II

104TH CONGRESS

2D SESSION S. 1961

To establish the United States Intellectual Property Organization, to amend

the provisions of title 35, United States Code, relating to procedures

for patent applications, commercial use of patents, reexamination reform,

and for other purposes.

IN THE SENATE OF THE UNITED STATES

JULY 16, 1996

Mr. HATCH introduced the following bill; which was read twice and referred

to the Committee on the Judiciary

A BILL

To establish the United States Intellectual Property Organization, to amend the provisions of title 35, United States

Code, relating to procedures for patent applications, commercial use of patents, reexamination reform, and for

other purposes.

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

3 SECTION 1. SHORT TITLE.

4 This Act may be cited as the ‘‘Omnibus Patent Act

5 of 1996’’.

6 SEC. 2. TABLE OF CONTENTS.

Sec. 1. Short title.
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Sec. 2. Table of contents.

TITLE I—UNITED STATES INTELLECTUAL PROPERTY

ORGANIZATION

Sec. 101. Short title.

Subtitle A—Establishment of the United States Intellectual Property

Organization

Sec. 111. Establishment of the United States Intellectual Property Organization as a Government corporation.

Sec. 112. Powers and duties.

Sec. 113. Organization and management.

Sec. 114. United States Patent Office.

Sec. 115. United States Trademark Office.

Sec. 116. United States Copyright Office.

Sec. 117. Suits by and against the Organization.

Sec. 118. Funding.

Sec. 119. Management report.

Sec. 120. Audits.

Sec. 121. Transfers.

Subtitle B—Effective Date; Technical Amendments

Sec. 131. Effective date.

Sec. 132. Technical and conforming amendments.

Subtitle C—Miscellaneous Provisions

Sec. 141. References.

Sec. 142. Exercise of authorities.

Sec. 143. Savings provisions.

Sec. 144. Transfer of assets.

Sec. 145. Delegation and assignment.

Sec. 146. Authority of Director of the Office of Management and Budget with

respect to functions transferred.

Sec. 147. Certain vesting of functions considered transfers.

Sec. 148. Availability of existing funds.

Sec. 149. Definitions.

TITLE II—EARLY PUBLICATION OF PATENT APPLICATIONS

Sec. 201. Short title.

Sec. 202. Early publication.

Sec. 203. Time for claiming benefit of earlier filing date.

Sec. 204. Provisional rights.

Sec. 205. Prior art effect of published applications.

Sec. 206. Cost recovery for publication.

Sec. 207. Conforming changes.

Sec. 208. Last day of pendency of provisional application.

Sec. 209. Effective date.

TITLE III—PATENT TERM RESTORATION

Sec. 301. Patent term extension authority.

Sec. 302. Effective date.
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TITLE IV—PRIOR DOMESTIC COMMERCIAL USE

Sec. 401. Short title.

Sec. 402. Defense to patent infringement based on prior domestic commercial

use.

Sec. 403. Effective date and applicability.

TITLE V—PATENT REEXAMINATION REFORM

Sec. 501. Short title.

Sec. 502. Definitions.

Sec. 503. Reexamination procedures.

Sec. 504. Conforming amendments.

Sec. 505. Effective date.

TITLE VI—MISCELLANEOUS PATENT PROVISIONS

Sec. 601. Provisional applications.

Sec. 602. International applications.

Sec. 603. Plant patents.

Sec. 604. Just compensation for United States Government use of patents.

Sec. 605. Electronic filing.

1 TITLE I—UNITED STATES INTEL2 LECTUAL PROPERTY ORGANI3 ZATION

4 SEC. 101. SHORT TITLE.

5 This title may be cited as the ‘‘United States Intellec6 tual Property Organization Act of 1996’’.

7 Subtitle A—Establishment of the

8 United States Intellectual Prop9 erty Organization

10 SEC. 111. ESTABLISHMENT OF THE UNITED STATES INTEL11 LECTUAL PROPERTY ORGANIZATION AS A

12 GOVERNMENT CORPORATION.

13 (a) ESTABLISHMENT.—The United States Intellec14 tual Property Organization is established as a wholly

15 owned Government corporation subject to chapter 91 of

16 title 31.
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1 (b) OFFICES.—The United States Intellectual Prop2 erty Organization shall maintain an office in the District

3 of Columbia, or the metropolitan area thereof, for the

4 service of process and papers and shall be deemed, for pur5 poses of venue in civil actions, to be a resident of the dis6 trict in which its principal office is located. The United

7 States Intellectual Property Organization may establish

8 offices in such other places as it considers necessary or

9 appropriate in the conduct of its business.

10 (c) REFERENCE.—For purposes of this title, the

11 United States Intellectual Property Organization shall

12 also be referred to as the ‘‘Organization’’ and the ‘‘Intel13 lectual Property Organization’’.

14 SEC. 112. POWERS AND DUTIES.

15 (a) IN GENERAL.—The United States Intellectual

16 Property Organization shall be responsible for—

17 (1) the granting and issuing of patents and the

18 registration of trademarks and copyrights;

19 (2) conducting studies, programs, or exchanges

20 of items or services regarding domestic and inter21 national patent, trademark, and copyright law, the

22 administration of the Organization, or any other

23 function vested in the Organization by law;

24 (3)(A) authorizing or conducting studies and

25 programs cooperatively with foreign patent, trade-
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1 mark, and copyright offices and international orga2 nizations, in connection with the granting and issu3 ing of patents and the registration of trademarks

4 and copyrights; and

5 (B) with the concurrence of the Secretary of

6 State, authorizing the transfer of not to exceed

7 $100,000 in any year to the Department of State

8 for the purpose of making special payments to inter9 national intergovernmental organizations for studies

10 and programs for advancing international coopera11 tion concerning patents, trademarks, copyrights, and

12 related matters; and

13 (4) disseminating to the public information with

14 respect to patents, trademarks, and copyrights.

15 (b) SPECIAL PAYMENTS.—The special payments

16 under subsection (a)(3)(B) may be in addition to any

17 other payments or contributions to international organiza18 tions and shall not be subject to any limitations imposed

19 by law on the amounts of such other payments or con20 tributions by the United States Government.

21 (c) SPECIFIC POWERS.—The Organization—

22 (1) shall have perpetual succession;

23 (2) shall adopt and use a corporate seal, which

24 shall be judicially noticed and with which letters pat25 ent, certificates of trademark registrations, certifi-
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1 cates of copyright registrations, and papers issued

2 by the Organization shall be authenticated;

3 (3) may sue and be sued in its corporate name

4 and be represented by its own attorneys in all judi5 cial and administrative proceedings, subject to the

6 provisions of section 114;

7 (4) may indemnify the Commissioner of Intel8 lectual Property, and other officers, attorneys,

9 agents, and employees (including members of the

10 Management Advisory Boards of the Patent Office,

11 Trademark Office, and Copyright Office) of the Or12 ganization for liabilities and expenses incurred with13 in the scope of their employment;

14 (5) may adopt, amend, and repeal bylaws, rules,

15 regulations, and determinations, which—

16 (A) shall govern the manner in which its

17 business will be conducted and the powers

18 granted to it by law will be exercised; and

19 (B) shall be made after notice and oppor20 tunity for full participation by interested public

21 and private parties;

22 (6) may acquire, construct, purchase, lease,

23 hold, manage, operate, improve, alter, and renovate

24 any real, personal, or mixed property, or any interest
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1 therein, as it considers necessary to carry out its

2 functions;

3 (7)(A) may make such purchases, contracts for

4 the construction, maintenance, or management and

5 operation of facilities, and contracts for supplies or

6 services, without regard to the provisions of the Fed7 eral Property and Administrative Services Act of

8 1949 (40 U.S.C. 471 et seq.), the Public Buildings

9 Act (40 U.S.C. 601 et seq.), and the Stewart B.

10 McKinney Homeless Assistance Act (42 U.S.C.

11 11301 et seq.); and

12 (B) may enter into and perform such purchases

13 and contracts for printing services, including the

14 process of composition, platemaking, presswork, silk

15 screen processes, binding, microform, and the prod16 ucts of such processes, as it considers necessary to

17 carry out the functions of the Organization, without

18 regard to sections 501 through 517 and 1101

19 through 1123 of title 44, United States Code;

20 (8) may use, with their consent, services, equip21 ment, personnel, and facilities of other departments,

22 agencies, and instrumentalities of the Federal Gov23 ernment, on a reimbursable basis, and cooperate

24 with such other departments, agencies, and instru-
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1 mentalities in the establishment and use of services,

2 equipment, and facilities of the Organization;

3 (9) may obtain from the Administrator of Gen4 eral Services such services as the Administrator is

5 authorized to provide to other agencies of the United

6 States, on the same basis as those services are pro7 vided to other agencies of the United States;

8 (10) may use, with the consent of the United

9 States and the agency, government, or international

10 organization concerned, the services, records, facili11 ties, or personnel of any State or local government

12 agency or instrumentality or foreign government or

13 international organization to perform functions on

14 its behalf;

15 (11) may determine the character of, and the

16 necessity for, its obligations and expenditures and

17 the manner in which they shall be incurred, allowed,

18 and paid, subject to the provisions of title 35 United

19 States Code, the Act of July 5, 1946 (commonly re20 ferred to as the Trademark Act of 1946), and the

21 Act of October 19, 1976 (commonly referred to as

22 the Copyright Act of 1976);

23 (12) may retain and use all of its revenues and

24 receipts, including revenues from the sale, lease, or

25 disposal of any real, personal, or mixed property, or
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1 any interest therein, of the Organization, including

2 for research and development and capital invest3 ment;

4 (13) shall have the priority of the United States

5 with respect to the payment of debts from bankrupt,

6 insolvent, and decedents’ estates;

7 (14) may accept monetary gifts or donations of

8 services, or of real, personal, or mixed property, in

9 order to carry out the functions of the Organization;

10 (15) may execute, in accordance with its by11 laws, rules, and regulations, all instruments nec12 essary and appropriate in the exercise of any of its

13 powers;

14 (16) may provide for liability insurance and in15 surance against any loss in connection with its prop16 erty, other assets, or operations either by contract or

17 by self-insurance; and

18 (17) shall pay any settlement or judgment en19 tered against it from the funds of the Organization

20 and not from amounts available under section 1304

21 of title 31, United States Code.

22 (d) REPEAL OF SURCHARGE RESTRICTIONS.—Sec23 tion 10101 of the Omnibus Budget Reconciliation Act of

24 1990 (35 U.S.C. 41 note) is repealed.
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1 SEC. 113. ORGANIZATION AND MANAGEMENT.

2 (a) OFFICES.—The United States Intellectual Prop3 erty Organization shall consist of—

4 (1) the United States Patent Office;

5 (2) the United States Trademark Office; and

6 (3) the United States Copyright Office.

7 (b) COMMISSIONER.—

8 (1) IN GENERAL.—The management of the

9 United States Intellectual Property Organization

10 shall be vested in a Commissioner of Intellectual

11 Property (hereafter in this title referred to as the

12 ‘‘Commissioner’’), who shall be a citizen of the Unit13 ed States and who shall be appointed by the Presi14 dent, by and with the advice and consent of the Sen15 ate. The Commissioner shall be a person who, by

16 reason of professional background and experience in

17 patent, trademark, or copyright law, is especially

18 qualified to manage the Organization.

19 (2) DUTIES.—(A) The Commissioner shall be

20 responsible for the Management and direction of the

21 Organization and shall perform this duty in a fair,

22 impartial, and equitable manner.

