IB

Union Calendar No. 508

106TH CONGRESS

2D SESSION H. R. 4870

[Report No. 106–853]

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

SEPTEMBER 14, 2000

Reported with an amendment, committed to the Committee of the Whole

House on the State of the Union, and ordered to be printed

[Strike out all after the enacting clause and insert the part printed in italic]

[For text of introduced bill, see copy of bill as introduced on July 18, 2000]

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’’.
2

•HR 4870 RH

1 SEC. 2. OFFICERS AND EMPLOYEES.

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

3 States Code, is amended—

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

5 and inserting ‘‘Commissioner’’; and

6 (B) by striking ‘‘Director’s’’ each place it ap7 pears and inserting ‘‘Commissioner’s’’.

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

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

10 amended by striking ‘‘Director’’ each place it appears and

11 inserting ‘‘Commissioner’’.

12 (3) Title 35, United States Code, is amended by strik13 ing ‘‘Commissioner for Patents’’ each place it appears and

14 inserting ‘‘Assistant Commissioner for Patents’’.

15 (4) Title 35, United States Code, is amended by strik16 ing ‘‘Commissioner for Trademarks’’ each place it appears

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

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

19 amended by striking

20 ‘‘Under Secretary of Commerce for Intellectual

21 Property and Director of the United States Patent

22 and Trademark Office.’’

23 and inserting

24 ‘‘Under Secretary of Commerce for Intellectual

25 Property and Commissioner of the United States Pat26 ent and Trademark Office.’’
3

•HR 4870 RH

1 (b) REFERENCES.—Any reference in any other Federal

2 law, Executive order, rule, regulation, or delegation of au3 thority, or any document of or pertaining to the Patent and

4 Trademark Office—

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

6 and Trademark Office or to the Commissioner of Pat7 ents and Trademarks is deemed to refer to the Under

8 Secretary of Commerce for Intellectual Property and

9 Commissioner of the United States Patent and Trade10 mark Office;

11 (2) to the Commissioner for Patents is deemed to

12 refer to the Assistant Commissioner for Patents; and

13 (3) to the Commissioner for Trademarks is

14 deemed to refer to the Assistant Commissioner for

15 Trademarks.

16 SEC. 3. ADJUSTMENT OF TRADEMARK FEES.

17 Section 4203 of the Intellectual Property and Commu18 nications Omnibus Reform Act of 1999, as enacted by sec19 tion 1000(a)(9) of Public Law 106–113, is amended by

20 striking ‘‘Director’’ and inserting ‘‘Commissioner’’.
4

•HR 4870 RH

1 SEC. 4. OPTIONAL INTER PARTES REEXAMINATION PROCE2 DURE ACT OF 1999; TECHNICAL AMEND3 MENTS.

4 (a) OPTIONAL INTER PARTES REEXAMINATION PRO5 CEDURES.—Title 35, United States Code, is amended as fol6 lows:

7 (1) Section 311 is amended—

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

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

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

11 the requesting person is the owner of the patent,

12 the’’ and inserting ‘‘The’’.

13 (2) Section 312 is amended—

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

15 sentence; and

16 (B) by striking ‘‘, if any’’.

17 (3) Section 314(b)(1) is amended—

18 (A) by striking ‘‘(1) This’’ and all that fol19 lows through ‘‘(2)’’ and inserting ‘‘(1)’’;

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

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

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

23 and

24 (C) by redesignating paragraph (3) as

25 paragraph (2).
5

•HR 4870 RH

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

2 ‘‘United States Code,’’.

3 (5) Section 317 is amended—

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

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

6 privies of either’’ and inserting ‘‘third-party re7 quester nor its privies’’, and

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

9 States Code,’’.

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

11 and (c) of section 134 of title 35, United States Code, are

12 each amended by striking ‘‘administrative patent judge’’

13 each place it appears and inserting ‘‘primary examiner’’.

14 (c) CLERICAL AMENDMENTS.—

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

16 and Communications Omnibus Reform Act of 1999,

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

18 III’’.

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

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

21 (d) EFFECTIVE DATE.—The amendments made by sec22 tions 4605(c) and 4605(e) of the Intellectual Property and

23 Communications Omnibus Reform Act, as enacted by sec24 tion 1000(a)(9) of Public Law 106–113, shall apply to any

25 reexamination filed in the United States Patent and Trade-
6

•HR 4870 RH

1 mark Office on or after the date of the enactment of Public

2 Law 106–113.

3 SEC. 5. PATENT AND TRADEMARK EFFICIENCY ACT AMEND4 MENTS.

5 (a) DEPUTY DIRECTOR.—

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

7 is amended by striking ‘‘Deputy Under Secretary of

8 Commerce for Intellectual Property and Deputy Di9 rector of the United States Patent and Trademark Of10 fice.’’.

11 (2) Section 17(b) of the Act of July 5, 1946

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

13 1946’’) (15 U.S.C. 1067(b)), is amended by inserting

14 ‘‘the Deputy Commissioner,’’ after ‘‘Commissioner,’’.

