S5980 CONGRESSIONAL RECORD — SENATE August 2, 2012 

S. 3457

At the request of Mr. NELSON of Florida, the names of the Senator from Oregon (Mr. WYDEN) and the Senator 

from New York (Mrs. GILLIBRAND) were 

added as cosponsors of S. 3457, a bill to 

require the Secretary of Veterans Affairs to establish a veterans jobs corps, 

and for other purposes. 

S. 3463

At the request of Mr. FRANKEN, the 

names of the Senator from Alaska (Mr. 

BEGICH) and the Senator from Massachusetts (Mr. KERRY) were added as cosponsors of S. 3463, a bill to amend title 

XVIII of the Social Security Act to reduce the incidence of diabetes among 

Medicare beneficiaries. 

S. 3471

At the request of Mr. RUBIO, the 

names of the Senator from Tennessee 

(Mr. ALEXANDER), the Senator from 

Georgia (Mr. ISAKSON), the Senator 

from Louisiana (Mr. VITTER), the Senator from Utah (Mr. LEE) and the Senator from Arkansas (Mr. BOOZMAN) 

were added as cosponsors of S. 3471, a 

bill to amend the Internal Revenue 

Code of 1986 to eliminate the tax on 

Olympic medals won by United States 

athletes. 

S. 3474

At the request of Mr. MERKLEY, the 

name of the Senator from Illinois (Mr. 

DURBIN) was added as a cosponsor of S. 

3474, a bill to provide consumer protection for students. 

S. 3480

At the request of Mr. JOHANNS, the 

name of the Senator from Minnesota 

(Ms. KLOBUCHAR) was added as a cosponsor of S. 3480, a bill to provide end 

user exemptions from certain provisions of the Commodity Exchange Act 

and the Securities Exchange Act of 

1934. 

S.J. RES. 29

At the request of Mr. UDALL of New 

Mexico, the name of the Senator from 

New Jersey (Mr. MENENDEZ) was added 

as a cosponsor of S.J. Res. 29, a joint 

resolution proposing an amendment to 

the Constitution of the United States 

relating to contributions and expenditures intended to affect elections. 

S. CON. RES. 47

At the request of Mr. MENENDEZ, the 

name of the Senator from Maryland 

(Ms. MIKULSKI) was added as a cosponsor of S. Con. Res. 47, a concurrent resolution expressing the sense of Congress on the sovereignty of the Republic of Cyprus over all of the territory of 

the island of Cypress. 

S. CON. RES. 50

At the request of Mr. RUBIO, the 

name of the Senator from Idaho (Mr. 

RISCH) was added as a cosponsor of S. 

Con. Res. 50, a concurrent resolution 

expressing the sense of Congress regarding actions to preserve and advance the multistakeholder governance 

model under which the Internet has 

thrived. 

S. RES. 392

At the request of Mrs. FEINSTEIN, the 

name of the Senator from Vermont 

(Mr. SANDERS) was added as a cosponsor of S. Res. 392, a resolution urging 

the Republic of Turkey to safeguard its 

Christian heritage and to return confiscated church properties. 

AMENDMENT NO. 2653

At the request of Mr. GRAHAM, the 

name of the Senator from Pennsylvania (Mr. CASEY) was added as a cosponsor of amendment No. 2653 intended to be proposed to S. 3414, a bill 

to enhance the security and resiliency 

of the cyber and communications infrastructure of the United States. 

AMENDMENT NO. 2732

At the request of Mr. FRANKEN, the 

names of the Senator from Kentucky 

(Mr. PAUL), the Senator from Oregon 

(Mr. WYDEN), the Senator from New 

York (Mr. SCHUMER), the Senator from 

Hawaii (Mr. AKAKA), the Senator from 

Delaware (Mr. COONS), the Senator 

from Connecticut (Mr. BLUMENTHAL), 

the Senator from Vermont (Mr. SANDERS), the Senator from New Mexico 

(Mr. UDALL), the Senator from Oregon 

(Mr. MERKLEY), the Senator from New 

Hampshire (Mrs. SHAHEEN), the Senator from Washington (Ms. CANTWELL), 

the Senator from Alaska (Mr. BEGICH), 

the Senator from Iowa (Mr. HARKIN), 

the Senator from Illinois (Mr. DURBIN), 

the Senator from Montana (Mr. 

