I

106TH CONGRESS

2D SESSION H. R. 4870

To make technical corrections in patent, copyright, and trademark laws.

IN THE HOUSE OF REPRESENTATIVES

JULY 18, 2000

Mr. COBLE (for himself and Mr. BERMAN) introduced the following bill; which

was referred to the Committee on the Judiciary

A BILL

To make technical corrections in patent, copyright, and

trademark laws.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,

3 SECTION 1. SHORT TITLE.

4 This Act may be cited as the ‘‘Intellectual Property

5 Technical Amendments Act of 2000’’.

6 SEC. 2. OFFICERS AND EMPLOYEES.

7 (a) RENAMING OF OFFICERS.—(1) Title 35, United

8 States Code, is amended—

9 (A) by striking ‘‘Director’’ each place it appears

10 and inserting ‘‘Commissioner’’; and
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1 (B) by striking ‘‘Director’s’’ each place it ap2 pears and inserting ‘‘Commissioner’s’’.

3 (2) The Act of July 5, 1946 (commonly referred to

4 as the ‘‘Trademark Act of 1946’’; 15 U.S.C. 1051 et seq.)

5 is amended by striking ‘‘Director’’ each place it appears

6 and inserting ‘‘Commissioner’’.

7 (3) Title 35, United States Code, is amended by

8 striking ‘‘Commissioner for Patents’’ each place it appears

9 and inserting ‘‘Assistant Commissioner for Patents’’.

10 (4) Title 35, United States Code, is amended by

11 striking ‘‘Commissioner for Trademarks’’ each place it ap12 pears and inserting ‘‘Assistant Commissioner for Trade13 marks’’.

14 (5) Section 5314 of title 5, United States Code, is

15 amended by striking

16 ‘‘Under Secretary of Commerce for Intellectual

17 Property and Director of the United States Patent

18 and Trademark Office.’’

19 and inserting

20 ‘‘Under Secretary of Commerce for Intellectual

21 Property and Commissioner of the United States

22 Patent and Trademark Office.’’

23 (b) REFERENCES.—Any reference in any other Fed24 eral law, Executive order, rule, regulation, or delegation
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1 of authority, or any document of or pertaining to the Pat2 ent and Trademark Office—

3 (1) to the Director of the United States Patent

4 and Trademark Office or to the Commissioner of

5 Patents and Trademarks is deemed to refer to the

6 Under Secretary of Commerce for Intellectual Prop7 erty and Commissioner of the United States Patent

8 and Trademark Office;

9 (2) to the Commissioner for Patents is deemed

10 to refer to the Assistant Commissioner for Patents;

11 and

12 (3) to the Commissioner for Trademarks is

13 deemed to refer to the Assistant Commissioner for

14 Trademarks.

15 SEC. 3. ADJUSTMENT OF TRADEMARK FEES.

16 Section 4203 of the Intellectual Property and Com17 munications Omnibus Reform Act of 1999, as enacted by

18 section 1000(a)(9) of Public Law 106–113, is amended

19 by striking ‘‘Director’’ and inserting ‘‘Commissioner’’.

20 SEC. 4. OPTIONAL INTER PARTES REEXAMINATION PROCE21 DURE ACT OF 1999; TECHNICAL AMEND22 MENTS.

23 (a) OPTIONAL INTER PARTES REEXAMINATION PRO24 CEDURES.—Title 35, United States Code, is amended as

25 follows:
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1 (1) Section 311 is amended—

2 (A) in subsection (a), by striking ‘‘person’’

3 and inserting ‘‘third-party requester’’; and

4 (B) in subsection (c), by striking ‘‘Unless

5 the requesting person is the owner of the pat6 ent, the’’ and inserting ‘‘The’’.

7 (2) Section 312 is amended—

8 (A) in subsection (a), by striking the last

9 sentence; and

10 (B) by striking ‘‘if any’’.

11 (3) Section 314(b)(1) is amended—

12 (A) by striking ‘‘(1) This’’ and all that fol13 lows through ‘‘(2)’’ and inserting ‘‘(1)’’;

14 (B) by striking ‘‘the third-party requester

15 shall receive a copy’’ and inserting ‘‘the Office

16 shall send to the third-party requester a copy’’;

17 and

18 (C) by redesignating paragraph (3) as

19 paragraph (2).

20 (4) Section 317(a) is amended by striking ‘‘pat21 ent owner nor the third-party requester, if any, nor

22 privies of either’’ and inserting ‘‘third-party re23 quester nor its privies’’.

