Exhibit 2006
`IPR2015-01872
`
`

`
`February 28, 2011
`“(A)
`if subparagraph (B) does not apply,
`the actual filing date of the patent or the ap-
`plication for the patent containing a claim
`to the invention; or
`“(B) the filing date of the earliest applica-
`tion 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 under
`section 120, 121, or 365(0).
`“(2) The effective filing date for a claimed
`invention in an application for reissue or re-
`issued patent shall be determined by deem-
`ing the claim to the invention to have been
`contained in the patent for which reissue
`was sought.
`“(ll The term ‘claimed invention‘ means
`the subject matter defined by a claim in a
`patent or an application for a patent“.
`(b) CONDITIONS FOR PATEN’I‘ABILITY.—
`(1) LN oENERAL.—Section 102 of
`title 35,
`United States Code,
`is amended to read as
`follows:
`Ҥ 102. Conditions for patentability; novelty
`“(a) NOVELTY; PRIOR AR'l‘.—A person shall
`be entitled to a patent unless-
`“(l) 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 l22(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.
`“(bl EXCEPTIONS.-
`“(l) DISCLOSURES MADE 1 YEAR OR LESS BE-
`FORE THE EFFECTIVE FILING DATE OF THE
`CLAIMED INVENTION.—A disclosure made 1
`year or less before the effective filing date of
`a claimed invention shall not be prior art to
`the claimed invention under subsection (a)(l)
`if—
`"(A) 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
`“(B) 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) DISCLOSURES APPEARING IN APPLICA-
`TIONS AND PA'l‘EN’I‘S.—A disclosure shall not
`be prior art to a claimed invention under
`subsection (a)(2) if—
`“(A) the subject matter disclosed was ob-
`tained directly or indirectly from the inven-
`tor or a joint inventor‘,
`“(B) the subject matter disclosed had, be-
`fore such subject matter was effectively filed
`under subsection (a)(2), been publicly dis-
`closed by the inventor or a joint inventor or
`another who obtained the subject matter dis-
`closed directly or indirectly from the inven-
`tor or a joint inventor: or
`“(C) the subject matter disclosed and the
`claimed invention, not later than the effec-
`tive filing date of the claimed invention,
`were owned by the same person or subject to
`an obligation of assignment to the same per-
`son.
`“(c) COMMON OWNERSHIP UNDER JOINT RE-
`SEARCH AGREEMENTS.—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 (b)(2)(C) if-
`“(l) the subject matter disclosed was de-
`veloped and the claimed invention was made
`
`S937
`CONGRESSIONAL RECORD —- SENATE
`amendments
`(3) EFFECTIVE DATE.—The
`by, or on behalf of, I or more parties to a
`made by this subsection shall take effect 1
`joint research agreement that was in effect
`year after the date of the enactment of this
`on or before the effective filing date of the
`claimed invention;
`Act, and shall apply to any request for a
`statutory invention registration filed on or
`“(2) the claimed invention was made as a
`after that date.
`result of activities undertaken within the
`(f) EARLIER FILING DATE FOR INVENTOR AND
`scope of the joint research agreement: and
`JOINT INVENTOR.—section 120 of
`title 35,
`“(3)
`the application for patent
`for
`the
`United States Code, is amended by striking
`claimed invention discloses or is amended to
`“which is filed by an inventor or inventors
`disclose the names of the parties to the joint
`named" and inserting “which names an in-
`research agreement.
`ventor or joint inventor".
`‘*(d) PATENTS AND PUBLISHED APPLICATIONS
`(g) CONFORMING AMENDMENTS.-
`EFFECTIVE AS PRIOR ART.—For purposes of
`(1) RIGHT OF PRIORITY.-—Section 172 of title
`determining whether a patent or application
`35, United States Code, is amended by strik-
`for patent is prior art to a claimed invention
`ing “and the time specified in section
`under subsection (a)(2), such patent or appli-
`102(d)“.
