79–006

106TH CONGRESS REPORT " ! HOUSE OF REPRESENTATIVES 2d Session 106–853

INTELLECTUAL PROPERTY TECHNICAL AMENDMENTS ACT

OF 2000

SEPTEMBER 14, 2000.—Committed to the Committee of the Whole House on the

State of the Union and ordered to be printed

Mr. HYDE, from the Committee on the Judiciary,

submitted the following

R E P O R T

[To accompany H.R. 4870]

[Including cost estimate of the Congressional Budget Office]

The Committee on the Judiciary, to whom was referred the bill

(H.R. 4870) making technical corrections in patent, copyright, and

trademark laws, having considered the same, reports favorably

thereon with an amendment and recommends that the bill as

amended do pass.

TABLE OF CONTENTS

Page

The Amendment ......................................................................................... 2

Purpose and Summary .............................................................................. 6

Background and Need for the Legislation ................................................ 6

Hearings ...................................................................................................... 7

Committee Consideration .......................................................................... 7

Committee Oversight Findings ................................................................. 7

Committee on Government Reform Findings .......................................... 7

New Budget Authority and Tax Expenditures ........................................ 7

Congressional Budget Office Cost Estimate ............................................ 7

Constitutional Authority Statement ......................................................... 8

Section-by-Section Analysis and Discussion ............................................ 8

Changes in Existing Law Made by the Bill, as Reported ....................... 11

2

The amendment is as follows:

Strike all after the enacting clause and insert the following:

SECTION 1. SHORT TITLE.

This Act may be cited as the ‘‘Intellectual Property Technical Amendments Act

of 2000’’.

SEC. 2. OFFICERS AND EMPLOYEES.

(a) RENAMING OF OFFICERS.—(1) Title 35, United States Code, is amended—

(A) by striking ‘‘Director’’ each place it appears and inserting ‘‘Commissioner’’; and

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

(2) The Act of July 5, 1946 (commonly referred to as the ‘‘Trademark Act of

1946’’; 15 U.S.C. 1051 et seq.) is amended by striking ‘‘Director’’ each place it appears and inserting ‘‘Commissioner’’.

(3) Title 35, United States Code, is amended by striking ‘‘Commissioner for Patents’’ each place it appears and inserting ‘‘Assistant Commissioner for Patents’’.

(4) Title 35, United States Code, is amended by striking ‘‘Commissioner for

Trademarks’’ each place it appears and inserting ‘‘Assistant Commissioner for

Trademarks’’.

(5) Section 5314 of title 5, United States Code, is amended by striking

‘‘Under Secretary of Commerce for Intellectual Property and Director of the

United States Patent and Trademark Office.’’

and inserting

‘‘Under Secretary of Commerce for Intellectual Property and Commissioner

of the United States Patent and Trademark Office.’’

(b) REFERENCES.—Any reference in any other Federal law, Executive order,

rule, regulation, or delegation of authority, or any document of or pertaining to the

Patent and Trademark Office—

(1) to the Director of the United States Patent and Trademark Office or to

the Commissioner of Patents and Trademarks is deemed to refer to the Under

Secretary of Commerce for Intellectual Property and Commissioner of the

United States Patent and Trademark Office;

(2) to the Commissioner for Patents is deemed to refer to the Assistant

Commissioner for Patents; and

(3) to the Commissioner for Trademarks is deemed to refer to the Assistant

Commissioner for Trademarks.

SEC. 3. ADJUSTMENT OF TRADEMARK FEES.

Section 4203 of the Intellectual Property and Communications Omnibus Reform

Act of 1999, as enacted by section 1000(a)(9) of Public Law 106–113, is amended

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

SEC. 4. OPTIONAL INTER PARTES REEXAMINATION PROCEDURE ACT OF 1999; TECHNICAL

AMENDMENTS.

(a) OPTIONAL INTER PARTES REEXAMINATION PROCEDURES.—Title 35, United

States Code, is amended as follows:

(1) Section 311 is amended—

(A) in subsection (a), by striking ‘‘person’’ and inserting ‘‘third-party requester’’; and

(B) in subsection (c), by striking ‘‘Unless the requesting person is the

owner of the patent, the’’ and inserting ‘‘The’’.

(2) Section 312 is amended—

(A) in subsection (a), by striking the last sentence; and

(B) by striking ‘‘, if any’’.

(3) Section 314(b)(1) is amended—

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

(B) by striking ‘‘the third-party requester shall receive a copy’’ and inserting ‘‘the Office shall send to the third-party requester a copy’’; and

(C) by redesignating paragraph (3) as paragraph (2).

(4) Section 315(c) is amended by striking ‘‘United States Code,’’.

(5) Section 317 is amended—

(A) in subsection (a), by striking ‘‘patent owner nor the third-party requester, if any, nor privies of either’’ and inserting ‘‘third-party requester

nor its privies’’, and

(B) in subsection (b), by striking ‘‘United States Code,’’.

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(b) CONFORMING AMENDMENTS.—Subsections (a), (b), and (c) of section 134 of

title 35, United States Code, are each amended by striking ‘‘administrative patent

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

(c) CLERICAL AMENDMENTS.—

(1) Section 4604(a) of the Intellectual Property and Communications Omnibus Reform Act of 1999, is amended by striking ‘‘Part 3’’ and inserting ‘‘Part

III’’.

(2) Section 4604(b) of that Act is amended by striking ‘‘title 25’’ and inserting ‘‘title 35’’.

(d) EFFECTIVE DATE.—The amendments made by sections 4605(c) and 4605(e)

of the Intellectual Property and Communications Omnibus Reform Act, as enacted

by section 1000(a)(9) of Public Law 106–113, shall apply to any reexamination filed

in the United States Patent and Trademark Office on or after the date of the enactment of Public Law 106–113.

SEC. 5. PATENT AND TRADEMARK EFFICIENCY ACT AMENDMENTS.

(a) DEPUTY DIRECTOR.—

(1) Section 5315 of title 5, United States Code, is amended by striking ‘‘Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director

of the United States Patent and Trademark Office.’’.

(2) Section 17(b) of the Act of July 5, 1946 (commonly referred to as the

‘‘Trademark Act of 1946’’) (15 U.S.C. 1067(b)), is amended by inserting ‘‘the

Deputy Commissioner,’’ after ‘‘Commissioner,’’.

(3) Section 6(a) of title 35, United States Code, is amended by inserting ‘‘the

Deputy Commissioner,’’ after ‘‘Commissioner,’’.

(b) PUBLIC ADVISORY COMMITTEES.—Section 5 of title 35, United States Code,

is amended by adding at the end the following new subsection:

‘‘(j) INAPPLICABILITY OF PATENT PROHIBITION.—Section 4 shall not apply to voting members of the Advisory Committees.’’.

(c) CHIEF FINANCIAL OFFICER.—Section 901(b)(2) of title 31, United States Code,

is amended by adding at the end the following new subparagraph:

‘‘(I) The United States Patent and Trademark Office.’’.

(d) MISCELLANEOUS.—Section 153 of title 35, United States Code, is amended

by striking ‘‘and attested by an officer of the Patent and Trademark Office designated by the Commissioner,’’.

SEC. 6. DOMESTIC PUBLICATION OF FOREIGN FILED PATENT APPLICATIONS ACT OF 1999

AMENDMENTS.

Section 154(d)(4)(A) of title 35, United States Code, as in effect on November

29, 2000, is amended—

(1) by striking ‘‘on which the Patent and Trademark Office receives a copy

of the’’ and inserting ‘‘of’’; and

(2) by striking ‘‘international application’’ the last place it appears and inserting ‘‘publication’’.

SEC. 7. DOMESTIC PUBLICATION OF PATENT APPLICATIONS PUBLISHED ABROAD.

Subtitle E of title IV of the Intellectual Property and Communications Omnibus

Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law 106–113, is

amended as follows:

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

‘‘SEC. 4505. PRIOR ART EFFECT OF PUBLISHED APPLICATIONS.

‘‘Section 102(e) of title 35, United States Code, is amended to read as follows:

‘‘ ‘(e) the invention was described in (1) an application for patent, published

under section 122(b), by another filed in the United States before the invention by

the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section

351(a) shall have the effects for the purposes of this subsection of an application

filed in the United States if and only if the international application designated the

United States and was published under Article 21(2) of such treaty in the English

language; or’ ’’.

(2) Section 4507 is amended—

(A) in paragraph (1), by striking ‘‘Section 11’’ and inserting ‘‘Section

10’’;

(B) in paragraph (2), by striking ‘‘Section 12’’ and inserting ‘‘Section

11’’.

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

12’’;

(D) in paragraph (4), by striking ‘‘12 and 13’’ and inserting ‘‘11 and 12’’;

4

(E) in section 374 of title 35, United States Code, as amended by paragraph (10), by striking ‘‘confer the same rights and shall have the same effect under this title as an application for patent published’’ and inserting

‘‘be deemed a publication’’; and

(F) by adding at the end the following:

‘‘(12) The item relating to section 374 in the table of contents for chapter

37 of title 35, United States Code, is amended to read as follows:

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

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

‘‘SEC. 4508. EFFECTIVE DATE.

‘‘Except as otherwise provided in this section, sections 4502 through 4507, and

the amendments made by such sections, shall take effect on November 29, 2000, and

shall apply only to applications (including international applications designating the

United States) filed on or after that date. The amendments made by sections 4504

and 4505 shall additionally apply to any pending application filed before November

29, 2000, if such pending application is published pursuant to a request of the applicant under such procedures as may be established by the Director. If an application

is filed on or after November 29, 2000, or is published pursuant to a request from

the applicant, and the application claims the benefit of one or more prior-filed applications under section 119(e), 120, or 365(c) of title 35, United States Code, then the

provisions of section 4505 shall apply to the prior-filed application in determining

the filing date in the United States of the application.’’.

SEC. 8. MISCELLANEOUS CLERICAL AMENDMENTS.

(a) AMENDMENTS TO TITLE 35.—The following provisions of title 35, United

States Code, are amended:

(1) Section 2(b) is amended in paragraphs (2)(B) and (4)(B), by striking ‘‘,

United States Code’’.

(2) Section 3 is amended—

(A) in subsection (a)(2)(B), by striking ‘‘United States Code,’’;

(B) in subsection (b)(2)—

(i) in the first sentence of subparagraph (A), by striking ‘‘, United

States Code’’;

(ii) in the first sentence of subparagraph (B)—

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

(II) by striking ‘‘, United States Code’’;

(iii) in the second sentence of subparagraph (B)—

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

(II) by striking ‘‘, United States Code.’’ and inserting a period;

(iv) in the last sentence of subparagraph (B), by striking ‘‘, United

States Code’’; and

(v) in subparagraph (C), by striking ‘‘, United States Code’’; and

(C) in subsection (c)—

(i) in the subsection caption, by striking ‘‘, UNITED STATES CODE’’;

and

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

(3) Section 5 is amended in subsections (e) and (g), by striking ‘‘, United

States Code’’ each place it appears.

(4) The table of chapters for part I is amended in the item relating to chapter 3, by striking ‘‘before’’ and inserting ‘‘Before’’.

(5) The item relating to section 21 in the table of contents for chapter 2 is

amended to read as follows:

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

(6) The item relating to chapter 12 in the table of chapters for part II is

amended to read as follows:

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

(7) The item relating to section 116 in the table of contents for chapter 11

is amended to read as follows:

‘‘116. Inventors.’’.

(8) Section 154(b)(4) is amended by striking ‘‘, United States Code,’’.

(9) Section 156 is amended—

(A) in subsection (b)(3)(B), by striking ‘‘paragraphs’’ and inserting

‘‘paragraph’’;

(B) in subsection (d)(2)(B)(i), by striking ‘‘below the office’’ and inserting

‘‘below the Office’’; and

5

(C) in subsection (g)(6)(B)(iii), by striking ‘‘submittted’’ and inserting

‘‘submitted’’.

(10) The item relating to section 183 in the table of contents for chapter

17 is amended by striking ‘‘of’’ and inserting ‘‘to’’.

(11) Section 185 is amended by striking the second period at the end of the

section.

(12) Section 201(a) is amended—

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

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

(13) Section 202 is amended—

(A) in subsection (b)(4), by striking ‘‘last paragraph of section 203(2)’’

and inserting ‘‘section 203(b)’’; and

(B) in subsection (c)—

(i) in paragraph (4) by striking ‘‘rights;’’ and inserting ‘‘rights,’’; and

(ii) in paragraph (5) by striking ‘‘of the United States Code’’.

(14) Section 203 is amended—

(A) in paragraph (2)—

(i) by striking ‘‘(2)’’ and inserting ‘‘(b)’’;

(ii) by striking the quotation marks and comma before ‘‘as appropriate’’; and

(iii) by striking ‘‘paragraphs (a) and (c)’’ and inserting ‘‘paragraphs

(1) and (3) of subsection (a)’’; and

(B) in the first paragraph—

(i) by striking ‘‘(a)’’, ‘‘(b)’’, ‘‘(c)’’, and (d)’’ and inserting ‘‘(1)’’, ‘‘(2)’’,

‘‘(3)’’, and (4)’’, respectively; and

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

(15) Section 209 is amended in subsections (a) and (f)(1), by striking ‘‘of the

United States Code’’.

(16) Section 210 is amended—

(A) in subsection (a)—

(i) in paragraph (11), by striking ‘‘5901’’ and inserting ‘‘5908’’; and

(ii) in paragraph (20) by striking ‘‘178(j)’’ and inserting ‘‘178j’’; and

(B) in subsection (c)—

(i) by striking ‘‘paragraph 202(c)(4)’’ and inserting ‘‘section

202(c)(4)’’; and

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

(17) The item relating to chapter 29 in the table of chapters for part III

is amended by inserting a comma after ‘‘Patent’’.

(18) The item relating to section 256 in the table of contents for chapter

25 is amended to read as follows:

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

(19) Section 294 is amended—

(A) in subsection (b), by striking ‘‘United States Code,’’; and

(B) in subsection (c), in the second sentence by striking ‘‘court to’’ and

inserting ‘‘court of’’.

(20)(A) The item relating to section 374 in the table of contents for chapter

37 is amended to read as follows:

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

(B) The amendment made by subparagraph (A) shall take effect on November 29, 2000.

(21) Section 371(b) is amended by adding at the end a period.

(22) Section 371(d) is amended by adding at the end a period.

(23) Paragraphs (1), (2), and (3) of section 376(a) are each amended by

striking the semicolon and inserting a period.

(b) OTHER AMENDMENTS.—

(1) Section 4732(a) of the Intellectual Property and Communications Omnibus Reform Act of 1999 is amended—

(A) in paragraph (9)(A)(ii), by inserting ‘‘in subsection (b),’’ after ‘‘(ii)’’;

and

(B) in paragraph (10)(A), by inserting after ‘‘title 35, United States

Code,’’ the following: ‘‘other than sections 1 through 6 (as amended by chapter 1 of this subtitle),’’.

(2) Section 4802(1) of that Act is amended by inserting ‘‘to’’ before ‘‘citizens’’.

(3) Section 4804 of that Act is amended—

(A) in subsection (b), by striking ‘‘11(a)’’ and inserting ‘‘10(a)’’; and

(B) in subsection (c), by striking ‘‘13’’ and inserting ‘‘12’’.

6

1 Intellectual Property and Communications Omnibus Reform Act of 1999, S. 1948, P.L. No.

106–113 (Nov. 1999).

(4) Section 4402(b)(1) of that Act is amended by striking ‘‘in the fourth

paragraph’’.

SEC. 9. TECHNICAL CORRECTIONS IN TRADEMARK LAW.

(a) AWARD OF DAMAGES.—Section 35(a) of the Act of July 5, 1946 (commonly

referred to as the ‘‘Trademark Act of 1946’’) (15 U.S.C. 1117(a)), is amended by

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

section 43(a) or (d),’’.

(b) CLERICAL AMENDMENTS.—The Trademark Act of 1946 is further amended as

follows:

(1) Section 1(d)(1) is amended in the first sentence by striking ‘‘specifying

the date of the applicant’s first use’’ and all that follows through the end of the

sentence and inserting ‘‘specifying the date of the applicant’s first use of the

mark in commerce and those goods or services specified in the notice of allowance on or in connection with which the mark is used in commerce.’’.

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

(3) Section 33(b)(8) is amended by aligning the text with paragraph (7).

(4) Sections 34(d)(11) and 35(b) are each amended by striking ‘‘of 1954’’ and

inserting ‘‘of 1986’’.

PURPOSE AND SUMMARY

The ‘‘Intellectual Property Technical Amendments Act of 2000,’’

H.R. 4870, will remedy miscellaneous technical and clerical drafting errors currently set forth in the U.S. Code and will also clarify

provisions of last year’s American Inventor’s Protection Act

(AIPA).1 This bill aims to make these remedial changes in three

primary areas: patent law, trademark law, and the organization of

the U.S. Patent and Trademark Office (PTO). The bill contains no

provisions regarding copyright law or relating to the U.S. Copyright Office.

Each provision was carefully scrutinized to ensure that it will not

substantially change existing law, especially the AIPA, which contains carefully negotiated agreements developed by Members of

Congress, high-technology companies, the patent and trademark

bar, unions, and the independent inventor community.

BACKGROUND AND NEED FOR THE LEGISLATION

In the mid-1990’s, Congress investigated several proposals aimed

at modernizing the Federal patent and trademark laws, harmonizing our laws with those of other developed nations, and transforming the U.S. Patent and Trademark Office into a more efficient

agency. Several of these proposals passed as part of the AIPA.

The bill makes certain technical and clarifying changes in the

law to facilitate the implementation of the changes contained in the

AIPA; in addition, the bill helps to empower inventors and other

users of the PTO. These changes included in H.R. 4870 fall within

the following areas:

• PTO modernization. The bill establishes a Chief Financial

Officer within the agency, changes the titles of certain key

officers of the agency, clarifies the authority of the Public

Advisory Committee, and makes other minor changes to PTO

administrative operations.

• Inter Partes Patent Reexamination. The bill amends the statutory provisions for the optional inter partes reexamination

that is an alternative to litigation while not altering its substantive procedures.

7

2The Trademark Act of 1946, July 5, 1946, 15 U.S.C. §§ 1501 et seq.

• Early Publication of Patent Applications. The bill amends the

statutory procedures for the early publication of foreign-filed

patents so as to conform with the procedures for accepting

and processing international applications.

• Trademark Law. The bill provides for technical and clerical

amendments to the Trademark Act.2

The bill is entirely consistent with Congress’ efforts and goals to

craft patent and trademark law reform through the AIPA.

HEARINGS

There were no legislative hearings on H.R. 4870 during the

106th Congress.

COMMITTEE CONSIDERATION

On July 20, 2000, the Subcommittee on Courts and Intellectual

Property met in open session and ordered reported the bill H.R.

4870 by voice vote, a quorum being present. On July 25, 2000, the

committee met in open session and ordered reported favorably the

bill H.R. 4870 with an amendment in the nature of a substitute by

voice vote, a quorum being present.

COMMITTEE OVERSIGHT FINDINGS

In compliance with clause 2(1)(3)(A) of rule XI of the Rules of the

House of Representatives, the committee reports that the findings

and recommendations of the committee, based on oversight activities under clause 2(b)(1) of rule X of the Rules of the House of Representatives, are incorporated in the descriptive portions of this report.

COMMITTEE ON GOVERNMENT REFORM FINDINGS

No findings or recommendations of the Committee on Government Reform and Oversight were received as referred to in clause

2(1)(3)(D) of rule XI of the Rules of the House of Representatives.

NEW BUDGET AUTHORITY AND TAX EXPENDITURES

Clause 2(1)(3)(B) of rule XI of the Rules of the House of Representatives is inapplicable because this legislation does not provide new budgetary authority or increased tax expenditures.

