An amendment numbered 3 printed in Part B of House Report 112-111 to strike Section 5, the `prior user rights' language, and conform H.R. 1249 to H.R. 1908, as passed by the U.S. House of Representatives on September 7, 2007, and S. 23, as passed by the U.S. Senate on March 8, 2011.

1. 1

   Change 1: Strikes section 5

   Strikes

   In H.R. 1249 · Reported in House

   Struck: SEC. 5. DEFENSE TO INFRINGEMENT BASED ON EARLIER INVENTOR.

   Struck: Section 273 of title 35, United States Code, is amended as follows:

   Struck: (1) Subsection (a) is amended--

   Struck: (A) in paragraph (1)--

   Show 26 more struck paragraphsShow less

   Struck: (i) by striking "use of a method in" and inserting "use of the subject matter of a patent in"; and

   Struck: (ii) by adding "and" after the semicolon;

   Struck: (B) in paragraph (2), by striking the semicolon at the end of subparagraph (B) and inserting a period; and

   Struck: (C) by striking paragraphs (3) and (4).

   Struck: (2) Subsection (b) is amended--

   Struck: (A) in paragraph (1)--

   Struck: (i) by striking "for a method"; and

   Struck: (ii) by striking "at least 1 year" and all that follows through the end and inserting "and commercially used the subject matter at least 1 year before the effective filing date of the claimed invention that is the subject matter of the patent.";

   Struck: (B) in paragraph (2), by striking "patented method" and inserting "patented process";

   Struck: (C) in paragraph (3)--

   Struck: (i) by striking subparagraph (A);

   Struck: (ii) by striking subparagraph (B) and inserting the following:

   Struck: "(A) Derivation and prior disclosure to the public.--A person may not assert the defense under this section if--

   Struck: "(i) the subject matter on which the defense is based was derived from the patentee or persons in privity with the patentee; or

   Struck: "(ii) the claimed invention that is the subject of the defense was disclosed to the public in a manner that qualified for the exception from the prior art under section 102(b) and the commercialization date relied upon under paragraph (1) of this subsection for establishing entitlement to the defense is less than 1 year before the date of such disclosure to the public;";

   Struck: (iii) by redesignating subparagraph (C) as subparagraph (B); and

   Struck: (iv) by adding at the end the following:

   Struck: "(C) Funding.--

   Struck: "(i) Defense not available in certain cases.--A person may not assert the defense under this section if the subject matter of the patent on which the defense is based was developed pursuant to a funding agreement under chapter 18 or by a nonprofit institution of higher education, or a technology transfer organization affiliated with such an institution, that did not receive funding from a private business enterprise in support of that development.

   Struck: "(ii) Definitions.--In this subparagraph--

   Struck: "(I) the term 'institution of higher education' has the meaning given that term in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); and

   Struck: "(II) the term 'technology transfer organization' means an organization the primary purpose of which is to facilitate the commercialization of technologies developed by one or more institutions of higher education."; and

   Struck: (D) by amending paragraph (6) to read as follows:

   Struck: "(6) Personal defense.--

   Struck: "(A) In general.--The defense under this section may be asserted only by the person who performed or caused the performance of the acts necessary to establish the defense, as well as any other entity that controls, is controlled by, or is under common control with such person, and, except for any transfer to the patent owner, the right to assert the defense shall not be licensed or assigned or transferred to another person except as an ancillary and subordinate part of a good faith assignment or transfer for other reasons of the entire enterprise or line of business to which the defense relates.

   Struck: "(B) Exception.--Notwithstanding subparagraph (A), any person may, on the person's own behalf, assert a defense based on the exhaustion of rights provided under paragraph (2), including any necessary elements thereof.".

   Original wording

   Strike section 5 (“Defense to Infringement Based on Prior Commercial Use”)

2. 2

   Change 2: Replaces “section 18” with “section 17”

   ReplacesPage 68, line 9Printed page

   In H.R. 1249 · Reported in House

   (2) Applicability.--

   (A) In general.--The amendments made by subsection (d) shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and, except as provided in section [struck: 18][inserted: 17] and in paragraph (3), shall apply to any patent that is described in section 3(n)(1).

   (B) Limitation.--The Director may impose a limit on the number of post-grant reviews that may be instituted under chapter 32 of title 35, United States Code, during each of the first 4 1-year periods in which the amendments made by subsection (d) are in effect.

   Original wording

   Page 68, line 9, strike “section 18” and insert “section 17”.

3. 3

   Change 3: Replaces “6(f)(2)(A)” with “5(f)(2)(A)”

   ReplacesPage 115, line 10Printed page

   In H.R. 1249 · Reported in House

   (E) The Director may institute a transitional proceeding only for a patent that is a covered business method patent.

   (2) Effective date.--The regulations issued under paragraph (1) shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to any covered business method patent issued before, on, or after that effective date, except that the regulations shall not apply to a patent described in section [struck: 6][inserted: 5](f)(2)(A) of this Act during the period in which a petition for post-grant review of that patent would satisfy the requirements of section 321(c) of title 35, United States Code.

   (3) Sunset.--

   Original wording

   Page 115, line 10, strike “6(f)(2)(A)” and insert “5(f)(2)(A)”.

Read automatically from the Congressional Record. Check the original before relying on it.

As printed