`cation shall be considered to have been effec-
`ON REMEDIEs.—Section
`(2)
`LIMITATION
`tively filed, with respect to any subject mat-
`287(c)(4) of title 35, United States Code,
`is
`ter described in the patent or application-
`amended by striking “the earliest effective
`“(l) if paragraph (2) does not apply, as of
`filing date of which is prior to" and inserting
`the actual filing date of the patent or the ap-
`“which has an effective filing date before".
`plication for patent; or
`(3)
`INTERNATIONAL
`APPLICATION
`DESIG-
`“(2) if the patent or application for patent
`NATING THE UNITED STATES: EFFEOT.—Section
`is entitled to claim a right of priority under
`363 of title 35, United States Code, is amend-
`section 119, 365(a), or 365(b), 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 365(c), based upon 1 or more prior
`(4) PUBLICATION OF INTERNATIONAL APPLICA-
`filed applications for patent, as of the filing
`TION: EFFEOT.—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 l02(e) and l54(d)“ and inserting “sec-
`(2) CONTINUITY OF INTENT UNDER THE CREATE
`tion l54(d)".
`ACT.—The enactment of section 102(0) of title 35,
`(5) PATENT ISSUED ON INTERNATIONAL APPLI-
`United States Code, under the preceding para-
`CATION: EFFECT.—The second sentence of sec-
`graph is done with the same intent to promote
`tion 375(a) of title 35, United States Code, is
`joint research activities that was expressed, in-
`amended by striking "Subject
`to section
`cluding in the legislative history,
`through the
`l02(e) of
`this title,
`such" and inserting
`enactment of
`the Cooperative Research and
`“Such".
`Technology Enhancement Act of 2004 (Public
`(6) LIMIT ON RIGHT OF PRIORITY.-Section
`Law 108453; the “CREATE Act”),
`the amend-
`ll9(a) of
`title 35, United States Code,
`is
`ments of which are stricken by subsection (c).
`The United States Patent and Trademark Office
`amended by striking “; but no patent shall
`be granted" and all
`that
`follows through
`shall administer section 102(0) of title 35, United
`“one year prior to such filing“.
`States Code,
`in a manner consistent with the
`(7) INVENTIONS MADE WITH FEDERAL ASSIST-
`legislative history of the CREATE Act that was
`ANCE.——SeC'ti0n
`202(0) of
`title 35, United
`relevant
`to its administration by the United
`States Code, is amended-
`States Patent and Trademark Office.
`(A) in paragraph (2)—
`[2](3) CONFORMING AMENDMENT.——The item
`(1) by Striking “publication, on sale, or
`relating to section 102 in the table of sec-
`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
`“I02. Conditions for patentability; noveltyf‘.
`102(b) would end before the end of that 2-year
`(c) CONDITIONS FOR PATENTABILITY; NON-
`period”; and
`OBVIOUS SUBJECT MATTER.—Section 103 of
`(ii) by striking “the statutory" and insert-
`title 35, United States Code, is amended to
`ing “that l-year"; and
`read as follows:
`(B) in paragraph (3), by striking “any stat-
`I101’!-
`for patentability;
`Ҥ 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-
`be
`obtained,
`notwithstanding
`that
`the
`year period referred to in section l02(b)".
`claimed invention is not
`identically dis-
`(h) DERIVED PATENTS.—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-
`Ҥ 291. Derived patents
`vention as a whoie would have been obvious
`“(a) IN GENERAL.—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
`owner of another patent
`that claims the
`in the art to which the claimed invention
`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
`(d) REPEAL OF REQUIREMENTS FOR INVEN-
`by the person seeking relief under this sec-
`TIONS MADE ABROAD.—Section 104 of title 35,
`tion.
`United States Code, and the item relating to
`“(b) FILING LIMI'1‘ATIoN.——An action under
`that section in the table of sections for chap-
`this section may only be filed within 1 year
`ter 10 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-
`(e) REPEAL OF STATUTORY INVENTION REG-
`vention and naming an individual alleged to
`ISTRATION.—
`have derived such invention as the inventor
`(1)
`IN GENERAL.——Section 157 of title 35.
`or joint inventor.".
`United States Code, and the item relating to
`(i) DERIVATION PROOEEDINGS.—Section 135
`that section in the table of sections for chap-
`of title 35, United States Code, is amended to
`ter ltl of title 35, United States Code, are re-
`read as follows:
`pealed.