TESTER), the Senator from Virginia 

(Mr. WEBB) and the Senator from Minnesota (Ms. KLOBUCHAR) were added as 

cosponsors of amendment No. 2732 proposed to S. 3414, a bill to enhance the 

security and resiliency of the cyber and 

communications infrastructure of the 

United States. 

f 

STATEMENTS ON INTRODUCED 

BILLS AND JOINT RESOLUTIONS 

By Mr. LEAHY (for himself and 

Mr. GRASSLEY): 

S. 3486. A bill to implement the provisions of the Hague Agreement and 

the Patent Law Treaty; to the Committee on the Judiciary. 

Mr. LEAHY. Mr. President, I am 

pleased to introduce today legislation 

that will help American businesses and 

inventors by reducing obstacles for obtaining patent protection overseas. 

This bipartisan measure implements 

two patent law treaties that were 

signed under President Clinton and 

submitted for the Senate’s advice and 

consent by President George W. Bush. 

The Senate voted to ratify the treaties 

in 2007 without a single Senator in dissent. With this implementing legislation, Congress will complete its work 

so that the treaties at last can be ratified and go into effect. 

Our patent system plays a key role in 

encouraging innovation and bringing 

new products to market. The discoveries made by American inventors and 

research institutions, commercialized 

by our companies, and protected and 

promoted by our patent laws, have 

made our system the envy of the world. 

But in this global economy, it is not 

enough to have an effective domestic 

patent system; we must also help 

American inventors and businesses to 

protect their inventions and thrive in 

markets around the world. Consistent 

with last year’s landmark patent reform legislation, the Leahy-Smith 

America Invents Act, this legislation 

will benefit American inventors by implementing two measures to reduce application barriers around the world. 

The Hague Agreement Concerning 

International Registration of Industrial Designs provides a simplified application system for U.S. creators of 

industrial designs who, by filing a single standardized application for a design patent at the U.S. Patent and 

Trademark Office, can apply for design 

protection in each country that has 

ratified the Treaty. American design 

patent applicants who previously had 

to file separate applications in numerous countries may now file a single, 

English-language application at the 

U.S. Patent Office, reducing the costs 

and burdens of obtaining international 

protections. The U.S. Patent Office 

may also receive applications that 

have been filed internationally, but its 

substantive examination process remains unchanged. The standard for obtaining a design patent is not affected. 

By simplifying the process for American businesses to obtain design patents overseas, the Hague Agreement 

will reduce barriers for small and midsize companies to expand into foreign 

markets. 

The Patent Law Treaty also streamlines the process for American businesses seeking patent protection overseas. It limits the formalities different 

countries can require in patent applications, which are often used to disadvantage American applications in 

foreign jurisdictions. American businesses and inventors will benefit from 

harmonized applications, reducing the 

cost of doing business and encouraging 

U.S. innovators to protect and export 

their products internationally. 

In June, Director Kappos of the U.S. 

Patent and Trademark Office testified 

before the Judiciary Committee about 

the important need for this implementing legislation, stating that the 

treaties are ‘‘pro-American innovation, 

pro-global innovation, pro-jobs, pro-opportunity.’’ I agree. I urge the Senate 

to act quickly on this final step so that 

the treaties can at last be ratified, and 

American innovators and businesses 

can benefit from them as U.S. products 

continue to thrive on the global stage. 

Mr. President, I ask unanimous consent that the text of the bill be printed 

in the RECORD. 

There being no objection, the text of 

the bill was ordered to be printed in 

the RECORD, as follows: 

S. 3486 

Be it enacted by the Senate and House of Representatives of the United States of America in 

Congress assembled, 

SECTION 1. SHORT TITLE. 

This Act may be cited as the ‘‘Patent Law 

Treaties Implementation Act of 2012’’. 


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August 2, 2012 CONGRESSIONAL RECORD — SENATE S5981 

TITLE I—HAGUE AGREEMENT CONCERNING INTERNATIONAL REGISTRATION OF INDUSTRIAL DESIGNS 

SEC. 101. THE HAGUE AGREEMENT CONCERNING 

INTERNATIONAL REGISTRATION OF 

INDUSTRIAL DESIGNS. 

(a) IN GENERAL.—Title 35, United States 

Code, is amended by adding at the end the 

following: 

‘‘PART V—THE HAGUE AGREEMENT CONCERNING INTERNATIONAL REGISTRATION OF INDUSTRIAL DESIGNS 

‘‘CHAPTER Sec. 

‘‘38. International design applications 381. 

‘‘CHAPTER 38—INTERNATIONAL DESIGN 

APPLICATIONS 

‘‘Sec. 

‘‘381. Definitions. 

‘‘382. Filing international design applications. 

‘‘383. International design application. 

‘‘384. Filing date. 