23 (B) The Commissioner shall advise the Presi24 dent, through the Secretary of Commerce, of all ac25 tivities of the office undertaken in response to obli26 gations of the United States under treaties and exec-
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1 utive agreements, or which relate to cooperative pro2 grams with those authorities of foreign governments

3 that are responsible for granting patents, registering

4 trademarks or copyrights, or other intellectual prop5 erty rights. The Commissioner shall be the principal

6 advisor to the President, through the Secretary of

7 Commerce, on policy matters relating to intellectual

8 property rights, and shall recommend to the Presi9 dent, through the Secretary of Commerce, changes

10 in law or policy which may improve the ability of

11 United States citizens to secure and enforce patent

12 rights, trademark rights, copyrights, or other intel13 lectual property rights in the United States or in

14 foreign countries.

15 (C) At the direction of the President, the Com16 missioner may represent the United States in inter17 national negotiations on matters of intellectual prop18 erty, or may designate an officer or officers of the

19 Organization to participate in such negotiations.

20 (D) The Commissioner, in consultation with the

21 Director of the Office of Personnel Management,

22 shall maintain a program for identifying national se23 curity positions and providing for appropriate secu24 rity clearances.
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1 (E) Except as otherwise provided in this title,

2 the Commissioner shall ensure that—

3 (i) the United States Patent Office, the

4 United States Trademark Office, and the Unit5 ed States Copyright Office, respectively, shall—

6 (I) prepare all appropriation requests

7 under section 1108 of title 31, United

8 States Code, for each office for submission

9 by the Commissioner;

10 (II) adjust fees to provide sufficient

11 revenues to cover the expenses of such of12 fice; and

13 (III) expend funds derived from such

14 fees for only the functions of such office;

15 and

16 (ii) each such office is not involved in the

17 management of any other office.

18 (3) OATH.—The Commissioner shall, before

19 taking office, take an oath to discharge faithfully the

20 duties of the Organization.

21 (4) COMPENSATION.—The Commissioner shall

22 receive compensation at the rate of pay in effect for

23 level II of the Executive Schedule under section

24 5313 of title 5, United States Code.
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1 (5) REMOVAL.—The Commissioner shall serve

2 at the pleasure of the President.

3 (6) DESIGNEE OF COMMISSIONER.—The Com4 missioner shall designate an officer of the Organiza5 tion who shall be vested with the authority to act in

6 the capacity of the Commissioner in the event of the

7 absence or incapacity of the Commissioner.

8 (c) OFFICERS AND EMPLOYEES OF THE OFFICE.—

9 (1) COMMISSIONERS OF PATENTS, TRADE10 MARKS, AND COPYRIGHTS.—The Commissioner shall

11 appoint a Commissioner of Patents, a Commissioner

12 of Trademarks, and a Commissioner of Copyrights

13 under section 3 of title 35, United States Code, sec14 tion 53 of the Act of July 5, 1946 (commonly re15 ferred to as the Trademark Act of 1946), and sec16 tion 701 of title 17, United States Code, respec17 tively, as amended by this Act. The Commissioner of

18 Patents, the Commissioner of Trademarks, and the

19 Commissioner of Copyrights shall be the principal

20 policy advisors to the Commissioner of Intellectual

21 Property.

22 (2) OTHER OFFICERS AND EMPLOYEES.—The

23 Commissioner shall—

24 (A) appoint an Inspector General and such

25 other officers, employees (including attorneys),
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1 and agents of the Organization as the Commis2 sioner considers necessary to carry out its func3 tions;

4 (B) fix the compensation of such officers

5 and employees, except as provided in subsection

6 (e); and

7 (C) define the authority and duties of such

8 officers and employees and delegate to them

9 such of the powers vested in the Organization

10 as the Commissioner may determine.

11 (3) PERSONNEL LIMITATIONS.—The Organiza12 tion shall not be subject to any administratively or

13 statutorily imposed limitation on positions or person14 nel, and no positions or personnel of the Organiza15 tion shall be taken into account for purposes of ap16 plying any such limitation.

17 (d) LIMITS ON COMPENSATION.—Except as other18 wise provided by law, the annual rate of basic pay of an

19 officer or employee of the Organization may not be fixed

20 at a rate that exceeds, and total compensation payable to

21 any such officer or employee for any year may not exceed,

22 the annual rate of basic pay in effect for the Commissioner

23 of the year involved. The Commissioner shall prescribe

24 such regulations as may be necessary to carry out this

25 subsection.
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1 (e) APPLICABILITY OF TITLE 5, UNITED STATES

2 CODE, GENERALLY.—Except as otherwise provided in this

3 section, officers and employees of the Organization shall

4 be subject to the provisions of title 5, United States Code,

5 relating to Federal employees.

6 (f) TITLE 5, UNITED STATES CODE, EXCLUSIONS.—

7 The following provisions of title 5, United States Code,

8 shall not apply to the Organization or its officers and em9 ployees:

10 (1) Chapter 31 (relating to authority for em11 ployment).

12 (2) Chapter 33 (relating to examination, selec13 tion, and placement), except that the provisions re14 lating to a preference eligible shall apply to the Or15 ganization and its employees.

16 (3) Chapter 35 (relating to retention pref17 erence, restoration, and reemployment).

18 (4) Chapter 43 (relating to performance ap19 praisal).

20 (5) Chapter 45 (relating to incentive awards).

21 (6) Chapter 51 (relating to classification).

22 (7) Subchapter III of chapter 53 (relating to

23 General Schedule pay rates).

24 (g) PROVISIONS OF TITLE 5, UNITED STATES CODE,

25 RELATING TO CERTAIN BENEFITS.—
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1 (1) IN GENERAL.—Except as provided in para2 graph (2), officers and employees of the Organiza3 tion shall remain subject to chapters 83 (relating to

4 the Civil Service Retirement System), 84 (relating to

5 the Federal Employees’ Retirement System), 87 (re6 lating to life insurance), and 89 (relating to health

7 insurance) of title 5, United States Code.

8 (2) EXCEPTION.—The Organization may, with

9 respect to officers and employees of the Organiza10 tion, by regulation—

11 (A) provide for benefits to supplement the

12 benefits otherwise provided under such chapter

13 83 or 84, as the case may be; or

14 (B) change the benefits provided under

15 such chapter 87 or 89, so long as the changes

16 do not result in benefits under either chapter

17 becoming, on the whole, less favorable than the

18 benefits which would then otherwise be available

19 under such chapter had such changes not been

20 made.

21 (h) LABOR-MANAGEMENT RELATIONS.—Chapter 71

22 of title 5, United States Code (relating to labor-manage23 ment relations), shall apply with respect to the Organiza24 tion and its employees, except that—
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1 (1) the Organization shall not bargain over the

2 establishment, implementation, amendment, or re3 peal of—

4 (A) any system of classification of employ5 ees;

6 (B) any compensation system, including

7 wages and compensation based on performance,

8 and contributions of the Organization to the re9 tirement and benefits programs; or

10 (C) any system to determine qualifications

11 and procedures for employment; and

12 (2) in any other matter, the Organization may

13 negotiate only with respect to—

14 (A) procedures which management officials

15 of the Organization observe in exercising any

16 authority under section 7106 of title 5, United

17 States Code; and

18 (B) appropriate arrangements for employ19 ees adversely affected by the exercise of any au20 thority under section 7106 of title 5, United

21 States Code.

22 (i) CARRYOVER OF PERSONNEL.—

23 (1) FROM PTO OR THE COPYRIGHT OFFICE.—

24 Effective as of the effective date of this title, all offi25 cers and employees of the Patent and Trademark
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1 Office or the Copyright Office on the day before

2 such effective date shall become officers and employ3 ees of the Organization, without a break in service.

4 (2) OTHER PERSONNEL.—(A) Any individual

5 who, on the day before the effective date of this title,

6 is an officer or employee of the Department of Com7 merce (other than an officer or employee under

8 paragraph (1)) shall be transferred to the Organiza9 tion if—

10 (i) such individual serves in a position for

11 which a major function is the performance of

12 work reimbursed by the Patent and Trademark

13 Office, as determined by the Secretary of Com14 merce;

15 (ii) such individual serves in a position

16 that performed work in support of the Patent

17 and Trademark Office during at least half of

18 the incumbent’s work time, as determined by

19 the Secretary of Commerce; or

20 (iii) such transfer would be in the interest

21 of the Organization, as determined by the Sec22 retary of Commerce in consultation with the

23 Commissioner.

24 (B) Any transfer under this paragraph shall be

25 effective as of the same effective date as referred to
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1 in paragraph (1), and shall be made without a break

2 in service.

3 (3) ACCUMULATED LEAVE.—The amount of

4 sick and annual leave and compensatory time accu5 mulated under title 5, United States Code, before

6 the effective date described in paragraph (1), by any

7 individual who becomes an officer or employee of the

8 Organization under this subsection, are obligations

9 of the Organization.

10 (4) TERMINATION RIGHTS.—Any employee re11 ferred to in paragraph (1) or (2) of this subsection

12 whose employment with the Organization is termi13 nated during the 1-year period beginning on the ef14 fective date of this title shall be entitled to rights

15 and benefits, to be afforded by the Organization,

16 similar to those such employee would have had

17 under Federal law if termination had occurred im18 mediately before such date. An employee who would

19 have been entitled to appeal any such termination to

20 the Merit Systems Protection Board, if such termi21 nation had occurred immediately before such effec22 tive date, may appeal any such termination occur23 ring within such 1-year period to the Board under

24 such procedures as it may prescribe.
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1 (5) CONTINUATION IN OFFICE OF CERTAIN OF2 FICERS.—(A) The individual serving as the Commis3 sioner of Patents and Trademarks on the day before

4 the effective date of this title shall serve as the Com5 missioner of Intellectual Property until replaced

6 under section 113(b)(5).

7 (B) The individual serving as the Assistant

8 Commissioner of Patents on the day before the ef9 fective date of this title shall serve as the Commis10 sioner of Patents until the date on which a Commis11 sioner of Patents is appointed under section 3 of

12 title 35, United States Code, as amended by this

13 Act.

14 (C) The individual serving as the Assistant

15 Commissioner of Trademarks on the day before the

16 effective date of this title shall serve as the Commis17 sioner of Trademarks until the date on which a

18 Commissioner of Trademarks is appointed under

19 section 53 of the Act of July 5, 1946 (commonly re20 ferred to as the Trademark Act of 1946), as amend21 ed by this Act.

22 (D) The individual serving as the Register of

23 Copyrights on the day before the effective date of

24 this title shall serve as the Commissioner of Copy25 rights until the date on which a Commissioner of
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1 Copyrights is appointed under section 701 of title

2 17, United States Code, as amended by this Act.

3 (j) COMPETITIVE STATUS.—For purposes of appoint4 ment to a position in the competitive service for which an

5 officer or employee of the Organization is qualified, such

6 officer or employee shall not forfeit any competitive status,

7 acquired by such officer or employee before the effective

8 date of this title, by reason of becoming an officer or em9 ployee of the Organization under subsection (h).

10 (k) SAVINGS PROVISIONS.—Compensation, benefits,

11 and other terms and conditions of employment in effect

12 immediately before the effective date of this title, whether

13 provided by statute or by rules and regulations of the

14 former Patent and Trademark Office, the former Copy15 right Office, or the executive branch of the Government

16 of the United States, shall continue to apply to officers

17 and employees of the Organization, until changed in ac18 cordance with this section (whether by action of the Com19 missioner or otherwise).