`Ҥ 135. Derivation proceedings
`(2) REMOVAL OF CROSS REFERENCES.—Sec-
`“(a) INSTITUTION OF PRoCEEDING.—An appli-
`tion lll(b)(8) of title 35, United States Code,
`cant for patent may file a petition to insti-
`is amended by striking “sections 115, 131, 135,
`tute a derivation proceeding in the Office.
`and 157" and inserting “sections 131 and 135".
`
`

`
`S938
`The petition shall set forth with particu-
`larity the basis for finding that an inventor
`named in an earlier application derived the
`claimed invention from an inventor named
`in the petitioners application and, without
`authorization, the earlier application claim-
`ing such invention was filed. Any such peti-
`tion may only be filed within 1 year after the
`first publication of a claim to an invention
`that is the same or substantially the same as
`the earlier applications claim to the inven-
`tion. 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 pro-
`ceeding are met. the Director may institute
`a derivation proceeding. The determination
`by the Director whether to institute a deri-
`vation proceeding shall be final and non-
`appealable.
`“(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 ap-
`plication derived the claimed invention from
`an inventor named in the petitioners appli-
`cation and, without authorization, the ear-
`lier application claiming such invention was
`filed. The Director shall prescribe regula-
`tions setting forth standards for the conduct
`of derivation proceedings.
`“(c) DEFERRAL 0F DECISIoN.—The Patent
`Trial and Appeal Board may defer action on
`a petition for a derivation proceeding until 3
`months after the date on which the Director
`issues a patent that includes the claimed in-
`vention 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 in-
`volving the patent of the earlier applicant.
`“(d) EFFECT OF FINAL DECIsIoN.—'1‘he 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 deci-
`sion of the Patent Trial and Appeal Board. if
`adverse to claims in a patent, shall, if no ap-
`peal or other review of the decision has been
`or can be taken or had, constitute cancella-
`tion of those claims, and notice of such can-
`cellation shall be endorsed on copies of the
`patent distributed after such cancellation.
`“(e) SETTLEMENT.——Parties to a proceeding
`instituted under subsection (a) may termi-
`nate the proceeding by filing a written state-
`ment reflecting the agreement of the parties
`as to the correct inventors of the claimed in-
`vention 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 under-
`standing 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 in-
`formation, 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.
`"'(f) ARBITRATION.——Parties to a proceeding
`instituted under subsection (a) may, within
`such time as may be specified by the Direc-
`tor by regulation, determine such contest or
`any aspect thereof by arbitration. Such arbi-
`tration shall be governed by the provisions
`of title 9. to the extent such title is not in-
`consistent with this section. The parties
`shall give notice of any arbitration award to
`the Director, and such award shall, as be-
`tween the parties to the arbitration, be dis-
`positive of the issues to which it relates. The
`
`CONGRESSIONAL RECORD — SENATE
`February 28, 2011
`the misconduct forming the basis for
`the
`arbitration award shall be unenforceable
`proceeding occurred. or 1 year after the date
`until such notice is given. Nothing in this
`on which the misconduct forming the basis
`subsection shall preclude the Director from
`for the proceeding is made known to an offi-
`determining the patentability of the claimed
`cer or employee of the Office as prescribed in
`inventions involved in the proceeding".
`the regulations established under section
`(j) ELIMINATION OF REFERENCES To INTER-
`2(b)(2)(D).“.
`FERENOEs.—(1) Sections 41, 134, 145, 146, 154,
`(2) REPORT TO CONGRESS.—The Director
`805, and 314 of title 35. United States Code,
`shall provide on a biennial basis to the Judi-
`are each amended by striking “Board of Pat-
`ciary Committees of the Senate and House of
`ent Appeals and interferences“ each place it
`Representatives a report providing a short
`appears and inserting “Patent Trial and Ap-
`description of incidents made known to an
`peal Board".