CONGRESSIONAL BUDGET OFFICE COST ESTIMATE

In compliance with clause 2(1)(3)(C) of rule XI of the Rules of the

House of Representatives, the committee sets forth, with respect to

the bill H.R. 4870, the following estimate and comparison prepared

by the director of the Congressional Budget Office under section

403 of the Congressional Budget Act of 1974:

8

U.S. CONGRESS, CONGRESSIONAL BUDGET OFFICE, Washington, DC, August 4, 2000.

Hon. HENRY J. HYDE, Chairman,

Committee on the Judiciary,

House of Representatives, Washington, DC.

DEAR MR. CHAIRMAN: The Congressional Budget Office has prepared the enclosed cost estimate for H.R. 4870, the Intellectual

Property Technical Amendments Act of 2000.

If you wish further details on this estimate, we will be pleased

to provide them. The CBO staff contact is Kenneth Johnson, who

can be reached at 226–2860.

Sincerely,

DAN L. CRIPPEN, Director.

Enclosure

cc: Honorable John Conyers Jr.

Ranking Democratic Member

H.R. 4870—Intellectual Property Technical Amendments Act of

2000.

H.R. 4870 would make a number of minor corrections to current

patent, copyright, and trademark law. CBO estimates that enacting

H.R. 4870 would have no significant impact on the federal budget.

Because the bill would not affect direct spending or receipts, payas-you-go procedures would not apply. H.R. 4870 contains no intergovernmental or private-sector mandates as defined in the Unfunded Mandates Reform Act (UMRA) and would impose no costs

on state, local, or tribal governments.

H.R. 4870 would add the Patent and Trademark Office (PTO) to

the list of agencies that are authorized to have a Chief Financial

Officer. The bill also would change the process that individuals can

use to request that the PTO reexamine evidence related to a previous patent examination. In addition, the bill would make technical changes to law governing international patent applications.

CBO estimates that these provisions would have a negligible impact on spending by the Patent and Trademark Office.

The CBO staff contact is Kenneth Johnson, who can be reached

at 226–2860. This estimate was approved by Robert A. Sunshine,

Assistant Director for Budget Analysis.

CONSTITUTIONAL AUTHORITY STATEMENT

Pursuant to rule XI, clause 2(1)(4) of the Rules of the House of

Representatives, the committee finds the authority for this legislation in Article I, section 8 of the Constitution.

SECTION-BY-SECTION ANALYSIS AND DISCUSSION

Sec. 1. Short Title. The act may be cited as the ‘‘Intellectual

Property Technical Amendments Act of 2000.’’

Sec. 2. Officers and Employees. The AIPA changed the titles of

key officers of the PTO. Briefly, the head of the agency was given

the title of Director (formerly ‘‘Commissioner’’). The chief officer for

the patent operations was given the title of Managing Director for

Patents (formerly ‘‘Assistant Commissioner for Patents’’). The chief

9

3 35 U.S.C. §§ 301 et seq. 4 35 U.S.C. § 4.

officer for trademark operations was given the title of Managing

Director for Trademarks (formerly ‘‘Assistant Commissioner for

Trademarks’’). After review, the PTO has requested that these officer titles revert to their traditional names because the new titles

may cause confusion, are contrary to our international efforts, and

may upset case law on a variety of subjects.

Section 3. Adjustment of Trademark Fees. The AIPA empowered

the chief officer of the PTO to revise the fees associated with trademark services based on inflation. This section merely clarifies the

title of the officer with this authority.

Sec. 4. Optional Inter Partes Reexamination Procedure Act of

1999; Technical Amendments. Reexamination is an administrative

proceeding in which a patent may be reviewed in light of new evidence affecting its patentability (‘‘prior art’’).3 Traditionally, reexamination operated only between the patent owner and the PTO

(ex parte). As part of the AIPA, a new inter partes reexamination

procedure was established to allow a third party also to challenge

the validity of a patent or its claims through the introduction of

new evidence. While this inter partes procedure is considered beneficial because it provides cost savings over court litigation, some

critics were concerned it would be abused. As a result, reexamination through the inter partes mechanism was designed with certain

limitations (e.g., estoppel provisions) which do not apply in ex parte

reexamination under the Patent Act.

Section 4 of the bill merely clarifies the Patent Act’s inter partes

reexamination section by stipulating that it will apply to the proper

parties and operate as envisioned. For example, the term ‘‘thirdparty requester’’ is inserted in lieu of ‘‘persons,’’ since only a third

party may invoke this inter partes reexamination. This is logical

because a patent owner has more rights under ex parte reexamination and would not choose to use the inter partes procedures even

if available.

The bill, under paragraph (c), specifies that the effective date of

these reexamination procedures shall apply to any reexamination

on or after the date of the act’s enactment.

Sec. 5. Patent and Trademark Efficiency Act Amendments. The

AIPA contained a title (the ‘‘Patent and Trademark Efficiency Act’’)

to modernize the PTO by transforming it into a more autonomous

and efficient agency. The first section of the bill clarifies the status

and authority of the Deputy Director of the PTO under this reorganization.

The first paragraph in this section clarifies that the Deputy Director may be a career or non-career appointee in the Senior Executive Service.

The amendments made by the succeeding two paragraphs also

conform the membership of the Trademark Trial and Appeal Board

and the Board of Patent Appeals and Interferences to include the

Deputy Director, as under current statute.

Subsection (b) amends section 5, chapter 1, of title 35. The employees of the PTO are currently prohibited from having an ownership interest in patents.4 Members of the newly-established Public

Advisory Committee are currently considered employees of the OfVerDate 11-MAY-2000 21:54 Sep 14, 2000 Jkt 079006 PO 00000 Frm 00009 Fmt 6659 Sfmt 6601 E:\HR\OC\HR853.XXX pfrm03 PsN: HR853
10

fice. Currently, those individuals who possess the most thorough

understanding of the patent system (for example, independent inventors) are likely to be prohibited from participating on the Public

Advisory Committee by this restriction. This section eases this restriction on those serving on the Public Advisory Committee in

light of the goals of the AIPA.

Section (c) establishes the position of Chief Financial Officer

within the PTO. The establishment of this position is consistent

with Congress’ past, and continuing, efforts to transform the PTO

into an agency that practices sound financial management and employs modern techniques in its operations.

Section (d) eliminates the need for a signature to be attested on

a patent grant. This amendment removes one step of the agency’s

bureaucracy and allows the PTO to issue patents more expeditiously.

Sec. 6. Domestic Publication of Foreign Filed Patent Applications

Act of 1999 Amendments. The AIPA established the early publication of patent applications in the U.S. patent system for the first

time along with certain conditions and new rights for inventors.

One such right is a corresponding provisional right (e.g., a reasonable royalty) in patent infringement cases. These provisions will

take effect 1 year after the AIPA’s date of enactment. This section

of the bill is technical in nature and clarifies the text regarding the

statutory requirement for the effective date of international applications which may qualify for the provisional rights based on early

publication.

Sec. 7. Domestic Publication of Patent Applications Published

Abroad. The AIPA established the early publication of patent applications, as described above. One consequence of early publication

is its effect on the standard of novelty for a patent application. This

section and the following paragraphs establish certain safeguards

regarding the interplay of the early publication of patent applications and the review of novelty during the patent examination process. It is an especially important safeguard in light of the fact that

the U.S. is a signatory of the Patent Cooperation Treaty, an international convention allowing for the multi-national application of

patents in several languages.

Subsection 1 contains a safeguard that the PTO will only rely on

information published in English in patent applications as it makes

the essential determination of novelty during the examination of a

patent application. This limits the evidence from foreign applications that may be considered ‘‘prior art’’ and could affect patentability. This is an important safeguard for independent inventors

and small American businesses who do not have access to expensive translation services and the foreign patent offices.

Subsection 2 makes a series of technical and clerical amendments. The following section, subsection 3, clarifies the effective

date of the new safeguard and ensures that it takes effect along

with the other early publication provisions later this year. The

AIPA established the early publication of patent applications starting on November 29, 2000.

Sec. 8. Miscellaneous Clerical Amendments. The section contains

a series of highly technical clerical amendments developed by the

Office of Legislative Counsel upon its own initiative. These changes

to the Patent Act are self-evident, and range from aligning paraVerDate 11-MAY-2000 21:54 Sep 14, 2000 Jkt 079006 PO 00000 Frm 00010 Fmt 6659 Sfmt 6601 E:\HR\OC\HR853.XXX pfrm03 PsN: HR853
11

5 H.R.3194, P. L. 106–113 (Nov. 29, 1999).

6 15 U.S.C. § 1125(c).

graphs, deleting quotation marks, correcting the fonts of headings,

and the like.

Sec. 9. Technical Corrections in Trademark Law. The first section

clarifies the statutory text of the Trademark Act as it relates to

damages. Last year, the ‘‘Anti-Cybersquatting Consumer Protection

Act’’ 5 established certain damages for willful violation of § 43(c) of

the Trademark Act.6 The present language entitles a plaintiff to

damages, but reads awkwardly. This bill makes a technical correction to the text and thereby removes the redundant text, without

altering the substance of available trademark infringement remedies.

The second paragraph includes four strictly clerical changes, including the deletion of a comma and the realignment of a paragraph.

CHANGES IN EXISTING LAW MADE BY THE BILL, AS REPORTED

In compliance with clause 3(e) of rule XIII of the Rules of the

House of Representatives, changes in existing law made by the bill,

as reported, are shown as follows (existing law proposed to be omitted is enclosed in black brackets, new matter is printed in italics,

existing law in which no change is proposed is shown in roman):

TITLE 35, UNITED STATES CODE

* * * * * * *

PART I—UNITED STATES PATENT AND

TRADEMARK OFFICE

Chap. Sec.

1. Establishment, Officers and Employees, Functions ...................... 1

* * * * * * *

3. Practice øbefore¿ Before Patent and Trademark Office ............... 31

* * * * * * *

CHAPTER 1—ESTABLISHMENT, OFFICERS AND

EMPLOYEES, FUNCTIONS

* * * * * * *

§ 2. Powers and duties

(a) * * *

(b) SPECIFIC POWERS.—The Office—

(1) * * *

(2) may establish regulations, not inconsistent with law,

which—

(A) shall govern the conduct of proceedings in the Office;

(B) shall be made in accordance with section 553 of

title 5ø, United States Code¿;

* * * * * * *

(4)(A) * * *

12

(B) may enter into and perform such purchases and contracts for printing services, including the process of composition, platemaking, presswork, silk screen processes, binding,

microform, and the products of such processes, as it considers

necessary to carry out the functions of the Office, without regard to sections 501 through 517 and 1101 through 1123 of

title 44ø, United States Code¿;

* * * * * * *

(6) may, when the øDirector¿ Commissioner determines

that it is practicable, efficient, and cost-effective to do so, use,

with the consent of the United States and the agency, instrumentality, Patent and Trademark Office, or international organization concerned, the services, records, facilities, or personnel

of any State or local government agency or instrumentality or

foreign patent and trademark office or international organization to perform functions on its behalf;

* * * * * * *

(c) CLARIFICATION OF SPECIFIC POWERS.—(1) * * *

* * * * * * *

(4) In exercising the øDirector’s¿ Commissioner’s powers under

paragraphs (3) and (4)(A) of subsection (b), the øDirector¿ Commissioner shall consult with the Administrator of General Services.

(5) In exercising the øDirector’s¿ Commissioner’s powers and

duties under this section, the øDirector¿ Commissioner shall consult with the Register of Copyrights on all copyright and related

matters.

* * * * * * *

§ 3. Officers and employees

(a) UNDER SECRETARY AND øDIRECTOR¿ COMMISSIONER.— (1) IN GENERAL.—The powers and duties of the United

States Patent and Trademark Office shall be vested in an

Under Secretary of Commerce for Intellectual Property and

øDirector¿ Commissioner of the United States Patent and

Trademark Office (in this title referred to as the ‘‘øDirector¿

Commissioner’’), who shall be a citizen of the United States

and who shall be appointed by the President, by and with the

advice and consent of the Senate. The øDirector¿ Commissioner shall be a person who has a professional background

and experience in patent or trademark law.

(2) DUTIES.—

(A) IN GENERAL.—The øDirector¿ Commissioner shall

be responsible for providing policy direction and management supervision for the Office and for the issuance of patents and the registration of trademarks. The øDirector¿

Commissioner shall perform these duties in a fair, impartial, and equitable manner.

(B) CONSULTING WITH THE PUBLIC ADVISORY COMMITTEES.—The øDirector¿ Commissioner shall consult with

the Patent Public Advisory Committee established in section 5 on a regular basis on matters relating to the patent

operations of the Office, shall consult with the Trademark

Public Advisory Committee established in section 5 on a

13

regular basis on matters relating to the trademark operations of the Office, and shall consult with the respective

Public Advisory Committee before submitting budgetary

proposals to the Office of Management and Budget or

changing or proposing to change patent or trademark user

fees or patent or trademark regulations which are subject

to the requirement to provide notice and opportunity for

public comment under section 553 of title 5, øUnited

States Code,¿ as the case may be.

(3) OATH.—The øDirector¿ Commissioner shall, before taking office, take an oath to discharge faithfully the duties of the

Office.

(4) REMOVAL.—The øDirector¿ Commissioner may be removed from office by the President. The President shall provide notification of any such removal to both Houses of Congress.

(b) OFFICERS AND EMPLOYEES OF THE OFFICE.— (1) DEPUTY UNDER SECRETARY AND DEPUTY øDIRECTOR¿

COMMISSIONER.—The Secretary of Commerce, upon nomination

by the øDirector¿ Commissioner, shall appoint a Deputy Under

Secretary of Commerce for Intellectual Property and Deputy

øDirector¿ Commissioner of the United States Patent and

Trademark Office who shall be vested with the authority to act

in the capacity of the øDirector¿ Commissioner in the event of

the absence or incapacity of the øDirector¿ Commissioner. The

Deputy øDirector¿ Commissioner shall be a citizen of the

United States who has a professional background and experience in patent or trademark law.

(2) COMMISSIONERS.— (A) APPOINTMENT AND DUTIES.—The Secretary of Commerce shall appoint a øCommissioner for Patents¿ Assistant Commissioner for Patents and a øCommissioner for

Trademarks¿ Assistant Commissioner for Trademarks, without regard to chapter 33, 51, or 53 of title 5ø, United

States Code¿. The øCommissioner for Patents¿ Assistant

Commissioner for Patents shall be a citizen of the United

States with demonstrated management ability and professional background and experience in patent law and serve

for a term of 5 years. The øCommissioner for Trademarks¿

Assistant Commissioner for Trademarks shall be a citizen

of the United States with demonstrated management ability and professional background and experience in trademark law and serve for a term of 5 years. The øCommissioner for Patents¿ Assistant Commissioner for Patents

and the øCommissioner for Trademarks¿ Assistant Commissioner for Trademarks shall serve as the chief operating officers for the operations of the Office relating to

patents and trademarks, respectively, and shall be responsible for the management and direction of all aspects of

the activities of the Office that affect the administration of

patent and trademark operations, respectively. The Secretary may reappoint a Commissioner to subsequent terms

of 5 years as long as the performance of the Commissioner

as set forth in the performance agreement in subparagraph (B) is satisfactory.

14

(B) SALARY AND PERFORMANCE AGREEMENT.—The

Commissioners shall be paid an annual rate of basic pay

not to exceed the maximum rate of basic pay for the Senior

Executive Service established under section 5382 of title 5,

øUnited States Code,¿ including any applicable localitybased comparability payment that may be authorized

under section 5304(h)(2)(C) of title 5ø, United States

Code¿. The compensation of the Commissioners shall be

considered, for purposes of section 207(c)(2)(A) of title 18,

øUnited States Code,¿ to be the equivalent of that described under clause (ii) of section 207(c)(2)(A) of title 18ø, United States Code¿. In addition, the Commissioners may

receive a bonus in an amount of up to, but not in excess

of, 50 percent of the Commissioners’ annual rate of basic

pay, based upon an evaluation by the Secretary of Commerce, acting through the øDirector¿ Commissioner, of the

Commissioners’ performance as defined in an annual performance agreement between the Commissioners and the

Secretary. The annual performance agreements shall incorporate measurable organization and individual goals in

key operational areas as delineated in an annual performance plan agreed to by the Commissioners and the Secretary. Payment of a bonus under this subparagraph may

be made to the Commissioners only to the extent that such

payment does not cause the Commissioners’ total aggregate compensation in a calendar year to equal or exceed

the amount of the salary of the Vice President under section 104 of title 3ø, United States Code¿. (C) REMOVAL.—The Commissioners may be removed

from office by the Secretary for misconduct or nonsatisfactory performance under the performance agreement described in subparagraph (B), without regard to the provisions of title 5ø, United States Code¿. The Secretary shall

provide notification of any such removal to both Houses of

Congress.

(3) OTHER OFFICERS AND EMPLOYEES.—The øDirector¿

Commissioner shall—

(A) appoint such officers, employees (including attorneys), and agents of the Office as the øDirector¿ Commissioner considers necessary to carry out the functions of the

Office; and

(B) define the title, authority, and duties of such officers and employees and delegate to them such of the powers vested in the Office as the øDirector¿ Commissioner

may determine.

The Office shall not be subject to any administratively or

statutorily imposed limitation on positions or personnel, and no

positions or personnel of the Office shall be taken into account

for purposes of applying any such limitation.

* * * * * * *

(5) NATIONAL SECURITY POSITIONS.—The øDirector¿ Commissioner, in consultation with the øDirector¿ Commissioner of

the Office of Personnel Management, shall maintain a program

for identifying national security positions and providing for appropriate security clearances, in order to maintain the secrecy

15

of certain inventions, as described in section 181, and to prevent disclosure of sensitive and strategic information in the interest of national security.

(c) CONTINUED APPLICABILITY OF TITLE 5ø, UNITED STATES

CODE¿.—Officers and employees of the Office shall be subject to the

provisions of title 5, øUnited States Code,¿ relating to Federal employees.

* * * * * * *

(e) CARRYOVER OF PERSONNEL.— (1) * * *

(2) OTHER PERSONNEL.—Any individual who, on the day

before the effective date of the Patent and Trademark Office

Efficiency Act, is an officer or employee of the Department of

Commerce (other than an officer or employee under paragraph

(1)) shall be transferred to the Office, as necessary to carry out

the purposes of this Act, if—

(A) * * *

* * * * * * *

(C) such transfer would be in the interest of the Office,

as determined by the Secretary of Commerce in consultation with the øDirector¿ Commissioner. Any transfer under this paragraph shall be effective as of the

same effective date as referred to in paragraph (1), and shall

be made without a break in service.

(f) TRANSITION PROVISIONS.— (1) INTERIM APPOINTMENT OF øDIRECTOR¿ COMMIS- SIONER.—On or after the effective date of the Patent and

Trademark Office Efficiency Act, the President shall appoint

an individual to serve as the øDirector¿ Commissioner until

the date on which a øDirector¿ Commissioner qualifies under

subsection (a). The President shall not make more than one

such appointment under this subsection.

(2) CONTINUATION IN OFFICE OF CERTAIN OFFICERS.—(A)

The individual serving as the Assistant Commissioner for Patents on the day before the effective date of the Patent and

Trademark Office Efficiency Act may serve as the øCommissioner for Patents¿ Assistant Commissioner for Patents until

the date on which a øCommissioner for Patents¿ Assistant

Commissioner for Patents is appointed under subsection (b).

(B) The individual serving as the Assistant Commissioner

for Trademarks on the day before the effective date of the Patent and Trademark Office Efficiency Act may serve as the

Commissioner for Trademarks until the date on which a øCommissioner for Trademarks¿ Assistant Commissioner for Trademarks is appointed under subsection (b).