‘‘385. Effect of international design application. 

‘‘386. Right of priority. 

‘‘387. Relief from prescribed time limits. 

‘‘388. Withdrawn or abandoned international 

design application. 

‘‘389. Examination of international design 

application. 

‘‘390. Publication of international design application. 

‘‘§ 381. Definitions 

‘‘(a) IN GENERAL.—When used in this part, 

unless the context otherwise indicates— 

‘‘(1) the term ‘treaty’ means the Geneva 

Act of the Hague Agreement Concerning the 

International Registration of Industrial Designs adopted at Geneva on July 2, 1999; 

‘‘(2) the term ‘regulations’— 

‘‘(A) when capitalized, means the Common 

Regulations under the treaty; and 

‘‘(B) when not capitalized, means the regulations established by the Director under 

this title; 

‘‘(3) the term ‘designation’ means a request 

that an international registration have effect in a Contracting Party to the treaty; 

‘‘(4) the term ‘International Bureau’ means 

the international intergovernmental organization that is recognized as the coordinating 

body under the treaty and the Regulations; 

‘‘(5) the term ‘effective registration date’ 

means the date of international registration 

indicated by the International Bureau under 

the treaty; 

‘‘(6) the term ‘international design application’ means an application for international 

registration; and 

‘‘(7) the term ‘international registration’ 

means the international registration of an 

industrial design filed under the treaty. 

‘‘(b) RULE OF CONSTRUCTION.—Terms and 

expressions not defined in this part are to be 

taken in the sense indicated by the treaty 

and the Regulations. 

‘‘§ 382. Filing international design applications 

‘‘(a) IN GENERAL.—Any person who is a national of the United States, or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment 

in the United States, may file an international design application by submitting to 

the Patent and Trademark Office an application in such form, together with such fees, as 

may be prescribed by the Director. 

‘‘(b) REQUIRED ACTION.—The Patent and 

Trademark Office shall perform all acts connected with the discharge of its duties under 

the treaty, including the collection of international fees and transmittal thereof to the 

International Bureau. Subject to chapter 17 

of this title, international design applications shall be forwarded by the Patent and 

Trademark Office to the International Bureau, upon payment of a transmittal fee. 

‘‘(c) APPLICABILITY OF CHAPTER 16.—Except 

as otherwise provided in this chapter, the 

provisions of chapter 16 of this title shall 

apply. 

‘‘(d) APPLICATION FILED IN ANOTHER COUNTRY.—An international design application on 

an industrial design made in this country 

shall be considered to constitute the filing of 

an application in a foreign country within 

the meaning of chapter 17 of this title if the 

international design application is filed— 

‘‘(1) in a country other than the United 

States; 

‘‘(2) at the International Bureau; or 

‘‘(3) with an intergovernmental organization. 

‘‘§ 383. International design application 

‘‘In addition to any requirements pursuant 

to chapter 16 of this title, the international 

design application shall contain— 

‘‘(1) a request for international registration under the treaty; 

‘‘(2) an indication of the designated Contracting Parties; 

‘‘(3) data concerning the applicant as prescribed in the treaty and the Regulations; 

‘‘(4) copies of a reproduction or, at the 

choice of the applicant, of several different 

reproductions of the industrial design that is 

the subject of the international application, 

presented in the number and manner prescribed in the treaty and the Regulations; 

‘‘(5) an indication of the product or products which constitute the industrial design 

or in relation to which the industrial design 

is to be used, as prescribed in the treaty and 

the Regulations; 

‘‘(6) the fees prescribed in the treaty and 

the Regulations; and 

‘‘(7) any other particulars prescribed in the 

Regulations. 

‘‘§ 384. Filing date 

‘‘(a) IN GENERAL.—Subject to subsection 

(b), the filing date of an international design 

application in the United States shall be the 

effective registration date. Notwithstanding 

the provisions of this part, any international 

design application designating the United 

States that otherwise meets the requirements of chapter 16 of this title may be 

treated as a design application under chapter 

16 of this title. 

‘‘(b) REVIEW.—An applicant may request 

review by the Director of the filing date of 

the international design application in the 

United States. The Director may determine 

that the filing date of the international design application in the United States is a 

date other than the effective registration 

date. The Director may establish procedures, 

including the payment of a surcharge, to review the filing date under this section. Such 

review may result in a determination that 

the application has a filing date in the 

United States other than the effective registration date. 

‘‘§ 385. Effect of international design application 

‘‘An international design application designating the United States shall have the effect, for all purposes, from its filing date determined in accordance with section 384 of 

this part, of an application for patent filed in 

the Patent and Trademark Office pursuant 

to chapter 16 of this title. 