`officer or employee of the Office as pre-
`title 35,
`(2)(A) Sections 146 and 154 of
`scribed in the regulations established under
`United States Code, are each amended—
`section 2(b)(2)(D) of title 35, United States
`(i) by striking “an interference" each place
`Code,
`that reflect substantial evidence of
`it appears and inserting "a derivation pro-
`misconduct before the Office but for which
`ceeding"; and
`the Office was barred from commencing a
`(ii) by striking “interference" each addi-
`proceeding under section 32 of
`title 35.
`tional place it appears and inserting "deriva-
`United States Code, by the time limitation
`tion proceeding“.
`established by the fourth sentence of that
`(B) The subparagraph heading for section
`section.
`154(b)(1)(C) of title 35. United States Code, as
`amendment
`(3)
`EFFECTIVE DATE.—The
`amended by
`this paragraph,
`is
`further
`made by paragraph (1) shall apply in all
`amended by—
`cases in which the time period for
`insti-
`(i) striking “OR“ and inserting “0F“: and
`tuting a proceeding under section 32 of title
`(ii) striking “SECRECY ORDER“ and insert-
`35, United State Code, had not lapsed prior
`ing “SECRECY ORDERS“.
`to the date of the enactment of this Act.
`(3) The section heading for section 134 of
`(m) SMALL BUSINESS STUDY.-
`title 35, United States Code, is amended to
`(1) DEFINITIONS.—In this subsection-
`read as follows:
`(A)
`the term “Chief Counsel" means the
`Ҥ 134. Appeal to the Patent Trial and Appeal
`Chief Counsel
`for Advocacy of the Small
`Board”.
`Business Administration;
`(B) the term “General Counsel" means the
`(4) The section heading for section 146 of
`General Counsel of the United States Patent
`title 35, United States Code,
`is amended to
`read as follows:
`and Trademark Office; and
`(C) the term “small business concern” has
`Ҥ 146. Civil action in case of derivation pro-
`the meaning given that term under section 3
`ceeding”.
`of the Small Business Act (15 U.S.C. 632).
`(5) Section 154(b)(1)(C) of title 35, United
`(2) STUDY.-
`States Code, is amended by striking "INTER-
`in
`(A)
`IN GENERAL.-—The Chief Counsel.
`FERENCES" and inserting ”DERIVATION PRO-
`consultation with the General Counsel, shall
`CEEDINGS".
`conduct a study of the effects of eliminating
`(6) The item relating to section 6 in the
`the use of dates of invention in determining
`table of sections for chapter 1 of title 35.
`whether an applicant is entitled to a patent
`United States Code,
`is amended to read as
`under title 35. United States Code.
`follows:
`(B) AREAS OF S'I‘UDY.——The study conducted
`‘*6. Patent Trial and Appeal Board".
`under subparagraph (A) shall include exam-
`ination of the effects of eliminating the use
`(7) The items relating to sections 134 and
`of invention dates, including examining—
`135 in the table of sections for chapter 12 of
`(i) how the change would affect the ability
`title 35, United States Code. are amended to
`read as follows:
`of small business concerns to obtain patents
`and their costs of obtaining patents;
`“134. Appeal to the Patent Trial and Appeal
`(ii) whether the change would create, miti-
`Board.
`gate. or exacerbate any disadvantage for ap-
`“I35. Derivation proceedings“.
`plicants for patents that are small business
`(8) The item relating to section 146 in the
`concerns relative to applicants for patents
`table of sections for chapter 13 of title 35,
`that are not small business concerns, and
`United States Code,
`is amended to read as
`whether the change would create any advan-
`follows:
`tages for applicants for patents that are
`“146. Civil action in case of derivation pro-
`small business concerns relative to appli-
`ceeding.".
`cants for patents that are not small business
`concerns;
`(k) FALSE IVIARKING.-—
`(iii) the cost savings and other potential
`(1)
`IN C-ENERAL.—Section 292 of title 35,
`benefits to small business concerns of the
`United States Code, is amended-
`change; and
`(A) in subsection (a). by adding at the end
`the following:
`(iv) the feasibility and costs and benefits
`to small business concerns of alternative
`“Only the United States may sue for the
`means of determining whether an applicant
`penalty authorized by this subsection": and
`is entitled to a patent under title 35. United
`(B) by striking subsection (b) and inserting
`States Code.