20 (l) REMOVAL OF QUASI-JUDICIAL EXAMINERS.—The

21 Organization may remove a patent examiner or examiner22 in-chief, or a trademark examiner or member of a Trade23 mark Trial and Appeal Board only for such cause as will

24 promote the efficiency of the Office.
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1 SEC. 114. UNITED STATES PATENT OFFICE.

2 (a) ESTABLISHMENT OF THE PATENT OFFICE AS A

3 SEPARATE ADMINISTRATIVE UNIT.—Section 1 of title 35,

4 United States Code, is amended to read as follows:

5 ‘‘§ 1. Establishment

6 ‘‘(a) ESTABLISHMENT.—The United States Patent

7 Office is established as a separate administrative unit of

8 the United States Intellectual Property Organization,

9 where records, books, drawings, specifications, and other

10 papers and things pertaining to patents shall be kept and

11 preserved, except as otherwise provided by law.

12 ‘‘(b) REFERENCE.—For purposes of this title, the

13 United States Patent Office shall also be referred to as

14 the ‘Office’ and the ‘Patent Office’.’’.

15 (b) POWERS AND DUTIES.—Section 2 of title 35,

16 United States Code, is amended to read as follows:

17 ‘‘§ 2. Powers and duties

18 ‘‘The United States Patent Office shall be responsible

19 for—

20 ‘‘(1) granting and issuing patents;

21 ‘‘(2) conducting studies, programs, or ex22 changes of items or services regarding domestic and

23 international patent law, the administration of the

24 Office, or any other function vested in the Office by

25 law, including programs to recognize, identify, as-
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1 sess, and forecast the technology of patented inven2 tions and their utility to industry;

3 ‘‘(3) authorizing or conducting studies and pro4 grams cooperatively with foreign patent offices and

5 international organizations, in connection with the

6 granting and issuing of patents; and

7 ‘‘(4) disseminating to the public information

8 with respect to patents.’’.

9 (c) ORGANIZATION AND MANAGEMENT.—Section 3 of

10 title 35, United States Code, is amended to read as fol11 lows:

12 ‘‘§ 3. Officers and employees

13 ‘‘(a) COMMISSIONER.—

14 ‘‘(1) IN GENERAL.—The management of the

15 United States Patent Office shall be vested in a

16 Commissioner of Patents (hereafter in this title re17 ferred to as the ‘Commissioner’), who shall be a citi18 zen of the United States and who shall be appointed

19 by the Commissioner of Intellectual Property and

20 shall serve at the pleasure of the Commissioner of

21 Intellectual Property. The Commissioner of Patents

22 shall be a person who, by reason of professional

23 background and experience in patent law, is espe24 cially qualified to manage the Office.

25 ‘‘(2) DUTIES.—
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1 ‘‘(A) IN GENERAL.—The Commissioner

2 shall be responsible for all aspects of the man3 agement, administration, and operation of the

4 Office, including the issuance of patents, and

5 shall perform these duties in a fair, impartial,

6 and equitable manner.

7 ‘‘(B) ADVISING THE COMMISSIONER OF IN8 TELLECTUAL PROPERTY.—The Commissioner

9 of Patents shall advise the Commissioner of In10 tellectual Property of all activities of the Office

11 undertaken in response to obligations of the

12 United States under treaties and executive

13 agreements, or which relate to cooperative pro14 grams with those authorities of foreign govern15 ments that are responsible for granting patents.

16 The Commissioner of Patents shall be the prin17 cipal advisor to the Commissioner of Intellec18 tual Property on matters of patent law and

19 shall recommend to the Commissioner of Intel20 lectual Property changes in law or policy which

21 may improve the ability of United States citi22 zens to secure and enforce patent rights in the

23 United States or in foreign countries.

24 ‘‘(C) CONSULTATION WITH THE MANAGE25 MENT ADVISORY BOARD.—The Commissioner
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1 shall consult with the Management Advisory

2 Board established in section 5 on a regular

3 basis on matters relating to the operation of the

4 Office, and shall consult with the Board before

5 submitting budgetary proposals to the Office of

6 Management and Budget or changing or pro7 posing to change patent user fees or patent reg8 ulations.

9 ‘‘(3) OATH.—The Commissioner shall, before

10 taking office, take an oath to discharge faithfully the

11 duties of the Office.

12 ‘‘(4) COMPENSATION.—The Commissioner shall

13 receive compensation at the rate of pay in effect for

14 level III of the Executive Schedule under section

15 5313 of title 5.

16 ‘‘(b) OFFICERS AND EMPLOYEES.—The Commis17 sioner shall appoint a Deputy Commissioner of Patents

18 who shall be vested with the authority to act in the capac19 ity of the Commissioner in the event of the absence or

20 incapacity of the Commissioner. In the event of a vacancy

21 in the Office of Commissioner, the Deputy Commissioner

22 shall fill the office of Commissioner until a new Commis23 sioner is appointed and takes office. Other officers, attor24 neys, employees, and agents shall be selected and ap25 pointed by the Commissioner, and shall be vested with
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1 such powers and duties as the Commissioner may deter2 mine.’’.

3 (d) MANAGEMENT ADVISORY BOARD.—Chapter 1 of

4 part I of title 35, United States Code, is amended by in5 serting after section 4 the following:

6 ‘‘§ 5. Patent Office Management Advisory Board

7 ‘‘(a) ESTABLISHMENT OF MANAGEMENT ADVISORY

8 BOARD.—

9 ‘‘(1) APPOINTMENT.—The United States Pat10 ent Office shall have a Management Advisory Board

11 (hereafter in this title referred to as the ‘Board’) of

12 5 members, who shall be appointed by the President

13 and shall serve at the pleasure of the President. Not

14 more than 3 of the 5 members shall be members of

15 the same political party.

16 ‘‘(2) CHAIR.—The President shall designate a

17 Chair of the Board, whose term as chair shall be for

18 3 years.

19 ‘‘(3) TIMING OF APPOINTMENTS.—Initial ap20 pointments to the Board shall be made within 3

21 months after the effective date of the United States

22 Intellectual Property Organization Act of 1996. Va23 cancies shall be filled in the manner in which the

24 original appointment was made under this sub25 section within 3 months after they occur.
27

•S 1961 IS

1 ‘‘(b) BASIS FOR APPOINTMENTS.—Members of the

2 Board shall be citizens of the United States who shall be

3 chosen so as to represent the interests of diverse users

4 of the United States Patent Office, and shall include indi5 viduals with substantial background and achievement in

6 corporate finance and management.

7 ‘‘(c) APPLICABILITY OF CERTAIN ETHICS LAWS.—

8 Members of the Board shall be special Government em9 ployees within the meaning of section 202 of title 18.

10 ‘‘(d) MEETINGS.—The Board shall meet at the call

11 of the Chair to consider an agenda set by the Chair.

12 ‘‘(e) DUTIES.—The Board shall—

13 ‘‘(1) review the policies, goals, performance,

14 budget, and user fees of the United States Patent

15 Office, and advise the Commissioner on these mat16 ters; and

17 ‘‘(2) within 60 days after the end of each fiscal

18 year—

19 ‘‘(A) prepare an annual report on the mat20 ters referred to in paragraph (1);

21 ‘‘(B) transmit the report to the Commis22 sioner of Intellectual Property, the President,

23 and the Committees on the Judiciary of the

24 Senate and the House of Representatives; and
28

•S 1961 IS

1 ‘‘(C) publish the report in the Patent Of2 fice Official Gazette.

3 ‘‘(f) COMPENSATION.—Each member of the Board

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

5 during which such member is attending meetings or con6 ferences of the Board or otherwise engaged in the business

7 of the Board, at the rate which is the daily equivalent of

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

9 Executive Schedule under section 5314 of title 5, and

10 while away from such member’s home or regular place of

11 business such member may be allowed travel expenses, in12 cluding per diem in lieu of subsistence, as authorized by

13 section 5703 of title 5.

14 ‘‘(g) ACCESS TO INFORMATION.—Members of the

15 Board shall be provided access to records and information

16 in the United States Patent Office, except for personnel

17 or other privileged information and information concern18 ing patent applications required to be kept in confidence

19 by section 122.’’.

20 (e) CONFORMING AMENDMENTS.—Section 6 of title

21 35, United States Code, and the item relating to such sec22 tion in the table of contents for chapter 1 of title 35, Unit23 ed States Code, are repealed.
29

•S 1961 IS

1 (f) BOARD OF PATENT APPEALS AND INTER2 FERENCES.—Section 7 of title 35, United States Code, is

3 amended to read as follows:

4 ‘‘§ 7. Board of Patent Appeals and Interferences

5 ‘‘(a) ESTABLISHMENT AND COMPOSITION.—There

6 shall be in the United States Patent Office a Board of

7 Patent Appeals and Interferences. The Commissioner, the

8 Deputy Commissioner, and the examiners-in-chief shall

9 constitute the Board. The examiners-in-chief shall be per10 sons of competent legal knowledge and scientific ability.

11 ‘‘(b) DUTIES.—

12 ‘‘(1) IN GENERAL.—The Board of Patent Ap13 peals and Interferences shall, on written appeal of

14 an applicant, a patent owner, or a third-party re15 quester in a reexamination proceeding—

16 ‘‘(A) review adverse decisions of examin17 ers—

18 ‘‘(i) upon applications for patents; and

19 ‘‘(ii) in reexamination proceedings;

20 and

21 ‘‘(B) determine priority and patentability

22 of invention in interferences declared under sec23 tion 135(a).

24 ‘‘(2) HEARINGS.—Each appeal and interference

25 shall be heard by at least 3 members of the Board,
30

•S 1961 IS

1 who shall be designated by the Commissioner of Pat2 ents. Only the Board of Patent Appeals and Inter3 ferences may grant rehearings.’’.

4 (g) ANNUAL REPORT OF COMMISSIONER.—Section

5 14 of title 35, United States Code, is amended to read

6 as follows:

7 ‘‘§ 14. Annual report to Congress

8 ‘‘(a) IN GENERAL.—Not later than 180 days after

9 the end of each fiscal year, the Commissioner shall report

10 to the Commissioner of Intellectual Property and to the

11 Congress on—

12 ‘‘(1) the total of the moneys received and ex13 pended by the Office;

14 ‘‘(2) the purposes for which the moneys were

15 spent;

16 ‘‘(3) the quality and quantity of the work of the

17 Office; and

18 ‘‘(4) other information relating to the Office.

19 ‘‘(b) ADDITIONAL REQUIREMENTS.—The report

20 under this section shall also meet the requirements of sec21 tion 9106 of title 31, to the extent that such requirements

22 are not inconsistent with subsection (a).’’.

23 (h) PRACTICE BEFORE PATENT OFFICE.—

24 (1) IN GENERAL.—Section 31 of title 35, Unit25 ed States Code, is amended to read as follows:
31

•S 1961 IS

1 ‘‘§ 31. Regulations for agents and attorneys

2 ‘‘The Commissioner may prescribe regulations gov3 erning the recognition and conduct of agents, attorneys,

4 or other persons representing applicants or other parties

5 before the Office. The regulations may require such per6 sons, before being recognized as representatives of appli7 cants or other persons, to show that they are of good

8 moral character and reputation and are possessed of the

9 necessary qualifications to render to applicants or other

10 persons valuable service, advice, and assistance in the

11 presentation or prosecution of their applications or other

12 business before the Office.’’.

