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TITLE IV—INVENTOR1 PROTECTION2
SEC. 4001. SHORT TITLE.3
This title may be cited as the ‘‘American Inventors4
Protection Act of 1999’’.5
Subtitle A—Inventors’ Rights6 SEC. 4101. SHORT TITLE.7
This subtitle may be cited as the ‘‘Inventors’ Rights8
Act of 1999’’.9
SEC. 4102. INTEGRITY IN INVENTION PROMOTION SERV-10
ICES.11
(a) IN GENERAL.—Chapter 29 of title 35, United12
States Code, is amended by adding at the end the fol-13
lowing new section:14
‘‘§ 297. Improper and deceptive invention promotion15
‘‘(a) IN GENERAL.—An invention promoter shall16
have a duty to disclose the following information to a cus-17
tomer in writing, prior to entering into a contract for in-18
vention promotion services:19
‘‘(1) the total number of inventions evaluated20
by the invention promoter for commercial potential21
in the past 5 years, as well as the number of those22
inventions that received positive evaluations, and the23
number of those inventions that received negative24
evaluations;25
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‘‘(2) the total number of customers who have1
contracted with the invention promoter in the past2
5 years, not including customers who have pur-3
chased trade show services, research, advertising, or4
other nonmarketing services from the invention pro-5
moter, or who have defaulted in their payment to6
the invention promoter;7
‘‘(3) the total number of customers known by8
the invention promoter to have received a net finan-9
cial profit as a direct result of the invention pro-10
motion services provided by such invention promoter;11
‘‘(4) the total number of customers known by12
the invention promoter to have received license13
agreements for their inventions as a direct result of14
the invention promotion services provided by such15
invention promoter; and16
‘‘(5) the names and addresses of all previous in-17
vention promotion companies with which the inven-18
tion promoter or its officers have collectively or indi-19
vidually been affiliated in the previous 10 years.20
‘‘(b) CIVIL ACTION.—(1) Any customer who enters21
into a contract with an invention promoter and who is22
found by a court to have been injured by any material23
false or fraudulent statement or representation, or any24
omission of material fact, by that invention promoter (or25
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any agent, employee, director, officer, partner, or inde-1
pendent contractor of such invention promoter), or by the2
failure of that invention promoter to disclose such infor-3
mation as required under subsection (a), may recover in4
a civil action against the invention promoter (or the offi-5
cers, directors, or partners of such invention promoter),6
in addition to reasonable costs and attorneys’ fees—7
‘‘(A) the amount of actual damages incurred by8
the customer; or9
‘‘(B) at the election of the customer at any time10
before final judgment is rendered, statutory damages11
in a sum of not more than $5,000, as the court con-12
siders just.13
‘‘(2) Notwithstanding paragraph (1), in a case where14
the customer sustains the burden of proof, and the court15
finds, that the invention promoter intentionally misrepre-16
sented or omitted a material fact to such customer, or will-17
fully failed to disclose such information as required under18
subsection (a), with the purpose of deceiving that cus-19
tomer, the court may increase damages to not more than20
three times the amount awarded, taking into account past21
complaints made against the invention promoter that re-22
sulted in regulatory sanctions or other corrective actions23
based on those records compiled by the Commissioner of24
Patents under subsection (d).25
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‘‘(c) DEFINITIONS.—For purposes of this section—1
‘‘(1) a ‘contract for invention promotion serv-2
ices’ means a contract by which an invention pro-3
moter undertakes invention promotion services for a4
customer;5
‘‘(2) a ‘customer’ is any individual who enters6
into a contract with an invention promoter for inven-7
tion promotion services;8
‘‘(3) the term ‘invention promoter’ means any9
person, firm, partnership, corporation, or other enti-10
ty who offers to perform or performs invention pro-11
motion services for, or on behalf of, a customer, and12
who holds itself out through advertising in any mass13
media as providing such services, but does not14
include—15
‘‘(A) any department or agency of the Fed-16
eral Government or of a State or local govern-17
ment;18
‘‘(B) any nonprofit, charitable, scientific,19
or educational organization, qualified under ap-20
plicable State law or described under section21
170(b)(1)(A) of the Internal Revenue Code of22
1986;23
‘‘(C) any person or entity involved in the24
evaluation to determine commercial potential of,25
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•S 1948 IS
or offering to license or sell, a utility patent or1
a previously filed nonprovisional utility patent2
application;3
‘‘(D) any party participating in a trans-4
action involving the sale of the stock or assets5
of a business; or6
‘‘(E) any party who directly engages in the7
business of retail sales of products or the dis-8
tribution of products; and9
‘‘(4) the term ‘invention promotion services’10
means the procurement or attempted procurement11
for a customer of a firm, corporation, or other entity12
to develop and market products or services that in-13
clude the invention of the customer.14
‘‘(d) RECORDS OF COMPLAINTS.—15
‘‘(1) RELEASE OF COMPLAINTS.—The Commis-16
sioner of Patents shall make all complaints received17
by the Patent and Trademark Office involving inven-18
tion promoters publicly available, together with any19
response of the invention promoters. The Commis-20
sioner of Patents shall notify the invention promoter21
of a complaint and provide a reasonable opportunity22
to reply prior to making such complaint publicly23
available.24
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‘‘(2) REQUEST FOR COMPLAINTS.—The Com-1
missioner of Patents may request complaints relat-2
ing to invention promotion services from any Federal3
or State agency and include such complaints in the4
records maintained under paragraph (1), together5
with any response of the invention promoters.’’.6
(b) CONFORMING AMENDMENT.—The table of sec-7
tions at the beginning of chapter 29 of title 35, United8
States Code, is amended by adding at the end the fol-9
lowing new item:10
‘‘297. Improper and deceptive invention promotion.’’.
SEC. 4103. EFFECTIVE DATE.11
This subtitle and the amendments made by this sub-12
title shall take effect 60 days after the date of the enact-13
ment of this Act.14
Subtitle B—Patent and Trademark15 Fee Fairness16
SEC. 4201. SHORT TITLE.17
This subtitle may be cited as the ‘‘Patent and Trade-18
mark Fee Fairness Act of 1999’’.19
SEC. 4202. ADJUSTMENT OF PATENT FEES.20
(a) ORIGINAL FILING FEE.—Section 41(a)(1)(A) of21
title 35, United States Code, relating to the fee for filing22
an original patent application, is amended by striking23
‘‘$760’’ and inserting ‘‘$690’’.24
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•S 1948 IS
(b) REISSUE FEE.—Section 41(a)(4)(A) of title 35,1
United States Code, relating to the fee for filing for a re-2
issue of a patent, is amended by striking ‘‘$760’’ and in-3
serting ‘‘$690’’.4
(c) NATIONAL FEE FOR CERTAIN INTERNATIONAL5
APPLICATIONS.—Section 41(a)(10) of title 35, United6
States Code, relating to the national fee for certain inter-7
national applications, is amended by striking ‘‘$760’’ and8
inserting ‘‘$690’’.9
(d) MAINTENANCE FEES.—Section 41(b)(1) of title10
35, United States Code, relating to certain maintenance11
fees, is amended by striking ‘‘$940’’ and inserting12
‘‘$830’’.13
SEC. 4203. ADJUSTMENT OF TRADEMARK FEES.14
Notwithstanding the second sentence of section 31(a)15
of the Trademark Act of 1946 (15 U.S.C. 111(a)), the16
Under Secretary of Commerce for Intellectual Property17
and Director of the United States Patent and Trademark18
Office is authorized in fiscal year 2000 to adjust trade-19
mark fees without regard to fluctuations in the Consumer20
Price Index during the preceding 12 months.21
SEC. 4204. STUDY ON ALTERNATIVE FEE STRUCTURES.22
The Under Secretary of Commerce for Intellectual23
Property and Director of the United States Patent and24
Trademark Office shall conduct a study of alternative fee25
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•S 1948 IS
structures that could be adopted by the United States Pat-1
ent and Trademark Office to encourage maximum partici-2
pation by the inventor community in the United States.3
The Director shall submit such study to the Committees4
on the Judiciary of the House of Representatives and the5
Senate not later than 1 year after the date of the enact-6
ment of this Act.7
SEC. 4205. PATENT AND TRADEMARK OFFICE FUNDING.8
Section 42(c) of title 35, United States Code, is9
amended in the second sentence—10
(1) by striking ‘‘Fees available’’ and inserting11
‘‘All fees available’’; and12
(2) by striking ‘‘may’’ and inserting ‘‘shall’’.13
SEC. 4206. EFFECTIVE DATE.14
(a) IN GENERAL.—Except as provided in subsection15
(b), the amendments made by this subtitle shall take effect16
on the date of the enactment of this Act.17
(b) SECTION 4202.—The amendments made by sec-18
tion 4202 of this subtitle shall take effect 30 days after19
the date of the enactment of this Act.20
Subtitle C—First Inventor Defense21 SEC. 4301. SHORT TITLE.22
This subtitle may be cited as the ‘‘First Inventor De-23
fense Act of 1999’’.24
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SEC. 4302. DEFENSE TO PATENT INFRINGEMENT BASED ON1
EARLIER INVENTOR.2
(a) DEFENSE.—Chapter 28 of title 35, United States3
Code, is amended by adding at the end the following new4
section:5
‘‘§ 273. Defense to infringement based on earlier in-6
ventor7
‘‘(a) DEFINITIONS.—For purposes of this section—8
‘‘(1) the terms ‘commercially used’ and ‘com-9
mercial use’ mean use of a method in the United10
States, so long as such use is in connection with an11
internal commercial use or an actual arm’s-length12
sale or other arm’s-length commercial transfer of a13
useful end result, whether or not the subject matter14
at issue is accessible to or otherwise known to the15
public, except that the subject matter for which com-16
mercial marketing or use is subject to a premar-17
keting regulatory review period during which the18
safety or efficacy of the subject matter is estab-19
lished, including any period specified in section20
156(g), shall be deemed ‘commercially used’ and in21
‘commercial use’ during such regulatory review pe-22
riod;23
‘‘(2) in the case of activities performed by a24
nonprofit research laboratory, or nonprofit entity25
such as a university, research center, or hospital, a26
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•S 1948 IS
use for which the public is the intended beneficiary1
shall be considered to be a use described in para-2
graph (1), except that the use—3
‘‘(A) may be asserted as a defense under4
this section only for continued use by and in5
the laboratory or nonprofit entity; and6
‘‘(B) may not be asserted as a defense7
with respect to any subsequent commercializa-8
tion or use outside such laboratory or nonprofit9
entity;10
‘‘(3) the term ‘method’ means a method of11
doing or conducting business; and12
‘‘(4) the ‘effective filing date’ of a patent is the13
earlier of the actual filing date of the application for14
the patent or the filing date of any earlier United15
States, foreign, or international application to which16
the subject matter at issue is entitled under section17
119, 120, or 365 of this title.18
‘‘(b) DEFENSE TO INFRINGEMENT.—19
‘‘(1) IN GENERAL.—It shall be a defense to an20
action for infringement under section 271 of this21
title with respect to any subject matter that would22
otherwise infringe one or more claims for a method23
in the patent being asserted against a person, if24
such person had, acting in good faith, actually re-25
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•S 1948 IS
duced the subject matter to practice at least 1 year1
before the effective filing date of such patent, and2
commercially used the subject matter before the ef-3
fective filing date of such patent.4
‘‘(2) EXHAUSTION OF RIGHT.—The sale or5
other disposition of a useful end product produced6
by a patented method, by a person entitled to assert7
a defense under this section with respect to that use-8
ful end result shall exhaust the patent owner’s rights9
under the patent to the extent such rights would10
have been exhausted had such sale or other disposi-11
tion been made by the patent owner.12
‘‘(3) LIMITATIONS AND QUALIFICATIONS OF DE-13
FENSE.—The defense to infringement under this14
section is subject to the following:15
‘‘(A) PATENT.—A person may not assert16
the defense under this section unless the inven-17
tion for which the defense is asserted is for a18
method.19
‘‘(B) DERIVATION.—A person may not as-20
sert the defense under this section if the subject21
matter on which the defense is based was de-22
rived from the patentee or persons in privity23
with the patentee.24
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•S 1948 IS
‘‘(C) NOT A GENERAL LICENSE.—The de-1
fense asserted by a person under this section is2
not a general license under all claims of the3
patent at issue, but extends only to the specific4
subject matter claimed in the patent with re-5
spect to which the person can assert a defense6
under this chapter, except that the defense shall7
also extend to variations in the quantity or vol-8
ume of use of the claimed subject matter, and9
to improvements in the claimed subject matter10
that do not infringe additional specifically11
claimed subject matter of the patent.12
‘‘(4) BURDEN OF PROOF.—A person asserting13
the defense under this section shall have the burden14
of establishing the defense by clear and convincing15
evidence.16
‘‘(5) ABANDONMENT OF USE.—A person who17
has abandoned commercial use of subject matter18
may not rely on activities performed before the date19
of such abandonment in establishing a defense under20
this section with respect to actions taken after the21
date of such abandonment.22
‘‘(6) PERSONAL DEFENSE.—The defense under23
this section may be asserted only by the person who24
performed the acts necessary to establish the defense25
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and, except for any transfer to the patent owner, the1
right to assert the defense shall not be licensed or2
assigned or transferred to another person except as3
an ancillary and subordinate part of a good faith as-4
signment or transfer for other reasons of the entire5
enterprise or line of business to which the defense6
relates.7
‘‘(7) LIMITATION ON SITES.—A defense under8
this section, when acquired as part of a good faith9
assignment or transfer of an entire enterprise or line10
of business to which the defense relates, may only be11
asserted for uses at sites where the subject matter12
that would otherwise infringe one or more of the13
claims is in use before the later of the effective filing14
date of the patent or the date of the assignment or15
transfer of such enterprise or line of business.16
‘‘(8) UNSUCCESSFUL ASSERTION OF DE-17
FENSE.—If the defense under this section is pleaded18
by a person who is found to infringe the patent and19
who subsequently fails to demonstrate a reasonable20
basis for asserting the defense, the court shall find21
the case exceptional for the purpose of awarding at-22
torney fees under section 285 of this title.23
‘‘(9) INVALIDITY.—A patent shall not be24
deemed to be invalid under section 102 or 103 of25
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•S 1948 IS
this title solely because a defense is raised or estab-1
lished under this section.’’.2
(b) CONFORMING AMENDMENT.—The table of sec-3
tions at the beginning of chapter 28 of title 35, United4
States Code, is amended by adding at the end the fol-5
lowing new item:6
‘‘273. Defense to infringement based on earlier inventor.’’.