`the following:
`(3) REl’ORT.——NOt later than 1 year after
`“(b) Any person who has suffered a com-
`the date of enactment of this Act, the Chief
`petitive injury as a result of a violation of
`Counsel shall submit to the Committee on
`this section may file a civil action in a dis-
`trict court of the United States for recovery
`Small Business and Entrepreneurship and
`the Committee on the Judiciary of the Sen-
`of damages adequate to compensate for the
`ate and the Committee on Small Business
`injury.“.
`and the Committee on the Judiciary of the
`amendments
`(2)
`EFFECTIVE DATE.—The
`House of Representatives a report regarding
`made by this subsection shall apply to all
`the results of the study under paragraph (2).
`cases, without exception, pending on or after
`(n) REPORT ON PRIOR USER RIGHTs.—
`the date of the enactment of this Act.
`(1) IN GENERAL.—Not later than 1 year after
`(1) STATUTE OF LIMITATIONS.-
`the date of the enactment of this Act,
`the
`(1)
`IN GENERAL.—Section 32 of title 35,
`Director shall report, to the Committee on
`United States Code. is amended by inserting
`the Judiciary of the Senate and the Com-
`between the third and fourth sentences the
`mittee on the Judiciary of the House of Rep-
`following: “A proceeding under this section
`resentatives, the findings and recommenda-
`shall be commenced not later than the ear-
`tions of the Director on the operation of
`lier of either 10 years after the date on which
`
`

`
`February 28, 2011
`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 in-
`dustrialized 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 enter-
`prises and the ability to attract venture cap-
`ital to start new companies.
`(D) An analysis of the effect of prior user
`rights, if any. on small businesses, univer-
`sities. 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 par-
`ticular need for prior user rights.
`(2) CONSULTATION WITH OTHER AGENCIEs.—ln
`preparing the report required under para-
`graph (1), the Director shall consult with the
`United States Trade Representative, the Sec-
`retary of State. and the Attorney General.
`(0) EFFECTIVE DATE.-
`(l) IN GENERAL.—Except as otherwise pro-
`vided by this section. the amendments made
`by this section shall take effect on the date
`that is 18 months after the date of the enact-
`ment of this Act. and shall apply to any ap-
`plication 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
`18 months or more after the date of the en-
`actment of this Act; 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 PATEN'I‘S.~—The provisions
`of sections 102(g). 135, and 291 of title 35,
`United States Code.
`in effect on the day
`prior to the date of the enactment of this
`Act, shall apply to each claim of an applica-
`tion for patent. and any patent issued there-
`on. for which the amendments made by this
`section also apply. if such application or pat-
`ent contains Or contained at any time—-
`(A) a claim to an invention having an ef-
`fective filing date as defined in section 100(i)
`of title 35, United States Code, earlier than
`18 months after the date of the enactment of
`this Act: or
`(B) a specific reference under section 120.
`121, or 365(0) of title 35. United States Code.
`to any patent or application that contains or
`contained at any time such a claim.
`SEC. 3. INVENTOR’S OATH OR DECLARATION.
`(a) lNvENToR‘s OATH OR DECLARATION.-
`(l)
`IN GENERAL.—Section 115 of title 35.
`United States Code.
`is amended to read as
`follows:
`“§ 115. Inventor’s oath or declaration
`“(a) NAMING THE INVENTOR;
`INvENToR‘s
`OATH OR DECLARATIoN.—An application. for
`patent that is filed under section l1l(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 other-
`wise provided in this section. each individual
`who is the inventor or a joint inventor of a
`claimed invention in an application for pat-
`ent shall execute an oath or declaration in
`connection with the application.
`“(b) REQUIRED STATEMENTs.—An oath or
`declaration under subsection (a) shall con-
`tain statements that—
`
`S939
`CONGRESSIONAL RECORD — SENATE
`assignment filed in the earlier-filed applica-
`“(1) the application was made or was au-
`tion be included in the later—filed applica-
`thorized to be made by the affiant or declar-
`tion.
