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S. 3486  
 
 
 
 
One Hundred  Twelfth  Congress 
of the 
United  States  of America  
 
AT   THE   SECON D   SESSIO N  
 
Begun  and held  at the City  of Washington  on Tuesday, 
the third  day of January,  two thousand  and twelve  
 
 
 
An Act 
 
To implement  the  provisions  of the  Hague  Agreement  and  the  Patent  Law Treaty.  
 
Be  it  enacted  by  the  Senate  and   House   of  Representatives  of 
the United  States  of America  in Congress assembled,  
SECTION 1. SHORT  TITLE.  
This  Act may  be cited  as the  ‘‘Patent  Law  Treaties  Implementa - 
tion  Act of 2012’’.  
 
TITLE   I—HAGUE    AGREEMENT    CON - 
CERNING  INTERNATIONAL  REGISTRA - 
TION  OF INDUSTRIAL  DESIGNS  
 
SEC.    101.   THE   HAGUE  AGREEMENT  CONCERNING  INTERNATIONAL 
REGISTRATION OF INDUSTRIAL  DESIGNS.  
(a)  IN    GENERAL .—Title  35,  United  States  Code,   is  amended 
by adding  at the  end  the  following:  
 
‘‘PART   V—THE     HAGUE    AGREEMENT    CON - 
CERNING   INTERNATIONAL   REGISTRATION 
OF INDUSTRIAL  DESIGNS  
 
‘‘CHAPTER   Sec. 
‘‘38.  International  design  applications  ..................................................................  381.  
 
‘‘CHAPTER  38—INTERNATIONAL  DESIGN  APPLICATIONS  
 
‘‘Sec.  
‘‘381.  Definitions.  
‘‘382.  Filing  international  design  applications.  
‘‘383.  International  design  application.  
‘‘384.  Filing  date.  
‘‘385.  Effect  of international  design  application.  
‘‘386.  Right  of priority.  
‘‘387.  Relief  from  prescribed  time  limits.  
‘‘388.  Withdrawn  or abandoned  international  design  application.  
‘‘389.  Examination  of international  design  application.  
‘‘390.  Publication  of international  design  application.  
 
‘‘§ 381.  Definitions  
‘‘(a) IN   GENERAL .—When  used  in  this part,  unless  the  context 
otherwise  indicates — 
‘‘(1) the  term  ‘treaty’  means  the  Geneva  Act  of the  Hague 
Agreement  Concerning  the  International  Registration  of Indus - 
trial Designs  adopted  at Geneva  on July 2, 1999;   
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S. 3486 —2 
 
‘‘(2) the  term  ‘regulations’ — 
‘‘(A)  when  capitalized,  means  the  Common  Regulations  
under  the  treaty; and  
‘‘(B)  when  not  capitalized,  means  the  regulations  estab - 
lished  by the  Director  under  this title;  
‘‘(3) the   terms  ‘designation’,  ‘designating’,  and   ‘designate’  
refer  to a request  that an  international  registration  have  effect  
in a Contracting  Party  to the  treaty;  
‘‘(4)  the    term  ‘International  Bureau’  means  the    inter - 
national  intergovernmental  organization  that  is  recognized  as 
the   coordinating  body  under  the   treaty  and   the   Regulations;  
‘‘(5) the   term  ‘effective  registration  date’  means  the   date  
of  international  registration  determined  by  the   International  
Bureau  under the  treaty;  
‘‘(6) the   term  ‘international  design  application’  means  an 
application  for international  registration;  and 
‘‘(7) the  term  ‘international  registration’  means  the  inter - 
national  registration  of  an   industrial  design  filed   under  the 
treaty.  
‘‘(b)  RULE   OF     CONSTRUCTION .—Terms  and    expressions  not 
defined  in   this part  are   to  be  taken  in   the   sense  indicated  by 
the  treaty  and  the  Regulations.  
 