* * * * * * *

§ 5. Patent and Trademark Office Public Advisory Committees

(a) * * *

* * * * * * *

(d) DUTIES.—Each Advisory Committee shall—

16

(1) review the policies, goals, performance, budget, and

user fees of the United States Patent and Trademark Office

with respect to patents, in the case of the Patent Public Advisory Committee, and with respect to Trademarks, in the case

of the Trademark Public Advisory Committee, and advise the

øDirector¿ Commissioner on these matters;

* * * * * * *

(e) COMPENSATION.—Each member of each Advisory Committee

shall be compensated for each day (including travel time) during

which such member is attending meetings or conferences of that

Advisory Committee or otherwise engaged in the business of that

Advisory Committee, at the rate which is the daily equivalent of

the annual rate of basic pay in effect for level III of the Executive

Schedule under section 5314 of title 5ø, United States Code¿. While

away from such member’s home or regular place of business such

member shall be allowed travel expenses, including per diem in

lieu of subsistence, as authorized by section 5703 of title 5ø, United

States Code¿.

* * * * * * *

(g) APPLICABILITY OF CERTAIN ETHICS LAWS.—Members of each

Advisory Committee shall be special Government employees within

the meaning of section 202 of title 18ø, United States Code¿.

* * * * * * *

(j) INAPPLICABILITY OF PATENT PROHIBITION.—Section 4 shall

not apply to voting members of the Advisory Committees.

§ 6. Board of Patent Appeals and Interferences

(a) ESTABLISHMENT AND COMPOSITION.—There shall be in the

United States Patent and Trademark Office a Board of Patent Appeals and Interferences. The øDirector¿ Commissioner, the Deputy

Commissioner, the øCommissioner for Patents¿ Assistant Commissioner for Patents, the øCommissioner for Trademarks¿ Assistant

Commissioner for Trademarks, and the administrative patent

judges shall constitute the Board. The administrative patent judges

shall be persons of competent legal knowledge and scientific ability

who are appointed by the øDirector¿ Commissioner.

(b) DUTIES.—The Board of Patent Appeals and Interferences

shall, on written appeal of an applicant, review adverse decisions

of examiners upon applications for patents and shall determine priority and patentability of invention in interferences declared under

section 135(a). Each appeal and interference shall be heard by at

least three members of the Board, who shall be designated by the

øDirector¿ Commissioner. Only the Board of Patent Appeals and

Interferences may grant rehearings.

§ 7. Library

The øDirector¿ Commissioner shall maintain a library of scientific and other works and periodicals, both foreign and domestic,

in the Patent and Trademark Office to aid the officers in the discharge of their duties.

17

§ 8. Classification of patents

The øDirector¿ Commissioner may revise and maintain the

classification by subject matter of United States letters patent, and

such other patents and printed publications as may be necessary

or practicable, for the purpose of determining with readiness and

accuracy the novelty of inventions for which applications for patent

are filed.

§ 9. Certified copies of records

The øDirector¿ Commissioner may furnish certified copies of

specifications and drawings of patents issued by the Patent and

Trademark Office, and of other records available either to the public or to the person applying therefor.

§ 10. Publications

(a) The øDirector¿ Commissioner may publish in printed, typewritten, or electronic form, the following:

* * * * * * *

(b) The øDirector¿ Commissioner may exchange any of the

publications specified in items 3, 4, 5, and 6 of subsection (a) of this

section for publications desirable for the use of the Patent and

Trademark Office.

§ 11. Exchange of copies of patents with foreign countries

The øDirector¿ Commissioner may exchange copies of specifications and drawings of United States patents for those of foreign

countries. The øDirector¿ Commissioner shall not enter into an

agreement to provide such copies of specifications and drawings of

United States patents and applications to a foreign country, other

than a NAFTA country or a WTO member country, without the express authorization of the Secretary of Commerce. For purposes of

this section, the terms ‘NAFTA country’ and ‘WTO member country’ have the meanings given those terms in section 104(b).

§ 12. Copies of patents for public libraries

The øDirector¿ Commissioner may supply printed copies of

specifications and drawings of patents to public libraries in the

United States which shall maintain such copies for the use of the

public, at the rate for each year’s issue established for this purpose

in section 41(d) of this title.

§ 13. Annual report to Congress

The øDirector¿ Commissioner shall report to the Congress, not

later than 180 days after the end of each fiscal year, the moneys

received and expended by the Office, the purposes for which the

moneys were spent, the quality and quantity of the work of the Office, the nature of training provided to examiners, the evaluation

of the Commissioner of Patents and the Commissioner of Trademarks by the Secretary of Commerce, the compensation of the

Commissioners, and other information relating to the Office.

18

CHAPTER 2—PROCEEDINGS IN THE PATENT AND

TRADEMARK OFFICE

Sec.

ø21. Day for taking action falling on Saturday, Sunday, or holiday.¿

21. Filing date and day for taking action.

* * * * * * *

§ 21. Filing date and day for taking action

(a) The øDirector¿ Commissioner may by rule prescribe that

any paper or fee required to be filed in the Patent and Trademark

Office will be considered filed in the Office on the date on which

it was deposited with the United States Postal Service or would

have been deposited with the United States Postal Service but for

postal service interruptions or emergencies designated by the øDirector¿ Commissioner.

* * * * * * *

§ 22. Printing of papers filed

The øDirector¿ Commissioner may require papers filed in the

Patent and Trademark Office to be printed, typewritten, or on an

electronic medium.

§ 23. Testimony in Patent and Trademark Office cases

The øDirector¿ Commissioner may establish rules for taking

affidavits and depositions required in cases in the Patent and

Trademark Office. Any officer authorized by law to take depositions

to be used in the courts of the United States, or of the State where

he resides, may take such affidavits and depositions.

* * * * * * *

§ 25. Declaration in lieu of oath

(a) The øDirector¿ Commissioner may by rule prescribe that

any document to be filed in the Patent and Trademark Office and

which is required by any law, rule, or other regulation to be under

oath may be subscribed to by a written declaration in such form

as the øDirector¿ Commissioner may prescribe, such declaration to

be in lieu of the oath otherwise required.

(b) Whenever such written declaration is used, the document

must warn the declarant that willful false statements and the like

are punishable by fine or imprisonment, or both (18 U.S.C. 1001).

§ 26. Effect of defective execution

Any document to be filed in the Patent and Trademark Office

and which is required by any law, rule, or other regulation to be

executed in a specified manner may be provisionally accepted by

the øDirector¿ Commissioner despite a defective execution, provided a properly executed document is submitted within such time

as may be prescribed.

CHAPTER 3—PRACTICE BEFORE PATENT AND

TRADEMARK OFFICE

* * * * * * *

19

§ 32. Suspension or exclusion from practice

The øDirector¿ Commissioner may, after notice and opportunity for a hearing, suspend or exclude, either generally or in any

particular case, from further practice before the Patent and Trademark Office, any person, agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or who does

not comply with the regulations established under section

2(b)(2)(D) of this title, or who shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead,

or threaten any applicant or prospective applicant, or other person

having immediate or prospective business before the Office. The

reasons for any such suspension or exclusion shall be duly recorded. The øDirector¿ Commissioner shall have the discretion to

designate any attorney who is an officer or employee of the United

States Patent and Trademark Office to conduct the hearing required by this section. The United States District Court for the District of Columbia, under such conditions and upon such proceedings

as it by its rules determines, may review the action of the øDirector¿ Commissioner upon the petition of the person so refused recognition or so suspended or excluded.

* * * * * * *

CHAPTER 4—PATENT FEES; FUNDING; SEARCH

SYSTEMS

* * * * * * *

§ 41. Patent fees; patent and trademark search systems

(a) The øDirector¿ Commissioner shall charge the following

fees:

(1) * * *

* * * * * * *

(8) For petitions for 1-month extensions of time to take actions required by the øDirector¿ Commissioner in an

application—

(A) * * *

* * * * * * *

For the purpose of computing fees, a multiple dependent claim referred to in section 112 of this title or any claim depending therefrom shall be considered as separate dependent claims in accordance with the number of claims to which reference is made. Errors

in payment of the additional fees may be rectified in accordance

with regulations of the øDirector¿ Commissioner.

(b) The øDirector¿ Commissioner shall charge the following

fees for maintaining in force all patents based on applications filed

on or after December 12, 1980:

(1) * * *

* * * * * * *

Unless payment of the applicable maintenance fee is received in

the Patent and Trademark Office on or before the date the fee is

due or within a grace period of 6 months thereafter, the patent will

expire as of the end of such grace period. The øDirector¿ Commissioner may require the payment of a surcharge as a condition of acVerDate 11-MAY-2000 21:54 Sep 14, 2000 Jkt 079006 PO 00000 Frm 00019 Fmt 6659 Sfmt 6601 E:\HR\OC\HR853.XXX pfrm03 PsN: HR853
20

cepting within such 6-month grace period the payment of an applicable maintenance fee. No fee may be established for maintaining

a design or plant patent in force.

(c)(1) The øDirector¿ Commissioner may accept the payment of

any maintenance fee required by subsection (b) of this section

which is made within twenty-four months after the six-month grace

period if the delay is shown to the satisfaction of the øDirector¿

Commissioner to have been unintentional, or at any time after the

six-month grace period if the delay is shown to the satisfaction of

the øDirector¿ Commissioner to have been unavoidable. The øDirector¿ Commissioner may require the payment of a surcharge as

a condition of accepting payment of any maintenance fee after the

six-month grace period. If the øDirector¿ Commissioner accepts

payment of a maintenance fee after the six-month grace period, the

patent shall be considered as not having expired at the end of the

grace period.

* * * * * * *

(d) The øDirector¿ Commissioner shall establish fees for all

other processing, services, or materials relating to patents not specified in this section to recover the estimated average cost to the Office of such processing, services, or materials, except that the øDirector¿ Commissioner shall charge the following fees for the following services:

(1) * * *

* * * * * * *

(e) The øDirector¿ Commissioner may waive the payment of

any fee for any service or material related to patents in connection

with an occasional or incidental request made by a department or

agency of the Government, or any officer thereof. The øDirector¿

Commissioner may provide any applicant issued a notice under section 132 of this title with a copy of the specifications and drawings

for all patents referred to in that notice without charge.

(f) The fees established in subsections (a) and (b) of this section

may be adjusted by the øDirector¿ Commissioner on October 1,

1992, and every year thereafter, to reflect any fluctuations occurring during the previous 12 months in the Consumer Price Index,

as determined by the Secretary of Labor. Changes of less than 1

per centum may be ignored.

(g) No fee established by the øDirector¿ Commissioner under

this section shall take effect until at least 30 days after notice of

the fee has been published in the Federal Register and in the Official Gazette of the Patent and Trademark Office.

(h)(1) Fees charged under subsection (a) or (b) shall be reduced

by 50 percent with respect to their application to any small business concern as defined under section 3 of the Small Business Act,

and to any independent inventor or nonprofit organization as defined in regulations issued by the øDirector¿ Commissioner.

* * * * * * *

(i)(1) The øDirector¿ Commissioner shall maintain, for use by

the public, paper, microform, or electronic collections of United

States patents, foreign patent documents, and United States trademark registrations arranged to permit search for and retrieval of

information. The øDirector¿ Commissioner may not impose fees diVerDate 11-MAY-2000 21:54 Sep 14, 2000 Jkt 079006 PO 00000 Frm 00020 Fmt 6659 Sfmt 6601 E:\HR\OC\HR853.XXX pfrm03 PsN: HR853
21

rectly for the use of such collections, or for the use of the public

patent or trademark search rooms or libraries.

(2) The øDirector¿ Commissioner shall provide for the full deployment of the automated search systems of the Patent and

Trademark Office so that such systems are available for use by the

public, and shall assure full access by the public to, and dissemination of, patent and trademark information, using a variety of automated methods, including electronic bulletin boards and remote access by users to mass storage and retrieval systems.

(3) The øDirector¿ Commissioner may establish reasonable fees

for access by the public to the automated search systems of the

Patent and Trademark Office. If such fees are established, a limited amount of free access shall be made available to users of the

systems for purposes of education and training. The øDirector¿

Commissioner may waive the payment by an individual of fees authorized by this subsection upon a showing of need or hardship,

and if such a waiver is in the public interest.

(4) The øDirector¿ Commissioner shall submit to the Congress

an annual report on the automated search systems of the Patent

and Trademark Office and the access by the public to such systems. The øDirector¿ Commissioner shall also publish such report

in the Federal Register. The øDirector¿ Commissioner shall provide

an opportunity for the submission of comments by interested persons on each such report.

§ 42. Patent and Trademark Office funding

(a) All fees for services performed by or materials furnished by

the Patent and Trademark Office will be payable to the øDirector¿

Commissioner.

(b) All fees paid to the øDirector¿ Commissioner and all appropriations for defraying the costs of the activities of the Patent and

Trademark Office will be credited to the Patent and Trademark Office Appropriation Account in the Treasury of the United States.

(c) To the extent and in the amounts provided in advance in

appropriations Acts, fees authorized in this title or any other Act

to be charged or established by the øDirector¿ Commissioner shall

be collected by and shall be available to the øDirector¿ Commissioner to carry out the activities of the Patent and Trademark Office. All fees available to the øDirector¿ Commissioner under section 31 of the Trademark Act of 1946 shall be used only for the

processing of trademark registrations and for other activities, services, and materials relating to trademarks and to cover a proportionate share of the administrative costs of the Patent and Trademark Office.

(d) The øDirector¿ Commissioner may refund any fee paid by

mistake or any amount paid in excess of that required.

* * * * * * *

PART II—PATENTABILITY OF INVENTIONS

AND GRANT OF PATENTS

* * * * * * *

22

Chap. Sec.

10. Patentability of Inventions .................................................................. 100

* * * * * * *

ø12. Examination of Applications ............................................................... 131¿

12. Examination of Application .................................................................. 131

* * * * * * *

CHAPTER 10—PATENTABILITY OF INVENTIONS

* * * * * * *

§ 104. Invention made abroad

(a) IN GENERAL.—

(1) * * *

* * * * * * *

(3) USE OF INFORMATION.—To the extent that any information in a NAFTA country or a WTO member country concerning knowledge, use, or other activity relevant to proving or

disproving a date of invention has not been made available for

use in a proceeding in the Patent and Trademark Office, a

court, or any other competent authority to the same extent as

such information could be made available in the United States,

the øDirector¿ Commissioner, court, or such other authority

shall draw appropriate inferences, or take other action permitted by statute, rule, or regulation, in favor of the party that

requested the information in the proceeding.

* * * * * * *

CHAPTER 11—APPLICATION FOR PATENT

Sec.

111. Application.

* * * * * * *

ø116. Joint inventors.¿

116. Inventors.

* * * * * * *

§ 111. Application

(a) IN GENERAL.—

(1) WRITTEN APPLICATION.—An application for patent shall

be made, or authorized to be made, by the inventor, except as

otherwise provided in this title, in writing to the øDirector¿

Commissioner.

* * * * * * *

(3) FEE AND OATH.—The application must be accompanied

by the fee required by law. The fee and oath may be submitted

after the specification and any required drawing are submitted,

within such period and under such conditions, including the

payment of a surcharge, as may be prescribed by the øDirector¿ Commissioner.

(4) FAILURE TO SUBMIT.—Upon failure to submit the fee

and oath within such prescribed period, the application shall

be regarded as abandoned, unless it is shown to the satisfaction of the øDirector¿ Commissioner that the delay in submitting the fee and oath was unavoidable or unintentional. The

23

filing date of an application shall be the date on which the

specification and any required drawing are received in the Patent and Trademark Office.

(b) PROVISIONAL APPLICATION.—

(1) AUTHORIZATION.—A provisional application for patent

shall be made or authorized to be made by the inventor, except

as otherwise provided in this title, in writing to the øDirector¿

Commissioner. Such application shall include—

(A) * * *

* * * * * * *

(3) FEE.—(A) The application must be accompanied by the

fee required by law.

(B) The fee may be submitted after the specification and

any required drawing are submitted, within such period and

under such conditions, including the payment of a surcharge,

as may be prescribed by the øDirector¿ Commissioner.

(C) Upon failure to submit the fee within such prescribed

period, the application shall be regarded as abandoned, unless

it is shown to the satisfaction of the øDirector¿ Commissioner

that the delay in submitting the fee was unavoidable or unintentional.

* * * * * * *

(5) ABANDONMENT.—Notwithstanding the absence of a

claim, upon timely request and as prescribed by the øDirector¿

Commissioner, a provisional application may be treated as an

application filed under subsection (a). Subject to section

119(e)(3) of this title, if no such request is made, the provisional application shall be regarded as abandoned 12 months

after the filing date of such application and shall not be subject

to revival after such 12-month period.

(6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject

to all the conditions in this subsection and section 119(e) of

this title, and as prescribed by the øDirector¿ Commissioner,

an application for patent filed under subsection (a) may be

treated as a provisional application for patent.

* * * * * * *

§ 113. Drawings

The applicant shall furnish a drawing where necessary for the

understanding of the subject matter sought to be patented. When

the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the øDirector¿ Commissioner may require its submission within a time period of not less than two months from the sending of a notice thereof. Drawings submitted after the filing date of the application may

not be used (i) to overcome any insufficiency of the specification

due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or (ii) to supplement the original disclosure thereof

for the purpose of interpretation of the scope of any claim.

24

§ 114. Models, specimens

The øDirector¿ Commissioner may require the applicant to furnish a model of convenient size to exhibit advantageously the several parts of his invention.

When the invention relates to a composition of matter, the øDirector¿ Commissioner may require the applicant to furnish specimens or ingredients for the purpose of inspection or experiment.

* * * * * * *

§ 116. Inventors

When an invention is made by two or more persons jointly,

they shall apply for patent jointly and each make the required

oath, except as otherwise provided in this title. Inventors may

apply for a patent jointly even though (1) they did not physically

work together or at the same time, (2) each did not make the same

type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.

If a joint inventor refuses to join in an application for patent

or cannot be found or reached after diligent effort, the application

may be made by the other inventor on behalf of himself and the

omitted inventor. The øDirector¿ Commissioner, on proof of the

pertinent facts and after such notice to the omitted inventor as he

prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would

have had if he had been joined. The omitted inventor may subsequently join in the application.

Whenever through error a person is named in an application

for patent as the inventor, or through error an inventor is not

named in an application, and such error arose without any deceptive intention on his part, the øDirector¿ Commissioner may permit

the application to be amended accordingly, under such terms as he

prescribes.

* * * * * * *

§ 118. Filing by other than inventor

Whenever an inventor refuses to execute an application for

patent, or cannot be found or reached after diligent effort, a person

to whom the inventor has assigned or agreed in writing to assign

the invention or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for

patent on behalf of and as agent for the inventor on proof of the

pertinent facts and a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage;

and the øDirector¿ Commissioner may grant a patent to such inventor upon such notice to him as the øDirector¿ Commissioner

deems sufficient, and on compliance with such regulations as he

prescribes.

§ 119. Benefit of earlier filing date; right of priority

(a) * * *

(b) No application for patent shall be entitled to this right of

priority unless a claim therefor and a certified copy of the original

foreign application, specification and drawings upon which it is

based are filed in the Patent and Trademark Office before the patVerDate 11-MAY-2000 21:54 Sep 14, 2000 Jkt 079006 PO 00000 Frm 00024 Fmt 6659 Sfmt 6601 E:\HR\OC\HR853.XXX pfrm03 PsN: HR853
25

ent is granted, or at such time during the pendency of the application as required by the øDirector¿ Commissioner not earlier than

six months after the filing of the application in this country. Such

certification shall be made by the patent office of the foreign country in which filed and show the date of the application and of the

filing of the specification and other papers. The øDirector¿ Commissioner may require a translation of the papers filed if not in the

English language and such other information as he deems necessary.