13 (2) DESIGNATION OF ATTORNEY TO CONDUCT

14 HEARING.—Section 32 of title 35, United States

15 Code, is amended in the first sentence by deleting

16 ‘‘Patent and Trademark Office’’ and inserting ‘‘Pat17 ent Office’’ and by inserting before the last sentence

18 the following: ‘‘The Commissioner shall have the dis19 cretion to designate any attorney who is an officer

20 or employee of the United States Patent Office to

21 conduct the hearing required by this section.’’.

22 (i) FUNDING.—

23 (1) ADJUSTMENT OF FEES.—Section 41(f) of

24 title 35, United States Code, is amended to read as

25 follows:
32

•S 1961 IS

1 ‘‘(f) The Commissioner, after consulting with the

2 Patent Office Management Advisory Board pursuant to

3 section 3(a)(2)(C) of this title, may, by regulation, adjust

4 the fees established in this section.’’.

5 (2) PATENT OFFICE FUNDING.—Section 42 of

6 title 35, United States Code, is amended to read as

7 follows:

8 ‘‘§ 42. Patent Office funding

9 ‘‘(a) FEES PAYABLE TO THE OFFICE.—All fees for

10 services performed by or materials furnished by the Unit11 ed States Patent Office shall be payable to the Office.

12 ‘‘(b) USE OF MONEYS.—Moneys of the United States

13 Patent Office not otherwise used to carry out the functions

14 of the Office shall be kept in cash on hand or on deposit,

15 or invested in obligations of the United States or guaran16 teed by the United States, or in obligations or other in17 struments which are lawful investments for fiduciary,

18 trust, or public funds. Fees available to the Commissioner

19 of Patents under this title shall be used for the processing

20 of patent applications and for other services and materials

21 relating to patents.

22 ‘‘(c) CONTRIBUTION TO THE OFFICE OF THE COM23 MISSIONER OF INTELLECTUAL PROPERTY.—The Patent

24 Office shall contribute one-third of the annual budget of

25 the Office of the Commissioner of Intellectual Property.’’.
33

•S 1961 IS

1 SEC. 115. UNITED STATES TRADEMARK OFFICE.

2 (a) ESTABLISHMENT OF THE UNITED STATES

3 TRADEMARK OFFICE AS A SEPARATE ADMINISTRATIVE

4 UNIT.—The Act of July 5, 1946 (commonly referred to

5 as the Trademark Act of 1946) is amended—

6 (1) by redesignating titles X and XI as titles XI

7 and XII, respectively;

8 (2) by redesignating sections 45, 46, 47, 48,

9 49, 50, and 51 as sections 61, 71, 72, 73, 74, 75,

10 and 76, respectively; and

11 (3) by inserting after title IX the following new

12 title:

13 ‘‘TITLE X—UNITED STATES

14 TRADEMARK OFFICE

15 ‘‘SEC. 51. ESTABLISHMENT.

16 ‘‘(a) ESTABLISHMENT.—The United States Trade17 mark Office is established as a separate administrative

18 unit of the United States Intellectual Property Organiza19 tion.

20 ‘‘(b) REFERENCE.—For purposes of this chapter, the

21 United States Trademark Office shall also be referred to

22 as the ‘Office’ and the ‘Trademark Office’.

23 ‘‘SEC. 52. POWERS AND DUTIES.

24 ‘‘The United States Trademark Office shall be re25 sponsible for—

26 ‘‘(1) the registration of trademarks;
34

•S 1961 IS

1 ‘‘(2) conducting studies, programs, or ex2 changes of items or services regarding domestic and

3 international trademark law or the administration of

4 the Office;

5 ‘‘(3) authorizing or conducting studies and pro6 grams cooperatively with foreign trademark offices

7 and international organizations, in connection with

8 the registration of trademarks; and

9 ‘‘(4) disseminating to the public information

10 with respect to trademarks.

11 ‘‘SEC. 53. OFFICERS AND EMPLOYEES.

12 ‘‘(a) COMMISSIONER.—

13 ‘‘(1) IN GENERAL.—The management of the

14 United States Trademark Office shall be vested in a

15 Commissioner of Trademarks, who shall be a citizen

16 of the United States and who shall be appointed by

17 the Commissioner of Intellectual Property and shall

18 serve at the pleasure of the Commissioner of Intel19 lectual Property. The Commissioner of Trademarks

20 shall be a person who, by reason of professional

21 background and experience in trademark law, is es22 pecially qualified to manage the Office.

23 ‘‘(2) DUTIES.—

24 ‘‘(A) IN GENERAL.—The Commissioner

25 shall be responsible for all aspects of the man-
35

•S 1961 IS

1 agement, administration, and operation of the

2 Office, including the registration of trademarks,

3 and shall perform these duties in a fair, impar4 tial, and equitable manner.

5 ‘‘(B) ADVISING THE COMMISSIONER OF IN6 TELLECTUAL PROPERTY.—The Commissioner

7 of Trademarks shall advise the Commissioner of

8 Intellectual Property of all activities of the Of9 fice undertaken in response to obligations of the

10 United States under treaties and executive

11 agreements, or which relate to cooperative pro12 grams with those authorities of foreign govern13 ments that are responsible for registering trade14 marks. The Commissioner of Trademarks shall

15 be the principal advisor to the Commissioner of

16 Intellectual Property on matters of trademark

17 law and shall recommend to the Commissioner

18 of Intellectual Property changes in law or policy

19 which may improve the ability of United States

20 citizens to secure and enforce trademark rights

21 in the United States or in foreign countries.

22 ‘‘(C) CONSULTATION WITH THE MANAGE23 MENT ADVISORY BOARD.—The Commissioner

24 shall consult with the Trademark Office Man-
36

•S 1961 IS

1 agement Advisory Board established under sec2 tion 54—

3 ‘‘(i) on a regular basis on matters re4 lating to the operation of the Office; and

5 ‘‘(ii) before submitting budgetary pro6 posals to the Office of Management and

7 Budget or changing or proposing to change

8 trademark user fees or trademark regula9 tions.

10 ‘‘(D) PUBLICATIONS.—(i) The Commis11 sioner may print, or cause to be printed, the

12 following:

13 ‘‘(I) Certificates of trademark reg14 istrations, including statements and draw15 ings, together with copies of the same.

16 ‘‘(II) The Official Gazette of the Unit17 ed States Trademark Office.

18 ‘‘(III) Annual indexes of trademarks

19 and registrants.

20 ‘‘(IV) Annual volumes of decisions in

21 trademark cases.

22 ‘‘(V) Pamphlet copies of laws and

23 rules relating to trademarks and circulars

24 or other publications relating to the busi25 ness of the Office.
37

•S 1961 IS

1 ‘‘(ii) The Commissioner may exchange any

2 of the publications specified under clause (i) for

3 publications desirable for the use of the Trade4 mark Office.

5 ‘‘(3) OATH.—The Commissioner shall, before

6 taking office, take an oath to discharge faithfully the

7 duties of the Office.

8 ‘‘(4) COMPENSATION.—The Commissioner shall

9 receive compensation at the rate of pay in effect for

10 level III of the Executive Schedule under section

11 5313 of title 5, United States Code.

12 ‘‘(b) OFFICERS AND EMPLOYEES.—The Commis13 sioner shall appoint a Deputy Commissioner of Trade14 marks who shall be vested with the authority to act in

15 the capacity of the Commissioner in the event of the ab16 sence or incapacity of the Commissioner. In the event of

17 a vacancy in the office of Commissioner, the Deputy Com18 missioner shall fill the office of Commissioner until a new

19 Commissioner is appointed and takes office. Other offi20 cers, attorneys, employees, and agents shall be selected

21 and appointed by the Commissioner, and shall be vested

22 with such powers and duties as the Commission may de23 termine.
38

•S 1961 IS

1 ‘‘SEC. 54. TRADEMARK OFFICE MANAGEMENT ADVISORY

2 BOARD.

3 ‘‘(a) ESTABLISHMENT OF MANAGEMENT ADVISORY

4 BOARD.—

5 ‘‘(1) APPOINTMENT.—The United States

6 Trademark Office shall have a Management Advi7 sory Board (hereafter in this title referred to as the

8 ‘Board’) of 5 members, who shall be appointed by

9 the President and shall serve at the pleasure of the

10 President. Not more than 3 of the 5 members shall

11 be members of the same political party.

12 ‘‘(2) CHAIR.—The President shall designate a

13 Chair of the Board, whose term as chair shall be for

14 3 years.

15 ‘‘(3) TIMING OF APPOINTMENTS.—Initial ap16 pointments to the Board shall be made within 3

17 months after the effective date of the United States

18 Intellectual Property Organization Act of 1996. Va19 cancies shall be filled in the manner in which the

20 original appointment was made under this section

21 within 3 months after they occur.

22 ‘‘(b) BASIS FOR APPOINTMENTS.—Members of the

23 Board shall be citizens of the United States who shall be

24 chosen so as to represent the interests of diverse users

25 of the United States Trademark Office, and shall include
39

•S 1961 IS

1 individuals with substantial background and achievement

2 in corporate finance and management.

3 ‘‘(c) APPLICABILITY OF CERTAIN ETHICS LAWS.—

4 Members of the Board shall be special Government em5 ployees within the meaning of section 202 of title 18.

6 ‘‘(d) MEETINGS.—The Board shall meet at the call

7 of the Chair to consider an agenda set by the Chair.

8 ‘‘(e) DUTIES.—The Board shall—

9 ‘‘(1) review the policies, goals, performance,

10 budget, and user fees of the United States Trade11 mark Office, and advise the Commissioner on these

12 matters; and

13 ‘‘(2) within 60 days after the end of each fiscal

14 year—

15 ‘‘(A) prepare an annual report on the mat16 ters referred to under paragraph (1);

17 ‘‘(B) transmit the report to the Commis18 sioner of Intellectual Property, the President,

19 and the Committees on the Judiciary of the

20 Senate and the House of Representatives; and

21 ‘‘(C) publish the report in the Trademark

22 Office Official Gazette.

23 ‘‘(f) COMPENSATION.—Each member of the Board

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

25 during which such member is attending meetings or con-
40

•S 1961 IS

1 ferences of the Board or otherwise engaged in the business

2 of the Board, at the rate which is the daily equivalent of

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

4 Executive Schedule under section 5314 of title 5, United

5 States Code, and while away from such member’s home

6 or regular place of business such member may be allowed

7 travel expenses, including per diem in lieu of subsistence,

8 as authorized by section 5703 of title 5, United States

9 Code.

10 ‘‘(g) ACCESS TO INFORMATION.—Members of the

11 Board shall be provided access to records and information

12 in the United States Trademark Office, except for person13 nel or other privileged information.

14 ‘‘SEC. 55. ANNUAL REPORT TO CONGRESS.

15 ‘‘(a) IN GENERAL.—Not later than 180 days after

16 the end of each fiscal year, the Commissioner shall report

17 to the Commissioner of Intellectual Property and to the

18 Congress on—

19 ‘‘(1) the moneys received and expended by the

20 Office;

21 ‘‘(2) the purposes for which the moneys were

22 spent;

23 ‘‘(3) the quality and quantity of the work of the

24 Office; and

25 ‘‘(4) other information relating to the Office.
41

•S 1961 IS

1 ‘‘(b) ADDITIONAL REQUIREMENTS.—The report

2 under this section shall meet the requirements of section

3 9106 of title 31, United States Code, to the extent that

4 such requirements are not inconsistent with subsection

5 (a).