‘‘§ 382.  Filing  international  design  applications  
‘‘(a) IN   GENERAL .—Any person  who  is  a  national  of the  United 
States,  or   has   a   domicile,  a   habitual  residence,  or   a   real  and 
effective  industrial   or   commercial  establishment   in   the   United 
States,  may  file  an  international  design  application  by  submitting 
to  the  Patent  and   Trademark  Office  an  application  in  such   form, 
together  with  such   fees,   as   may   be  prescribed  by  the   Director.  
‘‘(b) REQUIRED  ACTION .—The Patent  and  Trademark  Office  shall 
perform  all  acts   connected  with  the   discharge  of its  duties  under 
the  treaty,  including  the  collection  of international  fees  and  trans - 
mittal  thereof  to  the  International  Bureau.  Subject  to  chapter  17, 
international  design  applications  shall  be  forwarded  by  the  Patent 
and  Trademark  Office  to  the  International  Bureau,  upon  payment 
of a transmittal  fee. 
‘‘(c) APPLICABILITY  OF   CHAPTER  16.—Except  as  otherwise  pro- 
vided   in  this  chapter,  the   provisions  of  chapter  16  shall  apply.  
‘‘(d)  APPLICATION   FILED   IN     ANOTHER  COUNTRY .—An inter - 
national  design  application  on an  industrial  design made  in  this 
country  shall  be considered  to constitute  the  filing  of an  application 
in  a  foreign  country  within  the  meaning  of chapter  17  if the  inter - 
national  design  application  is filed — 
‘‘(1) in a country  other  than  the  United  States;  
‘‘(2) at the  International  Bureau;  or 
‘‘(3) with  an intergovernmental  organization.  
 
‘‘§ 383.  International  design  application  
‘‘In addition  to  any  requirements  pursuant  to  chapter  16,  the 
international  design  application  shall  contain — 
‘‘(1)  a   request  for   international  registration  under  the 
treaty;  
‘‘(2) an   indication  of  the   designated  Contracting  Parties;  
‘‘(3) data  concerning  the   applicant  as   prescribed  in   the 
treaty  and  the  Regulations;   
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‘‘(4)  copies   of  a   reproduction  or,   at  the   choice   of  the 
applicant,  of several  different  reproductions of the  industrial 
design  that is  the  subject  of the  international  design  applica - 
tion,   presented  in  the   number  and   manner  prescribed  in  the 
treaty  and  the  Regulations;  
‘‘(5) an  indication  of the  product  or products  that constitute 
the   industrial  design  or  in   relation  to  which   the   industrial 
design  is to be used,  as prescribed  in the  treaty  and  the  Regula - 
tions;  
‘‘(6) the  fees  prescribed  in  the  treaty  and  the  Regulations;  
and  
‘‘(7) any   other  particulars  prescribed  in  the   Regulations.  
‘‘§ 384.  Filing  date  
‘‘(a) IN    GENERAL .—Subject  to  subsection  (b),  the   filing   date 
of  an  international  design  application  in  the   United  States  shall 
be  the   effective  registration  date.  Notwithstanding  the   provisions 
of  this part,  any   international  design  application  designating  the 
United  States  that  otherwise  meets  the   requirements  of  chapter  
16 may  be treated  as a design  application  under  chapter  16. 
‘‘(b) REVIEW .—An applicant  may  request  review  by the  Director 
of  the   filing   date of  the   international  design  application  in  the 
United  States.  The   Director  may   determine  that  the   filing   date 
of  the   international  design  application  in   the   United  States  is 
a   date  other  than  the   effective  registration  date.  The   Director 
may   establish  procedures,  including  the   payment  of  a  surcharge, 
to   review  the   filing   date  under  this  section.  Such   review  may 
result  in  a  determination  that  the   application  has   a  filing   date 
in   the   United  States  other  than  the   effective  registration  date.  
‘‘§ 385.  Effect  of international  design  application  
‘‘An international  design  application  designating  the  United 
States  shall  have  the   effect,  for  all  purposes,  from  its  filing  date 
determined  in  accordance  with  section  384,  of  an   application  for 
patent  filed in the  Patent  and  Trademark  Office  pursuant  to chapter  
16. 
‘‘§ 386.  Right  of priority  
‘‘(a) NATIONAL  APPLICATION .—In accordance  with  the  conditions 
and   requirements  of  subsections  (a)   through  (d)  of  section  119 
and   section  172,   a  national  application  shall  be  entitled  to  the 
right  of priority  based  on  a  prior  international  design  application 
that designated  at least  1  country  other  than  the   United  States.  
‘‘(b) PRIOR  FOREIGN  APPLICATION .—In accordance  with  the 
conditions  and  requirements  of subsections  (a) through  (d) of section  
119  and  section  172  and  the  treaty  and  the  Regulations,  an  inter - 
national  design  application  designating  the   United  States  shall 
be entitled  to the  right  of priority  based  on a prior  foreign  applica - 
tion,  a  prior  international  application  as  defined  in  section  351(c) 
designating  at  least  1  country  other  than  the   United  States,  or 
a   prior  international  design  application  designating  at  least  1 
country  other  than  the  United  States.  
‘‘(c) PRIOR  NATIONAL  APPLICATION .—In accordance  with  the 
conditions  and  requirements  of section  120,  an  international  design 
application  designating  the  United  States  shall  be  entitled  to  the 
benefit  of the  filing  date of a prior  national  application, a prior 
international  application  as  defined  in  section  351(c)  designating   
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S. 3486 —4 
 
