106TH CONGRESS

2D SESSION H. R. 4870

AN ACT

To make technical corrections in patent, copyright,

and trademark laws.

106TH CONGRESS

2D SESSION H. R. 4870

AN ACT

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,
2

•HR 4870 EH

1 SECTION 1. SHORT TITLE.

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

3 Technical Amendments Act of 2000’’.

4 SEC. 2. OFFICERS AND EMPLOYEES.

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

6 States Code, is amended—

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

8 and inserting ‘‘Commissioner’’; and

9 (B) by striking ‘‘Director’s’’ each place it ap10 pears and inserting ‘‘Commissioner’s’’.

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

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

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

14 and inserting ‘‘Commissioner’’.

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

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

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

18 (B) Section 3(b)(2) of title 35, United States Code,

19 is amended—

20 (i) in the paragraph heading, by striking ‘‘COM21 MISSIONERS’’ and inserting ‘‘ASSISTANT COMMIS22 SIONERS’’;

23 (ii) in subparagraph (A), in the last sentence—

24 (I) by striking ‘‘a Commissioner’’ and in25 serting ‘‘an Assistant Commissioner’’; and
3

•HR 4870 EH

1 (II) by striking ‘‘the Commissioner’’ and

2 inserting ‘‘the Assistant Commissioner’’;

3 (iii) in subparagraph (B)—

4 (I) by striking ‘‘Commissioners’’ each place

5 it appears and inserting ‘‘Assistant Commis6 sioners’’;

7 (II) by striking ‘‘Commissioners’ ’’ each

8 place it appears and inserting ‘‘Assistant Com9 missioners’ ’’; and

10 (iii) in subparagraph (C), by striking ‘‘Commis11 sioners’’ and inserting ‘‘Assistant Commissioners’’.

12 (C) Section 3(f) of title 35, United States Code, is

13 amended in paragraphs (2) and (3), by striking ‘‘the Com14 missioner’’ each place it appears and inserting ‘‘the Assist15 ant Commissioner’’.

16 (D) Section 13 of title 35, United States Code, is

17 amended—

18 (i) by striking ‘‘Commissioner of’’ each place it

19 appears and inserting ‘‘Assistant Commissioner for’’;

20 and

21 (ii) by striking ‘‘Commissioners’’ and inserting

22 ‘‘Assistant Commissioners’’.

23 (E) Chapter 17 of title 35, United States Code, is

24 amended by striking ‘‘Commissioner of Patents’’ each
4

•HR 4870 EH

1 place it appears and inserting ‘‘Assistant Commissioner

2 for Patents’’.

3 (F) Section 297 of title 35, United States Code, is

4 amended by striking ‘‘Commissioner of Patents’’ each

5 place it appears and inserting ‘‘Commissioner’’.

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

7 striking ‘‘Commissioner for Trademarks’’ each place it ap8 pears and inserting ‘‘Assistant Commissioner for Trade9 marks’’.

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

11 amended by striking

12 ‘‘Under Secretary of Commerce for Intellectual

13 Property and Director of the United States Patent

14 and Trademark Office.’’

15 and inserting

16 ‘‘Under Secretary of Commerce for Intellectual

17 Property and Commissioner of the United States

18 Patent and Trademark Office.’’.

19 (6)(A) Section 303 of title 35, United States Code,

20 is amended—

21 (i) in the section heading by striking ‘‘Direc22 tor ’’ and inserting ‘‘Commissioner’’; and

23 (ii) by striking ‘‘Director’s’’ and inserting

24 ‘‘Commissioner’s’’.
5

•HR 4870 EH

1 (B) The item relating to section 303 in the table of

2 sections for chapter 30 of title 35, United States Code,

3 is amended by striking ‘‘Director’’ and inserting ‘‘Com4 missioner’’.

5 (b) ADDITIONAL CLERICAL AMENDMENTS.—

6 (1) The following provisions of law are amended

7 by striking ‘‘Director’’ each place it appears and in8 serting ‘‘Commissioner’’.

9 (A) Section 9(p)(1)(B) of the Small Busi10 ness Act (15 U.S.C. 638(p)(1)(B).

