[DOCID: f:hr319.110]
From the House Reports Online via GPO Access
[wais.access.gpo.gov]
110th Congress Report
HOUSE OF REPRESENTATIVES
1st Session 110-319
======================================================================
PROVIDING FOR CONSIDERATION OF THE BILL (H.R. 1908) TO AMEND TITLE 35,
UNITED STATES CODE, TO PROVIDE FOR PATENT REFORM
_______
September 6, 2007.--Referred to the House Calendar and ordered to be
printed
_______
Mr. Welch, from the Committee on Rules, submitted the following
R E P O R T
[To accompany H. Res. 636]
The Committee on Rules, having had under consideration
House Resolution 636, by a record vote of 8 to 4, report the
same to the House with the recommendation that the resolution
be adopted.
SUMMARY OF PROVISIONS OF THE RESOLUTION
The resolution provides for consideration of H.R. 1908, the
``Patent Reform Act of 2007,'' under a structured rule. The
resolution provides for one hour of general debate equally
divided and controlled by the chairman and ranking minority
member of the Committee on the Judiciary.
The resolution waives all points of order against
consideration of the bill except those arising under clause 9
or 10 of rule XXI. The resolution provides that the amendment
in the nature of a substitute recommended by the Committee on
the Judiciary, now printed in the bill, shall be considered as
an original bill and shall be considered as read. The
resolution waives all points of order against the committee
amendment in the nature of a substitute except those arising
under clause 10 of rule XXI.
The resolution makes in order only those amendments printed
in this report. Such amendments may be offered only in the
order printed in this report, only offered by the Member
designated in this report, shall be considered as read, shall
be debatable for the time specified in this report equally
divided and controlled by the proponent and an opponent, shall
not be subject to amendment, and shall not be subject to a
demand for division of the question in the House or in the
Committee of the Whole. The resolution waives all points of
order against the amendments printed in this report except
those arising under clause 9 or 10 of rule XXI. The resolution
provides one motion to recommit with or without instructions.
Finally, the resolution permits the Chair, during consideration
of the bill in the House, to postpone further consideration of
the bill to a time designated by the Speaker.
EXPLANATION OF WAIVERS
Although the rule waives all points of order against the
bill and its consideration (except for those arising under
clause 9 or 10 of rule XXI), the Committee is not aware of any
points of order against the bill or its consideration. The
waivers of all points of order against the bill and its
consideration (except those arising under clause 9 or 10 of
rule XXI) are prophylactic in nature.
COMMITTEE VOTES
The results of each record vote on an amendment or motion
to report, together with the names of those voting for and
against, are printed below:
Rules Committee record vote No. 291
Date: September 6, 2007.
Measure: H.R. 1908.
Motion by: Mr. Dreier.
Summary of motion: To grant an open rule.
Results: Defeated 4-8.
Vote by Members: McGovern--Nay; Matsui--Nay; Cardoza--Nay;
Welch--Nay; Castor--Nay; Arcuri--Nay; Sutton--Nay; Dreier--Yea;
Diaz-Balart--Yea; Hastings (WA)--Yea; Sessions--Yea;
Slaughter--Nay.
Rules Committee record vote No. 292
Date: September 6, 2007.
Measure: H.R. 1908.
Motion by: Mr. Dreier.
Summary of motion: To grant two hours of general debate
equally divided by a proponent and an opponent.
Results: Defeated 4-8.
Vote by Members: McGovern--Nay; Matsui--Nay; Cardoza--Nay;
Welch--Nay; Castor--Nay; Arcuri--Nay; Sutton--Nay; Dreier--Yea;
Diaz-Balart--Yea; Hastings (WA)--Yea; Sessions--Yea;
Slaughter--Nay.
Rules Committee record vote No. 293
Date: September 6, 2007.
Measure: H.R. 1908.
Motion by: Mr. Diaz-Balart.
Summary of motion: To make in order and provide appropriate
waivers for an amendment by Rep. Latham (IA), #1, which
increases to 15% (from 5%) of their budgets the amount in
certain funding agreements relating to patents and nonprofit
organizations to be used for scientific research, development,
and education, and for other purposes, by organizations having
budgets less than $40 million.
Results: Defeated 4-8.
