H.R. REP. 112-98(I), H.R. REP. 112-98(I) (2011)
`
`H.R. REP. 112-98(I), H.R. REP. 112-98, H.R. Rep. No. 98(I), 112TH
`Cong., 1ST Sess. 2011, 2011 WL 2150541, 2011 U.S.C.C.A.N. 67 (Leg.Hist.)
`P.L. 112-29, **67 AMERICA INVENTS ACT
`
`DATES OF CONSIDERATION AND PASSAGE
`
`House: June 23, 2011
`Senate: September 8, 2011
`Cong. Record Vol. 157 (2011)
`
`House Report (Judiciary Committee)
`No. 112-98, June 1, 2011
`[To accompany H.R. 1249]
`
`HOUSE REPORT NO. 112–98(I)
`
`June 1, 2011
`
`*1 Mr. Smith of Texas, from the Committee on the Judiciary, submitted the following
`
`REPORT
`
`[To accompany H.R. 1249]
`
`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 thereon with an amendment and recommends that the bill as
`amended do pass.
`
`CONTENTS
`
`The Amendment
`
`Purpose and Summary
`
`Background and Need for the Legislation
`
`Hearings
`
`Committee Consideration
`
`Committee Votes
`
`Committee Oversight Findings
`
`New Budget Authority and Tax Expenditures
`
`Congressional Budget Office Cost Estimate
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`Page
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`H.R. REP. 112-98(I), H.R. REP. 112-98(I) (2011)
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`Performance Goals and Objectives
`
`Advisory on Earmarks
`
`Section-by-Section Analysis
`
`Agency Views
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`Changes in Existing Law Made by the Bill, as Reported
`
`Dissenting Views
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`Additional Views
`
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`*2 **0 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.
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`Sec. 12. Supplemental examination.
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`H.R. REP. 112-98(I), H.R. REP. 112-98(I) (2011)
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`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.
`
`In this Act:
`
`(1) Director.–The term “Director” means the Under Secretary of Commerce for Intellectual Property and Director of the
`United States Patent and Trademark Office.
`
`(2) Office.–The term “Office” means the United States Patent and Trademark Office.
`
`(3) Patent public advisory committee.–The term “Patent Public Advisory Committee” means the Patent Public Advisory
`Committee established under section 5(a)(1) of title 35, United States Code.
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`H.R. REP. 112-98(I), H.R. REP. 112-98(I) (2011)
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`(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 conventions, 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 established 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 section 311”; and
`
`(2) by adding at the end the following:
`
`“(f) The term ‘inventor’ means the individual or, if a joint invention, the individuals collectively who invented or discovered
`the subject matter of the invention.
`
`“(g) The terms ‘joint inventor’ and ‘coinventor’ mean any 1 of the individuals who invented or discovered the subject
`matter of a joint invention.
`
`“(h) The term ‘joint research agreement’ means a written contract, grant, or cooperative agreement entered into by 2 or more
`persons or entities for the performance 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 application 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
`
`*3 “(B) the filing date of the earliest application for which the patent or application 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:
`
`“S 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
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`H.R. REP. 112-98(I), H.R. REP. 112-98(I) (2011)
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`“(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or
`deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and
`was effectively filed before the effective filing date of the claimed invention.
`
`“(b) Exceptions.–
`
`“(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.–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
`(a)(1) if–
`
`“(A) the disclosure was made by the inventor or joint inventor or by another 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 publicly disclosed by the inventor or a joint inventor or
`another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
`
`“(2) Disclosures appearing in 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 inventor or a joint inventor or another who obtained the subject matter disclosed 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 matter disclosed and a claimed invention shall be
`deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying
`the provisions of subsection (b)(2)(C) if–
`
`“(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties
`to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
`
`“(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
`
`“(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to
`the joint research agreement.
`
`“(d) Patents and Published Applications Effective as Prior Art.–For purposes of determining whether a patent or application
`for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have
`been effectively filed, with respect to any subject matter described in the patent or application–
`
`“(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
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`H.R. REP. 112-98(I), H.R. REP. 112-98(I) (2011)
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`“(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to
`claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for
`patent, as of the filing date of the earliest such application that describes the subject matter.”.
`
`*4 (2) Continuity of intent under the create act.–The enactment of section 102(c) of title 35, United States Code, under
`paragraph (1) of this subsection is done with the same intent to promote joint research activities that was expressed, 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 subsection (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 administration 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:
`
`“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 inserting “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)”.
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`H.R. REP. 112-98(I), H.R. REP. 112-98(I) (2011)
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`(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: effect.–Section 363 of title 35, United States Code, is amended
`by striking “except as otherwise provided in section 102(e) of this title”.
`
`(4) Publication of international 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 striking “Subject to section 102(e) of this title, such” and inserting “Such”.
`
`(6) Limit on right of priority.–Section 119(a) of title 35, United States Code, is amended by striking “; but no patent shall
`be granted” and 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 follows 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 “before the end of that 1-year”; and
`*5 (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:
`
`“S 291. Derived Patents
`
`“(a) In General.–The owner of a patent may have relief by civil action against the owner of another patent that claims the
`same invention and has an earlier effective filing date, if the invention claimed in such other patent was derived from the
`inventor of the invention claimed in the patent owned by the person seeking relief under this section.
`
`“(b) Filing Limitation.–An action under this 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 alleged
`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:
`
`“(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
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`H.R. REP. 112-98(I), H.R. REP. 112-98(I) (2011)
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`claiming such invention was filed. Any such petition may be filed only within the 1-year period beginning on the date of
`the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim to
`the invention, shall be made under oath, and shall be supported by substantial evidence. Whenever the Director determines
`that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the
`Director may institute a derivation proceeding. The determination by the Director whether to institute a derivation proceeding
`shall be final and nonappealable.