‘‘§ 386. Right of priority 

‘‘(a) NATIONAL APPLICATION.—In accordance with the conditions and requirements of 

subsections (a) through (d) of section 119 of 

this title and section 172 of this title, a national application shall be entitled to the 

right of priority based on a prior international design application which designated 

at least one country other than the United 

States. 

‘‘(b) PRIOR FOREIGN APPLICATION.—In accordance with the conditions and requirements of subsections (a) through (d) of section 119 of this title and section 172 of this 

title and the treaty and the Regulations, an 

international design application designating 

the United States shall be entitled to the 

right of priority based on a prior foreign application, a prior international application 

as defined in section 351(c) of this title designating at least one country other than the 

United States, or a prior international design application designating at least one 

country other than the United States. 

‘‘(c) PRIOR NATIONAL APPLICATION.—In accordance with the conditions and requirements of section 120 of this title, an international design application designating the 

United States shall be entitled to the benefit 

of the filing date of a prior national application, a prior international application as defined in section 351(c) of this title designating the United States, or a prior international design application designating the 

United States, and a national application 

shall be entitled to the benefit of the filing 

date of a prior international design application designating the United States. If any 

claim for the benefit of an earlier filing date 

is based on a prior international application 

as defined in section 351(c) of this title which 

designated but did not originate in the 

United States or a prior international design 

application which designated but did not 

originate in the United States, the Director 

may require the filing in the Patent and 

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. 

‘‘§ 387. Relief from prescribed time limits 

‘‘An applicant’s failure to act within prescribed time limits in connection with requirements pertaining to an international 

design application may be excused as to the 

United States upon a showing satisfactory to 

the Director of unintentional delay and 

under such conditions, including a requirement for payment of the fee specified in section 41(a)(7) of this title, as may be prescribed by the Director. 

‘‘§ 388. Withdrawn or abandoned international design application 

‘‘Subject to sections 384 and 387 of this 

part, if an international design application 

designating the United States is withdrawn, 

renounced or canceled or considered withdrawn or abandoned, either generally or as 

to the United States, under the conditions of 

the treaty and the Regulations, the designation of the United States shall have no effect 

after the date of withdrawal, renunciation, 

cancellation, or abandonment and shall be 

considered as not having been made, unless a 

claim for benefit of a prior filing date under 

section 386(c) of this part was made in a national application, or an international design 

application designating the United States, or 

a claim for benefit under section 365(c) was 

made in an international application designating the United States, filed before the 

date of such withdrawal, renunciation, cancellation, or abandonment. However, such 

withdrawn, renounced, canceled, or abandoned international design application may 

serve as the basis for a claim of priority 

under subsections (a) and (b) of section 386, 

or under subsection (a) or (b) of section 365, 

if it designated a country other than the 

United States. 

‘‘§ 389. Examination of international design 

application 

‘‘(a) IN GENERAL.—The Director shall cause 

an examination pursuant to this title of an 

international design application designating 

the United States. 

‘‘(b) APPLICABILITY OF CHAPTER 16.—All 

questions of substance, and, unless otherwise 


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S5982 CONGRESSIONAL RECORD — SENATE August 2, 2012 

required by the treaty and Regulations, procedures regarding an international design 

application designating the United States 

shall be determined as in the case of applications filed under chapter 16 of this title. 

‘‘(c) FEES.—The Director may prescribe 

fees for filing international design applications, for designating the United States, and 

for any other processing, services, or materials relating to international design applications, and may provide for later payment 

of such fees, including surcharges for later 

submission of fees. 

‘‘(d) ISSUANCE OF PATENT.—The Director 

may issue a patent based on an international 

design application designating the United 

States, in accordance with the provisions of 

this title. Such patent shall have the force 

and effect of a patent issued on an application filed under chapter 16 of this title. 

‘‘§ 390. Publication of international design application 

‘‘The publication under the treaty defined 

in section 381(a)(1) of an international design 

application designating the United States 

shall be deemed a publication under section 

122(b).’’. 

(b) CONFORMING AMENDMENT.—The table of 

parts at the beginning of title 35, United 

States Code, is amended by adding at the end 

the following: 

‘‘V. The Hague Agreement concerning international registration of industrial designs ............. 401’’. 

SEC. 102. CONFORMING AMENDMENTS. 