6 ‘‘SEC. 56. TRADEMARK OFFICE FUNDING.

7 ‘‘(a) FEES PAYABLE TO THE OFFICE.—All fees for

8 services performed by or materials furnished by the Unit9 ed States Trademark Office shall be payable to the Office.

10 ‘‘(b) USE OF MONEYS.—Moneys of the United States

11 Trademark Office not otherwise used to carry out the

12 functions of the Office shall be kept in cash on hand or

13 on deposit, or invested in obligations of the United States

14 or guaranteed by the United States, or in obligations or

15 other instruments which are lawful investments for fidu16 ciary, trust, or public funds. Fees available to the Commis17 sioner under this chapter shall be used for the registration

18 of trademarks and for other services and materials relat19 ing to trademarks.

20 ‘‘(c) CONTRIBUTION TO THE OFFICE OF THE COM21 MISSIONER OF INTELLECTUAL PROPERTY.—The Trade22 mark Office shall contribute one-third of the annual budg23 et of the Office of the Commissioner of Intellectual Prop24 erty.’’.
42

•S 1961 IS

1 (b) TRADEMARK TRIAL AND APPEAL BOARD.—Sec2 tion 17 of the Act of July 5, 1946 (commonly referred

3 to as the Trademark Act of 1946) (15 U.S.C. 1067) is

4 amended to read as follows:

5 ‘‘SEC. 17. (a) In every case of interference, opposition

6 to registration, application to register as a lawful concur7 rent user, or application to cancel the registration of a

8 mark, the Commissioner shall give notice to all parties and

9 shall direct a Trademark Trial and Appeal Board to deter10 mine and decide the respective rights of registration.

11 ‘‘(b) The Trademark Trial and Appeal Board shall

12 include the Commissioner, the Deputy Commissioner of

13 Trademarks, and members competent in trademark law

14 who are appointed by the Commissioner.’’.

15 (c) DETERMINATION OF FEES.—Section 31(a) of the

16 Act of July 5, 1946 (commonly referred to as the Trade17 mark Act of 1946) (15 U.S.C. 1067(a)) is amended by

18 striking the second and third sentences and inserting the

19 following: ‘‘Fees established under this subsection may be

20 adjusted by the Commissioner, after consulting with the

21 Trademark Office Management Advisory Board in accord22 ance with section 53(a)(2)(C) of this Act.’’.

23 SEC. 116. UNITED STATES COPYRIGHT OFFICE.

24 (a) ESTABLISHMENT OF THE COPYRIGHT OFFICE AS

25 A SEPARATE ADMINISTRATIVE UNIT.—Section 701 of
43

•S 1961 IS

1 title 17, United States Code, is amended to read as fol2 lows:

3 ‘‘§ 701. The Copyright Office: establishment, general

4 responsibilities, and organization

5 ‘‘(a) ESTABLISHMENT.—The United States Copy6 right Office is established as a separate administrative

7 unit of the United States Intellectual Property Organiza8 tion. For purposes of this title, the United States Patent

9 Office shall also be referred to as the ‘Office’ and the

10 ‘Copyright Office’.

11 ‘‘(b) COMMISSIONER.—

12 ‘‘(1) IN GENERAL.—The management of the

13 United States Copyright Office shall be vested in a

14 Commissioner of Copyrights, who shall be a citizen

15 of the United States and who shall be appointed by

16 the Commissioner of Intellectual Property and shall

17 serve at the pleasure of the Commissioner of Intel18 lectual Property. The Commissioner shall be a per19 son who, by reason of professional background and

20 experience in copyright law is especially qualified to

21 manage the Office.

22 ‘‘(2) DUTIES.—

23 ‘‘(A) IN GENERAL.—The Commissioner

24 shall be responsible for all aspects of the man25 agement, administration, and operation of the
44

•S 1961 IS

1 Office, including all administrative functions

2 and duties under this title, except as otherwise

3 specified.

4 ‘‘(B) ADVISING THE COMMISSIONER OF IN5 TELLECTUAL PROPERTY.—The Commissioner

6 of Copyrights shall advise the Commissioner of

7 Intellectual Property of all activities of the Of8 fice undertaken in response to obligations of the

9 United States under treaties and executive

10 agreements, or which relate to cooperative pro11 grams with those authorities of foreign govern12 ments that are responsible for the administra13 tion of the copyright laws of those countries.

14 The Commissioner of Copyrights shall be the

15 principal advisor to the Commissioner of Intel16 lectual Property on matters of copyright law

17 and shall recommend to the Commissioner of

18 Intellectual Property changes in law or policy

19 which may improve the ability of United States

20 citizens to secure and enforce copyrights in the

21 United States or in foreign countries.

22 ‘‘(C) CONSULTATION WITH THE MANAGE23 MENT ADVISORY BOARD.—The Commissioner

24 shall consult with the Management Advisory

25 Board established under section 711 on a regu-
45

•S 1961 IS

1 lar basis on matters relating to the operation of

2 the Office, and shall consult with the Board be3 fore submitting budgetary proposals to the Of4 fice of Management and Budget or changing or

5 proposing to change Copyright Office fees or

6 regulations.

7 ‘‘(3) OATH.—The Commissioner shall, before

8 taking office, take an oath to discharge faithfully the

9 duties of the Office.

10 ‘‘(4) COMPENSATION.—The Commissioner shall

11 receive compensation at the rate of pay in effect for

12 level III of the Executive Schedule under section

13 5313 of title 5.

14 ‘‘(c) OFFICERS AND EMPLOYEES.—The Commis15 sioner shall appoint a Deputy Commissioner of Copyrights

16 who shall be vested with the authority to act in the capac17 ity of the Commissioner in the event of the absence or

18 incapacity of the Commissioner. In the event of a vacancy

19 in the office of Commissioner, the Deputy Commissioner

20 shall fill the office of Commissioner until a new Commis21 sioner is appointed and takes office. Other officers, attor22 neys, employees, and agents shall be selected and ap23 pointed by the Commissioner, and shall be vested with

24 such powers and duties as the Commissioner may deter25 mine.
46

•S 1961 IS

1 ‘‘(d) ANNUAL REPORT TO CONGRESS.—

2 ‘‘(1) IN GENERAL.—Not later than 180 days

3 after the end of each fiscal year, the Commissioner

4 shall make an annual report to the Commissioner of

5 Intellectual Property and to the Congress on—

6 ‘‘(A) the moneys received and expended by

7 the Office;

8 ‘‘(B) the purposes for which the moneys

9 were spent;

10 ‘‘(C) the quality and quantity of the work

11 of the Office; and

12 ‘‘(D) other information relating to the Of13 fice.

14 ‘‘(2) ADDITIONAL REQUIREMENTS.—The report

15 under this section shall also meet the requirements

16 of section 9106 of title 31, to the extent that such

17 requirements are not inconsistent with paragraph

18 (1).’’.

19 (b) COPYRIGHT OFFICE REGULATIONS.—Section 702

20 of title 17, United States Code, is amended to read as

21 follows:

22 ‘‘§ 702. Copyright Office regulations

23 ‘‘The Commissioner of Copyrights is authorized to es24 tablish regulations not inconsistent with law for the ad-
47

•S 1961 IS

1 ministration of the functions and duties made the respon2 sibility of the Commissioner under this title.’’.

3 (c) COPYRIGHT OFFICE FEES.—Section 708 of title

4 17, United States Code, is amended to read as follows:

5 ‘‘§ 708. Copyright Office funding

6 ‘‘(a) COPYRIGHT OFFICE FEES.—The following fees

7 shall be payable to the Copyright Office—

8 ‘‘(1) on filing each application under section

9 408 for registration of a copyright claim or for a

10 supplementary registration, including the issuance of

11 a certificate of registration if registration is made,

12 $20;

13 ‘‘(2) on filing each application for registration

14 of a claim for renewal of a subsisting copyright

15 under section 304(a), including the issuance of a

16 certificate of registration if registration is made,

17 $20;

18 ‘‘(3) for the issuance of a receipt for a deposit

19 under section 407, $4;

20 ‘‘(4) for the recordation, as provided by section

21 205, of a transfer of copyright ownership or other

22 document covering not more than one title, $20; for

23 additional titles, $10 for each group of not more

24 than 10 titles;
48

•S 1961 IS

1 ‘‘(5) for the filing, under section 115(b), of a

2 notice of intention to obtain a compulsory license,

3 $12;

4 ‘‘(6) for the recordation, under section 302(c),

5 of a statement revealing the identity of an author of

6 an anonymous or pseudonymous work, or for the

7 recordation, under section 302(d), of a statement re8 lating to the death of an author, $20 for a document

9 covering not more than one title; for each additional

10 title, $2;

11 ‘‘(7) for the issuance, under section 706, of an

12 additional certificate of registration, $8;

13 ‘‘(8) for the issuance of any other certification,

14 $20 for each hour or fraction of an hour consumed

15 with respect thereto;

16 ‘‘(9) for the making and reporting of a search

17 as provided by section 705, and for any related serv18 ices, $20 for each hour or fraction of an hour

19 consumed with respect thereto; and

20 ‘‘(10) for any other special services requiring a

21 substantial amount of time or expense, such fees as

22 the Commissioner may fix on the basis of the cost

23 of providing the service.

24 ‘‘(b) FEES ON BASIS OF PREPARATION COSTS.—The

25 Commissioner is authorized to fix the fees for preparing
49

•S 1961 IS

1 copies of Copyright Office records, whether or not such

2 copies are certified, on the basis of the cost of such prepa3 ration.

4 ‘‘(c) APPLICABILITY OF FEES TO THE GOVERN5 MENT.—The fees prescribed by or under this section are

6 applicable to the United States Government and any of

7 its agencies, employees, or officers, but the Commissioner

8 has discretion to waive the requirement of this subsection

9 in occasional or isolated cases involving relatively small

10 amounts.

11 ‘‘(d) DETERMINATION OF FEES.—The Commissioner

12 of Copyrights, after consulting with the Management Ad13 visory Board in accordance with section 701(b)(2)(C),

14 may, by regulation, adjust the fees specified under sub15 section (a).

16 ‘‘(e) USE OF MONEYS.—Moneys of the United States

17 Copyright Office not otherwise used to carry out the func18 tions of the Office shall be kept in cash on hand or on

19 deposit, or invested in obligations of the United States or

20 guaranteed by the United States, or in obligations or other

21 instruments which are lawful investments for fiduciary,

22 trust, or public funds. Fees available to the Commissioner

23 under this title shall be used for the registration of copy24 rights and for other services and materials relating to

25 copyrights.
50

•S 1961 IS

1 ‘‘(f) CONTRIBUTION TO OFFICE OF THE COMMIS2 SIONER OF INTELLECTUAL PROPERTY.—The Copyright

3 Office shall contribute one-third of the annual budget of

4 the Office of the Commissioner of Intellectual Property.’’.

5 (d) COPYRIGHT OFFICE MANAGEMENT ADVISORY

6 BOARD.—Chapter 7 of title 17, United States Code, is

7 amended by adding after section 710 the following new

8 section:

9 ‘‘§ 711. Copyright Office Management Advisory Board

10 ‘‘(a) ESTABLISHMENT OF MANAGEMENT ADVISORY

11 BOARD.—

12 ‘‘(1) APPOINTMENT.—The United States Copy13 right Office shall have a Management Advisory

14 Board (hereafter in this title referred to as the

15 ‘Board’) of 5 members, including the Librarian of

16 Congress and 4 additional members who shall be ap17 pointed by the President and shall serve at the

18 pleasure of the President. Not more than 3 of the

19 5 members shall be members of the same political

20 party.