`ant; and
`“(h) SUPPLEMENTAL AND CORRECTED STATE-
`“(2) such individual believes himself or
`MENTS; FILING ADDITIONAL STATEMENTS.-
`herself to be the original
`inventor or an
`“(1)
`IN GENERAL.——Any person making a
`original joint inventor of a claimed inven-
`statement required under this section may
`tion in the application.
`withdraw, replace. or otherwise correct the
`“(c) ADDITIONAL REQUIREMENTs.—The Di-
`statement at any time. If a change is made
`rector may specify additional
`information
`in the naming of the inventor requiring the
`relating to the inventor and the invention
`filing of 1 or more additional statements
`that is required to be included in an oath or
`declaration under subsection (a).
`under this section, the Director shall estab-
`“(d) SUBSTITUTE STATEMENT.-—
`lish regulations under which such additional
`statements may be filed.
`“(1) IN GENERAL.—In lieu of executing an
`oath or declaration under subsection (a). the
`“(2) SUPPLEMENTAL STATEMENTS NOT RE-
`QUIRED,--If an individual has executed an
`applicant
`for patent may provide a sub-
`stitute statement under the circumstances
`oath or declaration meeting the require-
`ments of subsection (a) or an assignment
`described in paragraph (2) and such addi-
`tional circumstances that the Director may
`meeting the requirements of subsection (e)
`specify by regulation.
`with respect to an application for patent, the
`Director may not thereafter require that in-
`“(2) PERMITTED ClRCUMSTANCES.—A sub-
`stitute statement under paragraph (1) is per-
`dividual to make any additional oath. dec-
`mitted with respect to any individual who-
`laration. or other statement equivalent
`to
`“(A) is unable to file the oath or declara-
`those required by this section in connection
`tion under subsection (a) because the indi-
`with the application for patent or any patent
`vidual—
`issuing thereon.
`“(i) is deceased;
`“(3) SAVINGS CLAUSE.—N0 patent shall be
`“(ii) is under legal incapacity; or
`invalid or unenforceable based upon the fail-
`“(iii) cannot be found or reached after dili-
`ure to comply with a requirement under this
`gent effort; or
`section if the failure is remedied as provided
`“(B) is under an obligation to assign the
`under paragraph (1).
`invention but has refused to make the oath
`“(i) ACKNOWLEDGMENT OF PENALTIEs.—Any
`declaration or statement filed pursuant to
`or declaration required under subsection (a).
`this section shall contain an acknowledg-
`“(3) CoNTENTS.—A substitute statement
`under this subsection shall-
`ment that any willful false statement made
`in such declaration Or statement is punish-
`“(A) identify the individual with respect to
`able under section 1001 of title 18 by fine or
`whom the statement applies;
`imprisonment of not more than 5 years. or
`rep-
`”(B)
`set
`forth the circumstances
`both.".
`resenting the permitted basis for the filing of
`the substitute statement in lieu of the oath
`(2) RELATIONSHIP To DIVISIONAL APPLICA-
`TIoNs.—Section 121 of title 35, United States
`or declaration under subsection (a): and
`Code. is amended by striking “If a divisional
`“(C) contain any additional
`information.
`application“ and all
`that
`follows through
`including any showing. required by the Di-
`“inventor.".
`rector.
`(3) REQUIREMENTS FOR NONFROVISIONAL AP-
`“(e) MAKING REQUIRED STATEMENTS IN As-
`SIGNMENT OF RECORD.—An individual who is
`PLIoATIoNS.—Section l11(a) of title 35. United
`States Code, is amended—
`under an obligation of assignment of an ap-
`(A) in paragraph (2)(C). by striking "by the
`plication for patent may include the re-
`quired statements under subsections (b) and
`applicant“ and inserting “or declaration";
`(c) in the assignment executed by the indi-
`(B) in the heading for paragraph (3). by in-
`vidual. in lieu of filing such statements sepa-
`serting “OR DECLARATION" after “AND OATH“;
`and
`rately.
`after
`“(f) TIME FOR FILING.—A notice of allow-
`(C) by inserting “or declaration"
`ance under section 151 may be provided to an
`“and oath" each place it appears.