Vote by Members: McGovern--Nay; Matsui--Nay; Cardoza--Nay;
Welch--Nay; Castor--Nay; Arcuri--Nay; Sutton--Nay; Dreier--Yea;
Diaz-Balart--Yea; Hastings (WA)--Yea; Sessions--Yea;
Slaughter--Nay.
Rules Committee record vote No. 294
Date: September 6, 2007.
Measure: H.R. 1908.
Motion by: Mr. Diaz-Balart.
Summary of motion: To make in order and provide appropriate
waivers for an amendment by Rep. Gohmert (TX), #7, which
permits nonprofit organizations to file patent suits where they
reside, and also allows the initial holder of a patent to file
suit where he resides, is incorporated, or has a principal
place of business.
Results: Defeated 4-8.
Vote by Members: McGovern--Nay; Matsui--Nay; Cardoza--Nay;
Welch--Nay; Castor--Nay; Arcuri--Nay; Sutton--Nay; Dreier--Yea;
Diaz-Balart--Yea; Hastings (WA)--Yea; Sessions--Yea;
Slaughter--Nay.
Rules Committee record vote No. 295
Date: September 6, 2007.
Measure: H.R. 1908.
Motion by: Mr. Hastings (WA).
Summary of motion: To make in order and provide appropriate
waivers for an amendment by Rep. Gohmert (TX), #8, which
eliminates the requirement of a defendant having substantial
evidence or witnesses before a request to transfer will be
considered and substitutes a standard that substantial fairness
would be accommodated.
Results: Defeated 4-8.
Vote by Members: McGovern--Nay; Matsui--Nay; Cardoza--Nay;
Welch--Nay; Castor--Nay; Arcuri--Nay; Sutton--Nay; Dreier--Yea;
Diaz-Balart--Yea; Hastings (WA)--Yea; Sessions--Yea;
Slaughter--Nay.
Rules Committee record vote No. 296
Date: September 6, 2007.
Measure: H.R. 1908.
Motion by: Mr. Sessions.
Summary of motion: To make in order and provide appropriate
waivers for an amendment by Rep. Gohmert (TX), #10, which would
allow a patent suit to be filed in any district or division
where the defendant committed a substantial portion of the acts
of infringement.
Results: Defeated 4-8.
Vote by Members: McGovern--Nay; Matsui--Nay; Cardoza--Nay;
Welch--Nay; Castor--Nay; Arcuri--Nay; Sutton--Nay; Dreier--Yea;
Diaz-Balart--Yea; Hastings (WA)--Yea; Sessions--Yea;
Slaughter--Nay.
Rules Committee record vote No. 297
Date: September 6, 2007.
Measure: H.R. 1908.
Motion by: Mr. Sessions.
Summary of motion: To make in order and provide appropriate
waivers for a second degree amendment by Rep. Gohmert (TX), #9,
which would add a venue transfer section to the bill and allows
a court to consider the substantial fairness to the litigants
as well as the case loads and potential delays of other courts
when considering a request to transfer a patent case.
Results: Defeated 4-8.
Vote by Members: McGovern--Nay; Matsui--Nay; Cardoza--Nay;
Welch--Nay; Castor--Nay; Arcuri--Nay; Sutton--Nay; Dreier--Yea;
Diaz-Balart--Yea; Hastings (WA)--Yea; Sessions--Yea;
Slaughter--Nay.
Rules Committee record vote No. 298
Date: September 6, 2007.
Measure: H.R. 1908.
Motion by: Mr. McGovern.
Summary of motion: To report the rule.
Results: Adopted 8-4.
Vote by Members: McGovern--Yea; Matsui--Yea; Cardoza--Yea;
Welch--Yea; Castor--Yea; Arcuri--Yea; Sutton--Yea; Dreier--Nay;
Diaz-Balart--Nay; Hastings (WA)--Nay; Sessions--Nay;
Slaughter--Yea.
