ili. the Director shall consult with the
`"(iii is under legal incapacity; or
`invalid or unenforceable based upon the fail-
`United States Trade Representative, the Sec-
`“tiiil cannot be found or reached after dili-
`ure to comply with a requirement under this
`retary of State. and the Attorney General.
`gent effort: or
`(oi EFFECTIVE DATE.—
`section if the failure is remedied as provided
`"(Bi is under an obligation to assign the
`under paragraph (1).
`(1) IN GEN-i~:RAI..—Except as otherwise pro-
`invention but has refused to make the oath
`"(ii ACKNOWLEDGMENT or PENALT1Es.—Any
`vided by this section. the amendments made
`declaration or statement filed pursuant to
`or declaration required under subsection (a).
`by this section shall take effect on the date
`"(Si CONTENTs.—A substitute statement
`this section shall contain an acknowledg-
`that is 18 months after the date of the enact-
`under this subsection shall—
`ment that any willful false statement made
`ment of this Act. and shall apply to any ap-
`"(Al identify the individual with respect to
`in such declaration or statement is punish-
`plication for patent. and to any patent
`whom the statement applies:
`able under section will oi’ title 18 by fine or
`issuing thereon. that contains or contained
`rep-
`"(Bi
`set
`forth the circumstances
`imprisonment of not more than 5 years. or
`at any time—
`both)‘.
`resenting the permitted basis for the filing of
`(A) a claim to a claimed invention that has
`the substitute statement in lieu of the oath
`(2) RELATIONSHIP TO DIVISIONAL APPLICA-
`an effective filing date as defined in section
`'I‘IoNs.—Section 121 of title 35. United States
`or declaration under subsection la): and
`lillliil of title 35. United States Code. that is
`"(Cl contain any additional
`information.
`Code. is amended by striking "If a divisional
`18 months or more after the date of the en-
`including any showing. required by the Di-
`application" and all that follows through
`actment of this Act; or
`rector.
`"inventor.".
`(B) a specific reference under section 120.
`"(Bl MAKING REQUIRED STATEMENTS IN AS-
`(Si REQUIREMENTS FOR NONI-‘ROVISIONAL AP-
`121. or 365(cl of title 35. United States Code,
`SIGNMENT 01'-‘ RECORD.—An individual who is
`PLIcA'I‘l0Ns.—Section l11(a.) of title 35. United
`to any patent or application that contains or
`under an obligation of assignment of an ap-
`States Code. is amended—
`contained at any time such a claim.
`plication for patent may include the re-
`(A) in paragraph (2lECl. by striking "by the
`(21 INTERFERING PATE.NTs.—The provisions
`quired statements under subsections (hi and
`applicant" and inserting "or declaration":
`of sections l{l2(g). 135. and 291 of title 35.
`(cl in the assignment executed by the indi-
`(B) in the heading for paragraph (3). by in-
`United States Code.
`in effect on the day
`vidual. in lieu of filing such statements sepa-
`serting “OR DECLARATION“ after “AND DA'1*H"';
`prior to the date of the enactment of this
`and
`rately.
`Act. shall apply to each claim of an applica-
`“(fi TIME FOR FILING.—A notice of allow-
`(C) by inserting "or declaration"
`tion for patent. and any patent issued there-
`ance under section 151 may be provided to an
`"and oath" each place it appears.
`on. for which the amendments made by this
`applicant for patent only if the applicant for
`(4) CONFORMING AMENDMENT.—The item re-
`section also apply. if such application or pat-
`patent has filed each required oath or dec-
`lating to section 115 in the table of sections
`ent contains or contained at any time—
`laration under subsection {a} or has filed a
`for chapter ll of title 35. United States Code.
`(A) a claim to an invention having an ef-
`substitute statement under subsection id) or
`is amended to read as follows:
`fective filing date as defined in section 100(1)
`recorded an assignment meeting the require-
`"115. Inventor's oath or declaration".
`of title 35. United States Code. earlier than
`ments of subsection iei.
`18 months after the date of the enactment of
`(bl FILING BY OTHER THAN IN'v"EN'I‘0R.—
`A1=1=1.IcA'r1oN Con-
`"(gi
`EAnL1ER—F1i.nD
`(1)
`IN cnNER.AL.—Section 118 of title 35.
`this Act: or
`TMNING REQUIRED STATEMENTS OR
`SUB-
`United States Code. is amended to read as
`STITUTE ST.-‘\TEMENT.—
`(B) a specific reference under section 120.