SEC. 4303. EFFECTIVE DATE AND APPLICABILITY.7
This subtitle and the amendments made by this sub-8
title shall take effect on the date of the enactment of this9
Act, but shall not apply to any action for infringement10
that is pending on such date of enactment or with respect11
to any subject matter for which an adjudication of in-12
fringement, including a consent judgment, has been made13
before such date of enactment.14
Subtitle D—Patent Term15 Guarantee16
SEC. 4401. SHORT TITLE.17
This subtitle may be cited as the ‘‘Patent Term Guar-18
antee Act of 1999’’.19
SEC. 4402. PATENT TERM GUARANTEE AUTHORITY.20
(a) ADJUSTMENT OF PATENT TERM.—Section21
154(b) of title 35, United States Code, is amended to read22
as follows:23
‘‘(b) ADJUSTMENT OF PATENT TERM.—24
‘‘(1) PATENT TERM GUARANTEES.—25
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‘‘(A) GUARANTEE OF PROMPT PATENT1
AND TRADEMARK OFFICE RESPONSES.—Subject2
to the limitations under paragraph (2), if the3
issue of an original patent is delayed due to the4
failure of the Patent and Trademark Office5
to—6
‘‘(i) provide at least one of the notifi-7
cations under section 132 of this title or a8
notice of allowance under section 151 of9
this title not later than 14 months after—10
‘‘(I) the date on which an appli-11
cation was filed under section 111(a)12
of this title; or13
‘‘(II) the date on which an inter-14
national application fulfilled the re-15
quirements of section 371 of this title;16
‘‘(ii) respond to a reply under section17
132, or to an appeal taken under section18
134, within 4 months after the date on19
which the reply was filed or the appeal was20
taken;21
‘‘(iii) act on an application within 422
months after the date of a decision by the23
Board of Patent Appeals and Interferences24
under section 134 or 135 or a decision by25
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•S 1948 IS
a Federal court under section 141, 145, or1
146 in a case in which allowable claims re-2
main in the application; or3
‘‘(iv) issue a patent within 4 months4
after the date on which the issue fee was5
paid under section 151 and all outstanding6
requirements were satisfied,7
the term of the patent shall be extended 1 day8
for each day after the end of the period speci-9
fied in clause (i), (ii), (iii), or (iv), as the case10
may be, until the action described in such11
clause is taken.12
‘‘(B) GUARANTEE OF NO MORE THAN 3-13
YEAR APPLICATION PENDENCY.—Subject to the14
limitations under paragraph (2), if the issue of15
an original patent is delayed due to the failure16
of the United States Patent and Trademark Of-17
fice to issue a patent within 3 years after the18
actual filing date of the application in the19
United States, not including—20
‘‘(i) any time consumed by continued21
examination of the application requested22
by the applicant under section 132(b);23
‘‘(ii) any time consumed by a pro-24
ceeding under section 135(a), any time25
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consumed by the imposition of an order1
under section 181, or any time consumed2
by appellate review by the Board of Patent3
Appeals and Interferences or by a Federal4
court; or5
‘‘(iii) any delay in the processing of6
the application by the United States Pat-7
ent and Trademark Office requested by the8
applicant except as permitted by paragraph9
(3)(C),10
the term of the patent shall be extended 1 day11
for each day after the end of that 3-year period12
until the patent is issued.13
‘‘(C) GUARANTEE OR ADJUSTMENTS FOR14
DELAYS DUE TO INTERFERENCES, SECRECY OR-15
DERS, AND APPEALS.—Subject to the limita-16
tions under paragraph (2), if the issue of an17
original patent is delayed due to—18
‘‘(i) a proceeding under section19
135(a);20
‘‘(ii) the imposition of an order under21
section 181; or22
‘‘(iii) appellate review by the Board of23
Patent Appeals and Interferences or by a24
Federal court in a case in which the patent25
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•S 1948 IS
was issued under a decision in the review1
reversing an adverse determination of pat-2
entability,3
the term of the patent shall be extended 1 day4
for each day of the pendency of the proceeding,5
order, or review, as the case may be.6
‘‘(2) LIMITATIONS.—7
‘‘(A) IN GENERAL.—To the extent that pe-8
riods of delay attributable to grounds specified9
in paragraph (1) overlap, the period of any ad-10
justment granted under this subsection shall11
not exceed the actual number of days the12
issuance of the patent was delayed.13
‘‘(B) DISCLAIMED TERM.—No patent the14
term of which has been disclaimed beyond a15
specified date may be adjusted under this sec-16
tion beyond the expiration date specified in the17
disclaimer.18
‘‘(C) REDUCTION OF PERIOD OF ADJUST-19
MENT.—20
‘‘(i) The period of adjustment of the21
term of a patent under paragraph (1) shall22
be reduced by a period equal to the period23
of time during which the applicant failed24
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•S 1948 IS
to engage in reasonable efforts to conclude1
prosecution of the application.2
‘‘(ii) With respect to adjustments to3
patent term made under the authority of4
paragraph (1)(B), an applicant shall be5
deemed to have failed to engage in reason-6
able efforts to conclude processing or ex-7
amination of an application for the cumu-8
lative total of any periods of time in excess9
of 3 months that are taken to respond to10
a notice from the Office making any rejec-11
tion, objection, argument, or other request,12
measuring such 3-month period from the13
date the notice was given or mailed to the14
applicant.15
‘‘(iii) The Director shall prescribe reg-16
ulations establishing the circumstances17
that constitute a failure of an applicant to18
engage in reasonable efforts to conclude19
processing or examination of an applica-20
tion.21
‘‘(3) PROCEDURES FOR PATENT TERM ADJUST-22
MENT DETERMINATION.—23
‘‘(A) The Director shall prescribe regula-24
tions establishing procedures for the application25
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for and determination of patent term adjust-1
ments under this subsection.2
‘‘(B) Under the procedures established3
under subparagraph (A), the Director shall—4
‘‘(i) make a determination of the pe-5
riod of any patent term adjustment under6
this subsection, and shall transmit a notice7
of that determination with the written no-8
tice of allowance of the application under9
section 151; and10
‘‘(ii) provide the applicant one oppor-11
tunity to request reconsideration of any12
patent term adjustment determination13
made by the Director.14
‘‘(C) The Director shall reinstate all or15
part of the cumulative period of time of an ad-16
justment under paragraph (2)(C) if the appli-17
cant, prior to the issuance of the patent, makes18
a showing that, in spite of all due care, the ap-19
plicant was unable to respond within the 3-20
month period, but in no case shall more than21
three additional months for each such response22
beyond the original 3-month period be rein-23
stated.24
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‘‘(D) The Director shall proceed to grant1
the patent after completion of the Director’s de-2
termination of a patent term adjustment under3
the procedures established under this sub-4
section, notwithstanding any appeal taken by5
the applicant of such determination.6
‘‘(4) APPEAL OF PATENT TERM ADJUSTMENT7
DETERMINATION.—8
‘‘(A) An applicant dissatisfied with a de-9
termination made by the Director under para-10
graph (3) shall have remedy by a civil action11
against the Director filed in the United States12
District Court for the District of Columbia13
within 180 days after the grant of the patent.14
Chapter 7 of title 5, United States Code, shall15
apply to such action. Any final judgment result-16
ing in a change to the period of adjustment of17
the patent term shall be served on the Director,18
and the Director shall thereafter alter the term19
of the patent to reflect such change.20
‘‘(B) The determination of a patent term21
adjustment under this subsection shall not be22
subject to appeal or challenge by a third party23
prior to the grant of the patent.’’.24
(b) CONFORMING AMENDMENTS.—25
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•S 1948 IS
(1) Section 282 of title 35, United States Code,1
is amended in the fourth paragraph by striking ‘‘1562
of this title’’ and inserting ‘‘154(b) or 156 of this3
title’’.4
(2) Section 1295(a)(4)(C) of title 28, United5
States Code, is amended by striking ‘‘145 or 146’’6
and inserting ‘‘145, 146, or 154(b)’’.7
SEC. 4403. CONTINUED EXAMINATION OF PATENT APPLICA-8
TIONS.9
Section 132 of title 35, United States Code, is10
amended—11
(1) in the first sentence by striking ‘‘Whenever’’12
and inserting ‘‘(a) Whenever’’; and13
(2) by adding at the end the following:14
‘‘(b) The Director shall prescribe regulations to pro-15
vide for the continued examination of applications for pat-16
ent at the request of the applicant. The Director may es-17
tablish appropriate fees for such continued examination18
and shall provide a 50 percent reduction in such fees for19
small entities that qualify for reduced fees under section20
41(h)(1) of this title.’’.21
SEC. 4404. TECHNICAL CLARIFICATION.22
Section 156(a) of title 35, United States Code, is23
amended in the matter preceding paragraph (1) by insert-24
ing ‘‘, which shall include any patent term adjustment25
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•S 1948 IS
granted under section 154(b),’’ after ‘‘the original expira-1
tion date of the patent’’.2
SEC. 4405. EFFECTIVE DATE.3
(a) AMENDMENTS MADE BY SECTIONS 4402 AND4
4404.—The amendments made by sections 4402 and5
4404 shall take effect on the date that is 6 months after6
the date of the enactment of this Act and, except for a7
design patent application filed under chapter 16 of title8
35, United States Code, shall apply to any application9
filed on or after the date that is 6 months after the date10
of the enactment of this Act.11
(b) AMENDMENTS MADE BY SECTION 4403.—The12
amendments made by section 4403—13
(1) shall take effect on the date that is 614
months after the date of the enactment of this Act,15
and shall apply to all applications filed under section16
111(a) of title 35, United States Code, on or after17
June 8, 1995, and all applications complying with18
section 371 of title 35, United States Code, that re-19
sulted from international applications filed on or20
after June 8, 1995; and21
(2) do not apply to applications for design pat-22
ents under chapter 16 of title 35, United States23
Code.24
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Subtitle E—Domestic Publication1 of Patent Applications Pub-2 lished Abroad3
SEC. 4501. SHORT TITLE.4
This subtitle may be cited as the ‘‘Domestic Publica-5
tion of Foreign Filed Patent Applications Act of 1999’’.6
SEC. 4502. PUBLICATION.7
(a) PUBLICATION.—Section 122 of title 35, United8
States Code, is amended to read as follows:9
‘‘§ 122. Confidential status of applications; publica-10
tion of patent applications11
‘‘(a) CONFIDENTIALITY.—Except as provided in sub-12
section (b), applications for patents shall be kept in con-13
fidence by the Patent and Trademark Office and no infor-14
mation concerning the same given without authority of the15
applicant or owner unless necessary to carry out the provi-16
sions of an Act of Congress or in such special cir-17
cumstances as may be determined by the Director.18
‘‘(b) PUBLICATION.—19
‘‘(1) IN GENERAL.—(A) Subject to paragraph20
(2), each application for a patent shall be published,21
in accordance with procedures determined by the Di-22
rector, promptly after the expiration of a period of23
18 months from the earliest filing date for which a24
benefit is sought under this title. At the request of25
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the applicant, an application may be published ear-1
lier than the end of such 18-month period.2
‘‘(B) No information concerning published pat-3
ent applications shall be made available to the public4
except as the Director determines.5
‘‘(C) Notwithstanding any other provision of6
law, a determination by the Director to release or7
not to release information concerning a published8
patent application shall be final and nonreviewable.9
‘‘(2) EXCEPTIONS.—(A) An application shall10
not be published if that application is—11
‘‘(i) no longer pending;12
‘‘(ii) subject to a secrecy order under sec-13
tion 181 of this title;14
‘‘(iii) a provisional application filed under15
section 111(b) of this title; or16
‘‘(iv) an application for a design patent17
filed under chapter 16 of this title.18
‘‘(B)(i) If an applicant makes a request upon19
filing, certifying that the invention disclosed in the20
application has not and will not be the subject of an21
application filed in another country, or under a mul-22
tilateral international agreement, that requires publi-23
cation of applications 18 months after filing, the ap-24
108
•S 1948 IS
plication shall not be published as provided in para-1
graph (1).2
‘‘(ii) An applicant may rescind a request made3
under clause (i) at any time.4
‘‘(iii) An applicant who has made a request5
under clause (i) but who subsequently files, in a for-6
eign country or under a multilateral international7
agreement specified in clause (i), an application di-8
rected to the invention disclosed in the application9
filed in the Patent and Trademark Office, shall no-10
tify the Director of such filing not later than 4511
days after the date of the filing of such foreign or12
international application. A failure of the applicant13
to provide such notice within the prescribed period14
shall result in the application being regarded as15
abandoned, unless it is shown to the satisfaction of16
the Director that the delay in submitting the notice17
was unintentional.18
‘‘(iv) If an applicant rescinds a request made19
under clause (i) or notifies the Director that an ap-20
plication was filed in a foreign country or under a21
multilateral international agreement specified in22
clause (i), the application shall be published in ac-23
cordance with the provisions of paragraph (1) on or24
109
•S 1948 IS
as soon as is practical after the date that is specified1
in clause (i).2
‘‘(v) If an applicant has filed applications in3
one or more foreign countries, directly or through a4
multilateral international agreement, and such for-5
eign filed applications corresponding to an applica-6
tion filed in the Patent and Trademark Office or the7
description of the invention in such foreign filed ap-8
plications is less extensive than the application or9
description of the invention in the application filed10
in the Patent and Trademark Office, the applicant11
may submit a redacted copy of the application filed12
in the Patent and Trademark Office eliminating any13
part or description of the invention in such applica-14
tion that is not also contained in any of the cor-15
responding applications filed in a foreign country.16
The Director may only publish the redacted copy of17
the application unless the redacted copy of the appli-18
cation is not received within 16 months after the19
earliest effective filing date for which a benefit is20
sought under this title. The provisions of section21
154(d) shall not apply to a claim if the description22
of the invention published in the redacted applica-23