SUMMARY OF AMENDMENTS MADE IN ORDER
1. Conyers (MI)/Smith (TX)/Berman (CA)/Coble (NC):
Manager's amendment. The amendment incorporates a number of
revisions. They include revisions to the sections on damages,
willful infringement, prior user rights, post-grant review,
venue, inequitable conduct, applicant disclosure information,
inventor's oath requirements, among others. (20 minutes)
2. Issa (CA): The bill eliminates provisions in the law
permitting certain applicants to delay or prevent publication
of their applications. This amendment would strike that
provision and permit applicants to delay publication until the
later of (1) three months after a second PTO decision or (2) 18
months after the filing date. (10 minutes)
3. Issa (CA): Amends the section relating to United States
Patent and Trademark Office regulatory authority by adding the
requirement that Congress be provided 60 days to review
regulations before they take effect. Congress may bar
implementation of the regulation by enactment of a joint
resolution of disapproval. (10 minutes)
4. Jackson-Lee (TX): This amendment requires the Director
of the United States Patent and Trademark Office to conduct a
study of patent damage awards in cases from at least 1990 to
the present where such awards have been based on a reasonable
royalty under Section 284 of Title 35 of the United States
Code. The Director of the PTO would be required to submit the
findings to Congress no later than one year after the Act's
enactment. (10 minutes)
5. Pence (IN): Amends the provisions governing post-grant
review proceedings to prohibit a post-grant review from being
instituted based upon the best mode requirement of patent law.
(10 minutes)
TEXT OF AMENDMENTS MADE IN ORDER UNDER THE RULE
1. An Amendment To Be Offered by Representative Conyers of Michigan, or
His Designee, Debatable for 20 Minutes
Page 3, strike lines 22 through 25.
Page 3, line 21, insert quotation marks and a second period
after ``patent.''.
Page 10, strike line 24 and all that follows through page 11,
line 2, and insert the following:
(i) Action for Claim to Patent on Derived Invention.--Section
135 is amended to read as follows:
``Sec. 135. Derivation proceedings''.
Page 11, lines 14 and 15, strike ``Any such request--'' and
insert the following:
``(B) Requirements for request.--Any request
under subparagraph (A)--''.
Page 12, line 3, strike ``(B)'' and insert ``(C)''.
Page 12, line 8, strike ``under section 101''.
Page 13, line 16, strike the quotation marks and second
period.
Page 13, insert the following after line 16:
``(b) Settlement.--Parties to a derivation proceeding 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, 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.
``(c) Arbitration.--Parties to a derivation proceeding,
within such time as may be specified by the Director by
regulation, may 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
patentability of the invention involved in the derivation
proceeding.''.
Page 13, strike line 17 and all that follows through page 15,
line 8.
Page 17, line 10, insert ``with respect to an application for
patent filed'' after ``commenced''.
Page 17, lines 21 and 22, strike ``transmits to the Congress
a finding'' and insert ``issues an Executive order containing
the President's finding''.
Page 18, insert the following after line 23:
(3) Retention of interference procedures with respect
to applications filed before effective date.--In the
case of any application for patent that is filed before
the effective date under paragraph (1)(A), the
provisions of law repealed or amended by subsections
(h), (i), and (j) shall apply to such application as
such provisions of law were in effect on the day before
such effective date.
Page 21, lines 24 and 25, strike ``is under an obligation of
assignment of'' and insert ``has assigned rights in''.
Page 24, strike line 23 and all that follows through page 25,
line 13 and redesignate the succeeding subsections accordingly.
Page 27, line 13, strike ``(5)'' and insert ``(4)''.
Page 27, line 21, strike ``The court'' and insert ``Upon a
showing to the satisfaction of the court that a reasonable
royalty should be based on a portion of the value of the
infringing product or process, the court''.
Page 28, lines 5 and 6, strike ``Unless the claimant shows''
and insert ``Upon a showing to the satisfaction of the court''.
Page 28, line 9, strike ``may not'' and insert ``may''.
Page 28, strike line 12 and all that follows through page 29,
line 2, and insert the following:
``(4) Other factors.--If neither paragraph (2) or (3)
is appropriate for determining a reasonable royalty,
the court may consider, or direct the jury to consider,
the terms of any nonexclusive marketplace licensing of
the invention, where appropriate, as well as any other
relevant factors under applicable law.