* * * * * * *

§ 121. Divisional applications

If two or more independent and distinct inventions are claimed

in one application, the øDirector¿ Commissioner may require the

application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be

entitled to the benefit of the filing date of the original application.

A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used

as a reference either in the Patent and Trademark Office or in the

courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. If a divisional application is directed solely to subject

matter described and claimed in the original application as filed,

the øDirector¿ Commissioner may dispense with signing and execution by the inventor. The validity of a patent shall not be questioned for failure of the øDirector¿ Commissioner to require the application to be restricted to one invention.

§ 122. Confidential status of applications

Applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same

given without authority of the applicant or owner unless necessary

to carry out the provisions of any Act of Congress or in such special

circumstances as may be determined by the øDirector¿ Commissioner.

CHAPTER 12—EXAMINATION OF APPLICATION

* * * * * * *

§ 131. Examination of application

The øDirector¿ Commissioner shall cause an examination to be

made of the application and the alleged new invention; and if on

such examination it appears that the applicant is entitled to a patent under the law, the øDirector¿ Commissioner shall issue a patent therefor.

§ 132. Notice of rejection; reexamination

(a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the øDirector¿ Commissioner shall notify the applicant thereof, stating the reasons for

26

such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after

receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.

(b) The øDirector¿ Commissioner shall prescribe regulations to

provide for the continued examination of applications for patent at

the request of the applicant. The øDirector¿ Commissioner may establish appropriate fees for such continued examination and shall

provide a 50 percent reduction in such fees for small entities that

qualify for reduced fees under section 41(h)(1) of this title.

§ 133. Time for prosecuting application

Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been

given or mailed to the applicant, or within such shorter time, not

less than thirty days, as fixed by the øDirector¿ Commissioner in

such action, the application shall be regarded as abandoned by the

parties thereto, unless it be shown to the satisfaction of the øDirector¿ Commissioner that such delay was unavoidable.

§ 134. Appeal to the Board of Patent Appeals and Interferences

(a) PATENT APPLICANT.—An applicant for a patent, any of

whose claims has been twice rejected, may appeal from the decision

of the øadministrative patent judge¿ primary examiner to the

Board of Patent Appeals and Interferences, having once paid the

fee for such appeal.

(b) PATENT OWNER.—A patent owner in any reexamination

proceeding may appeal from the final rejection of any claim by the

øadministrative patent judge¿ primary examiner to the Board of

Patent Appeals and Interferences, having once paid the fee for such

appeal.

(c) THIRD-PARTY.—A third-party requester in an inter partes

proceeding may appeal to the Board of Patent Appeals and Interferences from the final decision of the øadministrative patent

judge¿ primary examiner favorable to the patentability of any original or proposed amended or new claim of a patent, having once

paid the fee for such appeal. The third-party requester may not appeal the decision of the Board of Patent Appeals and Interferences.

§ 135. Interferences

(a) Whenever an application is made for a patent which, in the

opinion of the øDirector¿ Commissioner, would interfere with any

pending application, or with any unexpired patent, an interference

may be declared and the øDirector¿ Commissioner shall give notice

of such declaration to the applicants, or applicant and patentee, as

the case may be. The Board of Patent Appeals and Interferences

shall determine questions of priority of the inventions and may determine questions of patentability. Any final decision, if adverse to

the claim of an applicant, shall constitute the final refusal by the

Patent and Trademark Office of the claims involved, and the øDirector¿ Commissioner may issue a patent to the applicant who is

27

adjudged the prior inventor. A final judgment adverse to a patentee

from which no appeal or other review has been or can be taken or

had shall constitute cancellation of the claims involved in the patent, and notice of such cancellation shall be endorsed on copies of

the patent distributed after such cancellation by the Patent and

Trademark Office.

* * * * * * *

(c) Any agreement or understanding between parties to an interference, including any collateral agreements referred to therein,

made in connection with or in contemplation of the termination of

the interference, shall be in writing and a true copy thereof filed

in the Patent and Trademark Office before the termination of the

interference as between the said parties to the agreement or understanding. If any party filing the same so requests, the copy shall

be kept separate from the file of the interference, and made available only to Government agencies on written request, or to any person on a showing of good cause. Failure to file the copy of such

agreement or understanding shall render permanently unenforceable such agreement or understanding and any patent of such parties involved in the interference or any patent subsequently issued

on any application of such parties so involved. The øDirector¿ Commissioner may, however, on a showing of good cause for failure to

file within the time prescribed, permit the filing of the agreement

or understanding during the six-month period subsequent to the

termination of the interference as between the parties to the agreement or understanding.

The øDirector¿ Commissioner shall give notice to the parties or

their attorneys of record, a reasonable time prior to said termination, of the filing requirement of this section. If the øDirector¿

Commissioner gives such notice at a later time, irrespective of the

right to file such agreement or understanding within the six-month

period on a showing of good cause, the parties may file such agreement or understanding within sixty days of the receipt of such notice.

Any discretionary action of the øDirector¿ Commissioner under

this subsection shall be reviewable under section 10 of the Administrative Procedure Act.

(d) Parties to a patent interference, within such time as may

be specified by the øDirector¿ Commissioner by regulation, may determine such contest or any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of title 9 to the extent

such title is not inconsistent with this section. The parties shall

give notice of any arbitration award to the øDirector¿ Commissioner, and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration

award shall be unenforceable until such notice is given. Nothing in

this subsection shall preclude the øDirector¿ Commissioner from

determining patentability of the invention involved in the interference.

CHAPTER 13—REVIEW OF PATENT AND TRADEMARK

OFFICE DECISIONS

* * * * * * *

28

§ 141. Appeal to Court of Appeals for the Federal Circuit

An applicant dissatisfied with the decision in an appeal to the

Board of Patent Appeals and Interferences under section 134 of

this title may appeal the decision to the United States Court of Appeals for the Federal Circuit. By filing such an appeal the applicant

waives his or her right to proceed under section 145 of this title.

A patent owner in any reexamination proceeding dissatisfied with

the final decision in an appeal to the Board of Patent Appeals and

Interferences under section 134 may appeal the decision only to the

United States Court of Appeals for the Federal Circuit. A party to

an interference dissatisfied with the decision of the Board of Patent

Appeals and Interferences on the interference may appeal the decision to the United States Court of Appeals for the Federal Circuit,

but such appeal shall be dismissed if any adverse party to such interference, within twenty days after the appellant has filed notice

of appeal in accordance with section 142 of this title, files notice

with the øDirector¿ Commissioner that the party elects to have all

further proceedings conducted as provided in section 146 of this

title. If the appellant does not, within thirty days after the filing

of such notice by the adverse party, file a civil action under section

146, the decision appealed from shall govern the further proceedings in the case.

§ 142. Notice of appeal

When an appeal is taken to the United States Court of Appeals

for the Federal Circuit, the appellant shall file in the Patent and

Trademark Office a written notice of appeal directed to the øDirector¿ Commissioner, within such time after the date of the decision

from which the appeal is taken as the øDirector¿ Commissioner

prescribes, but in no case less than 60 days after that date.

§ 143. Proceedings on appeal

With respect to an appeal described in section 142 of this title,

the øDirector¿ Commissioner shall transmit to the United States

Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the Patent and Trademark Office.

The court may request that the øDirector¿ Commissioner forward

the original or certified copies of such documents during pendency

of the appeal. In any reexamination case, the øDirector¿ Commissioner shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues

involved in the appeal. The court shall, before hearing an appeal,

give notice of the time and place of the hearing to the øDirector¿

Commissioner and the parties in the appeal.

§ 144. Decision on appeal

The United States Court of Appeals for the Federal Circuit

shall review the decision from which an appeal is taken on the

record before the Patent and Trademark Office. Upon its determination the court shall issue to the øDirector¿ Commissioner its

mandate and opinion, which shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings

in the case.

29

§ 145. Civil action to obtain patent

An applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences in an appeal under section 134(a) of

this title may, unless appeal has been taken to the United States

Court of Appeals for the Federal Circuit, have remedy by civil action against the øDirector¿ Commissioner in the United States District Court for the District of Columbia if commenced within such

time after such decision, not less than sixty days, as the øDirector¿

Commissioner appoints. The court may adjudge that such applicant

is entitled to receive a patent for his invention, as specified in any

of his claims involved in the decision of the Board of Patent Appeals and Interferences, as the facts in the case may appear and

such adjudication shall authorize the øDirector¿ Commissioner to

issue such patent on compliance with the requirements of law. All

the expenses of the proceedings shall be paid by the applicant.

§ 146. Civil action in case of interference

Any party to an interference dissatisfied with the decision of

the Board of Patent Appeals and Interferences on the interference,

may have remedy by civil action, if commenced within such time

after such decision, not less than sixty days, as the øDirector¿

Commissioner appoints or as provided in section 141 of this title,

unless he has appealed to the United States Court of Appeals for

the Federal Circuit, and such appeal is pending or has been decided. In such suits the record in the Patent and Trademark Office

shall be admitted on motion of either party upon the terms and

conditions as to costs, expenses, and the further cross-examination

of the witnesses as the court imposes, without prejudice to the

right of the parties to take further testimony. The testimony and

exhibits of the record in the Patent and Trademark Office when admitted shall have the same effect as if originally taken and produced in the suit.

Such suit may be instituted against the party in interest as

shown by the records of the Patent and Trademark Office at the

time of the decision complained of, but any party in interest may

become a party to the action. If there be adverse parties residing

in a plurality of districts not embraced within the same state, or

an adverse party residing in a foreign country, the United States

District Court for the District of Columbia shall have jurisdiction

and may issue summons against the adverse parties directed to the

marshal of any district in which any adverse party resides. Summons against adverse parties residing in foreign countries may be

served by publication or otherwise as the court directs. The øDirector¿ Commissioner shall not be a necessary party but he shall be

notified of the filing of the suit by the clerk of the court in which

it is filed and shall have the right to intervene. Judgment of the

court in favor of the right of an applicant to a patent shall authorize the øDirector¿ Commissioner to issue such patent on the filing

in the Patent and Trademark Office of a certified copy of the judgment and on compliance with the requirements of law.

CHAPTER 14—ISSUE OF PATENT

* * * * * * *

30

§ 151. Issue of patent

If it appears that 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 or a portion thereof, which shall be paid within

three months thereafter.

Upon payment of this sum the patent shall issue, but if payment is not timely made, the application shall be regarded as abandoned.

Any remaining balance of the issue fee shall be paid within

three months from the sending of a notice thereof and, if not paid,

the patent shall lapse at the termination of this three-month period. In calculating the amount of a remaining balance, charges for

a page or less may be disregarded.

If any payment required by this section is not timely made, but

is submitted with the fee for delayed payment and the delay in

payment is shown to have been unavoidable, it may be accepted by

the øDirector¿ Commissioner as though no abandonment or lapse

had ever occurred.

* * * * * * *

§ 153. How issued

Patents shall be issued in the name of the United States of

America, under the seal of the Patent and Trademark Office, and

shall be signed by the øDirector¿ Commissioner or have his signature placed thereon øand attested by an officer of the Patent and

Trademark Office designated by the Director,¿ and shall be recorded in the Patent and Trademark Office.

§ 154. Contents and term of patent

(a) * * *

* * * * * * *

(b) ADJUSTMENT OF PATENT TERM.— (1) * * *

* * * * * * *

(2) LIMITATIONS.—

(A) * * *

* * * * * * *

(C) REDUCTION OF PERIOD OF ADJUSTMENT.—

(i) * * *

* * * * * * *

(iii) The øDirector¿ Commissioner shall prescribe

regulations establishing the circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of

an application.

(3) PROCEDURES FOR PATENT TERM ADJUSTMENT DETERMINATION.—

(A) The øDirector¿ Commissioner shall prescribe regulations establishing procedures for the application for and

determination of patent term adjustments under this subsection.

31

(B) Under the procedures established under subparagraph (A), the øDirector¿ Commissioner shall—

(i) make a determination of the period of any patent term adjustment under this subsection, and shall

transmit a notice of that determination with the written notice of allowance of the application under section

151; and

(ii) provide the applicant one opportunity to request reconsideration of any patent term adjustment

determination made by the øDirector¿ Commissioner. (C) The øDirector¿ Commissioner shall reinstate all or

part of the cumulative period of time of an adjustment

under paragraph (2)(C) if the applicant, prior to the

issuance of the patent, makes a showing that, in spite of

all due care, the applicant was unable to respond within

the 3-month period, but in no case shall more than three

additional months for each such response beyond the original 3-month period be reinstated.

(D) The øDirector¿ Commissioner shall proceed to

grant the patent after completion of the øDirector¿ Commissioner’s determination of a patent term adjustment

under the procedures established under this subsection,

notwithstanding any appeal taken by the applicant of such

determination.

(4) APPEAL OF PATENT TERM ADJUSTMENT DETERMINA- TION.— (A) An applicant dissatisfied with a determination

made by the øDirector¿ Commissioner under paragraph (3)

shall have remedy by a civil action against the øDirector¿

Commissioner filed in the United States District Court for

the District of Columbia within 180 days after the grant

of the patent. Chapter 7 of title 5ø, United States Code,¿

shall apply to such action. Any final judgment resulting in

a change to the period of adjustment of the patent term

shall be served on the øDirector¿ Commissioner, and the

øDirector¿ Commissioner shall thereafter alter the term of

the patent to reflect such change.

* * * * * * *

§ 155. Patent term extension

Notwithstanding the provisions of section 154, the term of a

patent which encompasses within its scope a composition of matter

or a process for using such composition shall be extended if such

composition or process has been subjected to a regulatory review by

the Federal Food and Drug Administration pursuant to the Federal

Food, Drug, and Cosmetic Act leading to the publication of regulation permitting the interstate distribution and sale of such composition or process and for which there has thereafter been a stay

of regulation of approval imposed pursuant to section 409 of the

Federal Food, Drug, and Cosmetic Act which stay was in effect on

January 1, 1981, by a length of time to be measured from the date

such stay of regulation of approval was imposed until such proceedings are finally resolved and commercial marketing permitted.

The patentee, his heirs, successors or assigns shall notify the øDirector¿ Commissioner within ninety days of the date of enactment

32

of this section or the date the stay of regulation of approval has

been removed, whichever is later, of the number of the patent to

be extended and the date the stay was imposed and the date commercial marketing was permitted. On receipt of such notice, the

øDirector¿ Commissioner shall promptly issue to the owner of

record of the patent a certificate of extension, under seal, stating

the fact and length of the extension and identifying the composition

of matter or process for using such composition to which such extension is applicable. Such certificate shall be recorded in the official file of each patent extended and such certificate shall be considered as part of the original patent, and an appropriate notice

shall be published in the Official Gazette of the Patent and Trademark Office.

§ 155A. Patent term restoration

(a) * * *

* * * * * * *

(c) The patentee of any patent described in subsection (a) of

this section shall, within ninety days after the date of enactment

of this section, notify the øDirector¿ Commissioner of the number

of any patent so extended. On receipt of such notice, the øDirector¿

Commissioner shall confirm such extension by placing a notice

thereof in the official file of such patent and publishing an appropriate notice of such extension in the Official Gazette of the Patent

and Trademark Office.

§ 156. Extension of patent term

(a) * * *

* * * * * * *

(b) Except as provided in subsection (d)(5)(F), the rights derived from any patent the term of which is extended under this section shall during the period during which the term of the patent

is extended—

(1) * * *

* * * * * * *

(3) in the case of a patent which claims a method of manufacturing a product, be limited to the method of manufacturing

as used to make—

(A) the approved product, or

(B) the product if it has been subject to a regulatory

review period described in øparagraphs¿ paragraph (1),

(4), or (5) of subsection (g).

As used in this subsection, the term ‘‘product’’ includes an approved

product.

* * * * * * *

(d)(1) To obtain an extension of the term of a patent under this

section, the owner of record of the patent or its agent shall submit

an application to the øDirector¿ Commissioner. Except as provided

in paragraph (5), such an application may only be submitted within

the sixty-day period beginning on the date the product received

permission under the provision of law under which the applicable

regulatory review period occurred for commercial marketing or use.

The application shall contain—

33

(A) * * *

* * * * * * *

(C) information to enable the øDirector¿ Commissioner to

determine under subsections (a) and (b) the eligibility of a patent for extension and the rights that will be derived from the

extension and information to enable the øDirector¿ Commissioner and the Secretary of Health and Human Services or the

Secretary of Agriculture to determine the period of the extension under subsection (g);

* * * * * * *

(E) such patent or other information as the øDirector¿

Commissioner may require.

(2)(A) Within 60 days of the submittal of an application for extension of the term of a patent under paragraph (1), the øDirector¿

Commissioner shall notify—

(i) * * *

* * * * * * *

of the extension application and shall submit to the Secretary who

is so notified a copy of the application. Not later than 30 days after

the receipt of an application from the øDirector¿ Commissioner, the

Secretary receiving the application shall review the dates contained

in the application pursuant to paragraph (1)(C) and determine the

applicable regulatory review period, shall notify the øDirector¿

Commissioner of the determination, and shall publish in the Federal Register a notice of such determination.

(B)(i) If a petition is submitted to the Secretary making the determination under subparagraph (A), not later than 180 days after

the publication of the determination under subparagraph (A), upon

which it may reasonably be determined that the applicant did not

act with due diligence during the applicable regulatory review period, the Secretary making the determination shall, in accordance

with regulations promulgated by such Secretary, determine if the

applicant acted with due diligence during the applicable regulatory

review period. The Secretary making the determination shall make

such determination not later than 90 days after the receipt of such

a petition. For a drug product, device, or additive subject to the

Federal Food, Drug, and Cosmetic Act or the Public Health Service

Act, the Secretary may not delegate the authority to make the determination prescribed by this clause to an office below the Office

of the øDirector¿ Commissioner of Food and Drugs. For a product

subject to the Virus-Serum-Toxin Act, the Secretary of Agriculture

may not delegate the authority to make the determination prescribed by this clause to an office below the øoffice¿ Office of the

Assistant Secretary for Marketing and Inspection Services.

(ii) The Secretary making a determination under clause (i)

shall notify the øDirector¿ Commissioner of the determination and

shall publish in the Federal Register a notice of such determination

together with the factual and legal basis for such determination.

Any interested person may request, within the 60-day period beginning on the publication of a determination, the Secretary making

the determination to hold an informal hearing on the determination. If such a request is made within such period, such Secretary

shall hold such hearing not later than 30 days after the date of the

34

request, or at the request of the person making the request, not

later than 60 days after such date. The Secretary who is holding

the hearing shall provide notice of the hearing to the owner of the

patent involved and to any interested person and provide the

owner and any interested person an opportunity to participate in

the hearing. Within 30 days after the completion of the hearing,

such Secretary shall affirm or revise the determination which was

the subject of the hearing and shall notify the øDirector¿ Commissioner of any revision of the determination and shall publish any

such revision in the Federal Register.

* * * * * * *

(4) An application for the extension of the term of a patent is

subject to the disclosure requirements prescribed by the øDirector¿

Commissioner.

(5)(A) If the owner of record of the patent or its agent reasonably expects that the applicable regulatory review period described

in paragraph (1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of

subsection (g) that began for a product that is the subject of such

patent may extend beyond the expiration of the patent term in effect, the owner or its agent may submit an application to the øDirector¿ Commissioner for an interim extension during the period

beginning 6 months, and ending 15 days, before such term is due

to expire. The application shall contain—

(i) * * *

* * * * * * *

(iii) information to enable the øDirector¿ Commissioner to

determine under subsection (a)(1), (2), and (3) the eligibility of

a patent for extension;

* * * * * * *

(v) such patent or other information as the øDirector¿

Commissioner may require.

(B) If the øDirector¿ Commissioner determines that, except for

permission to market or use the product commercially, the patent

would be eligible for an extension of the patent term under this

section, the øDirector¿ Commissioner shall publish in the Federal

Register a notice of such determination, including the identity of

the product under regulatory review, and shall issue to the applicant a certificate of interim extension for a period of not more than

1 year.