tion filed under this clause with respect to the claim24
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•S 1948 IS
does not enable a person skilled in the art to make1
and use the subject matter of the claim.2
‘‘(c) PROTEST AND PRE-ISSUANCE OPPOSITION.—3
The Director shall establish appropriate procedures to en-4
sure that no protest or other form of pre-issuance opposi-5
tion to the grant of a patent on an application may be6
initiated after publication of the application without the7
express written consent of the applicant.8
‘‘(d) NATIONAL SECURITY.—No application for pat-9
ent shall be published under subsection (b)(1) if the publi-10
cation or disclosure of such invention would be detrimental11
to the national security. The Director shall establish ap-12
propriate procedures to ensure that such applications are13
promptly identified and the secrecy of such inventions is14
maintained in accordance with chapter 17 of this title.’’.15
(b) STUDY.—16
(1) IN GENERAL.—The Comptroller General17
shall conduct a 3-year study of the applicants who18
file only in the United States on or after the effec-19
tive date of this subtitle and shall provide the results20
of such study to the Judiciary Committees of the21
House of Representatives and the Senate.22
(2) CONTENTS.—The study conducted under23
paragraph (1) shall—24
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•S 1948 IS
(A) consider the number of such applicants1
in relation to the number of applicants who file2
in the United States and outside of the United3
States;4
(B) examine how many domestic-only filers5
request at the time of filing not to be published;6
(C) examine how many such filers rescind7
that request or later choose to file abroad;8
(D) examine the status of the entity seek-9
ing an application and any correlation that may10
exist between such status and the publication of11
patent applications; and12
(E) examine the abandonment/issuance ra-13
tios and length of application pendency before14
patent issuance or abandonment for published15
versus unpublished applications.16
SEC. 4503. TIME FOR CLAIMING BENEFIT OF EARLIER FIL-17
ING DATE.18
(a) IN A FOREIGN COUNTRY.—Section 119(b) of title19
35, United States Code, is amended to read as follows:20
‘‘(b)(1) No application for patent shall be entitled to21
this right of priority unless a claim is filed in the Patent22
and Trademark Office, identifying the foreign application23
by specifying the application number on that foreign appli-24
cation, the intellectual property authority or country in or25
112
•S 1948 IS
for which the application was filed, and the date of filing1
the application, at such time during the pendency of the2
application as required by the Director.3
‘‘(2) The Director may consider the failure of the ap-4
plicant to file a timely claim for priority as a waiver of5
any such claim. The Director may establish procedures,6
including the payment of a surcharge, to accept an unin-7
tentionally delayed claim under this section.8
‘‘(3) The Director may require a certified copy of the9
original foreign application, specification, and drawings10
upon which it is based, a translation if not in the English11
language, and such other information as the Director con-12
siders necessary. Any such certification shall be made by13
the foreign intellectual property authority in which the for-14
eign application was filed and show the date of the appli-15
cation and of the filing of the specification and other pa-16
pers.’’.17
(b) IN THE UNITED STATES.—18
(1) IN GENERAL.—Section 120 of title 35,19
United States Code, is amended by adding at the20
end the following: ‘‘No application shall be entitled21
to the benefit of an earlier filed application under22
this section unless an amendment containing the23
specific reference to the earlier filed application is24
submitted at such time during the pendency of the25
113
•S 1948 IS
application as required by the Director. The Direc-1
tor may consider the failure to submit such an2
amendment within that time period as a waiver of3
any benefit under this section. The Director may es-4
tablish procedures, including the payment of a sur-5
charge, to accept an unintentionally delayed submis-6
sion of an amendment under this section.’’.7
(2) RIGHT OF PRIORITY.—Section 119(e)(1) of8
title 35, United States Code, is amended by adding9
at the end the following: ‘‘No application shall be en-10
titled to the benefit of an earlier filed provisional ap-11
plication under this subsection unless an amendment12
containing the specific reference to the earlier filed13
provisional application is submitted at such time14
during the pendency of the application as required15
by the Director. The Director may consider the fail-16
ure to submit such an amendment within that time17
period as a waiver of any benefit under this sub-18
section. The Director may establish procedures, in-19
cluding the payment of a surcharge, to accept an un-20
intentionally delayed submission of an amendment21
under this subsection during the pendency of the ap-22
plication.’’.23
114
•S 1948 IS
SEC. 4504. PROVISIONAL RIGHTS.1
Section 154 of title 35, United States Code, is2
amended—3
(1) in the section caption by inserting ‘‘; pro-4
visional rights’’ after ‘‘patent’’; and5
(2) by adding at the end the following new sub-6
section:7
‘‘(d) PROVISIONAL RIGHTS.—8
‘‘(1) IN GENERAL.—In addition to other rights9
provided by this section, a patent shall include the10
right to obtain a reasonable royalty from any person11
who, during the period beginning on the date of pub-12
lication of the application for such patent under sec-13
tion 122(b), or in the case of an international appli-14
cation filed under the treaty defined in section15
351(a) designating the United States under Article16
21(2)(a) of such treaty, the date of publication of17
the application, and ending on the date the patent18
is issued—19
‘‘(A)(i) makes, uses, offers for sale, or sells20
in the United States the invention as claimed in21
the published patent application or imports22
such an invention into the United States; or23
‘‘(ii) if the invention as claimed in the pub-24
lished patent application is a process, uses, of-25
fers for sale, or sells in the United States or26
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•S 1948 IS
imports into the United States products made1
by that process as claimed in the published pat-2
ent application; and3
‘‘(B) had actual notice of the published4
patent application and, in a case in which the5
right arising under this paragraph is based6
upon an international application designating7
the United States that is published in a lan-8
guage other than English, had a translation of9
the international application into the English10
language.11
‘‘(2) RIGHT BASED ON SUBSTANTIALLY IDEN-12
TICAL INVENTIONS.—The right under paragraph (1)13
to obtain a reasonable royalty shall not be available14
under this subsection unless the invention as claimed15
in the patent is substantially identical to the inven-16
tion as claimed in the published patent application.17
‘‘(3) TIME LIMITATION ON OBTAINING A REA-18
SONABLE ROYALTY.—The right under paragraph (1)19
to obtain a reasonable royalty shall be available only20
in an action brought not later than 6 years after the21
patent is issued. The right under paragraph (1) to22
obtain a reasonable royalty shall not be affected by23
the duration of the period described in paragraph24
(1).25
116
•S 1948 IS
‘‘(4) REQUIREMENTS FOR INTERNATIONAL AP-1
PLICATIONS.—2
‘‘(A) EFFECTIVE DATE.—The right under3
paragraph (1) to obtain a reasonable royalty4
based upon the publication under the treaty de-5
fined in section 351(a) of an international ap-6
plication designating the United States shall7
commence on the date on which the Patent and8
Trademark Office receives a copy of the publi-9
cation under the treaty of the international ap-10
plication, or, if the publication under the treaty11
of the international application is in a language12
other than English, on the date on which the13
Patent and Trademark Office receives a trans-14
lation of the international application in the15
English language.16
‘‘(B) COPIES.—The Director may require17
the applicant to provide a copy of the inter-18
national application and a translation thereof.’’.19
SEC. 4505. PRIOR ART EFFECT OF PUBLISHED APPLICA-20
TIONS.21
Section 102(e) of title 35, United States Code, is22
amended to read as follows:23
‘‘(e) The invention was described in—24
117
•S 1948 IS
‘‘(1) an application for patent, published under1
section 122(b), by another filed in the United States2
before the invention by the applicant for patent, ex-3
cept that an international application filed under the4
treaty defined in section 351(a) shall have the effect5
under this subsection of a national application pub-6
lished under section 122(b) only if the international7
application designating the United States was pub-8
lished under Article 21(2)(a) of such treaty in the9
English language; or10
‘‘(2) a patent granted on an application for pat-11
ent by another filed in the United States before the12
invention by the applicant for patent, except that a13
patent shall not be deemed filed in the United States14
for the purposes of this subsection based on the fil-15
ing of an international application filed under the16
treaty defined in section 351(a); or’’.17
SEC. 4506. COST RECOVERY FOR PUBLICATION.18
The Under Secretary of Commerce for Intellectual19
Property and Director of the United States Patent and20
Trademark Office shall recover the cost of early publica-21
tion required by the amendment made by section 4502 by22
charging a separate publication fee after notice of allow-23
ance is given under section 151 of title 35, United States24
Code.25
118
•S 1948 IS
SEC. 4507. CONFORMING AMENDMENTS.1
The following provisions of title 35, United States2
Code, are amended:3
(1) Section 11 is amended in paragraph 1 of4
subsection (a) by inserting ‘‘and published applica-5
tions for patents’’ after ‘‘Patents’’.6
(2) Section 12 is amended—7
(A) in the section caption by inserting8
‘‘and applications’’ after ‘‘patents’’; and9
(B) by inserting ‘‘and published applica-10
tions for patents’’ after ‘‘patents’’.11
(3) Section 13 is amended—12
(A) in the section caption by inserting13
‘‘and applications’’ after ‘‘patents’’; and14
(B) by inserting ‘‘and published applica-15
tions for patents’’ after ‘‘patents’’.16
(4) The items relating to sections 12 and 13 in17
the table of sections for chapter 1 are each amended18
by inserting ‘‘and applications’’ after ‘‘patents’’.19
(5) The item relating to section 122 in the table20
of sections for chapter 11 is amended by inserting21
‘‘; publication of patent applications’’ after ‘‘applica-22
tions’’.23
(6) The item relating to section 154 in the table24
of sections for chapter 14 is amended by inserting25
‘‘; provisional rights’’ after ‘‘patent’’.26
119
•S 1948 IS
(7) Section 181 is amended—1
(A) in the first undesignated paragraph—2
(i) by inserting ‘‘by the publication of3
an application or’’ after ‘‘disclosure’’; and4
(ii) by inserting ‘‘the publication of5
the application or’’ after ‘‘withhold’’;6
(B) in the second undesignated paragraph7
by inserting ‘‘by the publication of an applica-8
tion or’’ after ‘‘disclosure of an invention’’;9
(C) in the third undesignated paragraph—10
(i) by inserting ‘‘by the publication of11
the application or’’ after ‘‘disclosure of the12
invention’’; and13
(ii) by inserting ‘‘the publication of14
the application or’’ after ‘‘withhold’’; and15
(D) in the fourth undesignated paragraph16
by inserting ‘‘the publication of an application17
or’’ after ‘‘and’’ in the first sentence.18
(8) Section 252 is amended in the first undesig-19
nated paragraph by inserting ‘‘substantially’’ before20
‘‘identical’’ each place it appears.21
(9) Section 284 is amended by adding at the22
end of the second undesignated paragraph the fol-23
lowing: ‘‘Increased damages under this paragraph24
120
•S 1948 IS
shall not apply to provisional rights under section1
154(d) of this title.’’.2
(10) Section 374 is amended to read as follows:3
‘‘§ 374. Publication of international application4
‘‘The publication under the treaty defined in section5
351(a) of this title, of an international application desig-6
nating the United States shall confer the same rights and7
shall have the same effect under this title as an application8
for patent published under section 122(b), except as pro-9
vided in sections 102(e) and 154(d) of this title.’’.10
(11) Section 135(b) is amended—11
(A) by inserting ‘‘(1)’’ after ‘‘(b)’’; and12
(B) by adding at the end the following:13
‘‘(2) A claim which is the same as, or for the same14
or substantially the same subject matter as, a claim of15
an application published under section 122(b) of this title16
may be made in an application filed after the application17
is published only if the claim is made before 1 year after18
the date on which the application is published.’’.19
SEC. 4508. EFFECTIVE DATE.20
Sections 4502 through 4507, and the amendments21
made by such sections, shall take effect on the date that22
is 1 year after the date of the enactment of this Act and23
shall apply to all applications filed under section 111 of24
title 35, United States Code, on or after that date, and25
121
•S 1948 IS
all applications complying with section 371 of title 35,1
United States Code, that resulted from international ap-2
plications filed on or after that date. The amendments3
made by sections 4504 and 4505 shall apply to any such4
application voluntarily published by the applicant under5
procedures established under this subtitle that is pending6
on the date that is 1 year after the date of the enactment7
of this Act. The amendment made by section 4504 shall8
also apply to international applications designating the9
United States that are filed on or after the date that is10
1 year after the date of the enactment of this Act.11
Subtitle F—Optional Inter Partes12 Reexamination Procedure13
SEC. 4601. SHORT TITLE.14
This subtitle may be cited as the ‘‘Optional Inter15
Partes Reexamination Procedure Act of 1999’’.16
SEC. 4602. EX PARTE REEXAMINATION OF PATENTS.17
The chapter heading for chapter 30 of title 35,18
United States Code, is amended by inserting ‘‘EX19
PARTE’’ before ‘‘REEXAMINATION OF PAT-20
ENTS’’.21
SEC. 4603. DEFINITIONS.22
Section 100 of title 35, United States Code, is23
amended by adding at the end the following new sub-24
section:25
122
•S 1948 IS
‘‘(e) The term ‘third-party requester’ means a person1
requesting ex parte reexamination under section 302 or2
inter partes reexamination under section 311 who is not3
the patent owner.’’.4
SEC. 4604. OPTIONAL INTER PARTES REEXAMINATION PRO-5
CEDURES.6
(a) IN GENERAL.—Part 3 of title 35, United States7
Code, is amended by adding after chapter 30 the following8
new chapter:9
‘‘CHAPTER 31—OPTIONAL INTER PARTES10
REEXAMINATION PROCEDURES11
‘‘Sec. ‘‘311. Request for inter partes reexamination. ‘‘312. Determination of issue by Director. ‘‘313. Inter partes reexamination order by Director. ‘‘314. Conduct of inter partes reexamination proceedings. ‘‘315. Appeal. ‘‘316. Certificate of patentability, unpatentability, and claim cancellation. ‘‘317. Inter partes reexamination prohibited. ‘‘318. Stay of litigation.