24 (b) CONFORMING AMENDMENTS.—Subsections (a),

25 (b), and (c) of section 134 of title 35, United States Code,
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1 are each amended by striking ‘‘administrative patent

2 judge’’ each place it appears and inserting ‘‘primary exam3 iner’’.

4 (c) CLERICAL AMENDMENTS.—

5 (1) Section 4604(a) of the Intellectual Property

6 and Communications Omnibus Reform Act of 1999,

7 is amended by striking ‘‘Part 3’’ and inserting ‘‘Part

8 III’’.

9 (2) Section 4605(b) of that Act is amended by

10 striking ‘‘title 25’’ and inserting ‘‘title 35’’.

11 (d) EFFECTIVE DATE.—The amendments made by

12 sections 4605(c) and 4605(e) of the Intellectual Property

13 and Communications Omnibus Reform Act, as enacted by

14 section 1000(a)(9) of Public Law 106–113, shall apply to

15 any reexamination filed in the United States Patent and

16 Trademark Office on or after the date of the enactment

17 of Public Law 106–113.

18 SEC. 5. PATENT AND TRADEMARK EFFICIENCY ACT AMEND19 MENTS.

20 (a) DEPUTY DIRECTOR.—

21 (1) Section 5315 of title 5, United States Code,

22 is amended by striking ‘‘Deputy Under Secretary of

23 Commerce for Intellectual Property and Deputy Di24 rector of the United States Patent and Trademark

25 Office.’’.
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1 (2) Section 17(b) of the Act of July 5, 1946

2 (commonly referred to as the ‘‘Trademark Act of

3 1946’’) (15 U.S.C. 1067(b)), is amended by insert4 ing ‘‘the Deputy Commissioner,’’ after ‘‘Commis5 sioner,’’.

6 (3) Section 6(a) of title 35, United States Code,

7 is amended by inserting ‘‘the Deputy Commis8 sioner,’’ after ‘‘Commissioner,’’.

9 (b) PUBLIC ADVISORY COMMITTEES.—Section 5 of

10 title 35, United States Code, is amended by adding at the

11 end the following new subsection:

12 ‘‘(j) INAPPLICABILITY OF PATENT PROHIBITION.—

13 Section 4 shall not apply to voting members of the Advi14 sory Committees.’’.

15 (c) CHIEF FINANCIAL OFFICER.—Section 901(b)(2)

16 of title 31, United States Code, is amended by adding at

17 the end the following new subparagraph:

18 ‘‘(I) The United States Patent and Trade19 mark Office.’’.

20 (d) MISCELLANEOUS.—Section 153 of title 35,

21 United States Code, is amended by striking ‘‘and attested

22 by an officer of the Patent and Trademark Office des23 ignated by the Director,’’.
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1 SEC. 6. DOMESTIC PUBLICATION OF FOREIGN FILED PAT2 ENT APPLICATIONS ACT OF 1999 AMEND3 MENTS.

4 Section 154(d)(4)(A) of title 35, United States Code,

5 is amended—

6 (1) by striking ‘‘on which the Patent and

7 Trademark Office receives a copy of the’’ and insert8 ing ‘‘of’’; and

9 (2) by striking ‘‘international application’’ the

10 last place it appears and inserting ‘‘publication’’.

11 SEC. 7. DOMESTIC PUBLICATION OF PATENT APPLICA12 TIONS PUBLISHED ABROAD.

13 Subtitle E of the Intellectual Property and Commu14 nications Omnibus Reform Act of 1999, as enacted by sec15 tion 1000(a)(9) of Public Law 106–113, is amended as

16 follows:

17 (1) Section 4505 is amended to read as follows:

18 ‘‘SEC. 4505. PRIOR ART EFFECT OF PUBLISHED APPLICA19 TIONS.

20 ‘‘Section 102(e) of title 35, United States Code, is

21 amended to read as follows:

22 ‘‘ ‘(e) the invention was described in (1) an applica23 tion for patent, published under section 122(b), by another

24 filed in the United States before the invention by the ap25 plicant for patent or (2) a patent granted on an applica26 tion for patent by another filed in the United States before
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1 the invention by the applicant for patent, except that an

2 international application filed under the treaty defined in

3 section 351(a) shall have the effects for the purposes of

4 this subsection of an application filed in the United States

5 if and only if the international application designated the

6 United States and was published under Article 21(2) of

7 such treaty in the English language; or’ ’’.

8 (2) Section 4507 is amended—

9 (A) in paragraph (1), by striking ‘‘Section

10 11’’ and inserting ‘‘Section 10’’;

11 (B) in paragraph (2), by striking ‘‘Section

12 12’’ and inserting ‘‘Section 11’’.