the  United States,  or a prior  international  design  application  desig - 
nating  the  United  States,  and  a  national  application  shall  be  enti- 
tled  to  the  benefit  of the  filing  date of a  prior  international  design 
application  designating  the   United  States.  If  any   claim   for  the 
benefit  of an  earlier  filing  date is based  on a prior international 
application  as  defined  in  section  351(c)  which   designated  but   did 
not  originate  in  the  United  States  or  a  prior  international  design 
application  which   designated  but   did  not  originate  in  the   United 
States,  the  Director  may  require  the  filing  in the  Patent  and  Trade - 
mark  Office  of  a  certified  copy  of  such   application  together  with 
a  translation  thereof  into   the   English  language,  if  it was   filed 
in another  language.  
 
‘‘§ 387.  Relief  from  prescribed  time  limits  
‘‘An  applicant’s  failure  to  act   within  prescribed  time  limits 
in   connection  with  requirements  pertaining  to   an   international 
design  application  may   be  excused  as  to  the   United  States  upon 
a  showing  satisfactory  to  the   Director  of unintentional  delay  and 
under  such   conditions,  including  a   requirement  for  payment  of 
the   fee  specified  in  section  41(a)(7),   as  may   be  prescribed  by  the 
Director.  
 
‘‘§ 388.  Withdrawn  or  abandoned  international  design 
application  
‘‘Subject  to sections 384 and  387, if an  international  design 
application  designating  the  United  States  is withdrawn,  renounced 
or canceled  or considered  withdrawn  or abandoned,  either  generally 
or  as   to  the   United  States,  under  the   conditions  of  the   treaty 
and   the   Regulations,  the   designation  of  the   United  States  shall 
have  no  effect  after  the  date of withdrawal,  renunciation,  cancella - 
tion,  or  abandonment  and  shall  be  considered  as  not  having  been 
made,  unless  a claim  for benefit  of a prior  filing  date under  section  
386(c)   was   made  in   a  national  application,  or  an   international 
design  application  designating  the   United  States,  or  a  claim   for 
benefit  under  section  365(c)  was  made  in  an  international  applica - 
tion  designating  the  United States,  filed  before  the  date of such 
withdrawal,  renunciation,  cancellation,  or  abandonment.  However, 
such   withdrawn,  renounced,  canceled,  or  abandoned  international 
design  application  may   serve  as  the   basis  for  a  claim   of  priority 
under  subsections  (a)  and   (b)  of  section  386,  or  under  subsection 
(a)  or  (b)  of  section  365,   if  it  designated  a  country  other  than 
the  United  States.  
 
‘‘§ 389.  Examination  of international  design  application  
‘‘(a) IN    GENERAL .—The Director  shall  cause  an   examination 
to be made  pursuant  to this title of an  international  design  applica - 
tion  designating  the  United  States.  
‘‘(b) APPLICABILITY  OF  CHAPTER  16.—All  questions  of substance 
and, unless  otherwise  required  by the  treaty  and  Regulations,  proce - 
dures  regarding  an   international  design  application  designating 
the  United  States  shall  be determined  as  in the  case  of applications 
filed under  chapter  16. 
‘‘(c) FEES.—The  Director  may   prescribe  fees   for  filing   inter - 
national  design  applications,  for  designating  the   United  States, 
and   for  any   other  processing,  services,  or  materials  relating  to  
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international  design  applications,  and   may   provide  for  later  pay- 
ment  of  such   fees,   including  surcharges  for  later  submission  of 
fees.  
‘‘(d) ISSUANCE  OF   PATENT .—The Director  may   issue  a  patent 
based  on an  international  design  application  designating  the  United 
States,  in  accordance  with  the  provisions  of this title.  Such  patent 
shall  have  the  force  and  effect  of a patent  issued  on an  application 
filed under  chapter  16. 
 
