112TH CONGRESS
`1st Session
`
`"
`
`HOUSE OF REPRESENTATIVES
`
`!
`
`REPT. 112–98
`Part 1
`
`AMERICA INVENTS ACT
`
`JUNE 1, 2011.—Committed to the Committee of the Whole House on the State of
`the Union and ordered to be printed
`
`Mr. SMITH of Texas, from the Committee on the Judiciary,
`submitted the following
`
`R E P O R T
`
`together with
`
`DISSENTING VIEWS AND ADDITIONAL VIEWS
`
`[To accompany H.R. 1249]
`
`[Including cost estimate of the Congressional Budget Office]
`The Committee on the Judiciary, to whom was referred the bill
`(H.R. 1249) to amend title 35, United States Code, to provide for
`patent reform, having considered the same, reports favorably there-
`on with an amendment and recommends that the bill as amended
`do pass.
`
`CONTENTS
`
`Page
`1
`......................................................................................................
`The Amendment
`38
`Purpose and Summary ............................................................................................
`40
`Background and Need for the Legislation .............................................................
`57
`Hearings ...................................................................................................................
`58
`Committee Consideration ........................................................................................
`58
`Committee Votes ......................................................................................................
`63
`Committee Oversight Findings ...............................................................................
`63
`New Budget Authority and Tax Expenditures ......................................................
`63
`Congressional Budget Office Cost Estimate ..........................................................
`73
`Performance Goals and Objectives .........................................................................
`73
`Advisory on Earmarks .............................................................................................
`73
`Section-by-Section Analysis
`....................................................................................
`85
`Agency Views ...........................................................................................................
`89
`Changes in Existing Law Made by the Bill, as Reported .....................................
`Dissenting Views
`..................................................................................................... 162
`Additional Views ...................................................................................................... 163
`
`99–006
`
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`Skyworks Ex. 2002
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`The Amendment
`The amendment is as follows:
`Strike all after the enacting clause and insert the following:
`
`SECTION 1. SHORT TITLE; TABLE OF CONTENTS.
`(a) SHORT TITLE.—This Act may be cited as the ‘‘America Invents Act’’.
`(b) TABLE OF CONTENTS.—The table of contents for this Act is as follows:
`Sec. 1. Short title; table of contents.
`Sec. 2. Definitions.
`Sec. 3. First inventor to file.
`Sec. 4. Inventor’s oath or declaration.
`Sec. 5. Defense to infringement based on earlier inventor.
`Sec. 6. Post-grant review proceedings.
`Sec. 7. Patent Trial and Appeal Board.
`Sec. 8. Preissuance submissions by third parties.
`Sec. 9. Venue.
`Sec. 10. Fee setting authority.
`Sec. 11. Fees for patent services.
`Sec. 12. Supplemental examination.
`Sec. 13. Funding agreements.
`Sec. 14. Tax strategies deemed within the prior art.
`Sec. 15. Best mode requirement.
`Sec. 16. Marking.
`Sec. 17. Advice of counsel.
`Sec. 18. Transitional program for covered business method patents.
`Sec. 19. Jurisdiction and procedural matters.
`Sec. 20. Technical amendments.
`Sec. 21. Travel expenses and payment of administrative judges.
`Sec. 22. Patent and Trademark Office funding.
`Sec. 23. Satellite offices.
`Sec. 24. Designation of Detroit satellite office.
`Sec. 25. Patent Ombudsman Program for small business concerns.
`Sec. 26. Priority examination for technologies important to American competitiveness.
`Sec. 27. Calculation of 60-day period for application of patent term extension.
`Sec. 28. Study on implementation.
`Sec. 29. Pro bono program.
`Sec. 30. Effective date.
`Sec. 31. Budgetary effects.
`SEC. 2. DEFINITIONS.
`In this Act:
`(1) DIRECTOR.—The term ‘‘Director’’ means the Under Secretary of Com-
`merce for Intellectual Property and Director of the United States Patent and
`Trademark Office.
`(2) OFFICE.—The term ‘‘Office’’ means the United States Patent and Trade-
`mark Office.
`(3) PATENT PUBLIC ADVISORY COMMITTEE.—The term ‘‘Patent Public Advi-
`sory Committee’’ means the Patent Public Advisory Committee established
`under section 5(a)(1) of title 35, United States Code.
`(4) TRADEMARK ACT OF 1946.—The term ‘‘Trademark Act of 1946’’ means the
`Act entitled ‘‘An Act to provide for the registration and protection of trademarks
`used in commerce, to carry out the provisions of certain international conven-
`tions, and for other purposes’’, approved July 5, 1946 (15 U.S.C. 1051 et seq.)