13 (C) in paragraph (3), by striking ‘‘Section

14 13’’ and inserting ‘‘Section 12’’;

15 (D) in paragraph (4), by striking ‘‘12 and

16 13’’ and inserting ‘‘11 and 12’’;

17 (E) in section 374 of title 35, United

18 States Code, as amended by paragraph (10), by

19 striking ‘‘confer the same rights and shall have

20 the same effect under this title as an applica21 tion for patent published’’ and inserting ‘‘be

22 deemed a publication’’; and

23 (F) by adding at the end the following:
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1 ‘‘(12) The item relating to section 374 in the

2 table of contents for chapter 37 of title 35, United

3 States Code, is amended to read as follows:

‘‘374. Publication of international application.’’.

4 (3) Section 4508 is amended to read as follows:

5 ‘‘SEC. 4508. EFFECTIVE DATE.

6 ‘‘Except as otherwise provided in this section, sec7 tions 4502 through 4507, and the amendments made by

8 such sections, shall take effect on November 29, 2000, and

9 shall apply only to applications (including international

10 applications designating the United States) filed on or

11 after that date. The amendments made by sections 4504

12 and 4505 shall additionally apply to any pending applica13 tion filed before November 29, 2000, if such pending ap14 plication is published pursuant to a request of the appli15 cant under such procedures as may be established by the

16 Director. If an application is filed on or after November

17 29, 2000, or is published pursuant to a request from the

18 applicant, and the application claims the benefit of one

19 or more prior-filed applications under section 119(e), 120,

20 or 365(c) of title 35, United States Code, then the provi21 sions of section 4505 shall apply to the prior-filed applica22 tion in determining the filing date in the United States

23 of the application.’’.
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1 SEC. 8. MISCELLANEOUS CLERICAL AMENDMENTS.

2 (a) AMENDMENTS TO TITLE 35.—The following pro3 visions of title 35, United States Code, are amended:

4 (1) Section 2(b) is amended in paragraphs

5 (2)(B) and (4)(B), by striking ‘‘, United States

6 Code’’.

7 (2) Section 3 is amended—

8 (A) in subsection (b)(2)—

9 (i) in the first sentence of subpara10 graph (B) by striking ‘‘United States

11 Code,’’;

12 (ii) in the second sentence of subpara13 graph (B)—

14 (I) by striking ‘‘United States

15 Code,’’; and

16 (II) by striking ‘‘, United States

17 Code.’’ and inserting a period; and

18 (iii) in subparagraph (C), by striking

19 ‘‘, United States Code’’; and

20 (B) in subsection (c)—

21 (i) in the subsection caption, by strik22 ing ‘‘, UNITED STATES CODE’’; and

23 (ii) by striking ‘‘United States Code,’’.

24 (3) Section 5 is amended in subsections (e) and

25 (g), by striking ‘‘, United States Code’’ each place

26 it appears.
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1 (4) The table of chapters for part I is amended

2 in the item relating to chapter 3, by striking ‘‘be3 fore’’ and inserting ‘‘Before’’.

4 (5) The item relating to section 21 in the table

5 of contents for chapter 2 is amended to read as fol6 lows:

‘‘21. Filing date and day for taking action.’’.

7 (6) The item relating to chapter 12 in the table

8 of chapters for part II is amended to read as fol9 lows:

‘‘12. Examination of Application .................................................. 131’’.

10 (7) The item relating to section 116 in the table

11 of contents for chapter 11 is amended to read as fol12 lows:

‘‘116. Inventors.’’.

13 (8) Section 156 is amended—

14 (A) in subsection (b)(3)(B), by striking

15 ‘‘paragraphs’’ and inserting ‘‘paragraph’’;

16 (B) in subsection (d)(2)(B)(i), by striking

17 ‘‘below the office’’ and inserting ‘‘below the Of18 fice’’; and

19 (C) in subsection (g)(6)(B)(iii), by striking

20 ‘‘submittted’’ and inserting ‘‘submitted’’.

21 (9) The item relating to section 183 in the table

22 of contents for chapter 17 is amended by striking

23 ‘‘of’’ and inserting ‘‘to’’.
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1 (10) Section 185 is amended by striking the

2 second period at the end of the section.

3 (11) Section 202(c)(4) is amended by striking

4 ‘‘rights;’’ and inserting ‘‘rights,’’.