‘‘§ 390.  Publication  of international  design  application  
‘‘The  publication under  the  treaty  of an  international  design 
application  designating  the  United  States  shall  be deemed a publica - 
tion  under  section  122(b).’’.  
(b) CONFORMING  AMENDMENT .—The table  of parts  at the  begin - 
ning   of  title 35,  United  States  Code,   is  amended  by  adding  at 
the  end  the  following:  
‘‘V. The  Hague  Agreement concerning  international  registration  of industrial  
designs  ......................................................................................................  401’’.  
 
SEC.  102.  CONFORMING AMENDMENTS.  
Title  35, United  States  Code,  is amended — 
(1) in  section  100(i)(1)(B)  (as  amended  by the  Leahy -Smith 
America  Invents  Act  (Public  Law  112–29; 125  Stat.  284)),  by 
striking  ‘‘right  of priority  under  section  119,  365(a),  or  365(b) 
or  to  the   benefit  of  an  earlier  filing   date  under  section  120,  
121,  or  365(c)’’  and   inserting  ‘‘right  of  priority  under  section  
119,  365(a),   365(b),   386(a),   or  386(b)   or  to  the   benefit  of  an 
earlier  filing   date  under  section  120,  121,  365(c),  or  386(c)’’; 
(2)  in  section  102(d)(2)   (as  amended  by  the   Leahy -Smith 
America  Invents  Act  (Public  Law  112–29; 125  Stat.  284)),  by 
striking  ‘‘to claim  a  right  of priority  under  section  119,  365(a), 
or   365(b),   or   to   claim   the   benefit  of  an   earlier  filing   date 
under  section  120,  121,  or  365(c)’’  and   inserting  ‘‘to claim   a 
right  of  priority  under  section  119,  365(a),   365(b),   386(a),   or 
386(b),  or  to  claim   the  benefit  of an  earlier  filing  date under 
section  120, 121, 365(c),  or 386(c)’’;  
(3) in section  111(b)(7) — 
(A)  by  striking  ‘‘section  119  or  365(a)’’  and   inserting  
‘‘section  119, 365(a),  or 386(a)’’;  and 
(B)   by   striking  ‘‘section   120,   121,   or   365(c)’’  and 
inserting  ‘‘section  120, 121, 365(c),  or 386(c)’’;  
(4) in section  115(g)(1)  (as amended by the  Leahy -Smith 
America  Invents  Act  (Public  Law  112–29; 125  Stat.  284)),  by 
striking  ‘‘section  120,   121,   or  365(c)’’  and   inserting   ‘‘section  
120, 121, 365(c),  or 386(c)’’;  
(5) in section  120,  in the  first sentence,  by striking  ‘‘section  
363’’  and  inserting  ‘‘section  363 or 385’’; 
(6) in section  154— 
(A) in subsection  (a)— 
(i) in  paragraph  (2), by striking  ‘‘section  120,  121, 
or  365(c)’’  and   inserting  ‘‘section  120,  121,  365(c),  or 
386(c)’’;  and 
(ii)   in   paragraph  (3),   by   striking  ‘‘section   119,  
365(a),   or  365(b)’’  and   inserting  ‘‘section  119,  365(a),  
365(b),  386(a),  or 386(b)’’;  and 
(B)  in   subsection  (d)(1),   by   inserting  ‘‘or  an   inter - 
national  design  application  filed  under  the  treaty  defined   
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in  section  381(a)(1)  designating  the   United  States  under 
Article  5  of  such   treaty’’   after  ‘‘Article  21(2)(a)   of  such 
treaty’’;  
(7) in section  173, by striking  ‘‘fourteen  years’’  and  inserting  
‘‘15 years’’;  
(8) in section  365(c) — 
(A) in  the  first sentence,  by  striking  ‘‘or a  prior  inter - 
national  application  designating  the   United  States’’   and 
inserting  ‘‘,   a  prior  international  application  designating  
the  United  States,  or  a  prior  international  design  applica - 
tion  as  defined  in  section  381(a)(6)  designating  the  United  
States’’;  and 
(B)  in  the   second  sentence,  by  inserting  ‘‘or a  prior  
international   design  application  as    defined  in   section  
381(a)(6)  which   designated  but   did   not   originate  in  the 
United  States’’    after  ‘‘did  not   originate  in   the    United  
States’’;  and 
(9) in section  366— 
(A) in  the  first sentence,  by  striking  ‘‘unless  a  claim’’  
and   all  that follows  through  ‘‘withdrawal.’’  and   inserting  
‘‘unless   a  claim   for  benefit  of  a  prior  filing   date  under  
section  365(c)   of  this  section  was   made  in   a   national  
application,  or an  international  application  designating  the 
United  States,  or  a  claim  for  benefit  under  section  386(c)  
was   made  in   an   international   design  application  desig - 
nating  the   United  States,  filed   before   the   date  of  such  
withdrawal.’’; and 
(B)  by  striking  the  second  sentence  and  inserting  the 
following:  ‘‘However,  such  withdrawn  international  applica - 
tion  may  serve  as  the  basis  for  a  claim   of priority  under  
section  365  (a)  and   (b),  or  under  section  386  (a)  or  (b), 
if it designated  a  country  other  than  the  United  States.’’.  
 