`(commonly referred to as the ‘‘Trademark Act of 1946’’ or the ‘‘Lanham Act’’).
`(5) TRADEMARK PUBLIC ADVISORY COMMITTEE.—The term ‘‘Trademark Public
`Advisory Committee’’ means the Trademark Public Advisory Committee estab-
`lished under section 5(a)(1) of title 35, United States Code.
`SEC. 3. FIRST INVENTOR TO FILE.
`(a) DEFINITIONS.—Section 100 of title 35, United States Code, is amended—
`(1) in subsection (e), by striking ‘‘or inter partes reexamination under sec-
`tion 311’’; and
`(2) by adding at the end the following:
`‘‘(f) The term ‘inventor’ means the individual 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 ‘coinventor’ 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 co-
`operative agreement entered into by 2 or more persons or entities for the perform-
`ance of experimental, developmental, or research work in the field of the claimed
`invention.
`‘‘(i)(1) The term ‘effective filing date’ for a claimed invention in a patent or ap-
`plication for patent means—
`‘‘(A) if subparagraph (B) does not apply, the actual filing date of the patent
`or the application for the patent containing a claim to the invention; or
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`‘‘(B) the filing date of the earliest application for which the patent or appli-
`cation is entitled, as to such invention, to a right of priority under section 119,
`365(a), or 365(b) or to the benefit of an earlier filing date un
`‘‘(2) The effective filing date for a claimed invention in an application for reissue
`or reissued patent shall be determined by deeming the claim to the invention to
`have been contained in the patent for which reissue was sought.
`‘‘(j) The term ‘claimed invention’ means the subject matter defined by a claim
`in a patent or an application for a patent.’’.
`(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 entitled to a patent unless—
`‘‘(1) the claimed invention was patented, described 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 an-
`other inventor and was effectively filed before the effective filing date of the
`claimed invention.
`‘‘(b) EXCEPTIONS.—
`‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE
`OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effec-
`tive filing date of a claimed invention shall not be prior art to the claimed in-
`vention under subsection (a)(1) if—
`‘‘(A) the disclosure was made by the inventor or joint inventor or by an-
`other who obtained the subject matter disclosed directly or indirectly from
`the inventor or a joint inventor; or
`‘‘(B) the subject matter disclosed had, before such disclosure, been pub-
`licly 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 APPLICATIONS AND PATENTS.—A disclosure
`shall not be prior art to a claimed invention under subsection (a)(2) if—
`‘‘(A) the subject matter disclosed was obtained directly or indirectly
`from the inventor or a joint inventor;
`‘‘(B) the subject matter disclosed had, before such subject matter was
`effectively filed under subsection (a)(2), been publicly disclosed by the in-
`ventor or a joint inventor or another who obtained the subject matter dis-
`closed directly or indirectly from the inventor or a joint inventor; or
`‘‘(C) the subject matter disclosed and the claimed invention, not later
`than the effective filing date of the claimed invention, were owned by the
`same person or subject to an obligation of assignment to the same person.
`‘‘(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject mat-
`ter 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 apply-
`ing 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 agreement.
`‘‘(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For pur-
`poses of determining whether a patent or application for patent is prior art to a
`claimed invention under subsection (a)(2), such patent or application shall be consid-
`ered 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 pri-
`ority 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 application that
`describes the subject matter.’’.
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`(2) CONTINUITY OF INTENT UNDER THE CREATE ACT.—The enactment of sec-
`tion 102(c) of title 35, United States Code, under paragraph (1) of this sub-
`section is done with the same intent to promote joint research activities that
`was expressed, including in the legislative history, through the enactment of the
`Cooperative Research and Technology Enhancement Act of 2004 (Public Law
`108–453; the ‘‘CREATE Act’’), the amendments of which are stricken by sub-
`section (c) of this section. The United States Patent and Trademark Office shall
`administer section 102(c) of title 35, United States Code, 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 relating 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 subject matter
`‘‘A patent for a claimed invention may not be obtained, notwithstanding that
`the claimed invention is not identically disclosed as set forth in section 102, if the
`differences 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 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 REGISTRATION.—
`(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 amended by striking ‘‘sections 115, 131, 135, and 157’’ and in-
`serting ‘‘sections 131 and 135’’.