* * * * * * *

(E) Any interim extension granted under this paragraph shall

terminate at the end of the 60-day period beginning on the date on

which the product involved receives permission for commercial

marketing or use, except that, if within that 60-day period the applicant notifies the øDirector¿ Commissioner of such permission

and submits any additional information under paragraph (1) of this

subsection not previously contained in the application for interim

extension, the patent shall be further extended, in accordance with

the provisions of this section—

(i) * * *

* * * * * * *

35

(e)(1) A determination that a patent is eligible for extension

may be made by the øDirector¿ Commissioner solely on the basis

of the representations contained in the application for the extension. If the øDirector¿ Commissioner determines that a patent is

eligible for extension under subsection (a) and that the requirements of paragraphs (1) through (4) of subsection (d) have been

complied with, the øDirector¿ Commissioner shall issue to the applicant for the extension of the term of the patent a certificate of

extension, under seal, for the period prescribed by subsection (c).

Such certificate shall be recorded in the official file of the patent

and shall be considered as part of the original patent.

(2) If the term of a patent for which an application has been

submitted under subsection (d)(1) would expire before a certificate

of extension is issued or denied under paragraph (1) respecting the

application, the øDirector¿ Commissioner shall extend, until such

determination is made, the term of the patent for periods of up to

one year if he determines that the patent is eligible for extension.

* * * * * * *

(g) For purposes of this section, the term ‘‘regulatory review period’’ has the following meanings:

(1) * * *

* * * * * * *

(6) A period determined under any of the preceding paragraphs is subject to the following limitations:

(A) * * *

(B) If the patent involved was issued before the date

of the enactment of this section and—

(i) * * *

* * * * * * *

(iii) no clinical investigation described in paragraph (3) was begun or product development protocol

described in such paragraph was øsubmittted¿ submitted,

before such date for the approved product the period of extension determined on the basis of the regulatory review

period determined under any such paragraph may not exceed five years.

(h) The øDirector¿ Commissioner may establish such fees as

the øDirector¿ Commissioner determines appropriate to cover the

costs to the Office of receiving and acting upon applications under

this section.

§ 157. Statutory invention registration

(a) Notwithstanding any other provision of this title, the øDirector¿ Commissioner is authorized to publish a statutory invention

registration containing the specification and drawings of a regularly filed application for a patent without examination if the

applicant—

(1) meets the requirements of section 112 of this title;

(2) has complied with the requirements for printing, as set

forth in regulations of the øDirector¿ Commissioner;

36

(3) waives the right to receive a patent on the invention

within such period as may be prescribed by the øDirector¿

Commissioner; and

(4) pays application, publication, and other processing fees

established by the øDirector¿ Commissioner. If an interference is declared with respect to such an application,

a statutory invention registration may not be published unless the

issue of priority of invention is finally determined in favor of the

applicant.

* * * * * * *

(c) A statutory invention registration published pursuant to

this section shall have all of the attributes specified for patents in

this title except those specified in section 183 and sections 271

through 289 of this title. A statutory invention registration shall

not have any of the attributes specified for patents in any other

provision of law other than this title. A statutory invention registration published pursuant to this section shall give appropriate

notice to the public, pursuant to regulations which the øDirector¿

Commissioner shall issue, of the preceding provisions of this subsection. The invention with respect to which a statutory invention

certificate is published is not a patented invention for purposes of

section 292 of this title.

(d) The øDirector¿ Commissioner shall report to the Congress

annually on the use of statutory invention registrations. Such report shall include an assessment of the degree to which agencies

of the Federal Government are making use of the statutory invention registration system, the degree to which it aids the management of federally developed technology, and an assessment of the

cost savings to the Federal Government of the use of such procedures.

CHAPTER 15—PLANT PATENTS

* * * * * * *

§ 164. Assistance of Department of Agriculture

The President may by Executive order direct the Secretary of

Agriculture, in accordance with the requests of the øDirector¿ Commissioner, for the purpose of carrying into effect the provisions of

this title with respect to plants (1) to furnish available information

of the Department of Agriculture, (2) to conduct through the appropriate bureau or division of the Department research upon special

problems, or (3) to detail to the øDirector¿ Commissioner officers

and employees of the Department.

* * * * * * *

CHAPTER 17—SECRECY OF CERTAIN INVENTIONS AND

FILING APPLICATIONS IN FOREIGN COUNTRY

Sec.

181. Secrecy of certain inventions and withholding of patent.

* * * * * * *

183. Right øof¿ to compensation.

* * * * * * *

37

§ 185. Patent barred for filing without license

Notwithstanding any other provisions of law any person, and

his successors, assigns, or legal representatives, shall not receive a

United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the

license prescribed in section 184 of this title, have made, or consented to or assisted another’s making, application in a foreign

country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States

patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error and without deceptive intent, and the patent does not disclose subject matter within the scope of section 181

of this title.ø.¿

* * * * * * *

CHAPTER 18—PATENT RIGHTS IN INVENTIONS MADE

WITH FEDERAL ASSISTANCE

* * * * * * *

§ 201. Definitions

As used in this chapter—

(a) The term ‘‘Federal agency’’ means any executive agency

as defined in section 105 of title 5, øUnited States Code,¿ and

the military departments as defined by section 102 of title ø5,

United States Code¿ 5.

* * * * * * *

§ 202. Disposition of rights

(a) * * *

(b)(1) * * *

* * * * * * *

(4) If the contractor believes that a determination is contrary

to the policies and objectives of this chapter or constitutes an abuse

of discretion by the agency, the determination shall be subject to

the ølast paragraph of section 203(2)¿ section 203(b). (c) Each funding agreement with a small business firm or nonprofit organization shall contain appropriate provisions to effectuate the following:

(1) * * *

* * * * * * *

(4) With respect to any invention in which the contractor

elects rights, the Federal agency shall have a nonexclusive,

nontransferrable, irrevocable, paid-up license to practice or

have practiced for or on behalf of the United States any subject

invention throughout the world: Provided, That the funding

agreement may provide for such additional ørights;¿ rights, including the right to assign or have assigned foreign patent

rights in the subject invention, as are determined by the agency as necessary for meeting the obligations of the United

States under any treaty, international agreement, arrangement

of cooperation, memorandum of understanding, or similar arVerDate 11-MAY-2000 21:54 Sep 14, 2000 Jkt 079006 PO 00000 Frm 00037 Fmt 6659 Sfmt 6601 E:\HR\OC\HR853.XXX pfrm03 PsN: HR853
38

rangement, including military agreement relating to weapons

development and production.

(5) The right of the Federal agency to require periodic reporting on the utilization or efforts at obtaining utilization that

are being made by the contractor or his licensees or assignees:

Provided, That any such information as well as any information on utilization or efforts at obtaining utilization obtained as

part of a proceeding under section 203 of this chapter shall be

treated by the Federal agency as commercial and financial information obtained from a person and privileged and confidential and not subject to disclosure under section 552 of title 5

øof the United States Code¿.

* * * * * * *

§ 203. March-in rights

ø(1.¿ (a) With respect to any subject invention in which a small

business firm or nonprofit organization has acquired title under

this chapter, the Federal agency under whose funding agreement

the subject invention was made shall have the right, in accordance

with such procedures as are provided in regulations promulgated

hereunder to require the contractor, an assignee or exclusive licensee of a subject invention to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible applicant or applicants, upon terms that are reasonable under the circumstances, and if the contractor, assignee, or exclusive licensee

refuses such request, to grant such a license itself, if the Federal

agency determines that such—

ø(a)¿ (1) action is necessary because the contractor or assignee has not taken, or is not expected to take within a reasonable time, effective steps to achieve practical application of

the subject invention in such field of use;

ø(b)¿ (2) action is necessary to alleviate health or safety

needs which are not reasonably satisfied by the contractor, assignee, or their licensees;

ø(c)¿ (3) action is necessary to meet requirements for public use specified by Federal regulations and such requirements

are not reasonably satisfied by the contractor, assignee, or licensees; or

ø(d)¿ (4) action is necessary because the agreement required by section 204 has not been obtained or waived or because a licensee of the exclusive right to use or sell any subject

invention in the United States is in breach of its agreement obtained pursuant to section 204.

ø(2)¿ (b) A determination pursuant to this section or section

202(b)(4) shall not be subject to the Contract Disputes Act (41

U.S.C. § 601 et seq.). An administrative appeals procedure shall be

established by regulations promulgated in accordance with section

206. Additionally, any contractor, inventor, assignee, or exclusive

licensee adversely affected by a determination under this section

may, at any time within sixty days after the determination is

issued, file a petition in the United States Court of Federal Claims,

which shall have jurisdiction to determine the appeal on the record

and to affirm, reverse, remand or modify, ø‘‘,¿ as appropriate, the

determination of the Federal agency. In cases described in paragraphs ø(a) and (c)¿ (1) and (3) of subsection (a), the agency’s deterVerDate 11-MAY-2000 21:54 Sep 14, 2000 Jkt 079006 PO 00000 Frm 00038 Fmt 6659 Sfmt 6601 E:\HR\OC\HR853.XXX pfrm03 PsN: HR853
39

mination shall be held in abeyance pending the exhaustion of appeals or petitions filed under the preceding sentence.

* * * * * * *

§ 209. Restrictions on licensing of federally owned

inventions

(a) No Federal agency shall grant any license under a patent

or patent application on a federally owned invention unless the

person requesting the license has supplied the agency with a plan

for development and/or marketing of the invention, except that any

such plan may be treated by the Federal agency as commercial and

financial information obtained from a person and privileged and

confidential and not subject to disclosure under section 552 of title

5 øof the United States Code¿.

* * * * * * *

(f) Any grant of a license shall contain such terms and conditions as the Federal agency determines appropriate for the protection of the interests of the Federal Government and the public, including provisions for the following:

(1) periodic reporting on the utilization or efforts at obtaining utilization that are being made by the licensee with particular reference to the plan submitted: Provided, That any

such information may be treated by the Federal agency as commercial and financial information obtained from a person and

privileged and confidential and not subject to disclosure under

section 552 of title 5 øof the United States Code¿;

* * * * * * *

§ 210. Precedence of chapter

(a) This chapter shall take precedence over any other Act

which would require a disposition of rights in subject inventions of

small business firms or nonprofit organizations contractors in a

manner that is inconsistent with this chapter, including but not

necessarily limited to the following:

(1) * * *

* * * * * * *

(11) section 9 of the Federal Nonnuclear Energy Research

and Development Act of 1974 (42 U.S.C. ø5901¿ 5908; 88 Stat.

1878);

* * * * * * *

(20) section 12 of the Native Latex Commercialization and

Economic Development Act of 1978 (7 U.S.C. ø178(j)¿ 178j; 92

Stat. 2533); and

* * * * * * *

(c) Nothing in this chapter is intended to limit the authority

of agencies to agree to the disposition of rights in inventions made

in the performance of work under funding agreements with persons

other than nonprofit organizations or small business firms in accordance with the Statement of Government Patent Policy issued

on February 18, 1983, agency regulations, or other applicable regulations or to otherwise limit the authority of agencies to allow such

persons to retain ownership of inventions except that all funding

40

agreements, including those with other than small business firms

and nonprofit organizations, shall include the requirements established in øparagraph¿ section 202(c)(4) and section 203 of this

title.ø.¿ Any disposition of rights in inventions made in accordance

with the Statement or implementing regulations, including any disposition occurring before enactment of this section, are hereby authorized.

(d) Nothing in this chapter shall be construed to require the

disclosure of intelligence sources or methods or to otherwise affect

the authority granted to the øDirector¿ Commissioner of Central

Intelligence by statute or Executive order for the protection of intelligence sources or methods.

* * * * * * *

PART III—PATENTS AND PROTECTION OF

PATENT RIGHTS

Chap. Sec.

25. Amendment and Correction of Patents ............................................ 251

* * * * * * *

29. Remedies for Infringement of Patent, and Other Actions ........... 281

* * * * * * *

CHAPTER 25—AMENDMENT AND CORRECTION OF

PATENTS

Sec.

251. Reissue of defective patents.

* * * * * * *

ø256. Misjoinder of inventor.¿

256. Correction of named inventor.

§ 251. Reissue of defective patents

Whenever any patent is, through error without any deceptive

intention, deemed wholly or partly inoperative or invalid, by reason

of a defective specification or drawing, or by reason of the patentee

claiming more or less than he had a right to claim in the patent,

the øDirector¿ Commissioner shall, on the surrender of such patent

and the payment of the fee required by law, reissue the patent for

the invention disclosed in the original patent, and in accordance

with a new and amended application, for the unexpired part of the

term of the original patent. No new matter shall be introduced into

the application for reissue.

The øDirector¿ Commissioner may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for

a reissue for each of such reissued patents.

The provisions of this title relating to applications for patent

shall be applicable to applications for reissue of a patent, except

that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent.

41

No reissued patent shall be granted enlarging the scope of the

claims of the original patent unless applied for within two years

from the grant of the original patent.

* * * * * * *

§ 254. Certificate of correction of Patent and Trademark

Office mistake

Whenever a mistake in a patent, incurred through the fault of

the Patent and Trademark Office, is clearly disclosed by the

records of the Office, the øDirector¿ Commissioner may issue a certificate of correction stating the fact and nature of such mistake,

under seal, without charge, to be recorded in the records of patents.

A printed copy thereof shall be attached to each printed copy of the

patent, and such certificate shall be considered as part of the original patent. Every such patent, together with such certificate, shall

have the same effect and operation in law on the trial of actions

for causes thereafter arising as if the same had been originally

issued in such corrected form. The øDirector¿ Commissioner may

issue a corrected patent without charge in lieu of and with like effect as a certificate of correction.

§ 255. Certificate of correction of applicant’s mistake

Whenever a mistake of a clerical or typographical nature, or of

minor character, which was not the fault of the Patent and Trademark Office, appears in a patent and a showing has been made

that such mistake occurred in good faith, the øDirector¿ Commissioner may, upon payment of the required fee, issue a certificate of

correction, if the correction does not involve such changes in the

patent as would constitute new matter or would require re-examination. Such patent, together with the certificate, shall have the

same effect and operation in law on the trial of actions for causes

thereafter arising as if the same had been originally issued in such

corrected form.

§ 256. Correction of named inventor

Whenever through error a person is named in an issued patent

as the inventor, or through error an inventor is not named in an

issued patent and such error arose without any deceptive intention

on his part, the øDirector¿ Commissioner may, on application of all

the parties and assignees, with proof of the facts and such other

requirements as may be imposed, issued a certificate correcting

such error.

The error of omitting inventors or naming persons who are not

inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court

before which such matter is called in question may order correction

of the patent on notice and hearing of all parties concerned and the

øDirector¿ Commissioner shall issue a certificate accordingly.

* * * * * * *

CHAPTER 27—GOVERNMENT INTERESTS IN PATENTS

* * * * * * *

42

§ 267. Time for taking action in Government applications

Notwithstanding the provisions of sections 133 and 151 of this

title, the øDirector¿ Commissioner may extend the time for taking

any action to three years, when an application has become the

property of the United States and the head of the appropriate department or agency of the Government has certified to the øDirector¿ Commissioner that the invention disclosed therein is important to the armament or defense of the United States.

* * * * * * *

CHAPTER 29—REMEDIES FOR INFRINGEMENT OF

PATENT, AND OTHER ACTIONS

* * * * * * *

§ 282. Presumption of validity; defenses

A patent shall be presumed valid. Each claim of a patent

(whether in independent, dependent, or multiple dependent form)

shall be presumed valid independently of the validity of other

claims; dependent or multiple dependent claims shall be presumed

valid even though dependent upon an invalid claim. Notwithstanding the preceding sentence, if a claim to a composition of matter is held invalid and that claim was the basis of a determination

of nonobviousness under section 103(b)(1), the process shall no

longer be considered nonobvious solely on the basis of section

103(b)(1). The burden of establishing invalidity of a patent or any

claim thereof shall rest on the party asserting such invalidity.

The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:

(1) * * *

* * * * * * *

(4) Any other fact or act made a defense by this title.

In actions involving the validity or infringement of a patent

the party asserting invalidity or noninfringement shall give notice

in the pleadings or otherwise in writing to the adverse party at

least thirty days before the trial, of the country, number, date, and

name of the patentee of any patent, the title, date, and page numbers of any publication to be relied upon as anticipation of the patent in suit or, except in actions in the United States Court of Federal Claims, as showing the state of the art, and the name and address of any person who may be relied upon as the prior inventor

or as having prior knowledge of or as having previously used or offered for sale the invention of the patent in suit. In the absence of

such notice proof of the said matters may not be made at the trial

except on such terms as the court requires. Invalidity of the extension of a patent term or any portion thereof under section 154(b)

or 156 of this title because of the material failure—

(1) by the applicant for the extension, or

(2) by the øDirector¿ Commissioner,

to comply with the requirements of such section shall be a defense

in any action involving the infringement of a patent during the period of the extension of its term and shall be pleaded. A due diliVerDate 11-MAY-2000 21:54 Sep 14, 2000 Jkt 079006 PO 00000 Frm 00042 Fmt 6659 Sfmt 6601 E:\HR\OC\HR853.XXX pfrm03 PsN: HR853
43

gence determination under section 156(d)(2) is not subject to review

in such an action.

* * * * * * *

§ 290. Notice of patent suits

The clerks of the courts of the United States, within one month

after the filing of an action under this title shall give notice thereof

in writing to the øDirector¿ Commissioner, setting forth so far as

known the names and addresses of the parties, name of the inventor, and the designating number of the patent upon which the action has been brought. If any other patent is subsequently included

in the action he shall give like notice thereof. Within one month

after the decision is rendered or a judgment issued the clerk of the

court shall give notice thereof to the øDirector¿ Commissioner. The

øDirector¿ Commissioner shall, on receipt of such notices, enter the

same in the file of such patent.

* * * * * * *

§ 294. Voluntary arbitration

(a) * * *

(b) Arbitration of such disputes, awards by arbitrators and confirmation of awards shall be governed by title 9, øUnited States

Code,¿ to the extent such title is not inconsistent with this section.

In any such arbitration proceeding, the defenses provided for under

section 282 of this title shall be considered by the arbitrator if

raised by any party to the proceeding.

(c) An award by an arbitrator shall be final and binding between the parties to the arbitration but shall have no force or effect

on any other person. The parties to an arbitration may agree that

in the event a patent which is the subject matter of an award is

subsequently determined to be invalid or unenforceable in a judgment rendered by a court øto¿ of competent jurisdiction from which

no appeal can or has been taken, such award may be modified by

any court of competent jurisdiction upon application by any party

to the arbitration. Any such modification shall govern the rights

and obligations between such parties from the date of such modification.

(d) When an award is made by an arbitrator, the patentee, his

assignee or licensee shall give notice thereof in writing to the øDirector¿ Commissioner. There shall be a separate notice prepared

for each patent involved in such proceeding. Such notice shall set

forth the names and addresses of the parties, the name of the inventor, and the name of the patent owner, shall designate the number of the patent, and shall contain a copy of the award. If an

award is modified by a court, the party requesting such modification shall give notice of such modification to the øDirector¿ Commissioner. The øDirector¿ Commissioner shall, upon receipt of either notice, enter the same in the record of the prosecution of such

patent. If the required notice is not filed with the øDirector¿ Commissioner, any party to the proceeding may provide such notice to

the øDirector¿ Commissioner.

44

(e) The award shall be unenforceable until the notice required

by subsection (d) is received by the øDirector¿ Commissioner.