11 (B) Section 19 of the Tennessee Valley

12 Authority Act of 1933 (16 U.S.C. 831r).

13 (C) Section 182(b)(2)(A) of the Trade Act

14 of 1974 (19 U.S.C. 2242(b)(2)(A)).

15 (D) Section 302(b)(2)(D) of the Trade Act

16 of 1974 (19 U.S.C. 2412(b)(2)(D)).

17 (E) Section 702(d) of the Federal Food,

18 Drug, and Cosmetic Act (21 U.S.C. 372(d)).

19 (F) Section 1295(a)(4)(B) of title 28,

20 United States Code.

21 (G) Section 1744 of title 28, United States

22 Code.

23 (H) Section 151 of the Atomic Energy Act

24 of 1954 (42 U.S.C. 2181).
6

•HR 4870 EH

1 (I) Section 152 of the Atomic Energy Act

2 of 1954 (42 U.S.C. 2182).

3 (J) Section 305 of the National Aero4 nautics and Space Act of 1958 (42 U.S.C.

5 2457).

6 (K) Section 12(a) of the Solar Heating

7 and Cooling Demonstration Act of 1974 (42

8 U.S.C. 5510(a)).

9 (L) Section 10(i) of the Trading with the

10 enemy Act (50 U.S.C. App. 10(i)).

11 (M) Section 4203 of the Intellectual Prop12 erty and Communications Omnibus Reform Act

13 of 1999, as enacted by section 1000(a)(9) of

14 Public Law 106–113.

15 (2) The item relating to section 1744 in the

16 table of sections for chapter 115 of title 28, United

17 States Code, is amended by striking ‘‘generally’’ and

18 inserting ‘‘, generally’’.

19 (c) REFERENCES.—Any reference in any other Fed20 eral law, Executive order, rule, regulation, or delegation

21 of authority, or any document of or pertaining to the Pat22 ent and Trademark Office—

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

24 and Trademark Office or to the Commissioner of

25 Patents and Trademarks is deemed to refer to the
7

•HR 4870 EH

1 Under Secretary of Commerce for Intellectual Prop2 erty and Commissioner of the United States Patent

3 and Trademark Office;

4 (2) to the Commissioner for Patents is deemed

5 to refer to the Assistant Commissioner for Patents;

6 and

7 (3) to the Commissioner for Trademarks is

8 deemed to refer to the Assistant Commissioner for

9 Trademarks.

10 SEC. 3. CLARIFICATION OF REEXAMINATION PROCEDURE

11 ACT OF 1999; TECHNICAL AMENDMENTS.

12 (a) OPTIONAL INTER PARTES REEXAMINATION PRO13 CEDURES.—Title 35, United States Code, is amended as

14 follows:

15 (1) Section 311 is amended—

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

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

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

19 the requesting person is the owner of the pat20 ent, the’’ and inserting ‘‘The’’.

21 (2) Section 312 is amended—

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

23 sentence; and

24 (B) by striking ‘‘, if any’’.

25 (3) Section 314(b)(1) is amended—
8

•HR 4870 EH

1 (A) by striking ‘‘(1) This’’ and all that fol2 lows through ‘‘(2)’’ and inserting ‘‘(1)’’;

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

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

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

6 and

7 (C) by redesignating paragraph (3) as

8 paragraph (2).

9 (4) Section 315(c) is amended by striking

10 ‘‘United States Code,’’.

11 (5) Section 317 is amended—

12 (A) in subsection (a), by striking ‘‘patent

13 owner nor the third-party requester, if any, nor

14 privies of either’’ and inserting ‘‘third-party re15 quester nor its privies’’; and

16 (B) in subsection (b), by striking ‘‘United

17 States Code,’’.

18 (b) CONFORMING AMENDMENTS.—

19 (1) APPEAL TO THE BOARD OF PATENT AP20 PEALS AND INTERFERENCES.—Subsections (a), (b),

21 and (c) of section 134 of title 35, United States

22 Code, are each amended by striking ‘‘administrative

23 patent judge’’ each place it appears and inserting

24 ‘‘primary examiner’’.
9

•HR 4870 EH

1 (2) PROCEEDING ON APPEAL.—Section 143 of

2 title 35, United States Code, is amended by amend3 ing the third sentence to read as follows: ‘‘In an ex

4 parte case or any reexamination case, the Commis5 sioner shall submit to the court in writing the

6 grounds for the decision of the Patent and Trade7 mark Office, addressing all the issues involved in the

8 appeal. The court shall, before hearing an appeal,

9 give notice of the time and place of the hearing to

10 the Commissioner and the parties in the appeal.’’.