SEC.  103.  EFFECTIVE  DATE.  
(a)  IN    GENERAL .—The amendments  made  by  this  title shall 
take effect  on the  later  of— 
(1) the  date that is  1 year  after  the  date of the  enactment 
of this Act; or 
(2)  the  date of entry  into  force  of the  treaty  with  respect 
to the  United  States.  
(b) APPLICABILITY  OF  AMENDMENTS .— 
(1) IN  GENERAL .—Subject  to paragraph  (2), the  amendments  
made  by  this  title  shall  apply  only   to  international  design  
applications,  international  applications,  and   national  applica - 
tions  filed  on and  after  the  effective  date set  forth  in subsection  
(a), and  patents  issuing  thereon.  
(2)  EXCEPTION .—Sections  100(i)   and   102(d)   of  title  35, 
United  States  Code,  as  amended  by  this title,  shall  not  apply  
to   an   application,  or   any   patent  issuing  thereon,  unless  it 
is   described  in   section  3(n)(1)   of  the   Leahy -Smith  America  
Invents  Act (35 U.S.C.  100 note).  
(c) DEFINITIONS .—For purposes  of this section — 
(1) the  terms  ‘‘treaty’’  and  ‘‘international  design  application’’  
have  the   meanings  given   those  terms  in  section  381  of  title  
35, United  States  Code,  as added  by this title;   
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(2)  the   term  ‘‘international  application’’  has   the   meaning 
given   that  term  in  section  351(c)   of  title 35,  United  States 
Code;  and 
(3) the  term  ‘‘national  application’’  means  ‘‘national  applica - 
tion’’  within  the   meaning  of  chapter  38  of  title  35,   United 
States  Code,  as added  by this title.  
 