* * * * * * *

CHAPTER 30—PRIOR ART CITATIONS TO OFFICE AND EX

PARTE REEXAMINATION OF PATENTS

* * * * * * *

§ 302. Request for reexamination

Any person at any time may file a request for reexamination

by the Office of any claim of a patent on the basis of any prior art

cited under the provisions of section 301 of this title. The request

must be in writing and must be accompanied by payment of a reexamination fee established by the øDirector¿ Commissioner pursuant to the provisions of section 41 of this title. The request must

set forth the pertinency and manner of applying cited prior art to

every claim for which reexamination is requested. Unless the requesting person is the owner of the patent, the øDirector¿ Commissioner promptly will send a copy of the request to the owner of

record of the patent.

§ 303. Determination of issue by øDirector¿ Commissioner

(a) Within three months following the filing of a request for reexamination under the provisions of section 302 of this title, the

øDirector¿ Commissioner will determine whether a substantial new

question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of

other patents or printed publications. On his own initiative, and

any time, the øDirector¿ Commissioner may determine whether a

substantial new question of patentability is raised by patents and

publications discovered by him or cited under the provisions of section 301 of this title.

(b) A record of the øDirector’s¿ Commissioner’s determination

under subsection (a) of this section will be placed in the official file

of the patent, and a copy promptly will be given or mailed to the

owner of record of the patent and to the person requesting reexamination, if any.

(c) A determination by the øDirector¿ Commissioner pursuant

to subsection (a) of this section that no substantial new question

of patentability has been raised will be final and nonappealable.

Upon such a determination, the øDirector¿ Commissioner may refund a portion of the reexamination fee required under section 302

of this title.

§ 304. Reexamination order by øDirector¿ Commissioner

If, in a determination made under the provisions of subsection

303(a) of this title, the øDirector¿ Commissioner finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of the patent for resolution of the question. The patent

owner will be given a reasonable period, not less than two months

from the date a copy of the determination is given or mailed to

him, within which he may file a statement on such question, including any amendment to his patent and new claim or claims he

45

may wish to propose, for consideration in the reexamination. If the

patent owner files such a statement, he promptly will serve a copy

of it on the person who has requested reexamination under the provisions of section 302 of this title. Within a period of two months

from the date of service, that person may file and have considered

in the reexamination a reply to any statement filed by the patent

owner. That person promptly will serve on the patent owner a copy

of any reply filed.

* * * * * * *

§ 307. Certificate of patentability, unpatentability, and claim

cancellation

(a) In a reexamination proceeding under this chapter, when the

time for appeal has expired or any appeal proceeding has terminated, the øDirector¿ Commissioner will issue and publish a certificate canceling any claim of the patent finally determined to be

unpatentable, confirming any claim of the patent determined to be

patentable, and incorporating in the patent any proposed amended

or new claim determined to be patentable.

(b) Any proposed amended or new claim determined to be patentable and incorporated into a patent following a reexamination

proceeding will have the same effect as that specified in section 252

of this title for reissued patents on the right of any person who

made, purchased, or used within the United States, or imported

into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation for the

same, prior to issuance of a certificate under the provisions of subsection (a) of this section.

CHAPTER 31—OPTIONAL INTER PARTES

REEXAMINATION PROCEDURES

Sec.

311. Request for inter partes reexamination.

312. Determination of issue by øDirector¿ Commissioner.

313. Inter partes reexamination order by øDirector¿ Commissioner.

* * * * * * *

§ 311. Request for inter partes reexamination

(a) IN GENERAL.—Any øperson¿ third-party requester at any

time may file a request for inter partes reexamination by the Office

of a patent on the basis of any prior art cited under the provisions

of section 301.

(b) REQUIREMENTS.—The request shall—

(1) be in writing, include the identity of the real party in

interest, and be accompanied by payment of an inter partes reexamination fee established by the øDirector¿ Commissioner

under section 41; and

(2) set forth the pertinency and manner of applying cited

prior art to every claim for which reexamination is requested.

(c) COPY.—øUnless the requesting person is the owner of

the patent, the Director¿ The Commissioner promptly shall

send a copy of the request to the owner of record of the patent.

46

§ 312. Determination of issue by øDirector¿ Commissioner

(a) REEXAMINATION.—Not later than 3 months after the filing

of a request for inter partes reexamination under section 311, the

øDirector¿ Commissioner shall determine whether a substantial

new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of

other patents or printed publications. øOn the Director’s initiative,

and at any time, the Director may determine whether a substantial

new question of patentability is raised by patents and publications.¿

(b) RECORD.—A record of the øDirector’s¿ Commissioner’s determination under subsection (a) shall be placed in the official file

of the patent, and a copy shall be promptly given or mailed to the

owner of record of the patent and to the third-party requesterø, if

any¿.

(c) FINAL DECISION.—A determination by the øDirector¿ Commissioner under subsection (a) shall be final and non-appealable.

Upon a determination that no substantial new question of patentability has been raised, the øDirector¿ Commissioner may refund

a portion of the inter partes reexamination fee required under section 311.

§ 313. Inter partes reexamination order by øDirector¿ Commissioner

If, in a determination made under section 312(a), the øDirector¿ Commissioner finds that a substantial new question of patentability affecting a claim of a patent is raised, the determination

shall include an order for inter partes reexamination of the patent

for resolution of the question. The order may be accompanied by

the initial action of the Patent and Trademark Office on the merits

of the inter partes reexamination conducted in accordance with section 314.

§ 314. Conduct of inter partes reexamination proceedings

(a) IN GENERAL.—Except as otherwise provided in this section,

reexamination shall be conducted according to the procedures established for initial examination under the provisions of sections

132 and 133. In any inter partes reexamination proceeding under

this chapter, the patent owner shall be permitted to propose any

amendment to the patent and a new claim or claims, except that

no proposed amended or new claim enlarging the scope of the

claims of the patent shall be permitted.

(b) RESPONSE.—(1) øThis subsection shall apply to any inter

partes reexamination proceeding in which the order for inter partes

reexamination is based upon a request by a third-party requester.

ø(2)¿ With the exception of the inter partes reexamination request, any document filed by either the patent owner or the thirdparty requester shall be served on the other party. In addition,

øthe third-party requester shall receive a copy¿ the Office shall

send to the third-party requester a copy of any communication sent

by the Office to the patent owner concerning the patent subject to

the inter partes reexamination proceeding.

ø(3)¿ (2) Each time that the patent owner files a response to

an action on the merits from the Patent and Trademark Office, the

third-party requester shall have one opportunity to file written

47

comments addressing issues raised by the action of the Office or

the patent owner’s response thereto, if those written comments are

received by the Office within 30 days after the date of service of

the patent owner’s response.

(c) SPECIAL DISPATCH.—Unless otherwise provided by the øDirector¿ Commissioner for good cause, all inter partes reexamination

proceedings under this section, including any appeal to the Board

of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.

§ 315. Appeal

(a) * * *

* * * * * * *

(c) CIVIL ACTION.—A third-party requester whose request for

an inter partes reexamination results in an order under section 313

is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, øUnited

States Code,¿ the invalidity of any claim finally determined to be

valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings. This subsection does not prevent the assertion

of invalidity based on newly discovered prior art unavailable to the

third-party requester and the Patent and Trademark Office at the

time of the inter partes reexamination proceedings.

§ 316. Certificate of patentability, unpatentability, and claim

cancellation

(a) IN GENERAL.—In an inter partes reexamination proceeding

under this chapter, when the time for appeal has expired or any

appeal proceeding has terminated, the øDirector¿ Commissioner

shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of

the patent determined to be patentable, and incorporating in the

patent any proposed amended or new claim determined to be patentable.

(b) AMENDED OR NEW CLAIM.—Any proposed amended or new

claim determined to be patentable and incorporated into a patent

following an inter partes reexamination proceeding shall have the

same effect as that specified in section 252 of this title for reissued

patents on the right of any person who made, purchased, or used

within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who

made substantial preparation therefor, prior to issuance of a certificate under the provisions of subsection (a) of this section.

§ 317. Inter partes reexamination prohibited

(a) ORDER FOR REEXAMINATION.—Notwithstanding any provision of this chapter, once an order for inter partes reexamination

of a patent has been issued under section 313, neither the øpatent

owner nor the third-party requester, if any, nor privies of either¿

third-party requester nor its privies, may file a subsequent request

for inter partes reexamination of the patent until an inter partes

reexamination certificate is issued and published under section

316, unless authorized by the øDirector¿ Commissioner.

48

(b) FINAL DECISION.—Once a final decision has been entered

against a party in a civil action arising in whole or in part under

section 1338 of title 28, øUnited States Code,¿ that the party has

not sustained its burden of proving the invalidity of any patent

claim in suit or if a final decision in an inter partes reexamination

proceeding instituted by a third-party requester is favorable to the

patentability of any original or proposed amended or new claim of

the patent, then neither that party nor its privies may thereafter

request an inter partes reexamination of any such patent claim on

the basis of issues which that party or its privies raised or could

have raised in such civil action or inter partes reexamination proceeding, and an inter partes reexamination requested by that party

or its privies on the basis of such issues may not thereafter be

maintained by the Office, notwithstanding any other provision of

this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the thirdparty requester and the Patent and Trademark Office at the time

of the inter partes reexamination proceedings.

* * * * * * *

PART IV—PATENT COOPERATION TREATY

* * * * * * *

CHAPTER 36—INTERNATIONAL STAGE

* * * * * * *

§ 361. Receiving Office

(a) * * *

* * * * * * *

(d) The international fee, and the transmittal and search fees

prescribed under section 376(a) of this part, shall either be paid on

filing of an international application or within such later time as

may be fixed by the øDirector¿ Commissioner.

§ 362. International Searching Authority and International

Preliminary Examining Authority

(a) * * *

(b) The handling fee, preliminary examination fee, and any additional fees due for international preliminary examination shall be

paid within such time as may be fixed by the øDirector¿ Commissioner.

* * * * * * *

§ 364. International stage: Procedure

(a) * * *

(b) An applicant’s failure to act within prescribed time limits

in connection with requirements pertaining to a pending international application may be excused upon a showing satisfactory to

the øDirector¿ Commissioner of unavoidable delay, to the extent

not precluded by the treaty and the Regulations, and provided the

conditions imposed by the treaty and the Regulations regarding the

excuse of such failure to act are complied with.

49

§ 365. Right of priority; benefit of the filing date of a prior

application

(a) * * *

* * * * * * *

(c) In accordance with the conditions and requirements of section 120 of this title, an international application designating the

United States shall be entitled to the benefit of the filing date of

a prior national application or a prior international application designating the United States, and a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States. If any claim for the benefit

of an earlier filing date is based on a prior international application

which designated but did not originate in the United States, the

øDirector¿ Commissioner may require the filing in the Patent and

Trademark Office of a certified copy of such application together

with a translation thereof into the English language, if it was filed

in another language.

* * * * * * *

§ 367. Actions of other authorities: Review

(a) Where a Receiving Office other than the Patent and Trademark Office has refused to accord an international filing date to an

international application designating the United States or where it

has held such application to be withdrawn either generally or as

to the United States, the applicant may request review of the matter by the øDirector¿ Commissioner, on compliance with the requirements of and within the time limits specified by the treaty

and the Regulations. Such review may result in a determination

that such application be considered as pending in the national

stage.

* * * * * * *

CHAPTER 37—NATIONAL STAGE

Sec.

371. National stage: Commencement.

* * * * * * *

ø374. Publication of international application: Effect.¿

374. Publication of international application.

* * * * * * *

§ 371. National stage: Commencement

(a) * * *

(b) Subject to subsection (f) of this section, the national stage

shall commence with the expiration of the applicable time limit

under article 22(1) or (2), or under article 39(1)(a) of the treaty.

* * * * * * *

(d) The requirements with respect to the national fee referred

to in subsection (c)(1), the translation referred to in subsection

(c)(2), and the oath or declaration referred to in subsection (c)(4) of

this section shall be complied with by the date of the commencement of the national stage or by such later time as may be fixed

by the øDirector¿ Commissioner. The copy of the international apVerDate 11-MAY-2000 21:54 Sep 14, 2000 Jkt 079006 PO 00000 Frm 00049 Fmt 6659 Sfmt 6601 E:\HR\OC\HR853.XXX pfrm03 PsN: HR853
50

plication referred to in subsection (c)(2) shall be submitted by the

date of the commencement of the national stage. Failure to comply

with these requirements shall be regarded as abandonment of the

application by the parties thereof, unless it be shown to the satisfaction of the øDirector¿ Commissioner that such failure to comply

was unavoidable. The payment of a surcharge may be required as

a condition of accepting the national fee referred to in subsection

(c)(1) or the oath or declaration referred to in subsection (c)(4) of

this section if these requirements are not met by the date of the

commencement of the national stage. The requirements of subsection (c)(3) of this section shall be complied with by the date of

the commencement of the national stage, and failure to do so shall

be regarded as a cancellation of the amendments to the claims in

the international application made under article 19 of the treaty.

The requirement of subsection (c)(5) shall be complied with at such

time as may be fixed by the øDirector¿ Commissioner and failure

to do so shall be regarded as cancellation of the amendments made

under article 34(2)(b) of the treaty.

* * * * * * *

§ 372. National stage: Requirements and procedure

(a) * * *

(b) In case of international applications designating but not

originating in, the United States—

(1) the øDirector¿ Commissioner may cause to be reexamined questions relating to form and contents of the application

in accordance with the requirements of the treaty and the Regulations;

(2) the øDirector¿ Commissioner may cause the question of

unity of invention to be reexamined under section 121 of this

title, within the scope of the requirements of the treaty and the

Regulations; and

(3) the øDirector¿ Commissioner may require a verification

of the translation of the international application or any other

document pertaining to the application if the application or

other document was filed in a language other than English.

* * * * * * *

§ 375. Patent issued on international application: Effect

(a) A patent may be issued by the øDirector¿ Commissioner

based on an international application designating the United

States, in accordance with the provisions of this title. Subject to

section 102(e) of this title, such patent shall have the force and effect of a patent issued on a national application filed under the provisions of chapter 11 of this title.

* * * * * * *

§ 376. Fees

(a) The required payment of the international fee and the handling fee, which amounts are specified in the Regulations, shall be

paid in United States currency. The Patent and Trademark Office

shall charge a national fee as provided in section 41(a), and may

also charge the following fees:

51

(1) A transmittal fee (see section 361(d))ø;¿. (2) A search fee (see section 361(d))ø;¿. (3) A supplemental search fee (to be paid when required)ø;¿. (4) A preliminary examination fee and any additional fees

(see section 362(b)).

(5) Such other fees as established by the øDirector¿ Commissioner. (b) The amounts of fees specified in subsection (a) of this section, except the international fee and the handling fee, shall be prescribed by the øDirector¿ Commissioner. He may refund any sum

paid by mistake or in excess of the fees so specified, or if required

under the treaty and the Regulations. The øDirector¿ Commissioner may also refund any part of the search fee, the national fee,

the preliminary examination fee, and any additional fees, where he

determines such refund to be warranted.

ACT OF JULY 5, 1946

[Commonly referred to as the ‘‘Trademark Act of 1946’’.]

AN ACT To provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for

other purposes.

* * * * * * *

TITLE I—THE PRINCIPAL REGISTER

SECTION 1. (a)(1) The owner of a trademark used in commerce

may request registration of its trademark on the principal register

hereby established by paying the prescribed fee and filing in the

Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the øDirector¿ Commissioner, and such number of specimens or facsimiles of the mark

as used as may be required by the øDirector¿ Commissioner.

* * * * * * *

(4) The applicant shall comply with such rules or regulations

as may be prescribed by the øDirector¿ Commissioner. The øDirector¿ Commissioner shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.

(b)(1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the

principal register hereby established by paying the prescribed fee

and filing in the Patent and Trademark Office an application and

a verified statement, in such form as may be prescribed by the øDirector¿ Commissioner.

* * * * * * *

(4) The applicant shall comply with such rules or regulations

as may be prescribed by the øDirector¿ Commissioner. The øDirector¿ Commissioner shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.

* * * * * * *

52

(d)(1) Within six months after the date on which the notice of

allowance with respect to a mark is issued under section 13(b)(2)

to an applicant under subsection (b) of this section, the applicant

shall file in the Patent and Trademark Office, together with such

number of specimens or facsimiles of the mark as used in commerce as may be required by the øDirector¿ Commissioner and

payment of the prescribed fee, a verified statement that the mark

is in use in commerce and øspecifying the date of the applicant’s

first use of the mark in commerce and,, those goods or services

specified in the notice of allowance on or in connection with which

the mark is used in commerce.¿ specifying the date of the applicant’s first use of the mark in commerce and those goods or services

specified in the notice of allowance on or in connection with which

the mark is used in commerce. Subject to examination and acceptance of the statement of use, the mark shall be registered in the

Patent and Trademark Office, a certificate of registration shall be

issued for those goods or services recited in the statement of use

for which the mark is entitled to registration, and notice of registration shall be published in the Official Gazette of the Patent

and Trademark Office. Such examination may include an examination of the factors set forth in subsections (a) through (e) of section

2. The notice of registration shall specify the goods or services for

which the mark is registered.

(2) The øDirector¿ Commissioner shall extend, for one additional 6-month period, the time for filing the statement of use

under paragraph (1), upon written request of the applicant before

the expiration of the 6-month period provided in paragraph (1). In

addition to an extension under the preceding sentence, the øDirector¿ Commissioner may, upon a showing of good cause by the applicant, further extend the time for filing the statement of use under

paragraph (1) for periods aggregating not more than 24 months,

pursuant to written request of the applicant made before the expiration of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied

by a verified statement that the applicant has a continued bona

fide intention to use the mark in commerce and specifying those

goods or services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. Any request for an extension

under this paragraph shall be accompanied by payment of the prescribed fee. The øDirector¿ Commissioner shall issue regulations

setting forth guidelines for determining what constitutes good

cause for purposes of this paragraph.

(3) The øDirector¿ Commissioner shall notify any applicant

who files a statement of use of the acceptance or refusal thereof

and, if the statement of use is refused, the reasons for the refusal.

An applicant may amend the statement of use.

(4) The failure to timely file a verified statement of use under

paragraph (1) or an extension request under paragraph (2) shall result in abandonment of the application, unless it can be shown to

the satisfaction of the øDirector¿ Commissioner that the delay in

responding was unintentional, in which case the time for filing may

be extended, but for a period not to exceed the period specified in

paragraphs (1) and (2) for filing a statement of use.

53

(e) If the applicant is not domiciled in the United State he

shall designate by a written document filed in the Patent and

Trademark Office the name and address of some person resident

in the United States on whom may be served notices or process in

proceedings affecting the mark. Such notices or process may be

served upon the person so designated by leaving with him or mailing to him a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the

address given in the last designation, such notice or process may

be served upon the øDirector¿ Commissioner.

MARKS REGISTRABLE ON THE PRINCIPAL REGISTER

SEC. 2. No trademark by which the goods of the applicant may

be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) * * *

* * * * * * *

(d) Consists of or comprises a mark which so resembles a mark

registered in the Patent and Trademark Office, or a mark or trade

name previously used in the United States by another and not

abandoned, as to be likely, when used on or in connection with the

goods of the applicant, to cause confusion, or to cause mistake, or

to deceive: Provided, That if the øDirector¿ Commissioner determines that confusion, mistake, or deception is not likely to result

from the continued use by more than one person of the same or

similar marks under conditions and limitations as to the mode or

place of use of the marks or the goods on or in connection with

which such marks are used, concurrent registrations may be issued

to such persons when they have become entitled to use such marks

as a result of their concurrent lawful use in commerce prior to (1)

the earliest of the filing dates of the applications pending or of any

registration issued under this Act; (2) July 5, 1947, in the case of

registrations previously issued under the Act of March 3, 1881, or

February 20, 1905, and continuing in full force and effect on that

date; or (3) July 5, 1947, in the case of applications filed under the

Act of February 20, 1905, and registered after July 5, 1947. Use

prior to the filing date of any pending application or a registration

shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the

applicant. Concurrent registrations may also be issued by the øDirector¿ Commissioner when a court of competent jurisdiction has finally determined that more than one person is entitled to use the

same or similar marks in commerce. In issuing concurrent registrations, the øDirector¿ Commissioner shall prescribe conditions and

limitations as to the mode or place of use of the mark or the goods

on or in connection with which such mark is registered to the respective persons.