11 (c) CLERICAL AMENDMENTS.—

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

13 and Communications Omnibus Reform Act of 1999,

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

15 III’’.

16 (2) Section 4604(b) of that Act is amended by

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

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

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

20 and Communications Omnibus Reform Act, as enacted by

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

22 any reexamination filed in the United States Patent and

23 Trademark Office on or after the date of the enactment

24 of Public Law 106–113.
10

•HR 4870 EH

1 SEC. 4. PATENT AND TRADEMARK EFFICIENCY ACT AMEND2 MENTS.

3 (a) DEPUTY COMMISSIONER.—

4 (1) Section 17(b) of the Act of July 5, 1946

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

6 1946’’) (15 U.S.C. 1067(b)), is amended by insert7 ing ‘‘the Deputy Commissioner,’’ after ‘‘Commis8 sioner,’’.

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

10 is amended by inserting ‘‘the Deputy Commis11 sioner,’’ after ‘‘Commissioner,’’.

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

13 title 35, United States Code, is amended—

14 (1) in subsection (i), by inserting ‘‘, privileged,’’

15 after ‘‘personnel’’; and

16 (2) by adding at the end the following new sub17 section:

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

19 Section 4 shall not apply to voting members of the Advi20 sory Committees.’’.

21 (c) MISCELLANEOUS.—Section 153 of title 35,

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

23 by an officer of the Patent and Trademark Office des24 ignated by the Commissioner,’’.
11

•HR 4870 EH

1 SEC. 5. 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 as in effect on November 29, 2000, 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. 6. DOMESTIC PUBLICATION OF PATENT APPLICA12 TIONS PUBLISHED ABROAD.

13 Subtitle E of title IV of the Intellectual Property and

14 Communications Omnibus Reform Act of 1999, as enacted

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

16 as 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
12

•HR 4870 EH

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:
13

•HR 4870 EH

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.’’.
14

•HR 4870 EH

1 SEC. 7. 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 (a)(2)(B), by striking

9 ‘‘United States Code,’’;

10 (B) in subsection (b)(2)—

11 (i) in the first sentence of subpara12 graph (A), by striking ‘‘, United States

13 Code’’;

14 (ii) in the first sentence of subpara15 graph (B)—

16 (I) by striking ‘‘United States

17 Code,’’; and

18 (II) by striking ‘‘, United States

19 Code’’;

20 (iii) in the second sentence of sub21 paragraph (B)—

22 (I) by striking ‘‘United States

23 Code,’’; and

24 (II) by striking ‘‘, United States

25 Code.’’ and inserting a period;
15

•HR 4870 EH

1 (iv) in the last sentence of subpara2 graph (B), by striking ‘‘, United States

3 Code’’; and

4 (v) in subparagraph (C), by striking

5 ‘‘, United States Code’’; and

6 (C) in subsection (c)—

7 (i) in the subsection caption, by strik8 ing ‘‘, UNITED STATES CODE’’; and

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

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

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

12 it appears.

13 (4) The table of chapters for part I is amended

14 in the item relating to chapter 3, by striking ‘‘be15 fore’’ and inserting ‘‘Before’’.

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

17 of contents for chapter 2 is amended to read as fol18 lows:

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

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

20 of chapters for part II is amended to read as fol21 lows:

‘‘12. Examination of Application .................................................. 131’’.
16

•HR 4870 EH

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

2 of contents for chapter 11 is amended to read as fol3 lows:

‘‘116. Inventors.’’.