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

16 is amended by inserting ‘‘the Deputy Commissioner,’’

17 after ‘‘Commissioner,’’.

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

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

20 end the following new subsection:

21 ‘‘(j) INAPPLICABILITY OF PATENT PROHIBITION.—Sec22 tion 4 shall not apply to voting members of the Advisory

23 Committees.’’.
7

•HR 4870 RH

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

2 title 31, United States Code, is amended by adding at the

3 end the following new subparagraph:

4 ‘‘(I) The United States Patent and Trademark

5 Office.’’.

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

7 States Code, is amended by striking ‘‘and attested by an

8 officer of the Patent and Trademark Office designated by

9 the Commissioner,’’.

10 SEC. 6. DOMESTIC PUBLICATION OF FOREIGN FILED PAT11 ENT APPLICATIONS ACT OF 1999 AMEND12 MENTS.

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

14 as in effect on November 29, 2000, is amended—

15 (1) by striking ‘‘on which the Patent and Trade16 mark Office receives a copy of the’’ and inserting

17 ‘‘of’’; and

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

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

20 SEC. 7. DOMESTIC PUBLICATION OF PATENT APPLICATIONS

21 PUBLISHED ABROAD.

22 Subtitle E of title IV of the Intellectual Property and

23 Communications Omnibus Reform Act of 1999, as enacted

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

25 as follows:
8

•HR 4870 RH

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

2 ‘‘SEC. 4505. PRIOR ART EFFECT OF PUBLISHED APPLICA3 TIONS.

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

5 amended to read as follows:

6 ‘‘ ‘(e) the invention was described in (1) an application

7 for patent, published under section 122(b), by another filed

8 in the United States before the invention by the applicant

9 for patent or (2) a patent granted on an application for

10 patent by another filed in the United States before the in11 vention by the applicant for patent, except that an inter12 national application filed under the treaty defined in sec13 tion 351(a) shall have the effects for the purposes of this

14 subsection of an application filed in the United States if

15 and only if the international application designated the

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

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

18 (2) Section 4507 is amended—

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

20 11’’ and inserting ‘‘Section 10’’;

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

22 12’’ and inserting ‘‘Section 11’’.

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

24 13’’ and inserting ‘‘Section 12’’;
9

•HR 4870 RH

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

2 13’’ and inserting ‘‘11 and 12’’;

3 (E) in section 374 of title 35, United States

4 Code, as amended by paragraph (10), by striking

5 ‘‘confer the same rights and shall have the same

6 effect under this title as an application for pat7 ent published’’ and inserting ‘‘be deemed a publi8 cation’’; and

9 (F) by adding at the end the following:

10 ‘‘(12) The item relating to section 374 in the

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

12 States Code, is amended to read as follows:

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

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

14 ‘‘SEC. 4508. EFFECTIVE DATE.

15 ‘‘Except as otherwise provided in this section, sections

16 4502 through 4507, and the amendments made by such sec17 tions, shall take effect on November 29, 2000, and shall

18 apply only to applications (including international appli19 cations designating the United States) filed on or after that

20 date. The amendments made by sections 4504 and 4505

21 shall additionally apply to any pending application filed

22 before November 29, 2000, if such pending application is

23 published pursuant to a request of the applicant under such

24 procedures as may be established by the Director. If an ap25 plication is filed on or after November 29, 2000, or is pub-
10

•HR 4870 RH

1 lished pursuant to a request from the applicant, and the

2 application claims the benefit of one or more prior-filed ap3 plications under section 119(e), 120, or 365(c) of title 35,

4 United States Code, then the provisions of section 4505 shall

5 apply to the prior-filed application in determining the fil6 ing date in the United States of the application.’’.

7 SEC. 8. MISCELLANEOUS CLERICAL AMENDMENTS.

8 (a) AMENDMENTS TO TITLE 35.—The following provi9 sions of title 35, United States Code, are amended:

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

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

12 Code’’.

13 (2) Section 3 is amended—

14 (A) in subsection (a)(2)(B), by striking

15 ‘‘United States Code,’’;

16 (B) in subsection (b)(2)—

17 (i) in the first sentence of subpara18 graph (A), by striking ‘‘, United States

19 Code’’;

20 (ii) in the first sentence of subpara21 graph (B)—

22 (I) by striking ‘‘United States

23 Code,’’; and

24 (II) by striking ‘‘, United States

25 Code’’;
11

•HR 4870 RH

1 (iii) in the second sentence of subpara2 graph (B)—

3 (I) by striking ‘‘United States

4 Code,’’; and

5 (II) by striking ‘‘, United States

6 Code.’’ and inserting a period;

7 (iv) in the last sentence of subpara8 graph (B), by striking ‘‘, United States

9 Code’’; and

10 (v) in subparagraph (C), by striking ‘‘,

11 United States Code’’; and

12 (C) in subsection (c)—

13 (i) in the subsection caption, by strik14 ing ‘‘, UNITED STATES CODE’’; and

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

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

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

18 appears.