21 ‘‘(2) CHAIR.—The President shall designate a

22 chair of the Board, whose term as chair shall be for

23 3 years.

24 ‘‘(3) TIMING OF APPOINTMENTS.—Initial ap25 pointments to the Board shall be made within 3
51

•S 1961 IS

1 months after the effective date of the United States

2 Intellectual Property Organization Act of 1996. Va3 cancies shall be filled in the manner in which the

4 original appointment was made under this sub5 section within 3 months after they occur.

6 ‘‘(b) BASIS FOR APPOINTMENTS.—Members of the

7 Board shall be citizens of the United States chosen to rep8 resent the interests of diverse users of the United States

9 Copyright Office, and shall include individuals with sub10 stantial background and achievement in corporate finance

11 and management.

12 ‘‘(c) APPLICABILITY OF CERTAIN ETHICS LAWS.—

13 Members of the Board shall be special Government em14 ployees within the meaning of section 202 of title 18.

15 ‘‘(d) MEETINGS.—The Board shall meet at the call

16 of the chair to consider an agenda set by the chair.

17 ‘‘(e) DUTIES.—The Board shall—

18 ‘‘(1) review the policies, goals, performance,

19 budget, and fees of the United States Copyright Of20 fice, and advise the Commissioner on these matters;

21 and

22 ‘‘(2) within 60 days after the end of each fiscal

23 year—

24 ‘‘(A) prepare an annual report on the mat25 ters referred to in paragraph (1);
52

•S 1961 IS

1 ‘‘(B) transmit the report to the Commis2 sioner of Intellectual Property, the President,

3 and the Committees on the Judiciary of the

4 Senate and the House of Representatives; and

5 ‘‘(C) publish the report in the Federal

6 Register.

7 ‘‘(f) COMPENSATION.—Each member of the Board

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

9 during which such member is attending meetings or con10 ferences of the Board or otherwise engaged in the business

11 of the Board, at the rate which is the daily equivalent of

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

13 Executive Schedule under section 5314 of title 5, and

14 while away from such member’s home or regular place of

15 business such member may be allowed travel expenses, in16 cluding per diem in lieu of subsistence, as authorized by

17 section 5703 of title 5.

18 ‘‘(g) ACCESS TO INFORMATION.—Members of the

19 Board shall be provided access to records and information

20 in the United States Copyright Office, except for person21 nel or other privileged information.’’.

22 (e) USE OF ADMINISTRATIVE LAW JUDGES FOR

23 COPYRIGHT ROYALTY DISPUTES.—

24 (1) IN GENERAL.—Section 801 of title 17,

25 United States Code, is amended—
53

•S 1961 IS

1 (A) by amending the section heading to

2 read as follows:

3 ‘‘§ 801. Copyright royalty disputes’’;

4 (B) by amending subsection (a) to read as

5 follows:

6 ‘‘(a) IN GENERAL.—The Commissioner may employ

7 administrative law judges to conduct proceedings and

8 make determinations in accordance with this chapter.’’;

9 (C) in subsection (b)—

10 (i) in the matter preceding paragraph

11 (1) by striking ‘‘copyright arbitration roy12 alty panels’’ and inserting ‘‘proceedings

13 conducted by administrative law judges’’;

14 (ii) in paragraph (2)(A) in the second

15 sentence by striking ‘‘copyright arbitration

16 royalty panels’’ and inserting ‘‘administra17 tive law judge’’; and

18 (iii) in paragraph (3) by striking

19 ‘‘Register of Copyrights’’ and inserting

20 ‘‘Commissioner’’; and

21 (D) by striking subsections (c) and (d).

22 (2) REPEAL OF ARBITRATION ROYALTY PAN23 ELS.—Section 802 of title 17, United States Code,

24 is repealed.
54

•S 1961 IS

1 (3) INSTITUTION AND CONCLUSION OF PRO2 CEEDINGS.—Section 803 of title 17, United States

3 Code, is amended—

4 (A) by redesignating such section as sec5 tion 802;

6 (B) in subsection (a)—

7 (i) in paragraph (1)—

8 (I) in the first sentence by strik9 ing ‘‘after such date of enactment,

10 may file a petition with the Librarian

11 of Congress’’ and inserting ‘‘or an ad12 ministrative law judge after such date

13 of enactment may file a petition with

14 the Commissioner’’; and

15 (II) by striking the second and

16 third sentence and inserting the fol17 lowing: ‘‘The Commissioner shall

18 make a determination as to whether

19 the petitioner has such a significant

20 interest in the royalty rate in which

21 an adjustment is requested. If the

22 Commissioner determines that the pe23 titioner has such a significant inter24 est, the Commissioner shall cause no25 tice of this determination, with the
55

•S 1961 IS

1 reasons therefor, to be published in

2 the Federal Register, together with

3 the notice of commencement of pro4 ceedings under this chapter.’’;

5 (ii) in paragraph (4)(B)—

6 (I) by striking ‘‘Librarian of

7 Congress’’ and inserting ‘‘Commis8 sioner’’;

9 (II) by striking ‘‘convene a copy10 right arbitration royalty panel. The

11 arbitration panel’’ and inserting

12 ‘‘refer the matter to an administrative

13 law judge. The administrative law

14 judge’’; and

15 (III) in the third sentence by

16 striking ‘‘arbitration panel’’ and in17 serting ‘‘administrative law judge’’;

18 and

19 (iii) in paragraph (5) by striking ‘‘Li20 brarian of Congress’’ and inserting ‘‘Com21 missioner’’;

22 (C) in subsection (b)—

23 (i) in the first sentence—

24 (I) by striking ‘‘Copyright Roy25 alty Tribunal or the Librarian of Con-
56

•S 1961 IS

1 gress’’ and inserting ‘‘Commissioner’’;

2 and

3 (II) by striking ‘‘Librarian’’ and

4 inserting ‘‘Commissioner’’;

5 (ii) in the second sentence by striking

6 ‘‘Librarian’’ and inserting ‘‘Commis7 sioner’’; and

8 (iii) in the third sentence by striking

9 ‘‘or the Librarian of Congress’’ and insert10 ing ‘‘, the Librarian of Congress, or the

11 Commissioner’’;

12 (D) in subsection (c) by striking ‘‘Librar13 ian of Congress’’ and inserting ‘‘Commis14 sioner’’; and

15 (E) in subsection (d) by striking ‘‘Librar16 ian of Congress’’ and inserting ‘‘Commis17 sioner’’.

18 (4) APPEAL AND JUDICIAL REVIEW.—Chapter 8

19 of title 17, United States Code (as amended by this

20 section), is further amended by adding at the end

21 the following new section:

22 ‘‘§ 803. Proceedings, appeals, and judicial review

23 ‘‘(a) PROCEEDINGS.—

24 ‘‘(1) IN GENERAL.—Administrative law judges

25 shall conduct arbitration proceedings and other pro-
57

•S 1961 IS

1 ceedings under this chapter in accordance with sub2 chapter II of chapter 5 of title 5, for the purpose of

3 making their determinations in carrying out the pur4 poses set forth in section 801. An administrative law

5 judge shall act on the basis of a fully documented

6 written record, prior decisions of the Copyright Roy7 alty Tribunal, prior copyright arbitration panel de8 terminations, rulings by the Librarian of Congress,

9 and decisions by the Commissioner under this chap10 ter.

11 ‘‘(2) SUBMISSION OF RELEVANT INFORMATION

12 BY PARTIES.—Any copyright owner who claims to be

13 entitled to royalties under section 111, 114, 116, or

14 119, any person entitled to a compulsory license

15 under section 114(d), any person entitled to a com16 pulsory license under section 115, or any interested

17 copyright party who claims to be entitled to royalties

18 under section 1006, may submit relevant informa19 tion and proposals to an administrative law judge in

20 proceedings applicable to such copyright owner or

21 interested copyright party, and any other person

22 participating in such proceedings may submit such

23 relevant information and proposals to the adminis24 trative law judge conducting the proceedings.
58

•S 1961 IS

1 ‘‘(3) RATEMAKING PROCEEDING.—In rate2 making proceedings, the parties to the proceedings

3 shall bear the entire cost thereof in such manner

4 and proportion as the administrative law judge shall

5 direct.

6 ‘‘(4) DISTRIBUTION PROCEEDINGS.—In dis7 tribution proceedings, the parties shall bear the cost

8 in direct proportion to their share of the distribu9 tion.

10 ‘‘(b) REPORT TO THE COMMISSIONER.—No later

11 than 180 days after publication of the notice in the Fed12 eral Register initiating a proceeding under this chapter,

13 the administrative law judge conducting the proceeding

14 shall report to the Commissioner its determination con15 cerning the royalty fee or distribution of royalty fees, as

16 the case may be. Such report shall be accompanied by the

17 written record, and shall set forth the facts that the ad18 ministrative law judge found relevant to the determina19 tion.

20 ‘‘(c) APPEAL TO COMMISSIONER.—

21 ‘‘(1) IN GENERAL.—Any party may file an ap22 peal of any determination reported by an adminis23 trative law judge under subsection (b) with the Com24 missioner. Such appeal shall be filed no later than
59

•S 1961 IS

1 10 days after the date on which the Commissioner

2 receives the report.

3 ‘‘(2) EFFECT OF NO APPEAL.—If an appeal is

4 not filed within the 10-day period as provided under

5 paragraph (1) the determination of the administra6 tive law judge shall be final and may not be ap7 pealed to any officer of the Copyright Office or the

8 Intellectual Property Organization, or any court of

9 the United States.

10 ‘‘(3) DETERMINATION APPEALED.—If an ap11 peal is filed within the 10-day period as provided

12 under paragraph (1) the Commissioner shall review

13 the determination of the administrative law judge

14 and make a final determination. The Commissioner

15 shall make such determination no later than 60 days

16 after the date on which the Commissioner receives

17 the report of the administrative law judge.

18 ‘‘(4) PUBLISHING OF DETERMINATION.—The

19 Commissioner shall—

20 ‘‘(A) publish in the Federal Register the

21 determination of the administrative law judge

22 and the determination of the Commissioner;

23 ‘‘(B) publicize such determinations in such

24 other manner as the Commissioner considers

25 appropriate; and
60

•S 1961 IS

1 ‘‘(C) make the report of the administrative

2 law judge and the accompanying record avail3 able for public inspection and copying.

4 ‘‘(d) JUDICIAL REVIEW.—

5 ‘‘(1) IN GENERAL.—

6 ‘‘(A) APPEAL.—The determination of the

7 Commissioner shall—

8 ‘‘(i) be a final administrative action;

9 ‘‘(ii) constitute an exhaustion of rem10 edies; and

11 ‘‘(iii) no later than 30 days after the

12 date of the determination of the Commis13 sioner, may be appealed to the United

14 States Court of Appeals for the Federal

15 Circuit.

16 ‘‘(B) EFFECT OF NO APPEAL.—If no ap17 peal is brought within the 30-day period as pro18 vided under subparagraph (A), the determina19 tion of the Commissioner—

20 ‘‘(i) is final, and the royalty fee or de21 termination with respect to the distribution

22 of fees, as the case may be, shall take ef23 fect as set forth in the determination; and
61

•S 1961 IS

1 ‘‘(ii) may not be appealed to any offi2 cer of the Intellectual Property Organiza3 tion or any court of the United States.