``(5) Combination inventions.--For purposes of
paragraphs (2) and (3), in the case of a combination
invention the elements of which are present
individually in the prior art, the patentee may show
that the contribution over the prior art may include
the value of the additional function resulting from the
combination, as well as the enhanced value, if any, of
some or all of the prior art elements resulting from
the combination.''
Page 31, line 17, strike ``The court's'' and all that follows
through ``jury.'' on line 19.
Page 31, strike line 23 and all that follows through the
matter following line 17 on page 33 and insert the following:
(b) Report to Congressional Committees.--Not later than June
30, 2009, the Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark
Office (in this subsection referred to as the ``Director'')
shall report to the Committee on the Judiciary of the House of
Representatives and the Committee on the Judiciary of the
Senate 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:
(1) A comparison between the patent laws of the
United States and the laws of other industrialized
countries, including the European Union, Japan, Canada,
and Australia.
(2) An analysis of the effect of prior user rights on
innovation rates in the selected countries.
(3) 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.
(4) An analysis of the effect of prior user rights,
if any, on small businesses, universities, and
individual inventors.
(5) An analysis of any legal or constitutional issues
that arise from placing elements of trade secret law,
in the form of prior user rights, in patent law.
In preparing the report, the Director shall consult with the
Secretary of State and the Attorney General of the United
States.
Page 33, line 18, strike ``(d)'' and insert ``(c)''.
Page 33, line 21, strike ``(e)'' and insert ``(d)''.
Page 36, lines 22 and 23, strike ``cited by or to the Office
or''.
Page 39, line 10, strike ``grant of the patent or issuance
of'' and insert ``issuance of the patent or''.
Page 39, strike line 21 and all that follows through page 40,
line 2 and insert the following:
``(3) for each claim sought to be canceled, the
petition sets forth in writing the basis for
cancellation and provides the evidence in support
thereof, including copies of patents and printed
publications, or written testimony of a witness
attested to under oath or declaration by the witness,
or any other information that the Director may require
by regulation; and''
Page 40, lines 3 and 4, strike ``those documents'' and insert
``the petition, including any evidence submitted with the
petition and any other information submitted under paragraph
(3),''.
Page 41, add the following after line 25:
In carrying out paragraph (3), the Director shall bear in mind
that discovery must be in the interests of justice.
Page 44, lines 23 and 24, strike ``with respect to'' and
insert ``addressing''.
Page 46, line 1, strike ``of administrative patent judges''.
Page 46, line 18, strike ``pending''.
Page 46, line 23, insert ``with respect to an application for
patent filed'' after ``commenced''.
Page 47, line 5, insert ``of a patent'' after
``infringement''.
Page 47, line 7, insert after ``patentability'' the
following: ``raised against the patent in a petition for post-
grant review''.
Page 47, insert the following after line 7:
``(c) Effect of Commencement of Proceeding.--The commencement
of a post-grant review proceeding--
``(1) shall not limit in any way the right of the
patent owner to commence an action for infringement of
the patent; and
``(2) shall not be cited as evidence relating to the
validity of any claim of the patent in any proceeding
before a court or the International Trade Commission
concerning the patent.
Page 48, line 14, strike ``or''.
Page 48, line 17, strike the period and insert ``; or''.
Page 48, insert the following after line 17:
``(5) assert the invalidity of any such claim in
defense to an action brought under section 337 of the
Tariff Act of 1930 (19 U.S.C. 1337).
Page 49, line 18, strike ``subsection (f)'' and insert
``subsections (f) and (g)''.
Page 49, strike lines 21 and 22 and insert the following:
(j) Regulations.--The Under Secretary of
Page 49, lines 23 through 25, and page 50, lines 1 through 4,
move the text 2 ems to the left.
Page 50, strike lines 5 through 15.
Page 51, lines 3 through 5, strike ``The Director, the
Deputy, the Commissioner for Patents, and the Commissioner for
Trademarks, and the'' and insert ``The''.
Page 51, line 9, strike ``Director'' and insert ``Secretary
of Commerce''.
Page 54, line 18, strike ``and''.
Page 54, line 21, strike the 2 periods and quotation marks
and insert ``; and''.
Page 54, insert the following after line 21:
``(D) identify the real party-in-interest
making the submission.''.
