WIPO Lex

US195: Patent [American Inventors Protection Act], Law, 29/11/1999

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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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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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(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

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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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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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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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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‘‘(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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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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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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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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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

102

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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

104

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(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

105

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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

106

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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

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•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

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•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

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

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•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

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•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

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•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

(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

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•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

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•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

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•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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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

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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(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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‘‘(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

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•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

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•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

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•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

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•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

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•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

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•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

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

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•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

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

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

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

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

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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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

United States of America

US195

American Inventors Protection Act of 1999 (Public Law 106-113, 113 Stat. 1501)