`follows:
`121. or 365(0) of title 35. United States Code.
`"(l) ExcE.PTIoN.—The requirements under
`to any patent or application that contains or
`“ii 118. Filing by other than inventor
`this section shall not apply to an individual
`contained at any time such a claim.
`with respect to an application for patent in
`“A person to whom the inventor has as-
`SEC. 3. INVEN’l‘0R.’S OATH OR. DECLARATION.
`which the individual is named as the inven-
`signed or is under an obligation to assign the
`tor or a joint inventor and who claims the
`invention may make an application for pat-
`fa) IN\-'EN'l‘OR'S OATH OH DECLAl’tA'T‘ION.—
`benefit u.nder section 120, 121. or 365(0) of the
`ent. A person who otherwise shows sufficient
`(1)
`IN GENE.RAL.—Section 115 of
`title 35.
`filing of an earlier-filed application. if—
`United States Code.
`is amended to read as
`proprietary interest in the matter may make
`“(Al an oath or declaration meeting the re-
`follows:
`an application for patent on behalf of and as
`quirements of subsection is.) was executed by
`agent for the inventor on proof of the perti-
`“Ea” 115. Inventor's oath or declaration
`the individual and was filed in connection
`nent facts and a showing that such action is
`"(a) NAMING THE INVENTDR;
`INvr:N'roR’s
`with the earlier—filed application;
`appropriate to preserve the rights of the par-
`OATH OR DECLARA'I'IoN.—An application for
`"(Bi a substitute statement meeting the
`ties. If the Director grants a patent on an ap-
`patent that is filed under section illiai or
`requirements of subsection id} was filed in
`plication filed under this section by a person
`commences the national stage under section
`the earlier filed application with respect to
`other than the inventor. the patent shall be
`371 shall include. or be amended to include.
`the individual: or
`granted to the real party in interest and
`the name of the inventor for any invention
`“((3) an assignment meeting the require-
`upon such notice to the inventor as the Di-
`claimed in the application. Except as other-
`ments of subsection (e) was executed with re-
`rector considers to be sufficient“.
`wise provided in this section. each individual
`spect to the earlier—filed application by the
`(2) CONFORMING AMENDMEN'I‘.—Section 251
`individual and was recorded in connection
`of title 35. United States Code. is amended in
`who is the inventor or a joint inventor of a
`claimed invention in an application for pat-
`with the earlier-filed application.
`the third undesignated paragraph by insert-
`ent shall execute an oath or declaration in
`"{2}
`COPIES
`OF‘
`DAT!-IS.
`DFJCI..-KRATIONS.
`ing "or the application for the original pat-
`STATEMENTS.
`OR
`ASSIGNMENTS.—N0tWil.}h—
`connection with the application.
`ent was filed by the assignee of the entire in-
`"(bi REQULHED STATEMENTS. An oath or
`standing paragraph (1), the Director may re-
`terest" after "claims of the original patent".
`declaration under subsection iai shall con-
`to) Si=Ec1F1cATIoN.—Section 112 of title 35.
`quire that 3. CORY Of the executed oath 01‘
`tain statements that-
`United States Code. is amended-
`declaration. the substitute statement. or the
`
`after
`
`PA(HE4()F18
`
`PAGE 4 OF 18
`
`

`
`S940
`ill in the first paragraph—
`(A) by striking "The specification" and in-
`serting “(al
`IN GEl\‘ERAL.—The
`specifica-
`tion": 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 paragraph-
`(AJ by striking "The specification" and in-
`serting
`"(bl O0-NCLUSION.—'l‘lie
`specifica-
`tion": and
`(B) by striking "applicant regards as his
`invention" and inserting "inventor or a joint
`inventor regards as the invention“:
`(3) in the third paragraph. by striking "A
`claim" and inserting "(cl FORM.—A claim":
`(4)
`in the fourth paragraph, by striking
`“Subject
`to the following paragraph.“ and
`inserting "(dl REFERENCE IN DEPENDENT
`FoRMs.—Subject to subsection (el.":
`(5) in the fifth paragraph. by striking "A
`claim" and inserting "(e) REFERENCE lN MUL-
`TIPLE DEPENDENT FORM.—.A claim"; and
`(Ell in the last paragraph. by striking "An
`element“ and inserting "(fl ELEMENT IN
`CLAIM FOR A (JOMBIN.-\'I'Io1~: .—An element".
`(:31) CONFORMING AMENDMENTS.-
`(1) Sections 11l(bl(