Page 57, strike line 12 and all that follows through page 59,
line 7, and insert the following:
``(b) In any civil action arising under any Act of Congress
relating to patents, a party shall not manufacture venue by
assignment, incorporation, joinder, or otherwise primarily to
invoke the venue of a specific district court.
``(c) Notwithstanding section 1391 of this title, except as
provided in paragraph (3) of this subsection, any civil action
for patent infringement or any action for declaratory judgment
relating to a patent may be brought only in a judicial
district--
``(1) where the defendant has its principal place of
business or is incorporated, or, for foreign
corporations with a United States subsidiary, where the
defendant's primary United States subsidiary has its
principal place of business or is incorporated;
``(2) where the defendant has committed a substantial
portion of the acts of infringement and has a regular
and established physical facility that the defendant
controls and that constitutes a substantial portion of
the defendant's operations;
``(3) for cases involving only foreign defendants
with no United States subsidiary, according to section
1391(d) of this title;
``(4) where the plaintiff resides, if the plaintiff
is--
``(A) an institution of higher education as
defined under section 101(a) of the Higher
Education Act of 1965 (20 U.S.C. section
1001(a)); or
``(B) a nonprofit organization that--
``(i) is described in section
501(c)(3) of the Internal Revenue Code
of 1986;
``(ii) is exempt from taxation under
section 501(a) of such Code; and
``(iii) serves primarily as the
patent and licensing organization for
an institution of higher education as
defined under section 101(a) of the
Higher Education Act of 1965 (20 U.S.C.
1001(a));
``(5) where the plaintiff or a subsidiary has a place
of business that is engaged in substantial--
``(A) research and development,
``(B) manufacturing activities, or
``(C) management of research and development
or manufacturing activities,
related to the patent or patents in dispute;
``(6) where the plaintiff resides if the plaintiff is
named as inventor or co-inventor on the patent and has
not assigned, granted, conveyed, or licensed, and is
under no obligation to assign, grant, convey, or
license, any rights in the patent or in enforcement of
the patent, including the results of any such
enforcement; or
``(7) where any of the defendants has substantial
evidence and witnesses if there is no other district in
which the action may be brought under this section.''.
Page 60, strike lines 1 through 3 and insert the following:
(c) Effective Date.--
(1) In general.--The amendments made by this
section--
(A) shall take effect on the date of the
enactment of this Act; and
(B) shall apply to any civil action commenced
on or after such date of enactment.
(2) Pending cases.--Any case commenced in a United
States district court on or after September 7, 2007, in
which venue is improper under section 1400 of title 28,
United States Code, as amended by this section, shall
be transferred pursuant to section 1404 of such title,
unless--
(A) one or more substantive rulings on the
merits, or other substantial litigation, has
occurred; and
(B) the court finds that transfer would not
serve the interests of justice.
Page 60, line 10, strike ``shall'' and insert ``may''.
Page 60, line 12, insert after ``patentability.'' the
following: ``If the Director requires a search report to be
submitted by applicants, and an applicant does not itself
perform the search, the search must be performed by one or more
individuals who are United States citizens or by a commercial
entity that is organized under the laws of the United States or
any State and employs United States citizens to perform such
searches.''.
Page 60, line 14, strike ``the required search report,
information, and'' and insert ``a search report, information,
or an''.
Page 60, line 16, add after the period the following: ``Any
search report required by the Director may not substitute in
any way for a search by an examiner of the prior art during
examination.''.
Page 63, strike line 19 and all that follows through line 15
on page 65 and insert the following:
``(1) Defense.--One or more claims of a patent may be
held to be unenforceable, or other remedy imposed under
paragraph (4), for inequitable conduct only if it is
established, by clear and convincing evidence, that a
person with a duty of disclosure to the Office, with
the intent to mislead or deceive the patent examiner,
misrepresented or failed to disclose material
information to the examiner during examination of the
patent.
``(2) Materiality.--
``(A) In general.--Information is material
under this section if--
``(i) a reasonable examiner would
have made a prima facie finding of
unpatentability, or maintained a
finding of unpatentability, of one or
more of the patent claims based on the
information, and the information is not
cumulative to information already of
record or previously considered by the
Office; or
``(ii) information that is otherwise
material refutes or is inconsistent
with a position the applicant takes in
opposing a rejection of the claim or in
asserting an argument of patentability.