‘‘§ 311. Request for inter partes reexamination12
‘‘(a) IN GENERAL.—Any person at any time may file13
a request for inter partes reexamination by the Office of14
a patent on the basis of any prior art cited under the pro-15
visions of section 301.16
‘‘(b) REQUIREMENTS.—The request shall—17
‘‘(1) be in writing, include the identity of the18
real party in interest, and be accompanied by pay-19
123
•S 1948 IS
ment of an inter partes reexamination fee estab-1
lished by the Director under section 41; and2
‘‘(2) set forth the pertinency and manner of ap-3
plying cited prior art to every claim for which reex-4
amination is requested.5
‘‘(c) COPY.—Unless the requesting person is6
the owner of the patent, the Director promptly shall7
send a copy of the request to the owner of record8
of the patent.9
‘‘§ 312. Determination of issue by Director10
‘‘(a) REEXAMINATION.—Not later than 3 months11
after the filing of a request for inter partes reexamination12
under section 311, the Director shall determine whether13
a substantial new question of patentability affecting any14
claim of the patent concerned is raised by the request,15
with or without consideration of other patents or printed16
publications. On the Director’s initiative, and at any time,17
the Director may determine whether a substantial new18
question of patentability is raised by patents and publica-19
tions.20
‘‘(b) RECORD.—A record of the Director’s determina-21
tion under subsection (a) shall be placed in the official22
file of the patent, and a copy shall be promptly given or23
mailed to the owner of record of the patent and to the24
third-party requester, if any.25
124
•S 1948 IS
‘‘(c) FINAL DECISION.—A determination by the Di-1
rector under subsection (a) shall be final and non-appeal-2
able. Upon a determination that no substantial new ques-3
tion of patentability has been raised, the Director may re-4
fund a portion of the inter partes reexamination fee re-5
quired under section 311.6
‘‘§ 313. Inter partes reexamination order by Director7
‘‘If, in a determination made under section 312(a),8
the Director finds that a substantial new question of pat-9
entability affecting a claim of a patent is raised, the deter-10
mination shall include an order for inter partes reexamina-11
tion of the patent for resolution of the question. The order12
may be accompanied by the initial action of the Patent13
and Trademark Office on the merits of the inter partes14
reexamination conducted in accordance with section 314.15
‘‘§ 314. Conduct of inter partes reexamination pro-16
ceedings17
‘‘(a) IN GENERAL.—Except as otherwise provided in18
this section, reexamination shall be conducted according19
to the procedures established for initial examination under20
the provisions of sections 132 and 133. In any inter partes21
reexamination proceeding under this chapter, the patent22
owner shall be permitted to propose any amendment to23
the patent and a new claim or claims, except that no pro-24
125
•S 1948 IS
posed amended or new claim enlarging the scope of the1
claims of the patent shall be permitted.2
‘‘(b) RESPONSE.—(1) This subsection shall apply to3
any inter partes reexamination proceeding in which the4
order for inter partes reexamination is based upon a re-5
quest by a third-party requester.6
‘‘(2) With the exception of the inter partes reexam-7
ination request, any document filed by either the patent8
owner or the third-party requester shall be served on the9
other party. In addition, the third-party requester shall10
receive a copy of any communication sent by the Office11
to the patent owner concerning the patent subject to the12
inter partes reexamination proceeding.13
‘‘(3) Each time that the patent owner files a response14
to an action on the merits from the Patent and Trademark15
Office, the third-party requester shall have one oppor-16
tunity to file written comments addressing issues raised17
by the action of the Office or the patent owner’s response18
thereto, if those written comments are received by the Of-19
fice within 30 days after the date of service of the patent20
owner’s response.21
‘‘(c) SPECIAL DISPATCH.—Unless otherwise provided22
by the Director for good cause, all inter partes reexamina-23
tion proceedings under this section, including any appeal24
126
•S 1948 IS
to the Board of Patent Appeals and Interferences, shall1
be conducted with special dispatch within the Office.2
‘‘§ 315. Appeal3
‘‘(a) PATENT OWNER.—The patent owner involved in4
an inter partes reexamination proceeding under this5
chapter—6
‘‘(1) may appeal under the provisions of section7
134 and may appeal under the provisions of sections8
141 through 144, with respect to any decision ad-9
verse to the patentability of any original or proposed10
amended or new claim of the patent; and11
‘‘(2) may be a party to any appeal taken by a12
third-party requester under subsection (b).13
‘‘(b) THIRD-PARTY REQUESTER.—A third-party re-14
quester may—15
‘‘(1) appeal under the provisions of section 13416
with respect to any final decision favorable to the17
patentability of any original or proposed amended or18
new claim of the patent; or19
‘‘(2) be a party to any appeal taken by the pat-20
ent owner under the provisions of section 134, sub-21
ject to subsection (c).22
‘‘(c) CIVIL ACTION.—A third-party requester whose23
request for an inter partes reexamination results in an24
order under section 313 is estopped from asserting at a25
127
•S 1948 IS
later time, in any civil action arising in whole or in part1
under section 1338 of title 28, United States Code, the2
invalidity of any claim finally determined to be valid and3
patentable on any ground which the third-party requester4
raised or could have raised during the inter partes reexam-5
ination proceedings. This subsection does not prevent the6
assertion of invalidity based on newly discovered prior art7
unavailable to the third-party requester and the Patent8
and Trademark Office at the time of the inter partes reex-9
amination proceedings.10
‘‘§ 316. Certificate of patentability, unpatentability,11
and claim cancellation12
‘‘(a) IN GENERAL.—In an inter partes reexamination13
proceeding under this chapter, when the time for appeal14
has expired or any appeal proceeding has terminated, the15
Director shall issue and publish a certificate canceling any16
claim of the patent finally determined to be unpatentable,17
confirming any claim of the patent determined to be pat-18
entable, and incorporating in the patent any proposed19
amended or new claim determined to be patentable.20
‘‘(b) AMENDED OR NEW CLAIM.—Any proposed21
amended or new claim determined to be patentable and22
incorporated into a patent following an inter partes reex-23
amination proceeding shall have the same effect as that24
specified in section 252 of this title for reissued patents25
128
•S 1948 IS
on the right of any person who made, purchased, or used1
within the United States, or imported into the United2
States, anything patented by such proposed amended or3
new claim, or who made substantial preparation therefor,4
prior to issuance of a certificate under the provisions of5
subsection (a) of this section.6
‘‘§ 317. Inter partes reexamination prohibited7
‘‘(a) ORDER FOR REEXAMINATION.—Notwith-8
standing any provision of this chapter, once an order for9
inter partes reexamination of a patent has been issued10
under section 313, neither the patent owner nor the third-11
party requester, if any, nor privies of either, may file a12
subsequent request for inter partes reexamination of the13
patent until an inter partes reexamination certificate is14
issued and published under section 316, unless authorized15
by the Director.16
‘‘(b) FINAL DECISION.—Once a final decision has17
been entered against a party in a civil action arising in18
whole or in part under section 1338 of title 28, United19
States Code, that the party has not sustained its burden20
of proving the invalidity of any patent claim in suit or21
if a final decision in an inter partes reexamination pro-22
ceeding instituted by a third-party requester is favorable23
to the patentability of any original or proposed amended24
or new claim of the patent, then neither that party nor25
129
•S 1948 IS
its privies may thereafter request an inter partes reexam-1
ination of any such patent claim on the basis of issues2
which that party or its privies raised or could have raised3
in such civil action or inter partes reexamination pro-4
ceeding, and an inter partes reexamination requested by5
that party or its privies on the basis of such issues may6
not thereafter be maintained by the Office, notwith-7
standing any other provision of this chapter. This sub-8
section does not prevent the assertion of invalidity based9
on newly discovered prior art unavailable to the third-10
party requester and the Patent and Trademark Office at11
the time of the inter partes reexamination proceedings.12
‘‘§ 318. Stay of litigation13
‘‘Once an order for inter partes reexamination of a14
patent has been issued under section 313, the patent15
owner may obtain a stay of any pending litigation which16
involves an issue of patentability of any claims of the pat-17
ent which are the subject of the inter partes reexamination18
order, unless the court before which such litigation is19
pending determines that a stay would not serve the inter-20
ests of justice.’’.21
(b) CONFORMING AMENDMENT.—The table of chap-22
ters for part III of title 25, United States Code, is amend-23
ed by striking the item relating to chapter 30 and insert-24
ing the following:25
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•S 1948 IS
‘‘30. Prior Art Citations to Office and Ex Parte Reexam- ination of Patents .................................................. 301
‘‘31. Optional Inter Partes Reexamination of Patents ........ 311’’.
SEC. 4605. CONFORMING AMENDMENTS.1
(a) PATENT FEES; PATENT SEARCH SYSTEMS.—Sec-2
tion 41(a)(7) of title 35, United States Code, is amended3
to read as follows:4
‘‘(7) On filing each petition for the revival of an5
unintentionally abandoned application for a patent,6
for the unintentionally delayed payment of the fee7
for issuing each patent, or for an unintentionally de-8
layed response by the patent owner in any reexam-9
ination proceeding, $1,210, unless the petition is10
filed under section 133 or 151 of this title, in which11
case the fee shall be $110.’’.12
(b) APPEAL TO THE BOARD OF PATENTS APPEALS13
AND INTERFERENCES.—Section 134 of title 35, United14
States Code, is amended to read as follows:15
‘‘§ 134. Appeal to the Board of Patent Appeals and16
Interferences17
‘‘(a) PATENT APPLICANT.—An applicant for a pat-18
ent, any of whose claims has been twice rejected, may ap-19
peal from the decision of the administrative patent judge20
to the Board of Patent Appeals and Interferences, having21
once paid the fee for such appeal.22
‘‘(b) PATENT OWNER.—A patent owner in any reex-23
amination proceeding may appeal from the final rejection24
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•S 1948 IS
of any claim by the administrative patent judge to the1
Board of Patent Appeals and Interferences, having once2
paid the fee for such appeal.3
‘‘(c) THIRD-PARTY.—A third-party requester in an4
inter partes proceeding may appeal to the Board of Patent5
Appeals and Interferences from the final decision of the6
administrative patent judge favorable to the patentability7
of any original or proposed amended or new claim of a8
patent, having once paid the fee for such appeal. The9
third-party requester may not appeal the decision of the10
Board of Patent Appeals and Interferences.’’.11
(c) APPEAL TO COURT OF APPEALS FOR THE FED-12
ERAL CIRCUIT.—Section 141 of title 35, United States13
Code, is amended by adding the following after the second14
sentence: ‘‘A patent owner in any reexamination pro-15
ceeding dissatisfied with the final decision in an appeal16
to the Board of Patent Appeals and Interferences under17
section 134 may appeal the decision only to the United18
States Court of Appeals for the Federal Circuit.’’.19
(d) PROCEEDINGS ON APPEAL.—Section 143 of title20
35, United States Code, is amended by amending the third21
sentence to read as follows: ‘‘In any reexamination case,22
the Director shall submit to the court in writing the23
grounds for the decision of the Patent and Trademark Of-24
fice, addressing all the issues involved in the appeal.’’.25
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•S 1948 IS
(e) CIVIL ACTION TO OBTAIN PATENT.—Section 1451
of title 35, United States Code, is amended in the first2
sentence by inserting ‘‘(a)’’ after ‘‘section 134’’.3
SEC. 4606. REPORT TO CONGRESS.4
Not later than 5 years after the date of the enact-5
ment of this Act, the Under Secretary of Commerce for6
Intellectual Property and Director of the United States7
Patent and Trademark Office shall submit to the Congress8
a report evaluating whether the inter partes reexamination9
proceedings established under the amendments made by10
this subtitle are inequitable to any of the parties in inter-11
est and, if so, the report shall contain recommendations12
for changes to the amendments made by this subtitle to13
remove such inequity.14
SEC. 4607. ESTOPPEL EFFECT OF REEXAMINATION.15
Any party who requests an inter partes reexamina-16
tion under section 311 of title 35, United States Code,17
is estopped from challenging at a later time, in any civil18
action, any fact determined during the process of such re-19
examination, except with respect to a fact determination20
later proved to be erroneous based on information unavail-21
able at the time of the inter partes reexamination decision.22
If this section is held to be unenforceable, the enforce-23
ability of the remainder of this subtitle or of this title shall24
not be denied as a result.25
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•S 1948 IS
SEC. 4608. EFFECTIVE DATE.1
(a) IN GENERAL.—Subject to subsection (b), this2
subtitle and the amendments made by this subtitle shall3
take effect on the date of the enactment of this Act and4
shall apply to any patent that issues from an original ap-5
plication filed in the United States on or after that date.6
(b) SECTION 4605(a).—The amendments made by7
section 4605(a) shall take effect on the date that is 1 year8
after the date of the enactment of this Act.9
Subtitle G—Patent and Trademark10 Office11
SEC. 4701. SHORT TITLE.12
This subtitle may be cited as the ‘‘Patent and Trade-13
mark Office Efficiency Act’’.14
CHAPTER 1—UNITED STATES PATENT15
AND TRADEMARK OFFICE16
SEC. 4711. ESTABLISHMENT OF PATENT AND TRADEMARK17
OFFICE.18
Section 1 of title 35, United States Code, is amended19
to read as follows:20
‘‘§ 1. Establishment21
‘‘(a) ESTABLISHMENT.—The United States Patent22
and Trademark Office is established as an agency of the23
United States, within the Department of Commerce. In24
carrying out its functions, the United States Patent and25
Trademark Office shall be subject to the policy direction26
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•S 1948 IS
of the Secretary of Commerce, but otherwise shall retain1
responsibility for decisions regarding the management and2
administration of its operations and shall exercise inde-3
pendent control of its budget allocations and expenditures,4