4 (8) Section 154(b)(4) is amended by striking ‘‘,

5 United States Code,’’.

6 (9) Section 156 is amended—

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

8 ‘‘paragraphs’’ and inserting ‘‘paragraph’’;

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

10 ‘‘below the office’’ and inserting ‘‘below the Of11 fice’’; and

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

13 ‘‘submittted’’ and inserting ‘‘submitted’’.

14 (10) The item relating to section 183 in the

15 table of contents for chapter 17 is amended by strik16 ing ‘‘of’’ and inserting ‘‘to’’.

17 (11) Section 185 is amended by striking the

18 second period at the end of the section.

19 (12) Section 201(a) is amended—

20 (A) by striking ‘‘United States Code,’’; and

21 (B) by striking ‘‘5, United States Code.’’

22 and inserting ‘‘5.’’.

23 (13) Section 202 is amended—
17

•HR 4870 EH

1 (A) in subsection (b)(4), by striking ‘‘last

2 paragraph of section 203(2)’’ and inserting

3 ‘‘section 203(b)’’; and

4 (B) in subsection (c)—

5 (i) in paragraph (4) by striking

6 ‘‘rights;’’ and inserting ‘‘rights,’’; and

7 (ii) in paragraph (5) by striking ‘‘of

8 the United States Code’’.

9 (14) Section 203 is amended—

10 (A) in paragraph (2)—

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

12 ‘‘(b)’’;

13 (ii) by striking the quotation marks

14 and comma before ‘‘as appropriate’’; and

15 (iii) by striking ‘‘paragraphs (a) and

16 (c)’’ and inserting ‘‘paragraphs (1) and (3)

17 of subsection (a)’’; and

18 (B) in the first paragraph—

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

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

21 and (4)’’, respectively; and

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

23 ‘‘(a)’’.

24 (15) Section 209 is amended in subsections (a)

25 and (f)(1), by striking ‘‘of the United States Code’’.
18

•HR 4870 EH

1 (16) Section 210 is amended—

2 (A) in subsection (a)—

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

4 ‘‘5901’’ and inserting ‘‘5908’’; and

5 (ii) in paragraph (20) by striking

6 ‘‘178(j)’’ and inserting ‘‘178j’’; and

7 (B) in subsection (c)—

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

9 and inserting ‘‘section 202(c)(4)’’; and

10 (ii) by striking ‘‘title..’’ and inserting

11 ‘‘title.’’.

12 (17) The item relating to chapter 29 in the

13 table of chapters for part III is amended by insert14 ing a comma after ‘‘Patent’’.

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

16 table of contents for chapter 25 is amended to read

17 as follows:

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

18 (19) Section 294 is amended—

19 (A) in subsection (b), by striking ‘‘United

20 States Code,’’; and

21 (B) in subsection (c), in the second sen22 tence by striking ‘‘court to’’ and inserting

23 ‘‘court of’’.
19

•HR 4870 EH

1 (20)(A) The item relating to section 374 in the

2 table of contents for chapter 37 is amended to read

3 as follows:

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

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

5 shall take effect on November 29, 2000.

6 (21) Section 371(b) is amended by adding at

7 the end a period.

8 (22) Section 371(d) is amended by adding at

9 the end a period.

10 (23) Paragraphs (1), (2), and (3) of section

11 376(a) are each amended by striking the semicolon

12 and inserting a period.

13 (b) OTHER AMENDMENTS.—

14 (1) Section 4732(a) of the Intellectual Property

15 and Communications Omnibus Reform Act of 1999

16 is amended—

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

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

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

20 after ‘‘title 35, United States Code,’’ the fol21 lowing: ‘‘other than sections 1 through 6 (as

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

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

24 inserting ‘‘to’’ before ‘‘citizens’’.

25 (3) Section 4804 of that Act is amended—
20

•HR 4870 EH

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

2 and inserting ‘‘10(a)’’; and

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

4 inserting ‘‘12’’.

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

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

7 SEC. 8. TECHNICAL CORRECTIONS IN TRADEMARK LAW.

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

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

10 Act of 1946’’) (15 U.S.C. 1117(a)), is amended by strik11 ing ‘‘a violation under section 43(a), (c), or (d),’’ and in12 serting ‘‘a violation under section 43(a) or (d),’’.