Title 35, United States Code, is amended— 

(1) in section 100(i)(1)(B), by striking ‘‘right 

of priority under section 119, 365(a), or 365(b) 

or to the benefit of an earlier filing date 

under section 120, 121, or 365(c)’’ and inserting ‘‘right of priority under section 119, 

365(a), 365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under section 

120, 121, 365(c), or 386(c)’’; 

(2) in section 102(d)(2), by striking ‘‘to 

claim a right of priority under section 119, 

365(a), or 365(b), or to claim the benefit of an 

earlier filing date under section 120, 121, or 

365(c)’’ and inserting ‘‘to claim a right of priority under section 119, 365(a), 365(b), 386(a), 

or 386(b), or to claim the benefit of an earlier 

filing date under section 120, 121, 365(c), or 

386(c)’’; 

(3) in section 111(b)(7)— 

(A) by striking ‘‘section 119 or 365(a)’’ and 

inserting ‘‘section 119, 365(a), or 386(a)’’; and 

(B) by striking ‘‘section 120, 121, or 365(c)’’ 

and inserting ‘‘section 120, 121, 365(c), or 

386(c)’’; 

(4) in section 115(g)(1), by striking ‘‘section 

120, 121, or 365(c)’’ and inserting ‘‘section 120, 

121, 365(c), or 386(c)’’; 

(5) in section 120, in the first sentence, by 

striking ‘‘section 363’’ and inserting ‘‘section 

363 or 385’’; 

(6) in section 154— 

(A) in subsection (a)— 

(i) in paragraph (2), by striking ‘‘section 

120, 121, or 365(c)’’ and inserting ‘‘section 120, 

121, 365(c), or 386(c)’’; and 

(ii) in paragraph (3), by striking ‘‘section 

119, 365(a), or 365(b)’’ and inserting ‘‘section 

119, 365(a), 365(b), 386(a), or 386(b)’’; and 

(B) in subsection (d)(1), by inserting ‘‘or an 

international design application filed under 

the treaty defined in section 381(a)(1) designating the United States under Article 5 of 

such treaty’’ after ‘‘Article 21(2)(a) of such 

treaty’’; 

(7) in section 173, by striking ‘‘fourteen 

years’’ and inserting ‘‘15 years’’; 

(8) in section 365(c)— 

(A) in the first sentence, by striking ‘‘or a 

prior international application designating 

the United States’’ and inserting ‘‘, a prior 

international application designating the 

United States, or a prior international design application as defined in section 

381(a)(6) of this title designating the United 

States’’; and 

(B) in the second sentence, by inserting ‘‘or 

a prior international design application as 

defined in section 381(a)(6) of this title which 

designated but did not originate in the 

United States’’ after ‘‘did not originate in 

the United States’’; and 

(9) in section 366— 

(A) in the first sentence, by striking ‘‘unless a claim’’ and all that follows through 

‘‘withdrawl.’’ and inserting ‘‘unless a claim 

for benefit of a prior filing date under section 365(c) of this section was made in a national application, or an international application designating the United States, or a 

claim for benefit under section 386(c) was 

made in an international design application 

designating the United States, filed before 

the date of such withdrawal.’’; and 

(B) by striking the second sentence and inserting the following: ‘‘However, such withdrawn international application may serve 

as the basis for a claim of priority under section 365 (a) and (b) of this part, or under section 386 (a) or (b), if it designated a country 

other than the United States.’’. 

SEC. 103. EFFECTIVE DATE. 

(a) IN GENERAL.—The amendments made by 

this title shall be effective on the later of— 

(1) the date that is 1 year after the date of 

enactment of this Act, or 

(2) the date of entry into force of the treaty, as defined in section 381 of title 35, as 

amended by this Act, with respect to the 

United States. 

(b) APPLICABILITY OF AMENDMENTS.— 

(1) IN GENERAL.—Subject to paragraph (2), 

the amendments made by this title shall 

apply only to international design applications, international applications as defined 

in section 351(c) of title 35, United States 

Code, and national applications filed on and 

after the effective date set forth in subsection (a), and patents issuing thereon. 

(2) EXCEPTION.—Sections 100(i) and 102(d) of 

title 35, United States Code, as amended by 

this title, shall not apply to an application, 

or any patent issuing thereon, unless it is described in section 3(n)(1) of the Leahy-Smith 

America Invents Act (35 U.S.C. 100 note). 

TITLE II—PATENT LAW TREATY 

IMPLEMENTATION 

SEC. 201. PROVISIONS TO IMPLEMENT THE PATENT LAW TREATY. 