``(B) Prima facie finding.--A prima facie
finding of unpatentability under this section
is shown if a reasonable examiner, based on a
preponderance of the evidence, would conclude
that the claim is unpatentable based on the
information misrepresented or not disclosed,
when that information is considered alone or in
conjunction with other information or record.
In determining whether there is a prima facie
finding of unpatentability, each term in the
claim shall be given its broadest reasonable
construction consistent with the specification,
and rebuttal evidence shall not be considered.
``(3) Intent.--To prove a person with a duty of
disclosure to the Office intended to mislead or deceive
the examiner under paragraph (1), specific facts beyond
materiality of the information misrepresented or not
disclosed must be proven that establish the intent of
the person to mislead or deceive the examiner by the
actions of the person. Facts support an intent to
mislead or deceive if they show circumstances that
indicate conscious or deliberate behavior on the part
of the person to not disclose material information or
to submit false material information in order to
mislead or deceive the examiner. Circumstantial
evidence may be used to prove that a person had the
intent to mislead or deceive the examiner under
paragraph (1).
``(4) Remedy.--Upon a finding of inequitable conduct,
the court shall balance the equities to determine which
of the following remedies to impose:
``(A) Denying equitable relief to the patent
holder and limiting the remedy for infringement
to reasonable royalties.
``(B) Holding the claims-in-suit, or the
claims in which inequitable conduct occurred,
unenforceable.
``(C) Holding the patent unenforceable.
``(D) Holding the claims of a related patent
unenforceable.
``(5) Attorney misconduct.--Upon a finding of
inequitable conduct, if there is evidence that the
conduct is attributable to a person or persons
authorized to practice before the Office, the court
shall refer the matter to the Office for appropriate
disciplinary action under section 32, and shall order
the parties to preserve and make available to the
Office any materials that may be relevant to the
determination under section 32.''.
Page 69, line 17, strike ``180 days'' and insert ``1 year''.
Page 71, insert the following after line 6 and redesignate
the succeeding section accordingly:
SEC. 17. STUDY ON WORKPLACE CONDITIONS.
The Comptroller General shall, not later than 2 years after
the date of the enactment of this Act--
(1) conduct a study of workplace conditions for the
examiner corps of the United States Patent and
Trademark Office, including the effect, if any, of this
Act and the amendments made by this Act on--
(A) recruitment, retention, and promotion of
employees; and
(B) workload, quality assurance, and employee
grievances; and
(2) submit to the Committees on the Judiciary of the
House of Representatives and the Senate a report on the
results of the study, including any suggestions for
improving workplace conditions, together with any other
recommendations that the Comptroller General has with
respect to patent reexamination proceedings.
Page 71, add the following after line 19:
SEC. 19. SEVERABILITY.
If any provision of this Act or of any amendment or repeals
made by this Act, or the application of such a provision to any
person or circumstance, is held to be invalid or unenforceable,
the remainder of this Act and the amendments and repeals made
by this Act, and the application of this Act and such
amendments and repeals to any other person or circumstance,
shall not be affected by such holding.
----------
2. An Amendment To Be Offered by Representative Issa of California, or
His Designee, Debatable for 10 Minutes
Page 53, strike lines 9 through 15 and insert the following:
(a) Publication.--Section 122(b)(2)(B)(i) is amended by
striking ``published as provided in paragraph (1).'' and
inserting the following: ``published until the later of--
``(I) three months after a second action is
taken pursuant to section 132 on the
application, of which notice has been given or
mailed to the applicant; or
``(II) the date specified in paragraph
(1).''.
----------
3. An Amendment To Be Offered by Representative Issa of California, or
His Designee, Debatable for 10 Minutes
Page 67, insert the following after line 7:
(c) Effective Date of Regulations.--
(1) Review by congress.--A regulation promulgated by
the United States Patent and Trademark Office under
section 2(b)(2) of title 35, United States Code, with
respect to any matter described in section 2(c)(6) of
such title, as added by subsection (a) of this section,
may not take effect before the end of a period of 60
days beginning on the date on which the Under Secretary
of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office submits
to each House of Congress a copy of the regulation,
together with a report containing the reasons for its
adoption. The regulation and report so submitted shall
be referred to the Committee on the Judiciary of the
House of Representatives and the Committee on the
Judiciary of the Senate.