TITLE  II—PATENT  LAW  TREATY 
IMPLEMENTATION  
 
SEC.  201.  PROVISIONS  TO IMPLEMENT THE  PATENT  LAW  TREATY.  
(a)  APPLICATION  FILING  DATE.—Section  111  of title 35,  United  
States  Code,  is amended — 
(1)  in  subsection  (a),  by  striking  paragraphs  (3)  and   (4) 
and  inserting  the  following:  
‘‘(3) FEE, OATH  OR  DECLARATION , AND  CLAIMS .—The applica - 
tion   shall  be  accompanied  by  the   fee  required  by  law.   The 
fee, oath  or declaration,  and  1 or more  claims  may  be submitted 
after  the   filing   date  of  the   application,  within  such   period 
and   under  such   conditions,  including  the   payment  of  a  sur- 
charge,  as   may   be  prescribed  by  the   Director.  Upon   failure 
to  submit  the   fee,  oath  or  declaration,  and   1  or  more   claims 
within  such  prescribed  period,  the  application  shall  be regarded 
as abandoned.  
‘‘(4) FILING  DATE .—The filing  date of an  application  shall 
be  the   date on  which   a  specification,  with  or  without  claims, 
is received  in the  United  States  Patent  and  Trademark  Office.’’; 
(2)  in  subsection  (b),  by  striking  paragraphs  (3)  and   (4) 
and  inserting  the  following:  
‘‘(3) FEE.—The application  shall  be  accompanied  by  the 
fee  required  by  law.  The  fee  may  be  submitted  after  the  filing 
date of the  application, within  such  period  and  under  such 
conditions,  including  the  payment of a surcharge, as may  be 
prescribed  by  the   Director.  Upon   failure  to  submit  the   fee 
within  such  prescribed  period,  the  application  shall  be regarded 
as abandoned.  
‘‘(4) FILING  DATE .—The filing  date of a provisional  applica - 
tion  shall  be the  date on which  a specification,  with  or without 
claims,  is received  in  the  United  States  Patent  and  Trademark 
Office.’’;  and 
(3) by adding  at the  end  the  following:  
‘‘(c) PRIOR  FILED  APPLICATION .—Notwithstanding  the  provisions 
of   subsection  (a),   the    Director  may    prescribe  the    conditions, 
including  the   payment  of  a  surcharge,  under  which   a  reference 
made  upon   the   filing   of  an   application  under  subsection  (a)  to 
a previously  filed application,  specifying  the  previously  filed applica - 
tion  by  application  number  and  the  intellectual  property  authority 
or  country  in  which  the  application  was  filed,  shall  constitute  the 
specification  and  any  drawings of the  subsequent  application  for 
purposes  of  a   filing   date.  A  copy   of  the   specification  and   any 
drawings  of  the   previously  filed   application  shall  be   submitted 
within  such  period  and  under  such  conditions  as  may  be prescribed 
by  the   Director.  A  failure  to  submit  the   copy  of  the   specification 
and   any   drawings  of  the   previously  filed   application  within  the 
prescribed  period  shall  result  in   the   application  being   regarded   
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as  abandoned.  Such   application  shall  be  treated  as  having  never 
been  filed,  unless — 
‘‘(1) the  application  is revived  under  section  27; and 
‘‘(2) a  copy  of  the   specification  and   any   drawings  of  the 
previously  filed   application  are   submitted  to  the   Director.’’. 
(b)  RELIEF  IN   RESPECT  OF   TIME  LIMITS  AND  REINSTATEMENT  
OF  RIGHTS .— 
(1) IN  GENERAL .—Chapter  2 of title 35, United  States  Code, 
is amended  by adding  at the  end  the  following:  
 
‘‘§ 27.  Revival  of  applications;  reinstatement  of  reexamina - 
tion proceedings  
‘‘The  Director  may  establish  procedures,  including  the  require - 
ment  for  payment  of the  fee  specified  in  section  41(a)(7),  to  revive 
an   unintentionally  abandoned  application  for   patent,  accept  an 
unintentionally  delayed  payment  of the  fee for issuing  each  patent, 
or  accept  an  unintentionally  delayed  response  by the  patent  owner 
in  a  reexamination  proceeding,  upon   petition  by  the  applicant  for 
patent  or patent  owner.’’.  
(2)  CONFORMING  AMENDMENT .—The table  of  sections  for 
chapter  2 of title 35, United  States  Code,  is amended  by adding 
at the  end  the  following:  
 
‘‘27.  Revival  of applications;  reinstatement  of reexamination  proceedings.’’.  
(c) RESTORATION  OF   PRIORITY  RIGHT .—Title  35,  United  States  
Code,  is amended — 
(1) in section  119— 
(A) in subsection  (a)— 
(i)  by  striking  ‘‘twelve’’  and   inserting  ‘‘12’’;  and 
(ii)   by   adding  at  the    end   the    following:    ‘‘The 
Director   may    prescribe  regulations,  including  the 
requirement  for payment  of the  fee specified  in  section  
41(a)(7),   pursuant  to  which   the   12-month  period  set 
forth  in  this subsection  may  be  extended  by  an  addi- 
tional  2  months  if  the   delay  in  filing  the   application 
in  this country within  the  12-month  period  was 
unintentional.’’;  and 
(B) in subsection  (e)— 
(i) in paragraph  (1)— 
(I)  by  inserting  after  the   first sentence  the 
following:  ‘‘The  Director  may  prescribe  regulations, 
including  the  requirement for payment  of the  fee 
specified  in   section  41(a)(7),   pursuant  to   which 
the   12-month  period  set   forth  in  this  subsection 
may   be  extended  by  an   additional  2  months  if 
the   delay  in  filing   the   application  under  section  
111(a)  or  section  363  within  the  12-month  period 
was  unintentional.’’;  and 
(II) in the  last sentence — 
(aa)   by  striking  ‘‘including   the   payment 
of a surcharge’’  and  inserting ‘‘including  the 
payment   of   the     fee    specified   in    section  
41(a)(7)’’;  and 
(bb)  by  striking  ‘‘during  the   pendency  of 
the  application’’;  and 
(ii)  in  paragraph  (3),  by  adding  at  the   end   the 
following:   ‘‘For  an   application  for  patent  filed   under   
IP/N/1/USA/D/ 8 • IP/N/1/USA/P/1 3 
 