13 (b) ADDITIONAL TECHNICAL AMENDMENTS.—The

14 Trademark Act of 1946 is further amended as follows:

15 (1) Section 1(d)(1) (15 U.S.C. 1051(d)(1)) is

16 amended in the first sentence by striking ‘‘specifying

17 the date of the applicant’s first use’’ and all that fol18 lows through the end of the sentence and inserting

19 ‘‘specifying the date of the applicant’s first use of

20 the mark in commerce and those goods or services

21 specified in the notice of allowance on or in connec22 tion with which the mark is used in commerce.’’.

23 (2) Section 1(e) (15 U.S.C. 1051(e)) is amend24 ed to read as follows:
21

•HR 4870 EH

1 ‘‘(e) If the applicant is not domiciled in the United

2 States the applicant may designate, by a document filed

3 in the United States Patent and Trademark Office, the

4 name and address of a person resident in the United

5 States on whom may be served notices or process in pro6 ceedings affecting the mark. Such notices or process may

7 be served upon the person so designated by leaving with

8 that person or mailing to that person a copy thereof at

9 the address specified in the last designation so filed. If

10 the person so designated cannot be found at the address

11 given in the last designation, or if the registrant does not

12 designate by a document filed in the United States Patent

13 and Trademark Office the name and address of a person

14 resident in the United States on whom may be served no15 tices or process in proceedings affecting the mark, such

16 notices or process may be served on the Commissioner.’’;

17 (3) Section 8(f) (15 U.S.C. 1058(f)) is amend18 ed to read as follows:

19 ‘‘(f) If the registrant is not domiciled in the United

20 States, the registrant may designate, by a document filed

21 in the United States Patent and Trademark Office, the

22 name and address of a person resident in the United

23 States on whom may be served notices or process in pro24 ceedings affecting the mark. Such notices or process may

25 be served upon the person so designated by leaving with
22

•HR 4870 EH

1 that person or mailing to that person a copy thereof at

2 the address specified in the last designation so filed. If

3 the person so designated cannot be found at the address

4 given in the last designation, or if the registrant does not

5 designate by a document filed in the United States Patent

6 and Trademark Office the name and address of a person

7 resident in the United States on whom may be served no8 tices or process in proceedings affecting the mark, such

9 notices or process may be served on the Commissioner.’’;

10 (4) Section 9(c) (15 U.S.C. 1059(c)) is amend11 ed to read as follows:

12 ‘‘(c) If the registrant is not domiciled in the United

13 States the registrant may designate, by a document filed

14 in the United States Patent and Trademark Office, the

15 name and address of a person resident in the United

16 States on whom may be served notices or process in pro17 ceedings affecting the mark. Such notices or process may

18 be served upon the person so designated by leaving with

19 that person or mailing to that person a copy thereof at

20 the address specified in the last designation so filed. If

21 the person so designated cannot be found at the address

22 given in the last designation, or if the registrant does not

23 designate by a document filed in the United States Patent

24 and Trademark Office the name and address of a person

25 resident in the United States on whom may be served no-
23

•HR 4870 EH

1 tices or process in proceedings affecting the mark, such

2 notices or process may be served on the Commissioner.’’;

3 (5) Subsections (a) and (b) of section 10 (15

4 U.S.C. 1060(a) and (b)) are amended to read as fol5 lows:

6 ‘‘(a)(1) A registered mark or a mark for which an

7 application to register has been filed shall be assignable

8 with the good will of the business in which the mark is

9 used, or with that part of the good will of the business

10 connected with the use of and symbolized by the mark.

11 Notwithstanding the preceding sentence, no application to

12 register a mark under section 1(b) shall be assignable

13 prior to the filing of an amendment under section 1(c)

14 to bring the application into conformity with section 1(a)

15 or the filing of the verified statement of use under section

16 1(d), except for an assignment to a successor to the busi17 ness of the applicant, or portion thereof, to which the

18 mark pertains, if that business is ongoing and existing.