4 ‘‘(2) JURISDICTION OF COURT.—The court

5 shall have jurisdiction—

6 ‘‘(A)(i) to modify or vacate a determina7 tion of the Commissioner only if it finds, on the

8 basis of the record before the Commissioner,

9 that the Commissioner acted in an arbitrary

10 manner; and

11 ‘‘(ii) if the court modifies the decision of

12 the Commissioner, to enter the court’s deter13 mination with respect to the amount or dis14 tribution of royalty fees and costs, to order the

15 repayment of any excess fees, and to order the

16 payment of any underpaid fees, and the interest

17 pertaining respectively thereto, in accordance

18 with its final judgment; and

19 ‘‘(B) to further vacate the decision of the

20 administrative law judge or the Commissioner

21 and remand the case to the Commissioner for

22 proceedings in accordance with subsection (a).

23 ‘‘(3) EFFECT OF PENDENCY OF APPEAL.—The

24 pendency of an appeal under this subsection shall

25 not relieve persons obligated to make royalty pay-
62

•S 1961 IS

1 ments under sections 111, 114, 115, 116, 118, 119,

2 or 1003 who would be affected by the determination

3 on appeal to deposit the statement of account and

4 royalty fees specified in those sections.

5 ‘‘(f) ADMINISTRATIVE MATTERS.—

6 ‘‘(1) DEDUCTION OF COSTS FROM ROYALTY

7 FEES.—The Commissioner may, to the extent not

8 otherwise provided under this title, deduct from roy9 alty fees deposited or collected under this title the

10 reasonable costs incurred by the Copyright Office

11 under this chapter. Such deduction may be made be12 fore the fees are distributed to any copyright claim13 ants. If no royalty pool exists from which their costs

14 can be deducted, the Commissioner may assess the

15 reasonable costs directly to the parties to the most

16 recent relevant proceeding.

17 ‘‘(2) POSITIONS REQUIRED FOR ADMINISTRA18 TION OF COMPULSORY LICENSING.—Section 307 of

19 the Legislative Branch Appropriations Act, 1994,

20 shall not apply to employee positions in the Copy21 right Office that are required to be filled in order to

22 carry out section 111, 114, 115, 116, 118, or 119

23 or chapter 10.’’.

24 (5) TECHNICAL AND CONFORMING AMEND25 MENTS.—(A) The table of sections for chapter 8 of
63

•S 1961 IS

1 title 17, United States Code, is amended to read as

2 follows:

3 ‘‘CHAPTER 8—COPYRIGHT ROYALTY

4 DISPUTES

‘‘Sec.

‘‘801. Copyright royalty disputes.

‘‘802. Institution and conclusion of proceedings.

‘‘803. Proceedings, appeals, and judicial review.’’.

5 (B) Section 111(d)(2) of title 17, United States

6 Code, is amended by striking ‘‘a copyright arbitra7 tion royalty panel’’ and inserting ‘‘an administrative

8 law judge under chapter 8’’.

9 (C) Section 111(d)(4)(B) of title 17, United

10 States Code, is amended by striking ‘‘convene a

11 copyright arbitration royalty panel’’ and inserting

12 ‘‘refer the matter to an administrative law judge’’.

13 (D) Section 115(c)(3)(D) of title 17, United

14 States Code, is amended—

15 (i) in the first sentence by striking ‘‘section

16 803(a)(1)’’ and inserting ‘‘section 802(a)(1)’’;

17 (ii) in the first sentence by striking ‘‘con18 vene a copyright arbitration royalty panel to de19 termine and publish in the Federal Register’’

20 and inserting ‘‘refer the matter to an adminis21 trative law judge to determine’’;
64

•S 1961 IS

1 (iii) in the third sentence by striking

2 ‘‘copyright arbitration royalty panel may’’ and

3 inserting ‘‘administrative law judge may’’; and

4 (iv) by inserting after the first sentence

5 ‘‘The Commissioner shall publish such schedule

6 in the Federal Register.’’.

7 (E) Section 118(b)(3) of title 17, United States

8 Code, is amended—

9 (i) in the first sentence by striking ‘‘con10 vene a copyright arbitration royalty panel to de11 termine and publish in the Federal Register’’

12 and inserting ‘‘refer the matter to administra13 tive law judge to determine’’;

14 (ii) in the second sentence by striking

15 ‘‘copyright arbitration royalty panel may’’ and

16 inserting ‘‘administrative law judge may’’; and

17 (iii) by inserting after the first sentence

18 ‘‘The Commissioner shall publish such schedule

19 in the Federal Register.’’.

20 (F) Section 118(d) of title 17, United States

21 Code, is amended by striking ‘‘a copyright arbitra22 tion royalty panel’’ and inserting ‘‘an administrative

23 law judge’’.

24 (G) Section 119(b)(4)(B) of title 17, United

25 States Code, is amended by striking ‘‘convene a
65

•S 1961 IS

1 copyright arbitration royalty panel’’ and inserting

2 ‘‘refer the matter to an administrative law judge’’.

3 (H) Section 1006(c) of title 17, United States

4 Code, is amended by striking ‘‘convene a copyright

5 arbitration royalty panel which’’ and inserting ‘‘refer

6 the matter to an administrative law judge who’’.

7 (I) Section 1007(c) of title 17, United States

8 Code, is amended by striking ‘‘convene a copyright

9 arbitration royalty panel’’ and inserting ‘‘refer the

10 matter to an administrative law judge’’.

11 (f) COPYRIGHT APPEALS BOARD.—

12 (1) IN GENERAL.—The provisions of title 17,

13 United States Code, are amended by adding after

14 chapter 11 the following new chapter:

15 ‘‘CHAPTER 12—COPYRIGHT APPEALS

16 BOARD

‘‘Sec.

‘‘1201. Establishment.

‘‘1202. Appeals.

‘‘1203. Judicial review.

17 ‘‘§ 1201. Establishment

18 ‘‘There is established the Copyright Appeals Board

19 within the Copyright Office. The Copyright Appeals Board

20 shall include the Commissioner, the Deputy Commissioner

21 of Copyrights, and members competent in copyright law

22 who are appointed by the Commissioner.
66

•S 1961 IS

1 ‘‘§ 1202. Appeals

2 ‘‘In any case of opposition to copyright registration

3 or other determination of the Copyright Office relating to

4 copyrights (other than any determination made under

5 chapter 8) the Commissioner shall give notice to all parties

6 and shall direct the Copyright Appeals Board to review

7 any such determination.

8 ‘‘§ 1203. Judicial review

9 ‘‘Any final decision of the Copyright Appeals Board

10 may be appealed to the United States Court of Appeals

11 for the Federal Circuit.’’.

12 (2) TECHNICAL AND CONFORMING AMEND13 MENT.—The table of chapters for title 17, United

14 States Code, is amended by adding after the item re15 lating to chapter 11 the following new item:

‘‘12. Copyright Appeals Board ...................................................... 1201’’.

16 SEC. 117. SUITS BY AND AGAINST THE ORGANIZATION.

17 (a) IN GENERAL.—

18 (1) ACTIONS UNDER UNITED STATES LAW.—

19 Any civil action or proceeding to which the United

20 States Intellectual Property Organization is a party

21 is deemed to arise under the laws of the United

22 States. The Federal courts shall have exclusive juris23 diction over all civil actions by or against the Orga24 nization.
67

•S 1961 IS

1 (2) CONTRACT CLAIMS.—Any action or proceed2 ing against the Organization in which any claim is

3 cognizable under the Contract Disputes Act of 1978

4 (41 U.S.C. 601 et seq.) shall be subject to such Act.

5 For purposes of such Act, the Commissioner shall be

6 deemed to be the agency head with respect to con7 tract claims arising with respect to the Organization.

8 Notwithstanding any provision of title 28, United

9 States Code, any other action or proceeding against

10 the Organization founded upon contract may be

11 brought in an appropriate district court.

12 (3) TORT CLAIMS.—(A) Any action or proceed13 ing against the Organization in which any claim is

14 cognizable under the provisions of section 1346(b)

15 and chapter 171 of title 28, United States Code,

16 shall be governed by those provisions.

17 (B) Any other action or proceeding against the

18 Organization founded upon tort may be brought in

19 an appropriate district court without regard to the

20 provisions of section 1346(b) and chapter 171 of

21 title 28, United States Code.

22 (4) PROHIBITION ON ATTACHMENT, LIENS, OR

23 SIMILAR PROCESS.—No attachment, garnishment,

24 lien, or similar process, intermediate or final, in law
68

•S 1961 IS

1 or equity, may be issued against property of the Or2 ganization.

3 (5) SUBSTITUTION OF ORGANIZATION AS

4 PARTY.—If the Organization determines that the of5 ficer or employee was acting within the scope of his

6 employment with the Organization, the Organization

7 shall be substituted as defendant in any civil action

8 or proceeding against an officer or employee of the

9 Organization. If the Organization refuses to certify

10 scope of employment, the officer or employee may at

11 any time before trial petition the court to find and

12 certify that the officer or employee was acting within

13 the scope of his employment. Upon certification by

14 the court, the Organization shall be substituted as

15 the party defendant. A copy of the petition shall be

16 served upon the Organization. In any such civil ac17 tion or proceeding to which paragraph (3)(A) ap18 plies, the provisions of section 1346(b) and chapter

19 171 of title 28, United States Code, shall apply in

20 lieu of this paragraph.

21 (b) RELATIONSHIP WITH JUSTICE DEPARTMENT.—

22 (1) EXERCISE BY ORGANIZATION OF ATTORNEY

23 GENERAL’S AUTHORITIES.—Except as provided in

24 this section, with respect to any action or proceeding

25 in which the Organization is a party or an officer or
69

•S 1961 IS

1 employee thereof is a party in his official capacity,

2 the Organization, officer, or employee may exercise,

3 without prior authorization from the Attorney Gen4 eral, the authorities and duties that otherwise would

5 be exercised by the Attorney General on behalf of

6 the Organization, officer, or employee under title 28,

7 United States Code, or other laws.

8 (2) APPEARANCES BY ATTORNEY GENERAL.—

9 Notwithstanding paragraph (1), at any time the At10 torney General may, in any action or proceeding de11 scribed in paragraph (1), file an appearance on be12 half of the Organization or the officer or employee

13 involved, without the consent of the Organization or

14 the officer or employee. Upon such filing, the Attor15 ney General shall represent the Organization or such

16 officer or employee with exclusive authority in the

17 conduct, settlement, or compromise of that action or

18 proceeding.

19 (3) CONSULTATIONS WITH AND ASSISTANCE BY

20 ATTORNEY GENERAL.—The Organization may con21 sult with the Attorney General concerning any legal

22 matter, and the Attorney General shall provide ad23 vice and assistance to the Organization, including

24 representing the Organization in litigation, if re25 quested by the Organization.
70

•S 1961 IS

1 (4) REPRESENTATION BEFORE SUPREME

2 COURT.—The Attorney General shall represent the

3 Organization in all cases before the United States

4 Supreme Court.

5 (5) QUALIFICATIONS OF ATTORNEYS.—An at6 torney admitted to practice to the bar of the highest

7 court of at least one State in the United States or

8 the District of Columbia and employed by the Orga9 nization may represent the Organization in any legal

10 proceeding in which the Organization or an officer

11 or employee of the Organization is a party or inter12 ested—

13 (A) regardless of whether the attorney is a

14 resident of the jurisdiction in which the pro15 ceeding is held; and

16 (B) notwithstanding any other pre17 requisites of qualification or appearance re18 quired by the court or administrative body be19 fore which the proceeding is conducted.