personnel decisions and processes, procurements, and5
other administrative and management functions in accord-6
ance with this title and applicable provisions of law. Those7
operations designed to grant and issue patents and those8
operations which are designed to facilitate the registration9
of trademarks shall be treated as separate operating units10
within the Office.11
‘‘(b) OFFICES.—The United States Patent and12
Trademark Office shall maintain its principal office in the13
metropolitan Washington, D.C., area, for the service of14
process and papers and for the purpose of carrying out15
its functions. The United States Patent and Trademark16
Office shall be deemed, for purposes of venue in civil ac-17
tions, to be a resident of the district in which its principal18
office is located, except where jurisdiction is otherwise pro-19
vided by law. The United States Patent and Trademark20
Office may establish satellite offices in such other places21
in the United States as it considers necessary and appro-22
priate in the conduct of its business.23
‘‘(c) REFERENCE.—For purposes of this title, the24
United States Patent and Trademark Office shall also be25
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•S 1948 IS
referred to as the ‘Office’ and the ‘Patent and Trademark1
Office’.’’.2
SEC. 4712. POWERS AND DUTIES.3
Section 2 of title 35, United States Code, is amended4
to read as follows:5
‘‘§ 2. Powers and duties6
‘‘(a) IN GENERAL.—The United States Patent and7
Trademark Office, subject to the policy direction of the8
Secretary of Commerce—9
‘‘(1) shall be responsible for the granting and10
issuing of patents and the registration of trade-11
marks; and12
‘‘(2) shall be responsible for disseminating to13
the public information with respect to patents and14
trademarks.15
‘‘(b) SPECIFIC POWERS.—The Office—16
‘‘(1) shall adopt and use a seal of the Office,17
which shall be judicially noticed and with which let-18
ters patent, certificates of trademark registrations,19
and papers issued by the Office shall be authenti-20
cated;21
‘‘(2) may establish regulations, not inconsistent22
with law, which—23
‘‘(A) shall govern the conduct of pro-24
ceedings in the Office;25
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•S 1948 IS
‘‘(B) shall be made in accordance with sec-1
tion 553 of title 5, United States Code;2
‘‘(C) shall facilitate and expedite the proc-3
essing of patent applications, particularly those4
which can be filed, stored, processed, searched,5
and retrieved electronically, subject to the provi-6
sions of section 122 relating to the confidential7
status of applications;8
‘‘(D) may govern the recognition and con-9
duct of agents, attorneys, or other persons rep-10
resenting applicants or other parties before the11
Office, and may require them, before being rec-12
ognized as representatives of applicants or13
other persons, to show that they are of good14
moral character and reputation and are pos-15
sessed of the necessary qualifications to render16
to applicants or other persons valuable service,17
advice, and assistance in the presentation or18
prosecution of their applications or other busi-19
ness before the Office;20
‘‘(E) shall recognize the public interest in21
continuing to safeguard broad access to the22
United States patent system through the re-23
duced fee structure for small entities under sec-24
tion 41(h)(1) of this title; and25
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•S 1948 IS
‘‘(F) provide for the development of a per-1
formance-based process that includes quan-2
titative and qualitative measures and standards3
for evaluating cost-effectiveness and is con-4
sistent with the principles of impartiality and5
competitiveness;6
‘‘(3) may acquire, construct, purchase, lease,7
hold, manage, operate, improve, alter, and renovate8
any real, personal, or mixed property, or any interest9
therein, as it considers necessary to carry out its10
functions;11
‘‘(4)(A) may make such purchases, contracts12
for the construction, maintenance, or management13
and operation of facilities, and contracts for supplies14
or services, without regard to the provisions of the15
Federal Property and Administrative Services Act of16
1949 (40 U.S.C. 471 et seq.), the Public Buildings17
Act (40 U.S.C. 601 et seq.), and the Stewart B.18
McKinney Homeless Assistance Act (42 U.S.C.19
11301 et seq.); and20
‘‘(B) may enter into and perform such pur-21
chases and contracts for printing services, including22
the process of composition, platemaking, presswork,23
silk screen processes, binding, microform, and the24
products of such processes, as it considers necessary25
138
•S 1948 IS
to carry out the functions of the Office, without re-1
gard to sections 501 through 517 and 1101 through2
1123 of title 44, United States Code;3
‘‘(5) may use, with their consent, services,4
equipment, personnel, and facilities of other depart-5
ments, agencies, and instrumentalities of the Fed-6
eral Government, on a reimbursable basis, and co-7
operate with such other departments, agencies, and8
instrumentalities in the establishment and use of9
services, equipment, and facilities of the Office;10
‘‘(6) may, when the Director determines that it11
is practicable, efficient, and cost-effective to do so,12
use, with the consent of the United States and the13
agency, instrumentality, Patent and Trademark Of-14
fice, or international organization concerned, the15
services, records, facilities, or personnel of any State16
or local government agency or instrumentality or17
foreign patent and trademark office or international18
organization to perform functions on its behalf;19
‘‘(7) may retain and use all of its revenues and20
receipts, including revenues from the sale, lease, or21
disposal of any real, personal, or mixed property, or22
any interest therein, of the Office;23
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•S 1948 IS
‘‘(8) shall advise the President, through the1
Secretary of Commerce, on national and certain2
international intellectual property policy issues;3
‘‘(9) shall advise Federal departments and4
agencies on matters of intellectual property policy in5
the United States and intellectual property protec-6
tion in other countries;7
‘‘(10) shall provide guidance, as appropriate,8
with respect to proposals by agencies to assist for-9
eign governments and international intergovern-10
mental organizations on matters of intellectual prop-11
erty protection;12
‘‘(11) may conduct programs, studies, or ex-13
changes of items or services regarding domestic and14
international intellectual property law and the effec-15
tiveness of intellectual property protection domesti-16
cally and throughout the world;17
‘‘(12)(A) shall advise the Secretary of Com-18
merce on programs and studies relating to intellec-19
tual property policy that are conducted, or author-20
ized to be conducted, cooperatively with foreign in-21
tellectual property offices and international intergov-22
ernmental organizations; and23
‘‘(B) may conduct programs and studies de-24
scribed in subparagraph (A); and25
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•S 1948 IS
‘‘(13)(A) in coordination with the Department1
of State, may conduct programs and studies coop-2
eratively with foreign intellectual property offices3
and international intergovernmental organizations;4
and5
‘‘(B) with the concurrence of the Secretary of6
State, may authorize the transfer of not to exceed7
$100,000 in any year to the Department of State8
for the purpose of making special payments to inter-9
national intergovernmental organizations for studies10
and programs for advancing international coopera-11
tion concerning patents, trademarks, and other mat-12
ters.13
‘‘(c) CLARIFICATION OF SPECIFIC POWERS.—(1) The14
special payments under subsection (b)(13)(B) shall be in15
addition to any other payments or contributions to inter-16
national organizations described in subsection (b)(13)(B)17
and shall not be subject to any limitations imposed by law18
on the amounts of such other payments or contributions19
by the United States Government.20
‘‘(2) Nothing in subsection (b) shall derogate from21
the duties of the Secretary of State or from the duties22
of the United States Trade Representative as set forth in23
section 141 of the Trade Act of 1974 (19 U.S.C. 2171).24
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•S 1948 IS
‘‘(3) Nothing in subsection (b) shall derogate from1
the duties and functions of the Register of Copyrights or2
otherwise alter current authorities relating to copyright3
matters.4
‘‘(4) In exercising the Director’s powers under para-5
graphs (3) and (4)(A) of subsection (b), the Director shall6
consult with the Administrator of General Services.7
‘‘(5) In exercising the Director’s powers and duties8
under this section, the Director shall consult with the Reg-9
ister of Copyrights on all copyright and related matters.10
‘‘(d) CONSTRUCTION.—Nothing in this section shall11
be construed to nullify, void, cancel, or interrupt any pend-12
ing request-for-proposal let or contract issued by the Gen-13
eral Services Administration for the specific purpose of re-14
locating or leasing space to the United States Patent and15
Trademark Office.’’.16
SEC. 4713. ORGANIZATION AND MANAGEMENT.17
Section 3 of title 35, United States Code, is amended18
to read as follows:19
‘‘§ 3. Officers and employees20
‘‘(a) UNDER SECRETARY AND DIRECTOR.—21
‘‘(1) IN GENERAL.—The powers and duties of22
the United States Patent and Trademark Office23
shall be vested in an Under Secretary of Commerce24
for Intellectual Property and Director of the United25
142
•S 1948 IS
States Patent and Trademark Office (in this title re-1
ferred to as the ‘Director’), who shall be a citizen of2
the United States and who shall be appointed by the3
President, by and with the advice and consent of the4
Senate. The Director shall be a person who has a5
professional background and experience in patent or6
trademark law.7
‘‘(2) DUTIES.—8
‘‘(A) IN GENERAL.—The Director shall be9
responsible for providing policy direction and10
management supervision for the Office and for11
the issuance of patents and the registration of12
trademarks. The Director shall perform these13
duties in a fair, impartial, and equitable man-14
ner.15
‘‘(B) CONSULTING WITH THE PUBLIC AD-16
VISORY COMMITTEES.—The Director shall con-17
sult with the Patent Public Advisory Committee18
established in section 5 on a regular basis on19
matters relating to the patent operations of the20
Office, shall consult with the Trademark Public21
Advisory Committee established in section 5 on22
a regular basis on matters relating to the trade-23
mark operations of the Office, and shall consult24
with the respective Public Advisory Committee25
143
•S 1948 IS
before submitting budgetary proposals to the1
Office of Management and Budget or changing2
or proposing to change patent or trademark3
user fees or patent or trademark regulations4
which are subject to the requirement to provide5
notice and opportunity for public comment6
under section 553 of title 5, United States7
Code, as the case may be.8
‘‘(3) OATH.—The Director shall, before taking9
office, take an oath to discharge faithfully the duties10
of the Office.11
‘‘(4) REMOVAL.—The Director may be removed12
from office by the President. The President shall13
provide notification of any such removal to both14
Houses of Congress.15
‘‘(b) OFFICERS AND EMPLOYEES OF THE OFFICE.—16
‘‘(1) DEPUTY UNDER SECRETARY AND DEPUTY17
DIRECTOR.—The Secretary of Commerce, upon nom-18
ination by the Director, shall appoint a Deputy19
Under Secretary of Commerce for Intellectual Prop-20
erty and Deputy Director of the United States Pat-21
ent and Trademark Office who shall be vested with22
the authority to act in the capacity of the Director23
in the event of the absence or incapacity of the Di-24
rector. The Deputy Director shall be a citizen of the25
144
•S 1948 IS
United States who has a professional background1
and experience in patent or trademark law.2
‘‘(2) COMMISSIONERS.—3
‘‘(A) APPOINTMENT AND DUTIES.—The4
Secretary of Commerce shall appoint a Commis-5
sioner for Patents and a Commissioner for6
Trademarks, without regard to chapter 33, 51,7
or 53 of title 5, United States Code. The Com-8
missioner for Patents shall be a citizen of the9
United States with demonstrated management10
ability and professional background and experi-11
ence in patent law and serve for a term of 512
years. The Commissioner for Trademarks shall13
be a citizen of the United States with dem-14
onstrated management ability and professional15
background and experience in trademark law16
and serve for a term of 5 years. The Commis-17
sioner for Patents and the Commissioner for18
Trademarks shall serve as the chief operating19
officers for the operations of the Office relating20
to patents and trademarks, respectively, and21
shall be responsible for the management and di-22
rection of all aspects of the activities of the Of-23
fice that affect the administration of patent and24
trademark operations, respectively. The Sec-25
145
•S 1948 IS
retary may reappoint a Commissioner to subse-1
quent terms of 5 years as long as the perform-2
ance of the Commissioner as set forth in the3
performance agreement in subparagraph (B) is4
satisfactory.5
‘‘(B) SALARY AND PERFORMANCE AGREE-6
MENT.—The Commissioners shall be paid an7
annual rate of basic pay not to exceed the max-8
imum rate of basic pay for the Senior Executive9
Service established under section 5382 of title10
5, United States Code, including any applicable11
locality-based comparability payment that may12
be authorized under section 5304(h)(2)(C) of13
title 5, United States Code. The compensation14
of the Commissioners shall be considered, for15
purposes of section 207(c)(2)(A) of title 18,16
United States Code, to be the equivalent of that17
described under clause (ii) of section18
207(c)(2)(A) of title 18, United States Code. In19
addition, the Commissioners may receive a20
bonus in an amount of up to, but not in excess21
of, 50 percent of the Commissioners’ annual22
rate of basic pay, based upon an evaluation by23
the Secretary of Commerce, acting through the24
Director, of the Commissioners’ performance as25
146
•S 1948 IS
defined in an annual performance agreement1
between the Commissioners and the Secretary.2
The annual performance agreements shall in-3
corporate measurable organization and indi-4
vidual goals in key operational areas as delin-5
eated in an annual performance plan agreed to6
by the Commissioners and the Secretary. Pay-7
ment of a bonus under this subparagraph may8
be made to the Commissioners only to the ex-9
tent that such payment does not cause the10
Commissioners’ total aggregate compensation in11
a calendar year to equal or exceed the amount12
of the salary of the Vice President under sec-13
tion 104 of title 3, United States Code.14
‘‘(C) REMOVAL.—The Commissioners may15
be removed from office by the Secretary for16
misconduct or nonsatisfactory performance17
under the performance agreement described in18
subparagraph (B), without regard to the provi-19
sions of title 5, United States Code. The Sec-20
retary shall provide notification of any such re-21
moval to both Houses of Congress.22