`applicant for patent only if the applicant for
`(4) CONFORMING AMENDMENT.—The item re-
`patent has filed each required oath or dec-
`lating to section 115 in the table of sections
`laration under subsection (a) or has filed a
`for chapter 11 of title 35. United States Code.
`substitute statement under subsection (d) or
`is amended to read as follows:
`recorded an assignment meeting the require-
`“ll5. Inventor‘s oath or declaration".
`ments of subsection (e).
`(b) FILING BY OTHER THAN INVENTOR.—
`“(g)
`EARLIER-FILED APPLICATION
`(1)
`IN GENERAL.—Section 118 of title 35.
`TAINING REQUIRED STATEMENTS OR
`United States Code,
`is amended to read as
`STITUTE STATEMENT.-—
`follows:
`“(l) EXCEPTIoN.—The requirements under
`Ҥ 118. Filing by other than iswesxter
`this section shall not apply to an individual
`with respect to an application for patent in
`“A person to whom the inventor has as-
`which the individual is named as the inven-
`signed or is under an obligation to assign the
`invention may make an application for pat-
`tor or a joint inventor and who claims the
`benefit under section 120. 121, or 365(c) of the
`ent. A person who otherwise shows sufficient
`proprietary interest in the matter may make
`filing of an earlier-filed application. if-
`“(A) an oath or declaration meeting the re-
`an application for patent on behalf of and as
`agent for the inventor on proof of the perti-
`quirements of subsection (a) was executed by
`the individual and was filed in connection
`nent facts and a showing that such action is
`with the earlier-filed application;
`appropriate to preserve the rights of the par-
`ties. If the Director grants a patent on an ap-
`"(B) a substitute statement meeting the
`plication filed under this section by a person
`requirements of subsection (01) was filed in
`other than the inventor. the patent shall be
`the earlier filed application with respect to
`the individual; or
`granted to the real party in interest and
`"(C) an assignment meeting the require-
`upon such notice to the inventor as the Di-
`rector considers to be sufficient.“'.
`ments of subsection (e) was executed with re-
`(2) CONFORMING AMENDMENT.—Section 251
`spect to the earlier-filed application by the
`individual and was recorded in connection
`of title 35, United States Code. is amended in
`with the earlier-filed application.
`the third undesignated paragraph by insert-
`“(2)
`COPIES
`OF OATHS,
`DECLARATIONS.
`ing “or the application for the original pat-
`ent was filed by the assignee of the entire in-
`STATEMENTS,
`OR AssIGNMENTs.—Notwith-
`terest" after “claims of the original patent".
`standing paragraph (1). the Director may re-
`(c) SPEcIEICATION.—Section 112 of title 35.
`quire that a copy of the executed oath or
`United States Code. is amended—
`declaration, the substitute statement. or the
`
`CON-
`SUB-
`
`

`
`S940
`(1) in the first paragraph-
`(A) by striking “The specification" and in-
`serting “(a)
`IN GENERAL.—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-
`(A) by striking “The specification" and in-
`serting
`“(b)
`CONCLUSlON.—The
`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 “(c) FORM.—A claim":
`(4)
`in the fourth paragraph, by striking
`“Subject
`to the following paragraph,“ and
`inserting “(d) REFERENCE IN DEPENDENT
`FORMS.-—Subject to subsection (e),":
`(5) in the fifth paragraph, by striking "A
`claim" and inserting “(e) REFERENCE IN MUL-
`TIPLE DEPENDENT F‘0RM.—A claim"; and
`(6) in the last paragraph, by striking “An
`element" and inserting “(f) ELEMENT IN
`CLAIM FOR A COMBlNATlON.—An element".
`(d) CONFORMING AMENDMENTS.—
`(1) Sections l1l(b)(1)(A)
`is amended by
`striking “the first paragraph of section 112 of
`this title“ and inserting “section ll2(a)"'.
`(2) Section 1l1(b)(2) is amended by striking
`“the second through fifth paragraphs of sec-
`tion 112," and inserting “subsections (b)
`through (e) of section 112,".
`amendments
`(e)
`EF‘F‘EC’l‘lVE DATE.—The
`made by this section shall take effect 1 year
`after the date of