`
`“(b) Determination by Patent Trial and Appeal Board.–In a derivation proceeding instituted under subsection (a), the Patent
`Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed invention
`from an inventor named in the petitioner's application and, without authorization, the earlier application claiming such
`invention was filed. The Director shall prescribe regulations setting forth standards for the conduct of derivation proceedings.
`
`“(c) Deferral of Decision.–The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding
`until the expiration of the 3-month period beginning on the date on which the Director issues a patent that includes the claimed
`invention that is the subject of the petition. The Patent Trial and Appeal Board also may defer action on a petition for a
`derivation proceeding, or stay the proceeding after it has been 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 Appeal 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 review 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 distributed
`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 Government
`agencies on written request, or to any person on a showing of good cause.
`
`*6 “(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 proceeding”.
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`H.R. REP. 112-98(I), H.R. REP. 112-98(I) (2011)
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`(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:
`
`“S 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:
`
`“S 146. Civil action in case of derivation proceeding”.
`
`(5) The items relating to sections 134 and 135 in the table of sections for chapter 12 of title 35, United States Code, are
`amended to read as follows:
`
`“134. Appeal to the Patent Trial and Appeal Board.
`
`“135. Derivation proceedings.”.
`
`(6) The item relating to section 146 in the table of sections for chapter 13 of title 35, United States Code, is amended to
`read as follows:
`
`“146. Civil action in case of derivation proceeding.”.
`
`(k) Statute of Limitations.–
`
`(1) In general.–Section 32 of title 35, United States Code, is amended by inserting 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 report providing a short description of incidents made known to an officer or employee of the Office
`as prescribed in the regulations established under section 2(b)(2)(D) of title 35, United States Code, that reflect substantial
`evidence of misconduct before the Office but for which the Office was barred from commencing a proceeding under section
`32 of title 35, United States Code, by the time limitation established by the fourth sentence of that section.
`
`(3) Effective date.–The amendment made by paragraph (1) shall apply in any case in which the time period for instituting
`a proceeding under section 32 of title 35, United States Code, had not lapsed before the date of the enactment of this Act.
`
`(l) Small Business Study.–
`
`(1) Definitions.–In this subsection–
`
`(A) the term “Chief Counsel” means the Chief Counsel for Advocacy of the Small Business Administration;
`
`(B) the term “General Counsel” means the General Counsel of the United States Patent and Trademark Office; and
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`H.R. REP. 112-98(I), H.R. REP. 112-98(I) (2011)
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`(C) the term “small business concern” has the meaning given that term under section 3 of the Small Business Act (15
`U.S.C. 632).
`
`(2) Study.–
`
`(A) In general.–The Chief Counsel, in consultation with the General Counsel, shall conduct a study of the effects of
`eliminating the use of dates *7 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 concerns 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 concerns relative to applicants for patents that are not small business concerns, and whether the change would
`create any advantages for applicants 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 Committee 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 businesses, 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.
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`H.R. REP. 112-98(I), H.R. REP. 112-98(I) (2011)
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`(n) Effective Date.–
`
`(1) In general.–Except as otherwise provided in this section, the amendments made by this section shall take effect upon
`the expiration of the 18-month period beginning on the date of the enactment of this Act, and shall apply to any application
`for patent, and to any patent issuing thereon, that contains or contained at any time–
`
`(A) a claim to a claimed invention that has an effective filing date as defined in section 100(i) of title 35, United States
`Code, that is on or after the effective date described in this paragraph; or
`
`(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that
`contains or contained at any time such a claim.
`
`(2) Interfering patents.–The provisions of sections 102(g), 135, and 291 of title 35, United States Code, as in effect on
`the day before the effective date set forth in paragraph (1) of this subsection, shall apply to each claim of an application for
`patent, and any patent issued thereon, for which the amendments made by this section also apply, if such application or patent
`contains or contained at any time–
`
`(A) a claim to an invention having an effective filing date as defined in section 100(i) of title 35, United States Code, that
`occurs before the effective date set forth in paragraph (1) of this subsection; or
`
`*8 (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 conduct 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 patent claims.
`
`(D) The estimated costs, including the estimated cost of defense, associated with such litigation for patent holders, patent
`licensors, patent licensees, 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 Committee on the Judiciary of
`
` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
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`H.R. REP. 112-98(I), H.R. REP. 112-98(I) (2011)
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`the Senate a report on the results of the study required 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
`of protection granted by the exclusive rights to their discoveries.
`
`(q) 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 harmonize the United States patent registration system with
`the patent registration systems commonly used in nearly all other countries throughout the world with whom the United
`States conducts trade and thereby promote a greater sense of international uniformity and certainty in the procedures used
`for securing the exclusive rights of inventors to their discoveries.
`
`(a) Inventor's Oath or Declaration.–
`
`(1) In general.–Section 115 of title 35, United States Code, is amended to read as follows:
`
`“S 115. Inventor's oath or declaration
`
`“(a) Naming the Inventor; Inventor's Oath or Declaration.–An application for patent that is filed under section 111(a) or
`commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any
`invention claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or
`a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with
`the application.
`
`“(b) Required Statements.–An oath or declaration under subsection (a) shall contain statements that–
`
`“(1) the application was made or was authorized to be made by the affiant or declarant; and
`
`“(2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention
`in the applicat