‘‘(3) OTHER OFFICERS AND EMPLOYEES.—The23
Director shall—24
147
•S 1948 IS
‘‘(A) appoint such officers, employees (in-1
cluding attorneys), and agents of the Office as2
the Director considers necessary to carry out3
the functions of the Office; and4
‘‘(B) define the title, authority, and duties5
of such officers and employees and delegate to6
them such of the powers vested in the Office as7
the Director may determine.8
The Office shall not be subject to any administra-9
tively or statutorily imposed limitation on positions10
or personnel, and no positions or personnel of the11
Office shall be taken into account for purposes of12
applying any such limitation.13
‘‘(4) TRAINING OF EXAMINERS.—The Office14
shall submit to the Congress a proposal to provide15
an incentive program to retain as employees patent16
and trademark examiners of the primary examiner17
grade or higher who are eligible for retirement, for18
the sole purpose of training patent and trademark19
examiners.20
‘‘(5) NATIONAL SECURITY POSITIONS.—The Di-21
rector, in consultation with the Director of the Of-22
fice of Personnel Management, shall maintain a pro-23
gram for identifying national security positions and24
providing for appropriate security clearances, in25
148
•S 1948 IS
order to maintain the secrecy of certain inventions,1
as described in section 181, and to prevent disclo-2
sure of sensitive and strategic information in the in-3
terest of national security.4
‘‘(c) CONTINUED APPLICABILITY OF TITLE 5,5
UNITED STATES CODE.—Officers and employees of the6
Office shall be subject to the provisions of title 5, United7
States Code, relating to Federal employees.8
‘‘(d) ADOPTION OF EXISTING LABOR AGREE-9
MENTS.—The Office shall adopt all labor agreements10
which are in effect, as of the day before the effective date11
of the Patent and Trademark Office Efficiency Act, with12
respect to such Office (as then in effect).13
‘‘(e) CARRYOVER OF PERSONNEL.—14
‘‘(1) FROM PTO.—Effective as of the effective15
date of the Patent and Trademark Office Efficiency16
Act, all officers and employees of the Patent and17
Trademark Office on the day before such effective18
date shall become officers and employees of the Of-19
fice, without a break in service.20
‘‘(2) OTHER PERSONNEL.—Any individual who,21
on the day before the effective date of the Patent22
and Trademark Office Efficiency Act, is an officer23
or employee of the Department of Commerce (other24
than an officer or employee under paragraph (1))25
149
•S 1948 IS
shall be transferred to the Office, as necessary to1
carry out the purposes of this Act, if—2
‘‘(A) such individual serves in a position3
for which a major function is the performance4
of work reimbursed by the Patent and Trade-5
mark Office, as determined by the Secretary of6
Commerce;7
‘‘(B) such individual serves in a position8
that performed work in support of the Patent9
and Trademark Office during at least half of10
the incumbent’s work time, as determined by11
the Secretary of Commerce; or12
‘‘(C) such transfer would be in the interest13
of the Office, as determined by the Secretary of14
Commerce in consultation with the Director.15
Any transfer under this paragraph shall be effective16
as of the same effective date as referred to in para-17
graph (1), and shall be made without a break in18
service.19
‘‘(f ) TRANSITION PROVISIONS.—20
‘‘(1) INTERIM APPOINTMENT OF DIRECTOR.—21
On or after the effective date of the Patent and22
Trademark Office Efficiency Act, the President shall23
appoint an individual to serve as the Director until24
the date on which a Director qualifies under sub-25
150
•S 1948 IS
section (a). The President shall not make more than1
one such appointment under this subsection.2
‘‘(2) CONTINUATION IN OFFICE OF CERTAIN3
OFFICERS.—(A) The individual serving as the As-4
sistant Commissioner for Patents on the day before5
the effective date of the Patent and Trademark Of-6
fice Efficiency Act may serve as the Commissioner7
for Patents until the date on which a Commissioner8
for Patents is appointed under subsection (b).9
‘‘(B) The individual serving as the Assistant10
Commissioner for Trademarks on the day before the11
effective date of the Patent and Trademark Office12
Efficiency Act may serve as the Commissioner for13
Trademarks until the date on which a Commissioner14
for Trademarks is appointed under subsection (b).’’.15
SEC. 4714. PUBLIC ADVISORY COMMITTEES.16
Chapter 1 of part I of title 35, United States Code,17
is amended by inserting after section 4 the following:18
‘‘§ 5. Patent and Trademark Office Public Advisory19
Committees20
‘‘(a) ESTABLISHMENT OF PUBLIC ADVISORY COM-21
MITTEES.—22
‘‘(1) APPOINTMENT.—The United States Pat-23
ent and Trademark Office shall have a Patent Pub-24
lic Advisory Committee and a Trademark Public Ad-25
151
•S 1948 IS
visory Committee, each of which shall have nine vot-1
ing members who shall be appointed by the Sec-2
retary of Commerce and serve at the pleasure of the3
Secretary of Commerce. Members of each Public Ad-4
visory Committee shall be appointed for a term of 35
years, except that of the members first appointed,6
three shall be appointed for a term of 1 year, and7
three shall be appointed for a term of 2 years. In8
making appointments to each Committee, the Sec-9
retary of Commerce shall consider the risk of loss of10
competitive advantage in international commerce or11
other harm to United States companies as a result12
of such appointments.13
‘‘(2) CHAIR.—The Secretary shall designate a14
chair of each Advisory Committee, whose term as15
chair shall be for 3 years.16
‘‘(3) TIMING OF APPOINTMENTS.—Initial ap-17
pointments to each Advisory Committee shall be18
made within 3 months after the effective date of the19
Patent and Trademark Office Efficiency Act. Vacan-20
cies shall be filled within 3 months after they occur.21
‘‘(b) BASIS FOR APPOINTMENTS.—Members of each22
Advisory Committee—23
‘‘(1) shall be citizens of the United States who24
shall be chosen so as to represent the interests of di-25
152
•S 1948 IS
verse users of the United States Patent and Trade-1
mark Office with respect to patents, in the case of2
the Patent Public Advisory Committee, and with re-3
spect to trademarks, in the case of the Trademark4
Public Advisory Committee;5
‘‘(2) shall include members who represent small6
and large entity applicants located in the United7
States in proportion to the number of applications8
filed by such applicants, but in no case shall mem-9
bers who represent small entity patent applicants,10
including small business concerns, independent in-11
ventors, and nonprofit organizations, constitute less12
than 25 percent of the members of the Patent Pub-13
lic Advisory Committee, and such members shall in-14
clude at least one independent inventor; and15
‘‘(3) shall include individuals with substantial16
background and achievement in finance, manage-17
ment, labor relations, science, technology, and office18
automation.19
In addition to the voting members, each Advisory Com-20
mittee shall include a representative of each labor organi-21
zation recognized by the United States Patent and Trade-22
mark Office. Such representatives shall be nonvoting23
members of the Advisory Committee to which they are ap-24
pointed.25
153
•S 1948 IS
‘‘(c) MEETINGS.—Each Advisory Committee shall1
meet at the call of the chair to consider an agenda set2
by the chair.3
‘‘(d) DUTIES.—Each Advisory Committee shall—4
‘‘(1) review the policies, goals, performance,5
budget, and user fees of the United States Patent6
and Trademark Office with respect to patents, in the7
case of the Patent Public Advisory Committee, and8
with respect to Trademarks, in the case of the9
Trademark Public Advisory Committee, and advise10
the Director on these matters;11
‘‘(2) within 60 days after the end of each fiscal12
year—13
‘‘(A) prepare an annual report on the mat-14
ters referred to in paragraph (1);15
‘‘(B) transmit the report to the Secretary16
of Commerce, the President, and the Commit-17
tees on the Judiciary of the Senate and the18
House of Representatives; and19
‘‘(C) publish the report in the Official Ga-20
zette of the United States Patent and Trade-21
mark Office.22
‘‘(e) COMPENSATION.—Each member of each Advi-23
sory Committee shall be compensated for each day (includ-24
ing travel time) during which such member is attending25
154
•S 1948 IS
meetings or conferences of that Advisory Committee or1
otherwise engaged in the business of that Advisory Com-2
mittee, at the rate which is the daily equivalent of the an-3
nual rate of basic pay in effect for level III of the Execu-4
tive Schedule under section 5314 of title 5, United States5
Code. While away from such member’s home or regular6
place of business such member shall be allowed travel ex-7
penses, including per diem in lieu of subsistence, as au-8
thorized by section 5703 of title 5, United States Code.9
‘‘(f ) ACCESS TO INFORMATION.—Members of each10
Advisory Committee shall be provided access to records11
and information in the United States Patent and Trade-12
mark Office, except for personnel or other privileged infor-13
mation and information concerning patent applications re-14
quired to be kept in confidence by section 122.15
‘‘(g) APPLICABILITY OF CERTAIN ETHICS LAWS.—16
Members of each Advisory Committee shall be special Gov-17
ernment employees within the meaning of section 202 of18
title 18, United States Code.19
‘‘(h) INAPPLICABILITY OF FEDERAL ADVISORY COM-20
MITTEE ACT.—The Federal Advisory Committee Act (521
U.S.C. App.) shall not apply to each Advisory Committee.22
‘‘(i) OPEN MEETINGS.—The meetings of each Advi-23
sory Committee shall be open to the public, except that24
each Advisory Committee may by majority vote meet in25
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•S 1948 IS
executive session when considering personnel or other con-1
fidential information.’’.2
SEC. 4715. CONFORMING AMENDMENTS.3
(a) DUTIES.—Chapter 1 of title 35, United States4
Code, is amended by striking section 6.5
(b) REGULATIONS FOR AGENTS AND ATTORNEYS.—6
Section 31 of title 35, United States Code, and the item7
relating to such section in the table of sections for chapter8
3 of title 35, United States Code, are repealed.9
(c) SUSPENSION OR EXCLUSION FROM PRACTICE.—10
Section 32 of title 35, United States Code, is amended11
by striking ‘‘31’’ and inserting ‘‘2(b)(2)(D)’’.12
SEC. 4716. TRADEMARK TRIAL AND APPEAL BOARD.13
Section 17 of the Act of July 5, 1946 (commonly re-14
ferred to as the ‘‘Trademark Act of 1946’’) (15 U.S.C.15
1067) is amended to read as follows:16
‘‘SEC. 17. (a) In every case of interference, opposition17
to registration, application to register as a lawful concur-18
rent user, or application to cancel the registration of a19
mark, the Director shall give notice to all parties and shall20
direct a Trademark Trial and Appeal Board to determine21
and decide the respective rights of registration.22
‘‘(b) The Trademark Trial and Appeal Board shall23
include the Director, the Commissioner for Patents, the24
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•S 1948 IS
Commissioner for Trademarks, and administrative trade-1
mark judges who are appointed by the Director.’’.2
SEC. 4717. BOARD OF PATENT APPEALS AND INTER-3
FERENCES.4
Chapter 1 of title 35, United States Code, is5
amended—6
(1) by striking section 7 and redesignating sec-7
tions 8 through 14 as sections 7 through 13, respec-8
tively; and9
(2) by inserting after section 5 the following:10
‘‘§ 6. Board of Patent Appeals and Interferences11
‘‘(a) ESTABLISHMENT AND COMPOSITION.—There12
shall be in the United States Patent and Trademark Of-13
fice a Board of Patent Appeals and Interferences. The Di-14
rector, the Commissioner for Patents, the Commissioner15
for Trademarks, and the administrative patent judges16
shall constitute the Board. The administrative patent17
judges shall be persons of competent legal knowledge and18
scientific ability who are appointed by the Director.19
‘‘(b) DUTIES.—The Board of Patent Appeals and20
Interferences shall, on written appeal of an applicant, re-21
view adverse decisions of examiners upon applications for22
patents and shall determine priority and patentability of23
invention in interferences declared under section 135(a).24
Each appeal and interference shall be heard by at least25
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•S 1948 IS
three members of the Board, who shall be designated by1
the Director. Only the Board of Patent Appeals and Inter-2
ferences may grant rehearings.’’.3
SEC. 4718. ANNUAL REPORT OF DIRECTOR.4
Section 13 of title 35, United States Code, as redesig-5
nated by section 4717 of this subtitle, is amended to read6
as follows:7
‘‘§ 13. Annual report to Congress8
‘‘The Director shall report to the Congress, not later9
than 180 days after the end of each fiscal year, the mon-10
eys received and expended by the Office, the purposes for11
which the moneys were spent, the quality and quantity of12
the work of the Office, the nature of training provided to13
examiners, the evaluation of the Commissioner of Patents14
and the Commissioner of Trademarks by the Secretary of15
Commerce, the compensation of the Commissioners, and16
other information relating to the Office.’’.17
SEC. 4719. SUSPENSION OR EXCLUSION FROM PRACTICE.18
Section 32 of title 35, United States Code, is amend-19
ed by inserting before the last sentence the following: ‘‘The20
Director shall have the discretion to designate any attor-21
ney who is an officer or employee of the United States22
Patent and Trademark Office to conduct the hearing re-23
quired by this section.’’.24
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•S 1948 IS
SEC. 4720. PAY OF DIRECTOR AND DEPUTY DIRECTOR.1
(a) PAY OF DIRECTOR.—Section 5314 of title 5,2
United States Code, is amended by striking:3
‘‘Assistant Secretary of Commerce and Com-4
missioner of Patents and Trademarks.’’.5
and inserting:6
‘‘Under Secretary of Commerce for Intellectual7
Property and Director of the United States Patent8
and Trademark Office.’’.9
(b) PAY OF DEPUTY DIRECTOR.—Section 5315 of10
title 5, United States Code, is amended by adding at the11
end the following:12
‘‘Deputy Under Secretary of Commerce for In-13
tellectual Property and Deputy Director of the14
United States Patent and Trademark Office.’’.15
CHAPTER 2—EFFECTIVE DATE;16
TECHNICAL AMENDMENTS17
SEC. 4731. EFFECTIVE DATE.18
This subtitle and the amendments made by this sub-19
title shall take effect 4 months after the date of the enact-20
ment of this Act.21
SEC. 4732. TECHNICAL AND CONFORMING AMENDMENTS.22
(a) AMENDMENTS TO TITLE 35, UNITED STATES23
CODE.—24
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•S 1948 IS
(1) The item relating to part I in the table of1
parts for chapter 35, United States Code, is amend-2
ed to read as follows:3
‘‘I. United States Patent and Trademark Office .................... 1’’.
(2) The heading for part I of title 35, United4
States Code, is amended to read as follows:5
‘‘PART I—UNITED STATES PATENT AND6
TRADEMARK OFFICE’’.7
(3) The table of chapters for part I of title 35,8
United States Code, is amended by amending the9
item relating to chapter 1 to read as follows:10
‘‘1. Establishment, Officers and Employees, Functions ...... 1’’.