(a) APPLICATION FILING DATE.—Section 111 

of title 35, United States Code, is amended— 

(1) in subsection (a), by striking paragraphs (3) and (4) and inserting the following: 

‘‘(3) FEE, OATH OR DECLARATION, AND

CLAIMS.—The application shall be accompanied by the fee required by law. The fee, 

oath or declaration, and 1 or more claims 

may be submitted after the filing date of the 

application, within such period and under 

such conditions, including the payment of a 

surcharge, as may be prescribed by the Director. Upon failure to submit the fee, oath 

or declaration, and 1 or more claims within 

such prescribed period, the application shall 

be regarded as abandoned. 

‘‘(4) FILING DATE.—The filing date of an application shall be the date on which a specification, with or without claims, is received 

in the United States Patent and Trademark 

Office.’’; 

(2) in subsection (b), by striking paragraphs (3) and (4) and inserting the following: 

‘‘(3) FEE.—The application shall be accompanied by the fee required by law. The fee 

may be submitted after the filing date of the 

application, within such period and under 

such conditions, including the payment of a 

surcharge, as may be prescribed by the Director. Upon failure to submit the fee within 

such prescribed period, the application shall 

be regarded as abandoned. 

‘‘(4) FILING DATE.—The filing date of a provisional application shall be the date on 

which a specification, with or without 

claims, is received in the United States Patent and Trademark Office.’’; and 

(3) by adding at the end the following: 

‘‘(c) PRIOR FILED APPLICATION.—The Director may prescribe the conditions, including 

the payment of a surcharge, under which a 

reference made upon the filing of an application under subsection (a) to a previously 

filed application, specifying the previously 

filed application by application number and 

the intellectual property authority or country in which the application was filed, shall 

constitute the specification and any drawings of the subsequent application for purposes of a filing date. A copy of the specification and any drawings of the previously filed 

application shall be submitted within such 

period and under such conditions as may be 

prescribed by the Director. A failure to submit the copy of the specification and any 

drawings of the previously filed application 

within the prescribed period shall result in 

application being regarded as abandoned and 

treated as having never been filed.’’. 

(b) RELIEF IN RESPECT OF TIME LIMITS AND

REINSTATEMENT OF RIGHTS.— 

(1) IN GENERAL.—Chapter 2 of title 35, 

United States Code, is amended by adding at 

the end the following: 

‘‘§ 27. Revival of applications; reinstatement 

of reexamination proceedings 

‘‘(a) IN GENERAL.—The Director may establish procedures, including the requirement 

for payment of the fee specified in section 

41(a)(7), to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for 

issuing each patent, or accept an unintentionally delayed response by the patent 

owner in a reexamination proceeding, upon 

petition by the applicant for patent or patent owner.’’. 

(2) TECHNICAL AND CONFORMING AMENDMENT.—The table of sections for chapter 2 of 

title 35, United States Code, is amended by 

adding at the end the following: 

‘‘27. Revival of applications; reinstatement 

of reexamination proceedings.’’. 

(c) RESTORATION OF PRIORITY RIGHT.—Title 

35, United States Code, is amended— 

(1) in section 119— 

(A) in subsection (a), by adding at the end 

the following: ‘‘The Director may prescribe 

regulations, including the requirement for 

payment of the fee specified in section 

41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay 

in filing the application in this country 

within the 12-month period was unintentional.’’; and 

(B) in subsection (e)— 

(i) in paragraph (1)— 

(I) by inserting after the first sentence the 

following: ‘‘The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), 

pursuant to which the 12-month period set 

forth in this subsection may be extended by 

an additional 2 months if the delay in filing 

the application under section 111(a) or section 363 within the 12-month period was unintentional.’’; and 

(II) in the last sentence— 

(aa) by striking ‘‘including the payment of 

a surcharge’’ and inserting ‘‘including the 

payment of the fee specified in section 

41(a)(7)’’; and 

(bb) by striking ‘‘during the pendency of 

the application’’; and 

(ii) in paragraph (3), by adding at the end 

the following: ‘‘For an application for patent 

filed under section 363 in a foreign Receiving 

Office, the 12-month and additional 2 month 


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August 2, 2012 CONGRESSIONAL RECORD — SENATE S5983 

period set forth in this subsection shall be 

extended as provided under the treaty and 

Regulations as defined in section 351.’’; and 

(2) in section 365(b), by adding at the end 

the following: ‘‘The Director may establish 

procedures, including the requirement for 

payment of the fee specified in section 

41(a)(7), to accept an unintentionally delayed 

claim for priority under the treaty and the 

Regulations, and to accept a priority claim 

where such priority claim pertains to an application that was not filed within the priority period specified in the treaty and Regulations, but was filed within the additional 2- 

month period specified under section 119(a) 

or the treaty and Regulations.’’. 