`(3) EFFECTIVE DATE.—The amendments made by this subsection shall take
`effect upon the expiration 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 inventor
`or inventors named’’ and inserting ‘‘which names an inventor or joint inventor’’.
`(g) CONFORMING AMENDMENTS.—
`(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 amended by striking ‘‘the earliest effective filing date of which is prior
`to’’ and inserting ‘‘which has an effective filing date before’’.
`(3) INTERNATIONAL APPLICATION DESIGNATING THE UNITED STATES: EF-
`FECT.—Section 363 of title 35, United States Code, is amended by striking ‘‘ex-
`cept as otherwise provided in section 102(e) of this title’’.
`(4) PUBLICATION OF INTERNATIONAL APPLICATION: 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 APPLICATION: EFFECT.—The second
`sentence of section 375(a) of title 35, United States Code, is amended by strik-
`ing ‘‘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 all that
`follows through ‘‘one year prior to such filing’’.
`(7) INVENTIONS MADE WITH FEDERAL ASSISTANCE.—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 fol-
`lows through ‘‘obtained in the United States’’ and inserting ‘‘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 ‘‘be-
`fore the end of that 1-year’’; and
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`(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 period 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:
`‘‘§ 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 effec-
`tive 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 section 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 al-
`leged to have derived such invention as the inventor or joint inventor.’’.
`(2) CONFORMING AMENDMENT.—The item relating 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 proceeding in the Office. The petition shall set forth with
`particularity the basis for finding that an inventor named in 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 substan-
`tially 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 demonstrates that the stand-
`ards for instituting a derivation proceeding are met, the Director may institute a
`derivation proceeding. The determination by the Director whether to institute a der-
`ivation proceeding shall be final and nonappealable.
`‘‘(b) DETERMINATION BY PATENT TRIAL AND APPEAL BOARD.—In a derivation pro-
`ceeding instituted under subsection (a), the Patent Trial and Appeal Board shall de-
`termine whether an inventor named in the earlier application derived the claimed
`invention from an inventor named in the petitioner’s application and, without au-
`thorization, the earlier application claiming such invention was filed. The Director
`shall prescribe regulations setting forth standards for the conduct of derivation pro-
`ceedings.
`‘‘(c) DEFERRAL OF DECISION.—The Patent Trial and Appeal Board may defer ac-
`tion 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 Ap-
`peal Board also may defer action on a petition for a derivation proceeding, or stay
`the proceeding after it has been instituted, 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 decision of the Patent Trial and Ap-
`peal Board, if adverse to claims in an application for patent, shall constitute the
`final refusal by the Office on those claims. The final decision of the Patent Trial
`and Appeal Board, if adverse to claims in a patent, shall, if no appeal or other re-
`view of the decision has been or can be taken or had, constitute cancellation of those
`claims, and notice of such cancellation shall be endorsed on copies of the patent dis-
`tributed after such cancellation.
`‘‘(e) SETTLEMENT.—Parties to a proceeding instituted 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 invention 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 understanding shall
`be treated as business confidential information, shall be kept separate from the file
`of the involved patents or applications, and shall be made available only to Govern-
`ment agencies on written request, or to any person on a showing of good cause.
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`‘‘(f) ARBITRATION.—Parties to a proceeding instituted 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 arbitration shall be governed by
`the provisions of title 9, to the extent such title is not inconsistent with this section.
`The parties shall give notice of any arbitration award to the Director, and such
`award shall, as between the parties to the arbitration, be dispositive of the issues
`to which it relates. The arbitration award shall be unenforceable until such notice
`is given. Nothing in this subsection shall preclude the Director from determining the
`patentability of the claimed inventions involved in the proceeding.’’.
`(j) ELIMINATION OF REFERENCES TO INTERFERENCES.—(1) Sections 134, 145, 146,
`154, and 305 of title 35, United States Code, are each amended by striking ‘‘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 inserting ‘‘a derivation proceeding’’;
`and
`(ii) by striking ‘‘the interference’’ and inserting ‘‘the derivation pro-
`ceeding’’.
`(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
`PROCEEDINGS, SECRECY ORDERS, AND APPEALS.—’’.
`(3) The section heading for section 134 of title 35, United States Code, is
`amended to read as follows:
`‘‘§ 134. Appeal to the Patent Trial and Appeal Board’’.
`(4) The section heading for section 146 of title 35, United States Code, is
`amended to read as follows:
`‘‘§ 146. Civil action in case of derivation proceeding’’.