* * * * * * *

(f) Except as expressly excluded in subsections (a), (b), (c), (d),

(e)(3), and (e)(5) of this section, nothing herein shall prevent the

registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The øDirector¿ Commissioner may accept as prima facie evidence that the mark has

become distinctive, as used on or in connection with the applicant’s

54

goods in commerce, proof of substantially exclusive and continuous

use thereof as a mark by the applicant in commerce for the five

years before the date on which the claim of distinctiveness is made.

Nothing in this section shall prevent the registration of a mark

which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of

them, and which became distinctive of the applicant’s goods in commerce before the date of the enactment of the North American Free

Trade Agreement Implementation Act.

A mark which when used would cause dilution under section 43(c)

may be refused registration only pursuant to a proceeding brought

under section 13. A registration for a mark which when used would

cause dilution under section 43(c) may be canceled pursuant to a

proceeding brought under either section 14 or section 24.

* * * * * * *

SEC. 6. (a) The øDirector¿ Commissioner may require the applicant to disclaim an unregistrable component of a mark otherwise

registrable. An applicant may voluntarily disclaim a component of

a mark sought to be registered.

(b) No disclaimer, including those made under subsection (e) of

section 7 of this Act, shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed

matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or

services.

CERTIFICATES

SEC. 7. (a) Certificates of registration of marks registered upon

the principal register shall be issued in the name of the United

States of America, under the seal of the Patent and Trademark Office, and shall be signed by the øDirector¿ Commissioner or have

his signature placed thereon, and a record thereof shall be kept in

the Patent Office. The registration shall reproduce the mark, and

state that the mark is registered on the principal register under

this Act, the date of the first use of the mark, the date of the first

use of the mark in commerce, the particular goods or services for

which it is registered, the number and date of the registration, the

term thereof, the date on which the application for registration was

received in the Patent and Trademark Office, and any conditions

and limitations that may be imposed in the registration.

* * * * * * *

(d) A certificate of registration of a mark may be issued to the

assignee of the applicant, but the assignment must first be recorded in the Patent and Trademark Office. In case of change of

ownership the øDirector¿ Commissioner shall, at the request of the

owner and upon a proper showing and the payment of the prescribed fee, issue to such assignee a new certificate of registration

of the said mark in the name of such assignee, and for the unexpired part of the original period.

(e) Upon application of the registrant the øDirector¿ Commissioner may permit any registration to be surrendered for

cancelation, and upon cancelation appropriate entry shall be made

in the records of the Patent and Trademark Office. Upon application of the registrant and payment of the prescribed fee, the øDiVerDate 11-MAY-2000 21:54 Sep 14, 2000 Jkt 079006 PO 00000 Frm 00054 Fmt 6659 Sfmt 6601 E:\HR\OC\HR853.XXX pfrm03 PsN: HR853
55

rector¿ Commissioner for good cause may permit any registration

to be amended or to be disclaimed in part: Provided, That the

amendment or disclaimer does not alter materially the character of

the mark. Appropriate entry shall be made in the records of the

Patent and Trademark Office and upon the certificate of registration or, if said certificate is lost or destroyed, upon a certified copy

thereof.

(f) Copies of any records, books, papers, or drawings belonging

to the Patent and Trademark Office relating to marks, and, copies

of registrations, when authenticated by the seal of the Patent and

Trademark Office and certified by the øDirector¿ Commissioner, or

in his name by an employee of the Office duly designated by the

øDirector¿ Commissioner, shall be evidence in all cases wherein

the originals would be evidence; and any person making application therefore and paying the prescribed fee shall have such copies.

(g) Whenever a material mistake in a registration, incurred

through the fault of the Patent and Trademark Office, is clearly

disclosed by the records of the Office a certificate stating the fact

and nature of such mistake shall be issued without charge and recorded and a printed copy thereof shall be attached to each printed

copy of the registration and such corrected registration shall thereafter have the same effect as if the same had been originally issued

in such corrected form, or in the discretion of the øDirector¿ Commissioner a new certificate of registration may be issued without

charge. All certificates of correction heretofore issued in accordance

with the rules of the Patent and Trademark Office and the registrations to which they are attached shall have the same force and

effect as if such certificates and their issue had been specifically

authorized by statute.

(h) Whenever a mistake has been made in a registration and

a showing has been made that such mistake occurred in good faith

through the fault of the applicant, the øDirector¿ Commissioner is

authorized to issue a certificate of correction or, in his discretion,

a new certificate upon the payment of the prescribed fee: Provided,

That the correction does not involve such changes in the registration as to require republication of the mark.

DURATION

SEC. 8. (a) Each registration shall remain in force for 10 years,

except that the registration of any mark shall be canceled by the

øDirector¿ Commissioner for failure to comply with the provisions

of subsection (b) of this section, upon the expiration of the following

time periods, as applicable:

(1) * * *

* * * * * * *

(b) During the 1-year period immediately preceding the end of

the applicable time period set forth in subsection (a), the owner of

the registration shall pay the prescribed fee and file in the Patent

and Trademark Office—

(1) an affidavit setting forth those goods or services recited

in the registration on or in connection with which the mark is

in use in commerce and such number of specimens or facsimiles showing current use of the mark as may be required

by the øDirector¿ Commissioner; or

56

(2) an affidavit setting forth those goods or services recited

in the registration on or in connection with which the mark is

not in use in commerce and showing that any such nonuse is

due to special circumstances which excuse such nonuse and is

not due to any intention to abandon the mark.

(c)(1) The owner of the registration may make the submissions

required under this section within a grace period of 6 months after

the end of the applicable time period set forth in subsection (a).

Such submission is required to be accompanied by a surcharge prescribed by the øDirector¿ Commissioner. (2) If any submission filed under this section is deficient, the

deficiency may be corrected after the statutory time period and

within the time prescribed after notification of the deficiency. Such

submission is required to be accompanied by a surcharge prescribed by the øDirector¿ Commissioner. (d) Special notice of the requirement for affidavits under this

section shall be attached to each certificate of registration and notice of publication under section 12(c).

(e) The øDirector¿ Commissioner shall notify any owner who

files 1 of the affidavits required by this section of the Commissioner’s acceptance or refusal thereof and, in the case of a refusal,

the reasons therefor.

(f) If the registrant is not domiciled in the United States, the

registrant shall designate by a written document filed in the Patent and Trademark Office the name and address of some person

resident in the United States on whom may be served notices or

process in proceedings affecting the mark. Such notices or process

may be served upon the person so designated by leaving with that

person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated

cannot be found at the address given in the last designation, such

notice or process may be served upon the øDirector¿ Commissioner.

RENEWAL OF REGISTRATION

SEC. 9. (a) Subject to the provisions of section 8, each registration may be renewed for periods of 10 years at the end of each successive 10-year period following the date of registration upon payment of the prescribed fee and the filing of a written application,

in such form as may be prescribed by the øDirector¿ Commissioner.

Such application may be made at any time within 1 year before the

end of each successive 10-year period for which the registration

was issued or renewed, or it may be made within a grace period

of 6 months after the end of each successive 10-year period, upon

payment of a fee and surcharge prescribed therefor. If any application filed under this section is deficient, the deficiency may be corrected within the time prescribed after notification of the deficiency, upon payment of a surcharge prescribed therefor.

(b) If the øDirector¿ Commissioner refuses to renew the registration, the øDirector¿ Commissioner shall notify the registrant of

the Commissioner’s refusal and the reasons therefor.

(c) If the registrant is not domiciled in the United States, the

registrant shall designate by a written document filed in the Patent and Trademark Office the name and address of some person

resident in the United States on whom may be served notices or

process in proceedings affecting the mark. Such notices or process

57

may be served upon the person so designated by leaving with that

person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated

cannot be found at the address given in the last designation, such

notice or process may be served upon the øDirector¿ Commissioner.

ASSIGNMENT

SEC. 10. (a) A registered mark or a mark for which an application to register has been filed shall be assignable with the good will

of the business in which the mark is used, or with that part of the

good will of the business connected with the use of and symbolized

by the mark. Notwithstanding the preceding sentence, no application to register a mark under section 1(b) shall be assignable prior

to the filing of an amendment under section 1(c) to bring the application into conformity with section 1(a) or the filing of the verified

statement of use under section 1(d), except for an assignment to a

successor to the business of the applicant, or portion thereof, to

which the mark pertains, if that business is ongoing and existing.

In any assignment authorized by this section, it shall not be necessary to include the good will of the business connected with the

use of and symbolized by any other mark used in the business or

by the name or style under which the business is conducted. Assignments shall be by instruments in writing duly executed. Acknowledgment shall be prima facie evidence of the execution of an

assignment, and when the prescribed information reporting the assignment is recorded in the Patent and Trademark Office, the

record shall be prima facie evidence of execution. An assignment

shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting

the assignment is recorded in the Patent and Trademark Office

within 3 months after the date of the subsequent purchase or prior

to the subsequent purchase. The Patent and Trademark Office

shall maintain a record of information on assignments, in such

form as may be prescribed by the øDirector¿ Commissioner.

(b) An assignee not domiciled in the United States shall designate by a written document filed in the Patent and Trademark

Office the name and address of some person resident in the United

States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the

person so designated by leaving with that person or mailing to that

person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, such notice or process may be

served upon the øDirector¿ Commissioner.

* * * * * * *

PUBLICATION

SEC. 12. (a) Upon the filing of an application for registration

and payment of the prescribed fee, the øDirector¿ Commissioner

shall refer the application to the examiner in charge of the registration of marks, who shall cause an examination to be made

and, if on such examination it shall appear that the applicant is

entitled to registration, or would be entitled to registration upon

the acceptance of the statement of use required by section 1(d) of

58

this Act, the øDirector¿ Commissioner shall cause the mark to be

published in the Official Gazette of the Patent and Trademark Office: Provided, That in the case of an applicant claiming concurrent

use, or in the case of an application to be placed in an interference

as provided for in section 16 of this Act, the mark, if otherwise registrable, may be published subject to the determination of the

rights of the parties to such proceedings.

(b) If the applicant is found not entitled to registration, the examiner shall advise the applicant thereof and of the reasons therefor. The applicant shall have a period of six months in which to

reply or amend his application, which shall then be reexamined.

This procedure may be repeated until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period

of six months to reply or amend or appeal, whereupon the application shall be deemed to have been abandoned, unless it can be

shown to the satisfaction of the øDirector¿ Commissioner that the

delay in responding was unintentional, whereupon such time may

be extended.

(c) A registrant of a mark registered under the provisions of

the Act of March 3, 1881, or the Act of February 20, 1905, may,

at any time prior to the expiration of the registration thereof, upon

the payment of the prescribed fee file with the øDirector¿ Commissioner an affidavit setting forth those goods stated in the registration on which said mark is in use in commerce and that the registrant claims the benefits of this Act for said mark. The øDirector¿

Commissioner shall publish notice thereof with a reproduction of

said mark in the Official Gazette, and notify the registrant of such

publication and of the requirement for the affidavit of use or nonuse as provided for in subsection (b) of section 8 of this Act. Marks

published under this subsection shall not be subject to the provisions of section 13 of this Act.

OPPOSITION

SEC. 13. (a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including as a result of dilution under section 43(c), may, upon payment of the prescribed fee, file an opposition in the Patent and

Trademark Office, stating the grounds therefor, within thirty days

after the publication under subsection (a) of section 12 of this Act

of the mark sought to be registered. Upon written request prior to

the expiration of the thirty-day period, the time for filing opposition

shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the øDirector¿

Commissioner for good cause when requested prior to the expiration of an extension. The øDirector¿ Commissioner shall notify the

applicant of each extension of the time for filing opposition. An opposition may be amended under such conditions as may be prescribed by the øDirector¿ Commissioner.

* * * * * * *

SEC. 15. Except on a ground for which application to cancel

may be filed at any time under paragraphs (3) and (5) of section

14 of this Act, and except to the extent, if any, to which the use

of a mark registered on the principal register infringes a valid right

acquired under the law of any State or Territory by use of a mark

59

or trade name continuing from a date prior to the date of registration under this Act of such registered mark, the right of the registrant to use such registered mark in commerce for the goods or

services on or in connection with which such registered mark has

been in continuous use for five consecutive years subsequent to the

date of such registration and is still in use in commerce, shall be

incontestable: Provided, That—

(1) * * *

* * * * * * *

(3) an affidavit is filed with the øDirector¿ Commissioner

within one year after the expiration of any such five-year period setting forth those goods or services stated in the registration on or in connection with which such mark has been in continuous use for such five consecutive years and is still in use

in commerce, and the other matters specified in paragraphs (1)

and (2) of this section; and

(4) no incontestable right shall be acquired in a mark

which is the generic name for the goods or services or a portion

thereof, for which it is registered.

Subject to the conditions above specified in this section, the incontestable right with reference to a mark registered under this

Act shall apply to a mark registered under the Act of March 3,

1881, or the Act of February 20, 1905, upon the filing of the required affidavit with the øDirector¿ Commissioner within one year

after the expiration of any period of five consecutive years after the

date of publication of a mark under the provisions of subsection (c)

of section 12 of this Act.

The øDirector¿ Commissioner shall notify any registrant who

files the above-prescribed affidavit of the filing thereof.

INTERFERENCE

SEC. 16. Upon petition showing extraordinary circumstances,

the øDirector¿ Commissioner may declare that an interference exists when application is made for the registration of a mark which

so resembles a mark previously registered by another, or for the

registration of which another has previously made application, as

to be likely when used on or in connection with the goods or services of the applicant to cause confusion or mistake or to deceive.

No interference shall be declared between an application and the

registration of a mark the right to the use of which has become incontestable.

SEC. 17. (a) In every case of interference, opposition to registration, application to register as a lawful concurrent user, or application to cancel the registration of a mark, the øDirector¿ Commissioner shall give notice to all parties and shall direct a Trademark

Trial and Appeal Board to determine and decide the respective

rights of registration.

(b) The Trademark Trial and Appeal Board shall include the

øDirector¿ Commissioner, the Deputy Commissioner, the Commissioner for Patents, the Commissioner for Trademarks, and administrative trademark judges who are appointed by the øDirector¿

Commissioner.

SEC. 18. In such proceedings the øDirector¿ Commissioner may

refuse to register the opposed mark, may cancel the registration,

60

in whole or in part, may modify the application or registration by

limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a

registered mark, may refuse to register any or all of several interfering marks, or may register the mark or marks for the person or

persons entitled thereto, as the rights of the parties hereunder may

be established in the proceedings; Provided, That in the case of the

registration of any mark based on concurrent use, the øDirector¿

Commissioner shall determine and fix the conditions and limitations provided for in subsection (d) of section 2 of this Act. However, no final judgment shall be entered in favor of an applicant

under section 1(b) before the mark is registered, if such applicant

cannot prevail without establishing constructive use pursuant to

section 7(c).

* * * * * * *

SEC. 21. (a)(1) An applicant for registration of a mark, party

to an interference proceeding, party to an opposition proceeding,

party to an application to register as a lawful concurrent user,

party to a cancellation proceeding, a registrant who has filed an affidavit as provided in section 8, or an applicant for renewal, who

is dissatisfied with the decision of the øDirector¿ Commissioner or

Trademark Trial and Appeal Board, may appeal to the United

States Court of Appeals for the Federal Circuit thereby waiving his

right to proceed under subsection (b) of this section: Provided, That

such appeal shall be dismissed if any adverse party to the proceeding, other than the øDirector¿ Commissioner, shall, within

twenty days after the appellant has filed notice of appeal according

to paragraph (2) of this subsection, files notice with the øDirector¿

Commissioner that he elects to have all further proceedings conducted as provided in subsection (b) of this section. Thereupon the

appellant shall have thirty days thereafter within which to file a

civil action under subsection (b) of this section, in default of which

the decision appealed from shall govern the further proceedings in

the case.

(2) When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the appellant shall file in the Patent

and Trademark Office a written notice of appeal directed to the

øDirector¿ Commissioner, within such time after the date of the decision from which the appeal is taken as the øDirector¿ Commissioner prescribes, but in no case less than 60 days after that date.

(3) The øDirector¿ Commissioner shall transmit to the United

States Court of Appeals for the Federal Circuit a certified list of

the documents comprising the record in the Patent and Trademark

Office. The court may request that the øDirector¿ Commissioner

forward the original or certified copies of such documents during

pendency of the appeal. In an ex parte case, the øDirector¿ Commissioner shall submit to that court a brief explaining the grounds

for the decision of the Patent and Trademark Office, addressing all

the issues involved in the appeal. The court shall, before hearing

an appeal give notice of the time and place of the hearing to the

øDirector¿ Commissioner and the parties in the appeal.

(4) The United States Court of Appeals for the Federal Circuit

shall review the decision from which the appeal is taken on the

record before the Patent and Trademark Office. Upon its determination the court shall issue its mandate and opinion to the øDiVerDate 11-MAY-2000 21:54 Sep 14, 2000 Jkt 079006 PO 00000 Frm 00060 Fmt 6659 Sfmt 6601 E:\HR\OC\HR853.XXX pfrm03 PsN: HR853
61

rector¿ Commissioner, which shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings

in the case. However, no final judgment shall be entered in favor

of an applicant under section 1(b) before the mark is registered, if

such applicant cannot prevail without establishing constructive use

pursuant to section 7(c).

(b)(1) Whenever a person authorized by subsection (a) of this

section to appeal to the United States Court of Appeals for the Federal Circuit is dissatisfied with the decision of the øDirector¿ Commissioner or Trademark Trial and Appeal Board, said person may,

unless appeal has been taken to said United States Court of Appeals for the Federal Circuit, have remedy by a civil action if commenced within such time after such decision, not less than sixty

days, as the øDirector¿ Commissioner appoints or as provided in

subsection (a) of this section. The court may adjudge that an applicant is entitled to a registration upon the application involved, that

a registration involved should be canceled, or such other matter as

the issues in the proceeding require, as the facts in the case may

appear. Such adjudication shall authorize the øDirector¿ Commissioner to take any necessary action, upon compliance with the requirements of law. However, no final judgment shall be entered in

favor of an applicant under section 1(b) before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 7(c).

(2) The øDirector¿ Commissioner shall not be made a party to

an inter partes proceeding under this subsection, but he shall be

notified of the filing of the complaint by the clerk of the court in

which it is filed and shall have the right to intervene in the action.

(3) In any case where there is no adverse party, a copy of the

complaint shall be served on the øDirector¿ Commissioner, and,

unless the court finds the expenses to be unreasonable, all the expenses of the proceeding shall be paid by the party bringing the

case, whether the final decision is in favor of such party or not. In

suits brought hereunder, the record in the Patent and Trademark

Office shall be admitted on motion of any party, upon such terms

and conditions as to costs, expenses, and the further cross-examination of the witnesses as the court imposes, without prejudice to

the right of any party to take further testimony. The testimony and

exhibits of the record in the Patent and Trademark Office, when

admitted, shall have the same effect as if originally taken and produced in the suit.