(2) Joint resolution of disapproval.--If a joint
resolution of disapproval with respect to the
regulation is enacted into law, the regulation shall
not become effective or continue in effect.
(3) Joint resolution defined.--For purposes of this
subsection, the term a ``joint resolution of
disapproval'' means a joint resolution, the matter
after the resolving clause of which is as follows:
``That Congress disapproves the regulation submitted by
the Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and
Trademark Office on ___ relating to ___, and such
regulation shall have no force or effect.'', with the
first space being filled with the appropriate date, and
the second space being filled with a description of the
regulation at issue.
(4) Referral.--A joint resolution of disapproval
shall be referred in the House of Representatives to
the Committee on the Judiciary and in the Senate to the
Committee on the Judiciary.
(5) Floor consideration.--A vote on final passage of
a joint resolution of disapproval shall be taken in
each House on or before the close of the 15th day after
the bill or resolution is reported by the committee of
that House to which it was referred or after such
committee has been discharged from further
consideration of the joint resolution of disapproval.
(6) No inferences.-- If the Congress does not enact a
joint resolution of disapproval, no court or agency may
infer therefrom any intent of the Congress with regard
to such regulation or action.
(7) Calculation of days.--The 60-day period referred
to in paragraph (1) and the 15-day period referred to
in paragraph (5) shall be computed by excluding--
(A) the days on which either House of
Congress is not in session because of an
adjournment of the Congress sine die; and
(B) any Saturday and Sunday, not excluded
under subparagraph (A), when either House is
not in session.
(8) Rulemaking authority.--This subsection is enacted
by the Congress as an exercise of the rulemaking power
of the Senate and House of Representatives
respectively, and as such it is deemed a part of the
rules of each House, respectively.
----------
4. An Amendment To Be Offered by Representative Jackson-Lee of Texas,
or Her Designee, Debatable for 10 Minutes
At the end of the bill insert the following new section:
SEC. 18. STUDY ON PATENT DAMAGES.
(a) In General.--The Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent
and Trademark Office (in this section referred to as the
``Director'') shall conduct a study of patent damage awards in
cases where such awards have been based on a reasonable royalty
under section 284 of title 35, United States Code. The study
should, at a minimum, consider cases from 1990 to the present.
(b) Conduct.--In conducting the study under subsection (a),
the Director shall investigate, at a minimum, the following:
(1) Whether the mean or median dollar amount of
reasonable-royalty-based patent damages awarded by
courts or juries, as the case may be, has significantly
increased on a per case basis during the period covered
by the study, taking into consideration adjustments for
inflation and other relevant economic factors.
(2) Whether there has been a pattern of excessive and
inequitable reasonable-royalty-based damages during the
period covered by the study and, if so, any
contributing factors, including, for example, evidence
that Federal courts have routinely and inappropriately
broadened the scope of the ``entire market value
rule'', or that juries have routinely misapplied the
entire market value rule to the facts at issue.
(3) To the extent that a pattern of excessive and
inequitable damage awards exists, measures that could
guard against such inappropriate awards without unduly
prejudicing the rights and remedies of patent holders
or significantly increasing litigation costs, including
legislative reforms or improved model jury
instructions.
(4) To the extent that a pattern of excessive and
inequitable damage awards exists, whether legislative
proposals that would mandate, or create a presumption
in favor of, apportionment of reasonable-royalty-based
patent damages would effectively guard against such
inappropriate awards without unduly prejudicing the
rights and remedies of patent holders or significantly
increasing litigation costs.
(c) Report.--Not later than 1 year after the date of the
enactment of this Act, the Director shall submit to the
Congress a report on the study conducted under this section.
----------
5. An Amendment To Be Offered by Representative Pence of Indiana, or
His Designee, Debatable for 10 Minutes
Page 40, line 9, strike ``identifies'' and all that follows
through line 11 and insert the following:
``(1) identifies the same cancellation petitioner and
the same patent as a previous petition for cancellation
filed under such section; or
``(2) is based on the best mode requirement contained
in section 112.
<all>