(4) The table of sections for chapter 1 of title11
35, United States Code, is amended to read as fol-12
lows:13
‘‘CHAPTER 1—ESTABLISHMENT, OFFICERS14
AND EMPLOYEES, FUNCTIONS15
‘‘Sec. ‘‘ 1. Establishment. ‘‘ 2. Powers and duties. ‘‘ 3. Officers and employees. ‘‘ 4. Restrictions on officers and employees as to interest in patents. ‘‘ 5. Patent and Trademark Office Public Advisory Committees. ‘‘ 6. Board of Patent Appeals and Interferences. ‘‘ 7. Library. ‘‘ 8. Classification of patents. ‘‘ 9. Certified copies of records. ‘‘10. Publications. ‘‘11. Exchange of copies of patents and applications with foreign countries. ‘‘12. Copies of patents and applications for public libraries. ‘‘13. Annual report to Congress.’’.
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•S 1948 IS
(5) Section 41(h) of title 35, United States1
Code, is amended by striking ‘‘Commissioner of Pat-2
ents and Trademarks’’ and inserting ‘‘Director’’.3
(6) Section 155 of title 35, United States Code,4
is amended by striking ‘‘Commissioner of Patents5
and Trademarks’’ and inserting ‘‘Director’’.6
(7) Section 155A(c) of title 35, United States7
Code, is amended by striking ‘‘Commissioner of Pat-8
ents and Trademarks’’ and inserting ‘‘Director’’.9
(8) Section 302 of title 35, United States Code,10
is amended by striking ‘‘Commissioner of Patents’’11
and inserting ‘‘Director’’.12
(9)(A) Section 303 of title 35, United States13
Code, is amended—14
(i) in the section heading by striking15
‘‘Commissioner’’ and inserting ‘‘Direc-16
tor’’; and17
(ii) by striking ‘‘Commissioner’s’’ and in-18
serting ‘‘Director’s’’.19
(B) The item relating to section 303 in the20
table of sections for chapter 30 of title 35, United21
States Code, is amended by striking ‘‘Commis-22
sioner’’ and inserting ‘‘Director’’.23
(10)(A) Except as provided in subparagraph24
(B), title 35, United States Code, is amended by25
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•S 1948 IS
striking ‘‘Commissioner’’ each place it appears and1
inserting ‘‘Director’’.2
(B) Chapter 17 of title 35, United States Code,3
is amended by striking ‘‘Commissioner’’ each place4
it appears and inserting ‘‘Commissioner of Patents’’.5
(11) Section 157(d) of title 35, United States6
Code, is amended by striking ‘‘Secretary of Com-7
merce’’ and inserting ‘‘Director’’.8
(12) Section 202(a) of title 35, United States9
Code, is amended—10
(A) by striking ‘‘iv)’’ and inserting ‘‘(iv)’’;11
and12
(B) by striking the second period after13
‘‘Department of Energy’’ at the end of the first14
sentence.15
(b) OTHER PROVISIONS OF LAW.—16
(1)(A) Section 45 of the Act of July 5, 194617
(commonly referred to as the ‘‘Trademark Act of18
1946’’; 15 U.S.C. 1127), is amended by striking19
‘‘The term ‘Commissioner’ means the Commissioner20
of Patents and Trademarks.’’ and inserting ‘‘The21
term ‘Director’ means the Under Secretary of Com-22
merce for Intellectual Property and Director of the23
United States Patent and Trademark Office.’’.24
162
•S 1948 IS
(B) The Act of July 5, 1946 (commonly re-1
ferred to as the ‘‘Trademark Act of 1946’’; 152
U.S.C. 1051 et seq.), except for section 17, as3
amended by 4716 of this subtitle, is amended by4
striking ‘‘Commissioner’’ each place it appears and5
inserting ‘‘Director’’.6
(C) Sections 8(e) and 9(b) of the Trademark7
Act of 1946 are each amended by striking ‘‘Commis-8
sioner’’ and inserting ‘‘Director’’.9
(2) Section 500(e) of title 5, United States10
Code, is amended by striking ‘‘Patent Office’’ and11
inserting ‘‘United States Patent and Trademark Of-12
fice’’.13
(3) Section 5102(c)(23) of title 5, United14
States Code, is amended to read as follows:15
‘‘(23) administrative patent judges and des-16
ignated administrative patent judges in the United17
States Patent and Trademark Office;’’.18
(4) Section 5316 of title 5, United States Code19
(5 U.S.C. 5316) is amended by striking ‘‘Commis-20
sioner of Patents, Department of Commerce.’’,21
‘‘Deputy Commissioner of Patents and Trade-22
marks.’’, ‘‘Assistant Commissioner for Patents.’’,23
and ‘‘Assistant Commissioner for Trademarks.’’.24
163
•S 1948 IS
(5) Section 9(p)(1)(B) of the Small Business1
Act (15 U.S.C. 638(p)(1)(B)) is amended to read as2
follows:3
‘‘(B) the Under Secretary of Commerce for4
Intellectual Property and Director of the United5
States Patent and Trademark Office; and’’.6
(6) Section 12 of the Act of February 14, 19037
(15 U.S.C. 1511) is amended—8
(A) by striking ‘‘(d) Patent and Trade-9
mark Office;’’ and inserting:10
‘‘(4) United States Patent and Trademark Of-11
fice’’; and12
(B) by redesignating subsections (a), (b),13
(c), (e), (f ), and (g) as paragraphs (1), (2), (3),14
(5), (6), and (7), respectively and indenting the15
paragraphs as so redesignated 2 ems to the16
right.17
(7) Section 19 of the Tennessee Valley Author-18
ity Act of 1933 (16 U.S.C. 831r) is amended—19
(A) by striking ‘‘Patent Office of the20
United States’’ and inserting ‘‘United States21
Patent and Trademark Office’’; and22
(B) by striking ‘‘Commissioner of Patents’’23
and inserting ‘‘Under Secretary of Commerce24
164
•S 1948 IS
for Intellectual Property and Director of the1
United States Patent and Trademark Office’’.2
(8) Section 182(b)(2)(A) of the Trade Act of3
1974 (19 U.S.C. 2242(b)(2)(A)) is amended by4
striking ‘‘Commissioner of Patents and Trade-5
marks’’ and inserting ‘‘Under Secretary of Com-6
merce for Intellectual Property and Director of the7
United States Patent and Trademark Office’’.8
(9) Section 302(b)(2)(D) of the Trade Act of9
1974 (19 U.S.C. 2412(b)(2)(D)) is amended by10
striking ‘‘Commissioner of Patents and Trade-11
marks’’ and inserting ‘‘Under Secretary of Com-12
merce for Intellectual Property and Director of the13
United States Patent and Trademark Office’’.14
(10) The Act of April 12, 1892 (27 Stat. 395;15
20 U.S.C. 91) is amended by striking ‘‘Patent Of-16
fice’’ and inserting ‘‘United States Patent and17
Trademark Office’’.18
(11) Sections 505(m) and 512(o) of the Federal19
Food, Drug, and Cosmetic Act (21 U.S.C. 355(m)20
and 360b(o)) are each amended by striking ‘‘Patent21
and Trademark Office of the Department of Com-22
merce’’ and inserting ‘‘United States Patent and23
Trademark Office’’.24
165
•S 1948 IS
(12) Section 702(d) of the Federal Food, Drug,1
and Cosmetic Act (21 U.S.C. 372(d)) is amended by2
striking ‘‘Commissioner of Patents’’ and inserting3
‘‘Under Secretary of Commerce for Intellectual4
Property and Director of the United States Patent5
and Trademark Office’’ and by striking ‘‘Commis-6
sioner’’ and inserting ‘‘Director’’.7
(13) Section 105(e) of the Federal Alcohol Ad-8
ministration Act (27 U.S.C. 205(e)) is amended by9
striking ‘‘United States Patent Office’’ and inserting10
‘‘United States Patent and Trademark Office’’.11
(14) Section 1295(a)(4) of title 28, United12
States Code, is amended—13
(A) in subparagraph (A) by inserting14
‘‘United States’’ before ‘‘Patent and Trade-15
mark’’; and16
(B) in subparagraph (B) by striking17
‘‘Commissioner of Patents and Trademarks’’18
and inserting ‘‘Under Secretary of Commerce19
for Intellectual Property and Director of the20
United States Patent and Trademark Office’’.21
(15) Chapter 115 of title 28, United States22
Code, is amended—23
(A) in the item relating to section 1744 in24
the table of sections by striking ‘‘Patent Office’’25
166
•S 1948 IS
and inserting ‘‘United States Patent and1
Trademark Office’’;2
(B) in section 1744—3
(i) by striking ‘‘Patent Office’’ each4
place it appears in the text and section5
heading and inserting ‘‘United States Pat-6
ent and Trademark Office’’; and7
(ii) by striking ‘‘Commissioner of Pat-8
ents’’ and inserting ‘‘Under Secretary of9
Commerce for Intellectual Property and10
Director of the United States Patent and11
Trademark Office’’; and12
(C) by striking ‘‘Commissioner’’ and in-13
serting ‘‘Director’’.14
(16) Section 1745 of title 28, United States15
Code, is amended by striking ‘‘United States Patent16
Office’’ and inserting ‘‘United States Patent and17
Trademark Office’’.18
(17) Section 1928 of title 28, United States19
Code, is amended by striking ‘‘Patent Office’’ and20
inserting ‘‘United States Patent and Trademark Of-21
fice’’.22
(18) Section 151 of the Atomic Energy Act of23
1954 (42 U.S.C. 2181) is amended in subsections c.24
and d. by striking ‘‘Commissioner of Patents’’ and25
167
•S 1948 IS
inserting ‘‘Under Secretary of Commerce for Intel-1
lectual Property and Director of the United States2
Patent and Trademark Office’’.3
(19) Section 152 of the Atomic Energy Act of4
1954 (42 U.S.C. 2182) is amended by striking5
‘‘Commissioner of Patents’’ each place it appears6
and inserting ‘‘Under Secretary of Commerce for In-7
tellectual Property and Director of the United States8
Patent and Trademark Office’’.9
(20) Section 305 of the National Aeronautics10
and Space Act of 1958 (42 U.S.C. 2457) is11
amended—12
(A) in subsection (c) by striking ‘‘Commis-13
sioner of Patents’’ and inserting ‘‘Under Sec-14
retary of Commerce for Intellectual Property15
and Director of the United States Patent and16
Trademark Office (hereafter in this section re-17
ferred to as the ‘Director’)’’; and18
(B) by striking ‘‘Commissioner’’ each sub-19
sequent place it appears and inserting ‘‘Direc-20
tor’’.21
(21) Section 12(a) of the Solar Heating and22
Cooling Demonstration Act of 1974 (42 U.S.C.23
5510(a)) is amended by striking ‘‘Commissioner of24
the Patent Office’’ and inserting ‘‘Under Secretary25
168
•S 1948 IS
of Commerce for Intellectual Property and Director1
of the United States Patent and Trademark Office’’.2
(22) Section 1111 of title 44, United States3
Code, is amended by striking ‘‘the Commissioner of4
Patents,’’.5
(23) Section 1114 of title 44, United States6
Code, is amended by striking ‘‘the Commissioner of7
Patents,’’.8
(24) Section 1123 of title 44, United States9
Code, is amended by striking ‘‘the Patent Office,’’.10
(25) Sections 1337 and 1338 of title 44, United11
States Code, and the items relating to those sections12
in the table of contents for chapter 13 of such title,13
are repealed.14
(26) Section 10(i) of the Trading with the15
enemy Act (50 U.S.C. App. 10(i)) is amended by16
striking ‘‘Commissioner of Patents’’ and inserting17
‘‘Under Secretary of Commerce for Intellectual18
Property and Director of the United States Patent19
and Trademark Office’’.20
CHAPTER 3—MISCELLANEOUS21
PROVISIONS22
SEC. 4741. REFERENCES.23
(a) IN GENERAL.—Any reference in any other Fed-24
eral law, Executive order, rule, regulation, or delegation25
169
•S 1948 IS
of authority, or any document of or pertaining to a depart-1
ment or office from which a function is transferred by this2
subtitle—3
(1) to the head of such department or office is4
deemed to refer to the head of the department or of-5
fice to which such function is transferred; or6
(2) to such department or office is deemed to7
refer to the department or office to which such func-8
tion is transferred.9
(b) SPECIFIC REFERENCES.—Any reference in any10
other Federal law, Executive order, rule, regulation, or11
delegation of authority, or any document of or pertaining12
to the Patent and Trademark Office—13
(1) to the Commissioner of Patents and Trade-14
marks is deemed to refer to the Under Secretary of15
Commerce for Intellectual Property and Director of16
the United States Patent and Trademark Office;17
(2) to the Assistant Commissioner for Patents18
is deemed to refer to the Commissioner for Patents;19
or20
(3) to the Assistant Commissioner for Trade-21
marks is deemed to refer to the Commissioner for22
Trademarks.23
170
•S 1948 IS
SEC. 4742. EXERCISE OF AUTHORITIES.1
Except as otherwise provided by law, a Federal offi-2
cial to whom a function is transferred by this subtitle may,3
for purposes of performing the function, exercise all au-4
thorities under any other provision of law that were avail-5
able with respect to the performance of that function to6
the official responsible for the performance of the function7
immediately before the effective date of the transfer of the8
function under this subtitle.9
SEC. 4743. SAVINGS PROVISIONS.10
(a) LEGAL DOCUMENTS.—All orders, determinations,11
rules, regulations, permits, grants, loans, contracts, agree-12
ments, certificates, licenses, and privileges—13
(1) that have been issued, made, granted, or al-14
lowed to become effective by the President, the Sec-15
retary of Commerce, any officer or employee of any16
office transferred by this subtitle, or any other Gov-17
ernment official, or by a court of competent jurisdic-18
tion, in the performance of any function that is19
transferred by this subtitle; and20
(2) that are in effect on the effective date of21
such transfer (or become effective after such date22
pursuant to their terms as in effect on such effective23
date), shall continue in effect according to their24
terms until modified, terminated, superseded, set25
aside, or revoked in accordance with law by the26
171
•S 1948 IS
President, any other authorized official, a court of1
competent jurisdiction, or operation of law.2
(b) PROCEEDINGS.—This subtitle shall not affect any3
proceedings or any application for any benefits, service,4
license, permit, certificate, or financial assistance pending5
on the effective date of this subtitle before an office trans-6
ferred by this subtitle, but such proceedings and applica-7
tions shall be continued. Orders shall be issued in such8
proceedings, appeals shall be taken therefrom, and pay-9
ments shall be made pursuant to such orders, as if this10
subtitle had not been enacted, and orders issued in any11
such proceeding shall continue in effect until modified, ter-12
minated, superseded, or revoked by a duly authorized offi-13
cial, by a court of competent jurisdiction, or by operation14
of law. Nothing in this subsection shall be considered to15
prohibit the discontinuance or modification of any such16
proceeding under the same terms and conditions and to17
the same extent that such proceeding could have been dis-18
continued or modified if this subtitle had not been enacted.19
(c) SUITS.—This subtitle shall not affect suits com-20