`(5) The items relating to sections 134 and 135 in the table of sections for chap-
`ter 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 between the third and fourth sentences the following: ‘‘A proceeding
`under this section shall be commenced not later than the earlier of either the
`date that is 10 years after the date on which the misconduct forming the basis
`for the proceeding occurred, or 1 year after the date on which the misconduct
`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).’’.
`(2) REPORT TO CONGRESS.—The Director shall provide on a biennial basis
`to the Judiciary Committees of the Senate and House of Representatives a re-
`port providing a short description of incidents made known to an officer or em-
`ployee 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 before the Office but for which the Office was barred from com-
`mencing 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 enact-
`ment 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 Business Administration;
`(B) the term ‘‘General Counsel’’ means the General Counsel of the
`United States Patent and Trademark Office; and
`(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
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`of invention in determining whether an applicant is entitled to a patent
`under title 35, United States Code.
`(B) AREAS OF STUDY.—The study conducted 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 con-
`cerns to obtain patents and their costs of obtaining patents;
`(ii) whether the change would create, mitigate, or exacerbate any
`disadvantages for applicants for patents that are small business con-
`cerns relative to applicants for patents that are not small business con-
`cerns, and whether the change would create any advantages for appli-
`cants for patents that are small business concerns relative to applicants
`for patents that are not small business concerns;
`(iii) the cost savings and other potential benefits to small business
`concerns of the change; and
`(iv) the feasibility and costs and benefits to small business concerns
`of alternative 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 Committee on the Judiciary of
`the Senate and the Committee 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 enactment of this Act, the Director shall report, to the Com-
`mittee on the Judiciary of the Senate and the Committee on the Judiciary of
`the House of Representatives, 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 industrialized countries, including members of the European
`Union and Japan, Canada, and Australia.
`(B) An analysis of the effect of prior user rights on innovation rates in
`the selected countries.
`(C) An analysis of the correlation, if any, between prior user rights and
`start-up enterprises 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 busi-
`nesses, universities, and individual inventors.
`(E) An analysis of legal and constitutional issues, if any, that arise
`from placing trade secret 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.
`(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 provided in this section, the amend-
`ments made by this section shall take effect upon the expiration of the 18-
`month period beginning on the date of the enactment of this Act, and shall
`apply to any application for patent, and to any patent issuing thereon, that con-
`tains 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 effective date
`set forth in paragraph (1) of this subsection, shall apply to each claim of an ap-
`plication for patent, and any patent issued thereon, for which the amendments
`made by this section also apply, if such application or patent contains or con-
`tained at any time—
`(A) a claim to an invention having an effective filing date as defined
`in section 100(i) of title 35, United States Code, that occurs before the effec-
`tive date set forth in paragraph (1) of this subsection; or
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`(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) STUDY OF PATENT LITIGATION.—
`(1) GAO STUDY.—The Comptroller General of the United States shall con-
`duct a study of the consequences of litigation by non-practicing entities, or by
`patent assertion entities, related to patent claims made under title 35, United
`States Code, and regulations authorized by that title.
`(2) CONTENTS OF STUDY.—The study conducted under this subsection shall
`include the following:
`(A) The annual volume of litigation described in paragraph (1) over the
`20-year period ending on the date of the enactment of this Act.
`(B) The volume of cases comprising such litigation that are found to be
`without merit after judicial review.
`(C) The impacts of such litigation on the time required to resolve pat-
`ent claims.
`(D) The estimated costs, including the estimated cost of defense, associ-
`ated with such litigation for patent holders, patent licensors, patent licens-
`ees, and inventors, and for users of alternate or competing innovations.
`(E) The economic impact of such litigation on the economy of the
`United States, including the impact on inventors, job creation, employers,
`employees, and consumers.
`(F) The benefit to commerce, if any, supplied by non-practicing entities
`or patent assertion entities that prosecute such litigation.
`(3) REPORT TO CONGRESS.—The Comptroller General shall, not later than
`the date that is 1 year after the date of the enactment of this Act, submit to
`the Committee on the Judiciary of the House of Representatives and the Com-
`mittee on the Judiciary of the Senate a report on the results of the study re-
`quired under this subsection, including recommendations for any changes to
`laws and regulations that will minimize any negative impact of patent litigation
`that was the subject of such study.
`(p) SENSE OF CONGRESS.—It is the sense of the Congress that converting the
`United States patent registration system from ‘‘first inventor to use’’ to a system
`of ‘‘first inventor to file’’ will promote the progress of science by securing for limited
`times to inventors the exclusive rights to their discoveries and provide inventors
`with greater certainty regarding the scope