(d) RECORDATION OF OWNERSHIP INTERESTS.—Section 261 of title 35, United States 

Code, is amended— 

(1) in the first undesignated paragraph by 

adding at the end the following: ‘‘The Patent 

and Trademark Office shall maintain a register of interests in applications for patents 

and patents and shall record any document 

related thereto upon request, and may require a fee therefor.’’; and 

(2) in the fourth undesignated paragraph 

by striking ‘‘An assignment’’ and inserting 

‘‘An interest that constitutes an assignment’’. 

SEC. 202. CONFORMING AMENDMENTS. 

(a) IN GENERAL.—Section 171 of title 35, 

United States Code, is amended by adding at 

the end the following: 

‘‘The filing date of an application for patent for design shall be the date on which the 

specification as prescribed by section 112 and 

any required drawings are filed.’’. 

(b) RELIEF IN RESPECT OF TIME LIMITS AND

REINSTATEMENT OF RIGHT.—Title 35, United 

States Code, is amended— 

(1) in section 41— 

(A) in subsection (a), by striking subsection (7) and inserting the following: 

‘‘(7) REVIVAL FEES.—On filing each petition 

for the revival of an abandoned application 

for a patent, for the delayed payment of the 

fee for issuing each patent, for the delayed 

response by the patent owner in any reexamination proceeding, for the delayed payment 

of the fee for maintaining a patent in force, 

for the delayed submission of a priority or 

benefit claim, or for the extension of the 12- 

month period for filing a subsequent application, $1,700.00. The Director may refund any 

part of the fee specified in this paragraph, in 

exceptional circumstances as determined by 

the Director’’; and 

(B) in subsection (c), by striking paragraph 

(1) and inserting the following: 

‘‘(1) ACCEPTANCE.—The Director may accept the payment of any maintenance fee required by subsection (b) after the 6-month 

grace period if the delay is shown to the satisfaction of the Director to have been unintentional. The Director may require the payment of the fee specified in paragraph (a)(7) 

as a condition of accepting payment of any 

maintenance fee after the 6-month grace period. If the Director accepts payment of a 

maintenance fee after the 6-month grace period, the patent shall be considered as not 

having expired at the end of the grace period.’’; 

(2) in section 119(b)(2), in the second sentence, by striking ‘‘including the payment of 

a surcharge’’ and inserting ‘‘including the requirement for payment of the fee specified in 

section 41(a)(7)’’; 

(3) in section 120, in the fourth sentence, by 

striking ‘‘including the payment of a surcharge’’ and inserting ‘‘including the requirement for payment of the fee specified in 

section 41(a)(7)’’; 

(4) in section 122(b)(2)(B)(iii), in the second 

sentence, by striking ‘‘, unless it is shown’’ 

and all that follows through ‘‘unintentional’’; 

(5) in section 133, by striking ‘‘, unless it be 

shown’’ and all that follows through ‘‘unavoidable’’; 

(6) by striking section 151 and inserting the 

following: 

‘‘§ 151. Issue of patent 

‘‘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 and 

any required publication fee, which shall be 

paid within 3 months thereafter. 

‘‘Upon payment of this sum the patent 

may issue, but if payment is not timely 

made, the application shall be regarded as 

abandoned.’’; 

(7) in section 361, by striking subsection (c) 

and inserting the following: 

‘‘(c) International applications filed in the 

Patent and Trademark Office shall be filed 

in the English language, or an English translation shall be filed within such later time as 

may be fixed by the Director.’’; 

(8) in section 364, by striking subsection (b) 

and inserting the following: 

‘‘(b) An applicant’s failure to act within 

prescribed time limits in connection with requirements pertaining to an international 

application may be excused as provided in 

the treaty and the Regulations.’’; and 

(9) in section 371(d), in the third sentence, 

by striking ‘‘, unless it be shown to the satisfaction of the Director that such failure to 

comply was unavoidable’’. 

SEC. 203. EFFECTIVE DATE. 

(a) IN GENERAL.—Except as provided in 

subsection (b), the amendments made by this 

title shall be effective on the date that is 1 

year after the date of enactment of this Act 

and shall apply to all patents and to all applications for patent pending on or filed after 

the date that is 1 year after the date of enactment of this Act. 

(b) EXCEPTIONS.— 

(1) SECTION 201(A).—The amendments made 

by section 201(a) shall apply only to applications filed on or after the date that is 1 year 

after the date of enactment of this Act. 