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S. 3486 —9 
 
section  363 in a Receiving  Office  other  than  the  Patent 
and   Trademark  Office,  the   12-month  and   additional  
2-month  period  set  forth  in  this subsection shall  be 
extended  as  provided  under  the  treaty  and  Regulations 
as defined  in section  351.’’;  and 
(2)  in  section  365(b),  by  adding  at the   end  the   following:  
‘‘The  Director  may  establish  procedures,  including  the  require - 
ment  for  payment  of  the   fee  specified  in  section  41(a)(7),   to 
accept  an  unintentionally  delayed  claim  for  priority  under  the 
treaty  and   the   Regulations,  and   to   accept  a   priority  claim 
that pertains  to  an  application  that was  not  filed  within  the 
priority  period  specified  in   the   treaty  and   Regulations,  but 
was  filed  within  the  additional  2-month  period  specified  under 
section  119(a)  or the  treaty  and  Regulations.’’.  
(d)  RECORDATION  OF    OWNERSHIP   INTERESTS .—Section  261   of 
title 35, United  States  Code,  is amended — 
(1)  in  the   first undesignated  paragraph  by  adding  at the 
end  the  following:  ‘‘The  Patent and  Trademark  Office  shall 
maintain  a  register  of  interests  in  patents  and   applications 
for patents  and  shall  record  any  document  related  thereto  upon 
request,  and  may  require  a fee therefor.’’;  and 
(2)  in  the  fourth  undesignated  paragraph  by  striking  ‘‘An 
assignment’’  and   inserting  ‘‘An  interest  that  constitutes  an 
assignment’’.  
 
SEC.  202.  CONFORMING AMENDMENTS.  
(a)  IN   GENERAL .—Section  171  of title 35,  United  States  Code, 
is amended — 
(1) by striking  ‘‘Whoever’’  and  inserting  ‘‘(a) IN  GENERAL .— 
Whoever’’;  
(2) by striking  ‘‘The  provisions’’  and  inserting  ‘‘(b) APPLICA - 
BILITY  OF  THIS TITLE.—The provisions’’;  and 
(3) by adding  at the  end  the  following:  
‘‘(c) FILING  DATE.—The filing  date of an  application  for  patent 
for design shall  be the  date on which  the  specification  as  prescribed 
by section  112 and  any  required  drawings  are  filed.’’.  
(b)  RELIEF  IN   RESPECT  OF   TIME  LIMITS  AND  REINSTATEMENT 
OF  RIGHT .—Title  35, United  States  Code,  is amended — 
(1) in section  41— 
(A)  in  subsection  (a),  by  striking  paragraph  (7)  and 
inserting  the  following:  
‘‘(7) REVIVAL  FEES .—On filing  each  petition  for  the  revival 
of an  abandoned  application  for  a  patent,  for  the  delayed  pay- 
ment  of the  fee for issuing  each  patent, for the  delayed  response 
by  the  patent  owner  in  any  reexamination  proceeding,  for  the 
delayed  payment  of the  fee  for  maintaining  a  patent  in  force, 
for  the   delayed  submission  of  a  priority  or  benefit  claim,  or 
for the  extension  of the  12-month  period  for filing  a subsequent 
application,  $1,700.00.  The   Director  may   refund  any   part of 
the  fee specified  in this paragraph,  in exceptional  circumstances 
as determined  by the  Director’’;  and 
(B)  in  subsection  (c),  by  striking  paragraph  (1)  and 
inserting  the  following:  
‘‘(1) ACCEPTANCE .—The Director  may  accept  the   payment 
of  any   maintenance  fee  required  by  subsection  (b)  after  the 
6-month  grace  period  if the  delay  is  shown  to  the  satisfaction 
of the  Director  to  have  been  unintentional.  The  Director  may   
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S. 3486 —10 
 