* * * * * * *

TITLE II—THE SUPPLEMENTAL REGISTER

SEC. 23. (a) In addition to the principal register, the øDirector¿

Commissioner shall keep a continuation of the register provided in

paragraph (b) of section 1 of the Act of March 19, 1920, entitled

‘‘An Act to give effect to certain provisions of the convention for the

protection of trademarks and commercial names, made and signed

in the city of Buenos Aires, in the Argentine Republic, August 20,

1910, and for other purposes’’, to be called the supplemental register. All marks capable of distinguishing applicant’s goods or services and not registrable on the principal register herein provided,

except those declared to be unregistrable under subsections (a), (b),

62

(c), (d), and (e)(3) of section 2 of this Act, which are in lawful use

in commerce by the owner thereof, on or in connection with any

goods or services may be registered on the supplemental register

upon the payment of the prescribed fee and compliance with the

provisions of subsections (a) and (e) of section 1 so far as they are

applicable. Nothing in this section shall prevent the registration on

the supplemental register of a mark, capable of distinguishing the

applicant’s goods or services and not registrable on the principal

register under this Act, that is declared to be unregistrable under

section 2(e)(3), if such mark has been in lawful use in commerce

by the owner thereof, on or in connection with any goods or services, since before the date of the enactment of the North American

Free Trade Agreement Implementation Act.

(b) Upon the filing of an application for registration on the supplemental register and payment of the prescribed fee the øDirector¿ Commissioner shall refer the application to the examiner in

charge of the registration of marks, who shall cause an examination to be made and if on such examination it shall appear that the

applicant is entitled to registration, the registration shall be granted. If the applicant is found not entitled to registration the provisions of subsection (b) of section 12 of this Act shall apply.

(c) For the purposes of registration on the supplemental register, a mark may consist of any trademark, symbol, label, package,

configuration of goods, name, word, slogan, phrase, surname, geographical name, numeral,ø,¿ device, any matter that as a whole is

not functional, or any combination of any of the foregoing, but such

mark must be capable of distinguishing the applicant’s goods or

services.

CANCELATION

SEC. 24. Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office. Whenever any person believes that he is or will be damaged

by the registration of a mark on this register, including as a result

of dilution under section 43(c), he may at any time, upon payment

of the prescribed fee and the filing of a petition stating the ground

therefor, apply to the øDirector¿ Commissioner to cancel such registration. The øDirector¿ Commissioner shall refer such application

to the Trademark Trial and Appeal Board, which shall give notice

thereof to the registrant. If it is found after a hearing before the

Board which that the registrant is not entitled to registration, or

that the mark has been abandoned, the registration shall be canceled by the øDirector¿ Commissioner. However, no final judgment

shall be entered in favor of an applicant under section (1)(b) before

the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 7(c).

* * * * * * *

TITLE IV—CLASSIFICATION

SEC. 30. The øDirector¿ Commissioner may establish a classification of goods and services, for convenience of Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights. The applicant may apply to register a

63

mark for any or all of the goods or services on or in connection with

which he or she is using or has a bona fide intention to use the

mark in commerce: Provided, That if the øDirector¿ Commissioner

by regulation permits the filing of an application for the registration of a mark for goods or services which fall within a plurality

of classes, a fee equaling the sum of the fees for filing an application in each class shall be paid, and the øDirector¿ Commissioner

may issue a single certificate of registration for such mark.

TITLE V—FEES AND CHARGES

SEC. 31. (a) The øDirector¿ Commissioner shall establish fees

for the filing and processing of an application for the registration

of a trademark or other mark and for all other services performed

by and materials furnished by the Patent and Trademark Office related to trademarks and other marks. Fees established under this

subsection may be adjusted by the øDirector¿ Commissioner once

each year to reflect, in the aggregate, any fluctuations during the

preceding 12 months in the Consumer Price Index, as determined

by the Secretary of Labor. Changes of less than 1 percent may be

ignored. No fee established under this section shall take effect until

at least 30 days after notice of the fee has been published in the

Federal Register and in the Official Gazette of the Patent and

Trademark Office.

(b) The øDirector¿ Commissioner may waive the payment of

any fee for any service or material related to trademarks or other

marks in connection with an occasional request made by a department or agency of the Government, or any officer thereof. The Indian Arts and Crafts Board will not be charged any fee to register

Government trademarks of genuineness and quality for Indian

products or for products of particular Indian tribes and groups.

* * * * * * *

TITLE VI—REMEDIES

* * * * * * *

SEC. 33. (a) * * *

(b) To extent that the right to use the registered mark has become incontestable under section 15, the registration shall be conclusive evidence of the validity of the registered mark and of the

registration of the mark, of the registrant’s ownership of the mark,

and of the registrant’s exclusive right to use the registered mark

in commerce. Such conclusive evidence shall relate to the exclusive

right to use the mark on or in connection with the goods or services

specified in the affidavit filed under the provisions of section 15, or

in the renewal application filed under the provisions of section 9

if the goods or services specified in the renewal are fewer in number, subject to any conditions or limitations in the registration or

in such affidavit or renewal application. Such conclusive evidence

of the right to use the registered mark shall be subject to proof of

infringement as defined in section 32, and shall be subject to the

following defenses or defects:

(1) * * *

* * * * * * *

64

(8) That the mark is functional; or

* * * * * * *

SEC. 34. (a) * * *

* * * * * * *

(c) It shall be the duty of the clerks of such courts within one

month after the filing of any action, suit, or proceeding involving

a mark registered under the provisions of this Act to give notice

thereof in writing to the øDirector¿ Commissioner setting forth in

order so far as known the names and addresses of the litigants and

the designating number or numbers of the registration or registrations upon which the action, suit, or proceeding has been brought,

and in the event any other registration be subsequently included

in the action, suit, or proceeding by amendment, answer, or other

pleading, the clerk shall give like notice thereof to the øDirector¿

Commissioner, and within one month after the judgment is entered

or an appeal is taken the clerk of the court shall give notice thereof

to the øDirector¿ Commissioner, and it shall be the duty of the øDirector¿ Commissioner on receipt of such notice forthwith to endorse

the same upon the file wrapper of the said registration or registrations and to incorporate the same as a part of the contents of said

file wrapper.

(d)(1) * * *

* * * * * * *

(11) A person who suffers damage by reason of a wrongful seizure under this subsection has a cause of action against the applicant for the order under which such seizure was made, and shall

be entitled to recover such relief as may be appropriate, including

damages for lost profits, cost of materials, loss of good will, and punitive damages in instances where the seizure was sought in bad

faith, and, unless the court finds extenuating circumstances, to recover a reasonable attorney’s fee. The court in its discretion may

award prejudgment interest on relief recovered under this paragraph, at an annual interest rate established under section 6621 of

the Internal Revenue Code of ø1954¿ 1986, commencing on the

date of service of the claimant’s pleadings setting forth the claim

under this paragraph and ending on the date such recovery is

granted, or for such shorter time as the court deems appropriate.

SEC. 35. (a) When a violation of any right of the registrant of a

mark registered in the Patent and Trademark Office, øa violation

under section 43(a), (c), or (d),¿ a violation under section 43(a) or

(d), or a willful violation under section 43(c), shall have been established in any civil action arising under this Act, the plaintiff shall

be entitled, subject to the provisions of sections 29 and 32, and subject to the principles of equity, to recover (1) defendant’s profits, (2)

any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the

same to be assessed under its direction. In assessing profits the

plaintiff shall be required to prove defendant’s sales only, defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court

shall find that the amount of the recovery based on profits is either

65

inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to

the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The

court in exceptional cases may award reasonable attorney fees to

the prevailing party.

(b) In assessing damages under subsection (a), the court shall,

unless the court finds extenuating circumstances, enter judgment

for three times such profits or damages, whichever is greater, together with a reasonable attorney’s fee in the case of any violation

of section 32(1)(a) of this Act (15 U.S.C. 1114(1)(a)) or section 110

of the Act entitled ‘‘An Act to incorporate the United States Olympic Association’’, approved September 21, 1950 (36 U.S.C. 380) that

consists of intentionally using a mark or designation, knowing such

mark or designation is a counterfeit mark (as defined in section

34(d) of this Act (15 U.S.C. 1116(d)), in connection with the sale,

offering for sale, or distribution of goods or services. In such cases,

the court may in its discretion award prejudgment interest on such

amount at an annual interest rate established under such 6621 of

the Internal Revenue Code of ø1954¿ 1986, commencing on the

date of the service of the claimant’s pleadings setting forth the

claim for such entry and ending on the date such entry is made,

or for such shorter time as the court deems appropriate.

* * * * * * *

SEC. 37. In any action involving a registered mark the court

may determine the right to registration, order the cancelation of

registrations, in whole or in part, restore canceled registrations,

and otherwise rectify the register with respect to the registrations

of any party to the action. Decrees and orders shall be certified by

the court to the øDirector¿ Commissioner, who shall make appropriate entry upon the records of the Patent and Trademark Office,

and shall be controlled thereby.

* * * * * * *

SEC. 41. The øDirector¿ Commissioner shall make rules and

regulations, not inconsistent with law, for the conduct of proceedings in the Patent and Trademark Office under this Act.

* * * * * * *

TITLE VIX—INTERNATIONAL CONVENTIONS

SEC. 44. (a) The øDirector¿ Commissioner shall keep a register

of all marks communicated to him by the international bureaus

provided for by the conventions for the protection of industrial

property, trademarks, trade and commercial names, and the repression of unfair competition to which the United States is or may

become a party, and upon the payment of the fees required by such

conventions and the fees required in this Act may place the marks

so communicated upon such register. This register shall show a facsimile of the mark or trade or commercial name; the name, citizenship, and address of the registrant; the number, date, and place of

the first registration of the mark, including the date on which application for such registration was filed and granted and the term

of such registration; a list of goods or services to which the mark

is applied as shown by the registration in the country of origin, and

66

such other data as may be useful concerning the mark. This register shall be a continuation of the register provided in section 1(a)

of the Act of March 19, 1920.

* * * * * * *

(e) A mark duly registered in the country of origin of the foreign applicant may be registered on the principal register if eligible, otherwise on the supplemental register herein provided. Such

applicant shall submit, within such time period as may be prescribed by the øDirector¿ Commissioner, a certification or a certified copy of the registration in the country of origin of the applicant. The application must state the applicant’s bona fide intention

to use the mark in commerce, but use in commerce shall not be required prior to registration.

* * * * * * *

TITLE X—CONSTRUCTION AND DEFINITIONS

SEC. 45. In the construction of this Act, unless the contrary is

plainly apparent from the context—

The United States includes and embraces all territory which is

under its jurisdiction and control.

* * * * * * *

The term ‘‘øDirector¿ Commissioner’’ means the Under Secretary of Commerce for Intellectual Property and øDirector¿ Commissioner of the United States Patent and Trademark Office.

* * * * * * *

TITLE XI—REPEAL OF PREVIOUS ACTS

* * * * * * *

SEC. 47. (a) * * *

(b) In any case in which an appeal is pending before the

United States Court of Customs and Patent Appeals or any United

States Circuit Court of Appeals or the United States Court of Appeals for the District of Columbia or the United States Supreme

Court at the effective date of this Act, the court, if it be of the opinion that the provisions of this Act are applicable to the subject matter of the appeal, may apply such provision or may remand the

case to the øDirector¿ Commissioner or to the district court for the

taking of additional evidence or a new trial or for reconsideration

of the decision on the record as made, as the appellate court may

deem proper.

* * * * * * *

TITLE 5, UNITED STATES CODE

* * * * * * *

CHAPTER 53—PAY RATES AND SYSTEMS

* * * * * * *

SUBCHAPTER II—EXECUTIVE SCHEDULE PAY RATES

* * * * * * *

67

§ 5314. Positions at level III

Level III of the Executive Schedule applies to the following positions, for which the annual rate of basic pay shall be the rate determined with respect to such level under chapter 11 of title 2, as

adjusted by section 5318 of this title:

Solicitor General of the United States.

* * * * * * *

øUnder Secretary of Commerce for Intellectual Property

and Director of the United States Patent and Trademark Office.¿

Under Secretary of Commerce for Intellectual Property and

Commissioner of the United States Patent and Trademark Office.

* * * * * * *

§ 5315. Positions at level IV

Level IV of the Executive Schedule applies to the following positions, for which the annual rate of basic pay shall be the rate determined with respect to such level under chapter 11 of title 2, as

adjusted by section 5318 of this title:

Deputy Administrator of General Services.

* * * * * * *

øDeputy Under Secretary of Commerce for Intellectual

Property and Deputy Director of the United States Patent and

Trademark Office.¿

* * * * * * *

INTELLECTUAL PROPERY AND COMMUNICATIONS

OMNIBUS REFORM ACT OF 1999

* * * * * * *

TITLE IV—INVENTOR PROTECTION

* * * * * * *

Subtitle B—Patent and Trademark Fee

Fairness

* * * * * * *

SEC. 4203. ADJUSTMENT OF TRADEMARK FEES.

Notwithstanding the second sentence of section 31(a) of the

Trademark Act of 1946 (15 U.S.C. 111(a)), the Under Secretary of

Commerce for Intellectual Property and øDirector¿ Commissioner

of the United States Patent and Trademark Office is authorized in

fiscal year 2000 to adjust trademark fees without regard to fluctuations in the Consumer Price Index during the preceding 12 months.

* * * * * * *

68

Subtitle D—Patent Term Guarantee

* * * * * * *

SEC. 4402. PATENT TERM GUARANTEE AUTHORITY.

(a) * * *

(b) CONFORMING AMENDMENTS.— (1) Section 282 of title 35, United States Code, is amended

øin the fourth paragraph¿ by striking ‘‘156 of this title’’ and inserting ‘‘154(b) or 156 of this title’’.

* * * * * * *

Subtitle E—Domestic Publication of Patent

Applications Published Abroad

* * * * * * *

øSEC. 4505. PRIOR ART EFFECT OF PUBLISHED APPLICATIONS.

øSection 102(e) of title 35, United States Code, is amended to

read as follows:

ø‘‘(e) The invention was described in—

ø‘‘(1) an application for patent, published under section

122(b), by another filed in the United States before the invention by the applicant for patent, except that an international

application filed under the treaty defined in section 351(a)

shall have the effect under this subsection of a national application published under section 122(b) only if the international

application designating the United States was published under

Article 21(2)(a) of such treaty in the English language; or

ø‘‘(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed

filed in the United States for the purposes of this subsection

based on the filing of an international application filed under

the treaty defined in section 351(a); or’’.¿

SEC. 4505. PRIOR ART EFFECT OF PUBLISHED APPLICATIONS.

Section 102(e) of title 35, United States Code, is amended to

read as follows:

‘‘(e) the invention was described in (1) an application for patent,

published under section 122(b), by another filed in the United

States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the

United States before the invention by the applicant for patent, except

that an international application filed under the treaty defined in

section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States if and only if the

international application designated the United States and was

published under Article 21(2) of such treaty in the English language; or’’.

* * * * * * *

SEC. 4507. CONFORMING AMENDMENTS.

The following provisions of title 35, United States Code, are

amended:

69

(1) Section ø11¿ 10 is amended in paragraph 1 of subsection (a) by inserting ‘‘and published applications for patents’’ after ‘‘Patents’’.

(2) Section ø12¿ 11 is amended—

(A) * * *

* * * * * * *

(3) Section ø13¿ 12 is amended—

(A) * * *

* * * * * * *

(4) The items relating to sections ø12 and 13¿ 11 and 12

in the table of sections for chapter 1 are each amended by inserting ‘‘and applications’’ after ‘‘patents’’.

* * * * * * *

(10) Section 374 is amended to read as follows:

‘‘§ 374. Publication of international application

‘‘The publication under the treaty defined in section 351(a) of

this title, of an international application designating the United

States shall øconfer the same rights and shall have the same effect

under this title as an application for patent published¿ be deemed

a publication under section 122(b), except as provided in sections

102(e) and 154(d) of this title.’’.

* * * * * * *

(12) The item relating to section 374 in the table of contents

for chapter 37 of title 35, United States Code, is amended to

read as follows:

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

* * * * * * *

øSEC. 4508. EFFECTIVE DATE.

øSections 4502 through 4507, and the amendments made by

such sections, shall take effect on the date that is 1 year after the

date of the enactment of this Act and shall apply to all applications

filed under section 111 of title 35, United States Code, on or after

that date, and all applications complying with section 371 of title

35, United States Code, that resulted from international applications filed on or after that date. The amendments made by sections

4504 and 4505 shall apply to any such application voluntarily published by the applicant under procedures established under this

subtitle that is pending on the date that is 1 year after the date

of the enactment of this Act. The amendment made by section 4504

shall also apply to international applications designating the

United States that are filed on or after the date that is 1 year after

the date of the enactment of this Act.¿

SEC. 4508. EFFECTIVE DATE.

Except as otherwise provided in this section, sections 4502

through 4507, and the amendments made by such sections, shall

take effect on November 29, 2000, and shall apply only to applications (including international applications designating the United

States) filed on or after that date. The amendments made by sections 4504 and 4505 shall additionally apply to any pending application filed before November 29, 2000, if such pending application

70

is published pursuant to a request of the applicant under such procedures as may be established by the Director. If an application is

filed on or after November 29, 2000, or is published pursuant to a

request from the applicant, and the application claims the benefit

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

365(c) of title 35, United States Code, then the provisions of section

4505 shall apply to the prior-filed application in determining the

filing date in the United States of the application.

* * * * * * *

Subtitle F—Optional Inter Partes

Reexamination Procedure

* * * * * * *

SEC. 4604. OPTIONAL INTER PARTES REEXAMINATION PROCEDURES.

(a) IN GENERAL.—øPart 3¿ Part III of title 35, United States

Code, is amended by adding after chapter 30 the following new

chapter:

* * * * * * *

(b) CONFORMING AMENDMENT.—The table of chapters for part

III of øtitle 25¿ title 35, United States Code, is amended by striking

the item relating to chapter 30 and inserting the following:

* * * * * * *

Subtitle G—Patent and Trademark Office

* * * * * * *

CHAPTER 2—EFFECTIVE DATE; TECHNICAL

AMENDMENTS

* * * * * * *

SEC. 4732. TECHNICAL AND CONFORMING AMENDMENTS.

(a) AMENDMENTS TO TITLE 35, UNITED STATES CODE.— (1) * * *

* * * * * * *

(9)(A) Section 303 of title 35, United States Code, is

amended—

(i) in the section heading by striking ‘‘Commissioner’’ and inserting ‘‘Director’’; and

(ii) in subsection (b), by striking ‘‘Commissioner’s’’ and

inserting ‘‘Director’s’’.

* * * * * * *

(10)(A) Except as provided in subparagraph (B), title 35,

United States Code, other than sections 1 through 6 (as amended by chapter 1 of this subtitle), is amended by striking ‘‘Commissioner’’ each place it appears and inserting ‘‘Director’’.

* * * * * * *

71

Subtitle H—Miscellaneous Patent

Provisions

* * * * * * *

SEC. 4802. INTERNATIONAL APPLICATIONS.

Section 119 of title 35, United States Code, is amended as follows:

(1) In subsection (a), insert ‘‘or in a WTO member country,’’ after ‘‘or to citizens of the United States,’’.

* * * * * * *

SEC. 4804. ELECTRONIC FILING AND PUBLICATIONS.

(a) * * *

(b) PUBLICATIONA.—Section ø11(a)¿ 10(a) of title 35,

United States Code, is amended by amending the matter preceding paragraph 1 to read as follows:

* * * * * * *

(c) COPIES OF PATENTS FOR PUBLIC LIBRARIES.—Section ø13¿

12 of title 35, United States Code, is amended by striking ‘‘printed

copies of specifications and drawings of patents’’ and inserting ‘‘copies of specifications and drawings of patents in printed or electronic

form’’.

* * * * * * *

SECTION 901 OF TITLE 31, UNITED STATES CODE

§ 901. Establishment of agency Chief Financial Officers

(a) * * *

* * * * * * *

(b)(1) * * *

* * * * * * *

(2) The agencies referred to in subsection (a)(2) are the following:

(A) * * *

* * * * * * *

(I) The United States Patent and Trademark Office.

* * * * * * *

Æ