5 (12) Section 203 is amended—

6 (A) in paragraph (2)—

7 (i) by striking ‘‘(2)’’ and inserting

8 ‘‘(b)’’; and

9 (ii) by striking the quotation marks

10 and comma before ‘‘as appropriate’’.

11 (B) in the first paragraph—

12 (i) by striking ‘‘(a)’’, ‘‘(b)’’, ‘‘(c)’’,

13 and (d)’’ and inserting ‘‘(1)’’, ‘‘(2)’’, ‘‘(3)’’,

14 and (4)’’, respectively; and

15 (ii) by striking ‘‘(1.’’ and inserting

16 ‘‘(a)’’.

17 (13) Section 210 is amended—

18 (A) in subsection (a)—

19 (i) in paragraph (11), by striking

20 ‘‘5901’’ and inserting ‘‘5908’’; and

21 (ii) in paragraph (20) by striking

22 ‘‘178(j)’’ and inserting ‘‘178j’’; and

23 (B) in subsection (c)—

24 (i) by striking ‘‘paragraph 202(c)(4)’’

25 and inserting ‘‘section 202(c)(4)’’; and
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1 (ii) by striking ‘‘title..’’ and inserting

2 ‘‘title.’’.

3 (14) The item relating to chapter 29 in the

4 table of chapters for part III is amended by insert5 ing a comma after ‘‘Patent’’.

6 (15) The item relating to section 256 in the

7 table of contents for chapter 25 is amended to read

8 as follows:

‘‘256. Correction of named inventor.’’.

9 (16) Section 294(c) is amended in the second

10 sentence by striking ‘‘court to’’ and inserting ‘‘court

11 of’’.

12 (17)(A) The item relating to section 374 in the

13 table of contents for chapter 37 is amended to read

14 as follows:

‘‘374. Publication of international application.’’.

15 (B) The amendment made by subparagraph (A)

16 shall take effect on November 29, 2000.

17 (18) Section 371(b) is amended by adding at

18 the end a period.

19 (19) Section 371(d) is amended by adding at

20 the end a period.

21 (20) Paragraphs (1), (2), and (3) of section

22 376(a) are each amended by striking the semicolon

23 and inserting a period.

24 (b) OTHER AMENDMENTS.—
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1 (1) Section 4732(a) of the Intellectual Property

2 and Communications Omnibus Reform Act of 1999

3 is amended—

4 (A) in paragraph (9)(A)(ii), by inserting

5 ‘‘in subsection (b),’’ after ‘‘(ii)’’; and

6 (B) in paragraph (10)(A), by inserting

7 after ‘‘title 35, United States Code,’’ the fol8 lowing: ‘‘other than sections 1 through 6 (as

9 amended by chapter 1 of this subtitle),’’.

10 (2) Section 4802(1) of that Act is amended by

11 inserting ‘‘to’’ before ‘‘citizens’’.

12 (3) Section 4804 of that Act is amended—

13 (A) in subsection (b), by striking ‘‘11(a)’’

14 and inserting ‘‘10(a)’’; and

15 (B) in subsection (c), by striking ‘‘13’’ and

16 inserting ‘‘12’’.

17 (4) Section 4402(b)(1) of that Act is amended

18 by striking ‘‘in the fourth paragraph’’.

19 SEC. 9. TECHNICAL CORRECTIONS IN TRADEMARK LAW.

20 (a) AWARD OF DAMAGES.—Section 35(a) of the Act

21 of July 5, 1946 (commonly referred to as the ‘‘Trademark

22 Act of 1946’’) (15 U.S.C. 1117(a)), is amended by strik23 ing ‘‘a violation under section 43(a), (c), or (d),’’ and in24 serting ‘‘a violation under section 43(a) or (d),’’.
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1 (b) CLERICAL AMENDMENTS.—The Trademark Act

2 of 1946 is further amended as follows:

3 (1) Section 1(d)(1) is amended in the first sen4 tence by striking ‘‘specifying the date of the appli5 cant’s first use’’ and all that follows through the end

6 of the sentence and inserting ‘‘specifying the date of

7 the applicant’s first use of the mark in commerce

8 and those goods or services specified in the notice of

9 allowance on or in connection with which the mark

10 is used in commerce.’’.

11 (2) Section 23(c) is amended by striking the

12 second comma after ‘‘numeral’’.

13 (3) Section 33(b)(8) is amended by aligning the

14 text with paragraph (7).

15 (4) Sections 34(d)(11) and 35(b) are each

16 amended by striking ‘‘of 1954’’ and inserting ‘‘of

17 1986’’.

Æ