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

20 in the item relating to chapter 3, by striking ‘‘be21 fore’’ and inserting ‘‘Before’’.

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

23 of contents for chapter 2 is amended to read as fol24 lows:

‘‘21. Filing date and day for taking action.’’.
12

•HR 4870 RH

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

2 of chapters for part II is amended to read as follows:

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

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

4 of contents for chapter 11 is amended to read as fol5 lows:

‘‘116. Inventors.’’.

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

7 United States Code,’’.

8 (9) Section 156 is amended—

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

10 ‘‘paragraphs’’ and inserting ‘‘paragraph’’;

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

12 ‘‘below the office’’ and inserting ‘‘below the Of13 fice’’; and

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

15 ‘‘submittted’’ and inserting ‘‘submitted’’.

16 (10) The item relating to section 183 in the table

17 of contents for chapter 17 is amended by striking ‘‘of’’

18 and inserting ‘‘to’’.

19 (11) Section 185 is amended by striking the sec20 ond period at the end of the section.

21 (12) Section 201(a) is amended—

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

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

24 and inserting ‘‘5.’’.
13

•HR 4870 RH

1 (13) Section 202 is amended—

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

3 paragraph of section 203(2)’’ and inserting ‘‘sec4 tion 203(b)’’; and

5 (B) in subsection (c)—

6 (i) in paragraph (4) by striking

7 ‘‘rights;’’ and inserting ‘‘rights,’’; and

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

9 the United States Code’’.

10 (14) Section 203 is amended—

11 (A) in paragraph (2)—

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

13 ‘‘(b)’’;

14 (ii) by striking the quotation marks

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

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

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

18 of subsection (a)’’; and

19 (B) in the first paragraph—

20 (i) by striking ‘‘(a)’’, ‘‘(b)’’, ‘‘(c)’’, and

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

22 (4)’’, respectively; and

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

24 ‘‘(a)’’.
14

•HR 4870 RH

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

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

3 (16) Section 210 is amended—

4 (A) in subsection (a)—

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

6 ‘‘5901’’ and inserting ‘‘5908’’; and

7 (ii) in paragraph (20) by striking

8 ‘‘178(j)’’ and inserting ‘‘178j’’; and

9 (B) in subsection (c)—

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

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

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

13 ‘‘title.’’.

14 (17) The item relating to chapter 29 in the table

15 of chapters for part III is amended by inserting a

16 comma after ‘‘Patent’’.

17 (18) The item relating to section 256 in the table

18 of contents for chapter 25 is amended to read as fol19 lows:

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

20 (19) Section 294 is amended—

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

22 States Code,’’; and

23 (B) in subsection (c), in the second sentence

24 by striking ‘‘court to’’ and inserting ‘‘court of’’.
15

•HR 4870 RH

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

2 table of contents for chapter 37 is amended to read as

3 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 the

7 end a period.

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

9 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 is

16 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—
16

•HR 4870 RH

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 by

6 striking ‘‘in the fourth paragraph’’.

7 SEC. 9. 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 striking

11 ‘‘a violation under section 43(a), (c), or (d),’’ and inserting

12 ‘‘a violation under section 43(a) or (d),’’.

13 (b) CLERICAL AMENDMENTS.—The Trademark Act of

14 1946 is further amended as follows:

15 (1) Section 1(d)(1) is amended in the first sen16 tence by striking ‘‘specifying the date of the appli17 cant’s first use’’ and all that follows through the end

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

19 the applicant’s first use of the mark in commerce and

20 those goods or services specified in the notice of allow21 ance on or in connection with which the mark is used

22 in commerce.’’.

23 (2) Section 23(c) is amended by striking the sec24 ond comma after ‘‘numeral’’.
17

•HR 4870 RH

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

2 text with paragraph (7).

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

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

5 1986’’.
Union Calendar No. 508

106TH CONGRESS

2D SESSION H. R. 4870

[Report No. 106–853]

A BILL

To make technical corrections in patent, copyright,

and trademark laws.

SEPTEMBER 14, 2000

Reported with an amendment, committed to the Committee of the Whole House on the State of the Union,

and ordered to be printed