(2) PATENT THAT IS SUBJECT OF LITIGATION.—The amendments made by this title 

shall have no effect with respect to any patent that is the subject of litigation in an action commenced before the date that is 1 

year after the date of enactment of this Act. 

By Mr. KYL: 

S. 3493. A bill to protect first amendment rights of journalists and internet 

service providers by preventing States 

and the United States from allowing 

meritless lawsuits arising from acts in 

furtherance of those rights, commonly 

called ‘‘Strategic Lawsuits Against 

Public Participation’’ or ‘‘SLAPPs’’, 

and for other purposes; to the Committee on the Judiciary. 

Mr. KYL. Mr. President, I rise today 

to introduce the Free Press Act. The 

FPA would create a Federal antiSLAPP statute for journalists, 

bloggers, and other news media, authorizing them to bring a special motion to dismiss lawsuits brought 

against them that arise out of their 

speech on public issues. Once the special motion to dismiss is brought, the 

nonmoving party must present a prima 

facie case supporting the lawsuit; if the 

nonmovant fails to do so, the lawsuit is 

dismissed and fees and costs are awarded to the movant. 

Anti-SLAPP laws effectively make it 

impossible for frivolous or marginal 

libel lawsuits arising out of protected 

speech to advance beyond an initial 

stage of litigation. Such laws thereby 

protect journalists and bloggers from 

the financial impact of defending 

against such suits. Approximately 30 

States have anti-SLAPP laws, though 

their coverage varies. There is no federal law. The FPA would create a federal anti-SLAPP law, and allow parties 

to remove some state SLAPP claims to 

Federal court. 

At the conclusion of my remarks 

today, I will submit for the record a 

section-by-section summary of the 

FPA. I will first, however, comment on 

several features of the bill, including 

the meaning of some of the language 

that is used, and Congress’ authority to 

enact such legislation. 

The FPA’s special motion to dismiss 

requires the plaintiff to present ‘‘prima 

facie evidence’’ supporting his cause of 

action. The standard definition of 

‘‘prima facie evidence,’’ which is employed by the FPA, is that given by 

Justice Story in his opinion for the 

court in Kelly v. Jackson, 31 U.S. 622, 

632, 1832: ‘‘What is prima facie evidence 

of a fact? It is such as, in judgment of 

law, is sufficient to establish a fact; 

and, if not rebutted, remains sufficient 

for that purpose.’’ For similar statements, see Bailey v. Alabama, 219 S.Ct. 

219, 234, 1911, quoting Kelly v. Jackson; 

and Neely v. United States, 150 F.2d 977, 

978, D.C. Cir. 1945, which notes ‘‘Justice 

Story’s often quoted definition of 

prima facie evidence.’’ 

This definition is also employed by 

Black’s Law Dictionary, which defines 

‘‘prima facie evidence’’ as: 

Such evidence as, in the judgment of the 

law, is sufficient to establish a given fact 

and which if not rebutted or contradicted, 

will remain sufficient. [Prima facie evidence], if unexplained or uncontradicted, is 

sufficient to sustain a judgment in favor of 

the issue which it supports, but [it] may be 

contradicted by other evidence. 

In a recent concurring and dissenting 

opinion, Justice Scalia went so far as 

to describe this definition of ‘‘prima 

facie evidence’’ as ‘‘canonical.’’ He also 

stated: 

The established meaning in Virginia, then, 

of the term ‘‘prima facie evidence’’ appears 

to be perfectly orthodox: It is evidence that 

suffices, on its own, to establish a particular 

fact. But it is hornbook law that this is true 

only to the extent that the evidence goes 

unrebutted. ‘‘Prima facie evidence of a fact 

is such evidence as, in judgment of law, is 

sufficient to establish the fact; and, if not rebutted, remains sufficient for the purpose.’’ 

7B Michie’s Jurisprudence of Virginia and 

West Virginia § 32, 1998, (emphasis added). 

Virginia v. Black, 538 U.S. 343, 369–70, 

2003, Scalia, J., concurring in part, concurring in judgment in part, and dissenting in part. 

Other Federal courts continue to use 

this definition of ‘‘prima facie evidence:’’ 

‘‘A prima facie showing simply means evidence of such nature as is sufficient to establish a fact and which, if unrebutted, remains 

sufficient for that purpose.’’ Cumulus Media, 

Inc. v. Clear Channel Communications, Inc., 304 

F.3d 1167, 1176 n.13, 11th Cir. 2002. 


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