menced before the effective date of this subtitle, and in21
all such suits, proceedings shall be had, appeals taken, and22
judgments rendered in the same manner and with the23
same effect as if this subtitle had not been enacted.24
172
•S 1948 IS
(d) NONABATEMENT OF ACTIONS.—No suit, action,1
or other proceeding commenced by or against the Depart-2
ment of Commerce or the Secretary of Commerce, or by3
or against any individual in the official capacity of such4
individual as an officer or employee of an office trans-5
ferred by this subtitle, shall abate by reason of the enact-6
ment of this subtitle.7
(e) CONTINUANCE OF SUITS.—If any Government of-8
ficer in the official capacity of such officer is party to a9
suit with respect to a function of the officer, and under10
this subtitle such function is transferred to any other offi-11
cer or office, then such suit shall be continued with the12
other officer or the head of such other office, as applicable,13
substituted or added as a party.14
(f ) ADMINISTRATIVE PROCEDURE AND JUDICIAL15
REVIEW.—Except as otherwise provided by this subtitle,16
any statutory requirements relating to notice, hearings,17
action upon the record, or administrative or judicial review18
that apply to any function transferred by this subtitle shall19
apply to the exercise of such function by the head of the20
Federal agency, and other officers of the agency, to which21
such function is transferred by this subtitle.22
SEC. 4744. TRANSFER OF ASSETS.23
Except as otherwise provided in this subtitle, so much24
of the personnel, property, records, and unexpended bal-25
173
•S 1948 IS
ances of appropriations, allocations, and other funds em-1
ployed, used, held, available, or to be made available in2
connection with a function transferred to an official or3
agency by this subtitle shall be available to the official or4
the head of that agency, respectively, at such time or times5
as the Director of the Office of Management and Budget6
directs for use in connection with the functions trans-7
ferred.8
SEC. 4745. DELEGATION AND ASSIGNMENT.9
Except as otherwise expressly prohibited by law or10
otherwise provided in this subtitle, an official to whom11
functions are transferred under this subtitle (including the12
head of any office to which functions are transferred under13
this subtitle) may delegate any of the functions so trans-14
ferred to such officers and employees of the office of the15
official as the official may designate, and may authorize16
successive redelegations of such functions as may be nec-17
essary or appropriate. No delegation of functions under18
this section or under any other provision of this subtitle19
shall relieve the official to whom a function is transferred20
under this subtitle of responsibility for the administration21
of the function.22
174
•S 1948 IS
SEC. 4746. AUTHORITY OF DIRECTOR OF THE OFFICE OF1
MANAGEMENT AND BUDGET WITH RESPECT2
TO FUNCTIONS TRANSFERRED.3
(a) DETERMINATIONS.—If necessary, the Director of4
the Office of Management and Budget shall make any de-5
termination of the functions that are transferred under6
this subtitle.7
(b) INCIDENTAL TRANSFERS.—The Director of the8
Office of Management and Budget, at such time or times9
as the Director shall provide, may make such determina-10
tions as may be necessary with regard to the functions11
transferred by this subtitle, and to make such additional12
incidental dispositions of personnel, assets, liabilities,13
grants, contracts, property, records, and unexpended bal-14
ances of appropriations, authorizations, allocations, and15
other funds held, used, arising from, available to, or to16
be made available in connection with such functions, as17
may be necessary to carry out the provisions of this sub-18
title. The Director shall provide for the termination of the19
affairs of all entities terminated by this subtitle and for20
such further measures and dispositions as may be nec-21
essary to effectuate the purposes of this subtitle.22
SEC. 4747. CERTAIN VESTING OF FUNCTIONS CONSIDERED23
TRANSFERS.24
For purposes of this subtitle, the vesting of a function25
in a department or office pursuant to reestablishment of26
175
•S 1948 IS
an office shall be considered to be the transfer of the func-1
tion.2
SEC. 4748. AVAILABILITY OF EXISTING FUNDS.3
Existing appropriations and funds available for the4
performance of functions, programs, and activities termi-5
nated pursuant to this subtitle shall remain available, for6
the duration of their period of availability, for necessary7
expenses in connection with the termination and resolution8
of such functions, programs, and activities, subject to the9
submission of a plan to the Committees on Appropriations10
of the House and Senate in accordance with the proce-11
dures set forth in section 605 of the Departments of Com-12
merce, Justice, and State, the Judiciary, and Related13
Agencies Appropriations Act, 1999, as contained in Public14
Law 105–277.15
SEC. 4749. DEFINITIONS.16
For purposes of this subtitle—17
(1) the term ‘‘function’’ includes any duty, obli-18
gation, power, authority, responsibility, right, privi-19
lege, activity, or program; and20
(2) the term ‘‘office’’ includes any office, ad-21
ministration, agency, bureau, institute, council, unit,22
organizational entity, or component thereof.23
176
•S 1948 IS
Subtitle H—Miscellaneous Patent1 Provisions2
SEC. 4801. PROVISIONAL APPLICATIONS.3
(a) ABANDONMENT.—Section 111(b)(5) of title 35,4
United States Code, is amended to read as follows:5
‘‘(5) ABANDONMENT.—Notwithstanding the ab-6
sence of a claim, upon timely request and as pre-7
scribed by the Director, a provisional application8
may be treated as an application filed under sub-9
section (a). Subject to section 119(e)(3) of this title,10
if no such request is made, the provisional applica-11
tion shall be regarded as abandoned 12 months after12
the filing date of such application and shall not be13
subject to revival after such 12-month period.’’.14
(b) TECHNICAL AMENDMENT RELATING TO WEEK-15
ENDS AND HOLIDAYS.—Section 119(e) of title 35, United16
States Code, is amended by adding at the end the fol-17
lowing:18
‘‘(3) If the day that is 12 months after the fil-19
ing date of a provisional application falls on a Satur-20
day, Sunday, or Federal holiday within the District21
of Columbia, the period of pendency of the provi-22
sional application shall be extended to the next suc-23
ceeding secular or business day.’’.24
177
•S 1948 IS
(c) ELIMINATION OF COPENDENCY REQUIRE-1
MENT.—Section 119(e)(2) of title 35, United States Code,2
is amended by striking ‘‘and the provisional application3
was pending on the filing date of the application for patent4
under section 111(a) or section 363 of this title’’.5
(d) EFFECTIVE DATE.—The amendments made by6
this section shall take effect on the date of the enactment7
of this Act and shall apply to any provisional application8
filed on or after June 8, 1995, except that the amend-9
ments made by subsections (b) and (c) shall have no effect10
with respect to any patent which is the subject of litigation11
in an action commenced before such date of enactment.12
SEC. 4802. INTERNATIONAL APPLICATIONS.13
Section 119 of title 35, United States Code, is14
amended as follows:15
(1) In subsection (a), insert ‘‘or in a WTO16
member country,’’ after ‘‘or citizens of the United17
States,’’.18
(2) At the end of section 119 add the following19
new subsections:20
‘‘(f ) Applications for plant breeder’s rights filed in21
a WTO member country (or in a foreign UPOV Con-22
tracting Party) shall have the same effect for the purpose23
of the right of priority under subsections (a) through (c)24
of this section as applications for patents, subject to the25
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same conditions and requirements of this section as apply1
to applications for patents.2
‘‘(g) As used in this section—3
‘‘(1) the term ‘WTO member country’ has the4
same meaning as the term is defined in section5
104(b)(2) of this title; and6
‘‘(2) the term ‘UPOV Contracting Party’ means7
a member of the International Convention for the8
Protection of New Varieties of Plants.’’.9
SEC. 4803. CERTAIN LIMITATIONS ON DAMAGES FOR PAT-10
ENT INFRINGEMENT NOT APPLICABLE.11
Section 287(c)(4) of title 35, United States Code, is12
amended by striking ‘‘before the date of enactment of this13
subsection’’ and inserting ‘‘based on an application the14
earliest effective filing date of which is prior to September15
30, 1996’’.16
SEC. 4804. ELECTRONIC FILING AND PUBLICATIONS.17
(a) PRINTING OF PAPERS FILED.—Section 22 of title18
35, United States Code, is amended by striking ‘‘printed19
or typewritten’’ and inserting ‘‘printed, typewritten, or on20
an electronic medium’’.21
(b) PUBLICATIONS.—Section 11(a) of title 35, United22
States Code, is amended by amending the matter pre-23
ceding paragraph 1 to read as follows:24
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‘‘(a) The Director may publish in printed, type-1
written, or electronic form, the following:’’.2
(c) COPIES OF PATENTS FOR PUBLIC LIBRARIES.—3
Section 13 of title 35, United States Code, is amended4
by striking ‘‘printed copies of specifications and drawings5
of patents’’ and inserting ‘‘copies of specifications and6
drawings of patents in printed or electronic form’’.7
(d) MAINTENANCE OF COLLECTIONS.—8
(1) ELECTRONIC COLLECTIONS.—Section9
41(i)(1) of title 35, United States Code, is amended10
by striking ‘‘paper or microform’’ and inserting11
‘‘paper, microform, or electronic’’.12
(2) CONTINUATION OF MAINTENANCE.—The13
Under Secretary of Commerce for Intellectual Prop-14
erty and Director of the United States Patent and15
Trademark Office shall not, pursuant to the amend-16
ment made by paragraph (1), cease to maintain, for17
use by the public, paper or microform collections of18
United States patents, foreign patent documents,19
and United States trademark registrations, except20
pursuant to notice and opportunity for public com-21
ment and except that the Director shall first submit22
a report to the Committees on the Judiciary of the23
Senate and the House of Representatives detailing24
such plan, including a description of the mechanisms25
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in place to ensure the integrity of such collections1
and the data contained therein, as well as to ensure2
prompt public access to the most current available3
information, and certifying that the implementation4
of such plan will not negatively impact the public.5
SEC. 4805. STUDY AND REPORT ON BIOLOGICAL DEPOSITS6
IN SUPPORT OF BIOTECHNOLOGY PATENTS.7
(a) IN GENERAL.—Not later than 6 months after the8
date of the enactment of this Act, the Comptroller General9
of the United States, in consultation with the Under Sec-10
retary of Commerce for Intellectual Property and Director11
of the United States Patent and Trademark Office, shall12
conduct a study and submit a report to Congress on the13
potential risks to the United States biotechnology industry14
relating to biological deposits in support of biotechnology15
patents.16
(b) CONTENTS.—The study conducted under this sec-17
tion shall include—18
(1) an examination of the risk of export and the19
risk of transfers to third parties of biological depos-20
its, and the risks posed by the change to 18-month21
publication requirements made by this subtitle;22
(2) an analysis of comparative legal and regu-23
latory regimes; and24
(3) any related recommendations.25
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(c) CONSIDERATION OF REPORT.—In drafting regu-1
lations affecting biological deposits (including any modi-2
fication of title 37, Code of Federal Regulations, section3
1.801 et seq.), the United States Patent and Trademark4
Office shall consider the recommendations of the study5
conducted under this section.6
SEC. 4806. PRIOR INVENTION.7
Section 102(g) of title 35, United States Code, is8
amended to read as follows:9
‘‘(g)(1) during the course of an interference con-10
ducted under section 135 or section 291, another inventor11
involved therein establishes, to the extent permitted in sec-12
tion 104, that before such person’s invention thereof the13
invention was made by such other inventor and not aban-14
doned, suppressed, or concealed, or (2) before such per-15
son’s invention thereof, the invention was made in this16
country by another inventor who had not abandoned, sup-17
pressed, or concealed it. In determining priority of inven-18
tion under this subsection, there shall be considered not19
only the respective dates of conception and reduction to20
practice of the invention, but also the reasonable diligence21
of one who was first to conceive and last to reduce to prac-22
tice, from a time prior to conception by the other.’’.23
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SEC. 4807. PRIOR ART EXCLUSION FOR CERTAIN COM-1
MONLY ASSIGNED PATENTS.2
(a) PRIOR ART EXCLUSION.—Section 103(c) of title3
35, United States Code, is amended by striking ‘‘sub-4
section (f ) or (g)’’ and inserting ‘‘one or more of sub-5
sections (e), (f ), and (g)’’.6
(b) EFFECTIVE DATE.—The amendment made by7
this section shall apply to any application for patent filed8
on or after the date of the enactment of this Act.9
SEC. 4808. EXCHANGE OF COPIES OF PATENTS WITH FOR-10
EIGN COUNTRIES.11
Section 12 of title 35, United States Code, is amend-12
ed by adding at the end the following: ‘‘The Director shall13
not enter into an agreement to provide such copies of spec-14
ifications and drawings of United States patents and ap-15
plications to a foreign country, other than a NAFTA coun-16
try or a WTO member country, without the express au-17
thorization of the Secretary of Commerce. For purposes18
of this section, the terms ‘NAFTA country’ and ‘WTO19
member country’ have the meanings given those terms in20
section 104(b).’’.21
TITLE V—MISCELLANEOUS22 PROVISIONS23
SEC. 5001. COMMISSION ON ONLINE CHILD PROTECTION.24
(a) REFERENCES.—Wherever in this section an25
amendment is expressed in terms of an amendment to any26