require  the   payment  of  the   fee  specified  in  subsection  (a)(7) 
as  a  condition  of  accepting  payment  of  any   maintenance  fee 
after  the  6-month  grace  period.  If the  Director  accepts  payment 
of a maintenance  fee after  the  6-month  grace  period,  the  patent 
shall  be  considered  as  not   having  expired  at  the   end   of  the 
grace  period.’’;  
(2) in  section  119(b)(2),  in  the  second  sentence,  by striking  
‘‘including  the  payment  of a surcharge’’  and  inserting  ‘‘including  
the   requirement  for  payment  of  the   fee  specified  in  section  
41(a)(7)’’;  
(3)  in   section  120,   in   the   fourth  sentence,  by   striking  
‘‘including  the  payment  of a surcharge’’  and  inserting  ‘‘including  
the   requirement  for  payment  of  the   fee  specified  in  section  
41(a)(7)’’;  
(4)  in  section  122(b)(2)(B)(iii),  in  the   second  sentence,  by 
striking  ‘‘,   unless  it is  shown’’  and   all   that follows   through  
‘‘unintentional’’;  
(5)  in  section  133,  by  striking  ‘‘,  unless  it be  shown’’  and 
all that follows  through  ‘‘unavoidable’’;  
(6)  by  striking  section  151   and   inserting  the   following:  
 
‘‘§ 151.  Issue  of patent  
‘‘(a) IN   GENERAL .—If it appears  that  an  applicant  is  entitled 
to  a  patent  under  the   law,   a  written  notice   of  allowance  of  the 
application  shall  be  given   or  mailed  to  the   applicant.  The  notice 
shall  specify  a sum, constituting  the  issue  fee and  any  required 
publication  fee,  which   shall  be  paid   within  3  months  thereafter.  
‘‘(b) EFFECT  OF    PAYMENT .—Upon  payment  of  this  sum   the 
patent  may  issue,  but  if payment is not  timely  made,  the  application 
shall  be regarded  as abandoned.’’;  
(7) in  section  361,  by  striking  subsection  (c) and  inserting 
the  following:  
‘‘(c) International  applications  filed  in  the   Patent  and   Trade - 
mark Office  shall be filed  in  the  English  language,  or an  English 
translation  shall  be  filed  within  such   later  time  as  may   be  fixed 
by the  Director.’’;  
(8) in  section  364,  by  striking  subsection  (b) and  inserting 
the  following:  
‘‘(b) An  applicant’s  failure  to  act  within  prescribed  time  limits 
in  connection with  requirements  pertaining  to  an  international 
application  may  be excused  as provided  in the  treaty and  the 
Regulations.’’;  and 
(9)  in  section  371(d),   in  the   third  sentence,  by  striking  
‘‘,  unless  it be  shown  to  the   satisfaction  of  the   Director  that  
such  failure  to comply  was  unavoidable’’.  
 
SEC.  203.  EFFECTIVE  DATE.  
(a) IN  GENERAL .—The amendments  made  by this title— 
(1)  shall  take effect  on  the   date that is  1  year  after  the 
date of the  enactment  of this Act; and 
(2) shall  apply  to— 
(A) any  patent  issued  before,  on,  or  after  the  effective  
date set  forth  in paragraph  (1); and 
(B)  any   application  for  patent  that is  pending  on  or 
filed   after  the   effective  date  set   forth  in  paragraph   (1). 
(b) EXCEPTIONS .—  
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S. 3486 —11 
 
(1)   SECTION   201(a).—The amendments  made  by   section  
201(a)   shall  apply  only   to  applications  that  are   filed   on  or 
after  the  effective  date set  forth  in subsection  (a)(1).  
(2)  PATENTS  IN    LITIGATION .—The  amendments  made  by 
this title shall  have  no  effect  with  respect  to  any  patent  that 
is  the  subject  of litigation  in  an  action  commenced  before  the 
effective  date set  forth  in subsection  (a)(1).  
 
 
 
 
 
 
 
 
Speaker  of the  House  of Representatives.  
 
 
 
 
 
 
 
Vice President  of the  United  States  and 
President  of the  Senate.  
 
 
 
 
__________