19 ‘‘(2) In any assignment authorized by this section,

20 it shall not be necessary to include the good will of the

21 business connected with the use of and symbolized by any

22 other mark used in the business or by the name or style

23 under which the business is conducted.

24 ‘‘(3) Assignments shall be by instruments in writing

25 duly executed. Acknowledgment shall be prima facie evi-
24

•HR 4870 EH

1 dence of the execution of an assignment, and when the

2 prescribed information reporting the assignment is re3 corded in the United States Patent and Trademark Office,

4 the record shall be prima facie evidence of execution.

5 ‘‘(4) An assignment shall be void against any subse6 quent purchaser for valuable consideration without notice,

7 unless the prescribed information reporting the assign8 ment is recorded in the United States Patent and Trade9 mark Office within 3 months after the date of the assign10 ment or prior to the subsequent purchase.

11 ‘‘(5) The United States Patent and Trademark Office

12 shall maintain a record of information on assignments, in

13 such form as may be prescribed by the Director.

14 ‘‘(b) An assignee not domiciled in the United States

15 may designate by a document filed in the United States

16 Patent and Trademark Office the name and address of

17 a person resident in the United States on whom may be

18 served notices or process in proceedings affecting the

19 mark. Such notices or process may be served upon the

20 person so designated by leaving with that person or mail21 ing to that person a copy thereof at the address specified

22 in the last designation so filed. If the person so designated

23 cannot be found at the address given in the last designa24 tion, or if the assignee does not designate by a document

25 filed in the United States Patent and Trademark Office
25

•HR 4870 EH

1 the name and address of a person resident in the United

2 States on whom may be served notices or process in pro3 ceedings affecting the mark, such notices or process may

4 be served upon the Commissioner.’’;

5 (7) Section 23(c) (15 U.S.C. 1091(c)) is

6 amended by striking the second comma after ‘‘nu7 meral’’.

8 (8) Section 33(b)(8) (15 U.S.C. 1115(b)(8)) is

9 amended by aligning the text with paragraph (7).

10 (9) Section 34(d)(1)(A) (15 U.S.C.

11 1116(d)(1)(A)) is amended by striking ‘‘section

12 110’’ and all that follows through ‘‘(36 U.S.C. 380)’’

13 and inserting ‘‘section 220506 of title 36, United

14 States Code,’’.

15 (10) Section 34(d)(1)(B)(ii) (15 U.S.C.

16 1116(d)(1)(B)(ii)) is amended by striking ‘‘section

17 110’’ and all that follows through ‘‘(36 U.S.C. 380)’’

18 and inserting ‘‘section 220506 of title 36, United

19 States Code’’.

20 (11) Section 34(d)(11) is amended by striking

21 ‘‘6621 of the Internal Revenue Code of 1954’’ and

22 inserting ‘‘6621(a)(2) of the Internal Revenue Code

23 of 1986’’.

24 (12) Section 35(b) (15 U.S.C. 1117(b)) is

25 amended—
26

•HR 4870 EH

1 (A) by striking ‘‘section 110’’ and all that

2 follows through ‘‘(36 U.S.C. 380)’’ and insert3 ing ‘‘section 220506 of title 36, United States

4 Code,’’; and

5 (B) by striking ‘‘6621 of the Internal Rev6 enue Code of 1954’’ and inserting ‘‘6621(a)(2)

7 of the Internal Revenue Code of 1986’’.

8 (13) Section 44(e) (15 U.S.C. 1126(e)) is

9 amended by striking ‘‘a certification’’ and inserting

10 ‘‘a true copy, a photocopy, a certification,’’.

11 SEC. 9. ADDITIONAL CLERICAL AMENDMENT.

12 The Patent and Trademark Fee Fairness Act of 1999

13 (113 Stat. 1537–546 et seq.), as enacted by section

14 1000(a)(9) of Public Law 106–113, is amended in section

15 4203, by striking ‘‘111(a)’’ and inserting ‘‘1113(a)’’.

Passed the House of Representatives September 19,

2000.

Attest:

Clerk.