20 SEC. 118. FUNDING.

21 (a) IN GENERAL.—The activities of the United

22 States Intellectual Property Organization and each Office

23 of the Organization shall be funded entirely through fees

24 payable to the United States Patent Office (under section

25 42 of title 35, United States Code), the United States
71

•S 1961 IS

1 Trademark Office (under section 56 of the Act of July

2 5, 1946 (commonly known as the Trademark Act of

3 1946)), and the United States Copyright Office (under

4 section 708 of title 17, United States Code), subject to

5 the provisions of subsection (b).

6 (b) BORROWING AUTHORITY.—

7 (1) IN GENERAL.—The United States Intellec8 tual Property Organization is authorized to issue

9 from time to time for purchase by the Secretary of

10 the Treasury its debentures, bonds, notes, and other

11 evidences of indebtedness (hereafter in this sub12 section referred to as ‘‘obligations’’) to assist in fi13 nancing the activities of the United States Patent

14 Office, the United States Trademark Office, and the

15 United States Copyright Office.

16 (2) BORROWING AUTHORITY.—Any borrowing

17 under this subsection shall be repaid only from fees

18 paid to the Office for which such obligations were is19 sued. Such obligations shall be redeemable at the op20 tion of the Organization before maturity in the man21 ner stipulated in such obligations and shall have

22 such maturity as is determined by the Organization

23 with the approval of the Secretary of the Treasury.

24 Each such obligation issued to the Treasury shall

25 bear interest at a rate not less than the current yield
72

•S 1961 IS

1 on outstanding marketable obligations of the United

2 States of comparable maturity during the month

3 preceding the issuance of the obligation as deter4 mined by the Secretary of the Treasury.

5 (3) PURCHASE OF OBLIGATIONS.—The Sec6 retary of the Treasury shall purchase any obligations

7 of the Organization issued under this subsection and

8 for such purpose the Secretary of the Treasury is

9 authorized to use as a public-debt transaction the

10 proceeds of any securities issued under chapter 31

11 of title 31, United States Code, and the purposes for

12 which securities may be issued under that chapter

13 are extended to include such purpose.

14 (4) TREATMENT.—Payment under this sub15 section of the purchase price of such obligations of

16 the United States Intellectual Property Organization

17 shall be treated as public-debt transactions of the

18 United States.

19 SEC. 119. MANAGEMENT REPORT.

20 The report of the Commissioner of Patents (as re21 quired by section 14 of title 35, United States Code), the

22 report of the Commissioner of Trademarks (as required

23 under section 55 of the Act of July 5, 1946 (commonly

24 known as the Trademark Act of 1946)), and the report

25 of the Commissioner of Copyrights, as required by section
73

•S 1961 IS

1 701(c) of title 17, United States Code, shall collectively

2 be deemed to be the report of the United States Intellec3 tual Property Organization under section 9106 of title 31,

4 United States Code, and the Commissioner of Intellectual

5 Property shall not file a separate report under such sec6 tion.

7 SEC. 120. AUDITS.

8 (a) IN GENERAL.—Financial statements of the Unit9 ed States Intellectual Property Organization shall be pre10 pared on an annual basis in accordance with generally ac11 cepted accounting principles. Such statements shall be au12 dited by an independent certified public accountant chosen

13 by the Commissioner. The audit shall be conducted in ac14 cordance with standards that are consistent with generally

15 accepted Government auditing standards and other stand16 ards established by the Comptroller General of the United

17 States, and with the generally accepted auditing standards

18 of the private sector, to the extent feasible. The Commis19 sioner shall transmit to the Committees on the Judiciary

20 of the Senate and the House of Representatives the results

21 of each audit under this subsection.

22 (b) REVIEW BY COMPTROLLER GENERAL OF THE

23 UNITED STATES.—The Comptroller General of the United

24 States may review any audit of the financial statement

25 of the Intellectual Property Organization that is conducted
74

•S 1961 IS

1 under subsection (a). The Comptroller General of the

2 United States shall report to the Congress and the Organi3 zation the results of any such review and shall include in

4 such report appropriate recommendations.

5 (c) AUDIT BY COMPTROLLER GENERAL OF THE

6 UNITED STATES.—The Comptroller General of the United

7 States may audit the financial statements of the Organiza8 tion and such audit shall be in lieu of the audit required

9 by subsection (a). The Organization shall reimburse the

10 Comptroller General of the United States for the cost of

11 any audit conducted under this subsection.

12 (d) ACCESS TO OFFICE RECORDS.—All books, finan13 cial records, report files, memoranda, and other property

14 that the Comptroller General of the United States deems

15 necessary for the performance of any audit shall be made

16 available to the Comptroller General of the United States.

17 (e) APPLICABILITY IN LIEU OF TITLE 31, UNITED

18 STATES CODE, PROVISIONS.—This section applies to the

19 Office in lieu of the provisions of section 9105 of title 31,

20 United States Code.

21 SEC. 121. TRANSFERS.

22 (a) TRANSFER OF FUNCTIONS.—Except as otherwise

23 provided in this title, there are transferred to, and vested

24 in, the United States Intellectual Property Organization

25 all functions, powers, and duties vested by law in the Sec-
75

•S 1961 IS

1 retary of Commerce or the Department of Commerce or

2 in the officers or components in the Department of Com3 merce with respect to the authority to grant patents and

4 register trademarks, and in the Patent and Trademark

5 Office, as in effect on the day before the effective date

6 of this title, and in the officers and components of such

7 office.

8 (b) TRANSFER OF FUNDS AND PROPERTY.—The

9 Secretary of Commerce shall transfer to the United States

10 Intellectual Property Organization, on the effective date

11 of this title, so much of the assets, liabilities, contracts,

12 property, records, and unexpended and unobligated bal13 ances of appropriations, authorizations, allocations, and

14 other funds employed, held, used, arising from, available

15 to, or to be made available to the Department of Com16 merce, including funds set aside for accounts receivable

17 which are related to functions, powers, and duties which

18 are vested in the Intellectual Property Organization by

19 this title.

20 Subtitle B—Effective Date;

21 Technical Amendments

22 SEC. 131. EFFECTIVE DATE.

23 This title and the amendments made by this title

24 shall take effect 4 months after the date of the enactment

25 of this Act.
76

•S 1961 IS

1 SEC. 132. TECHNICAL AND CONFORMING AMENDMENTS.

2 (a) AMENDMENTS TO TITLE 35.—

3 (1) TABLE OF PARTS.—The item relating to

4 part I in the table of parts for title 35, United

5 States Code, is amended to read as follows:

‘‘I. United States Patent Office ................................................................ 1.’’.

6 (2) HEADING.—The heading for part I of title

7 35, United States Code, is amended to read as fol8 lows:

9 ‘‘PART I—UNITED STATES PATENT OFFICE’’.

10 (3) TABLE OF CHAPTERS.—The table of chap11 ters for part I of title 35, United States Code, is

12 amended by amending the item relating to chapter

13 1 to read as follows:

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

14 (4) TABLE OF SECTIONS.—The table of sections

15 for chapter 1 of title 35, United States Code, is

16 amended to read as follows:

17 ‘‘CHAPTER 1—ESTABLISHMENT, OFFICERS

18 AND EMPLOYEES, FUNCTIONS

‘‘Sec.

‘‘1. Establishment.

‘‘2. Powers and duties.

‘‘3. Officers and employees.

‘‘4. Restrictions on officers and employees as to interest in patents.

‘‘5. Patent Office Management Advisory Board.

‘‘6. Duties of Commissioner.

‘‘7. Board of Patent Appeals and Interferences.

‘‘8. Library.

‘‘9. Classification of patents.

‘‘10. Certified copies of records.

‘‘11. Publications.
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•S 1961 IS

‘‘12. Exchange of copies of patents with foreign countries.

‘‘13. Copies of patents for public libraries.

‘‘14. Annual report to Congress.’’.

1 (5) COMMISSIONER OF PATENTS AND TRADE2 MARKS.—(A) Section 41(h)(1) of title 35, United

3 States Code, is amended by striking ‘‘Commissioner

4 of Patents and Trademarks’’ and inserting ‘‘Com5 missioner’’.

6 (B) Section 155 of title 35, United States Code,

7 is amended by striking ‘‘Commissioner of Patents

8 and Trademarks’’ and inserting ‘‘Commissioner’’.

9 (C) Section 155A(c) of title 35, United States

10 Code, is amended by striking ‘‘Commissioner of Pat11 ents’’ and inserting ‘‘Commissioner’’.

12 (6) PATENT AND TRADEMARK OFFICE.—The

13 provisions of title 35, United States Code, is amend14 ed by striking ‘‘Patent and Trademark Office’’ each

15 place it appears and inserting ‘‘Patent Office’’.

16 (b) AMENDMENTS TO THE TRADEMARK ACT OF

17 1946.—

18 (1) REFERENCES.—All amendments in this

19 subsection refer to the Act of July 5, 1946 (com20 monly referred to as the Trademark Act of 1946).

21 (2) AMENDMENTS RELATING TO COMMIS22 SIONER.—Section 61 (as redesignated by section

23 115(a)(2) of this Act) is amended by striking the

24 undesignated paragraph relating to the definition of
78

•S 1961 IS

1 the term ‘‘Commissioner’’ and inserting the follow2 ing:

3 ‘‘The term ‘Commissioner’ means the Commissioner

4 of Trademarks.’’.

5 (3) AMENDMENTS RELATING TO PATENT AND

6 TRADEMARK OFFICE.—(A) Section 1(a)(1) is

7 amended by striking ‘‘Patent and Trademark Of8 fice’’ and inserting ‘‘Trademark Office’’.

9 (B) Section 1(a)(2) is amended by striking

10 ‘‘Patent and Trademark Office’’ and inserting

11 ‘‘Trademark Office’’.

12 (C) Section 1(b)(1) is amended by striking

13 ‘‘Patent and Trademark Office’’ and inserting

14 ‘‘Trademark Office’’.

15 (D) Section 1(b)(2) is amended by striking

16 ‘‘Patent and Trademark Office’’ and inserting

17 ‘‘Trademark Office’’.

18 (E) Section 1(d)(1) is amended by striking

19 ‘‘Patent and Trademark Office’’ each place such

20 term appears and inserting ‘‘Trademark Office’’.

21 (F) Section 1(e) is amended by striking ‘‘Pat22 ent and Trademark Office’’ and inserting ‘‘Trade23 mark Office’’.
79

•S 1961 IS

1 (G) Section 2(d) is amended by striking ‘‘Pat2 ent and Trademark Office’’ and inserting ‘‘Trade3 mark Office’’.

4 (H) Section 7(a) is amended by striking ‘‘Pat5 ent and Trademark Office’’ each place such term ap6 pears and inserting ‘‘Trademark Office’’.

7 (I) Section 7(d) is amended by striking ‘‘Patent

8 and Trademark Office’’ and inserting ‘‘Trademark

9 Office’’.

10 (J) Section 7(e) is amended by striking ‘‘Patent

11 and Trademark Office’’ each place such term ap12 pears and inserting ‘‘Trademark Office’’.

13 (K) Section 7(f) is amended by striking ‘‘Pat14 ent and Trademark Office’’ each place such term ap15 pears and inserting ‘‘Trademark Office’’.

16 (L) Section 7(g) is amended by striking ‘‘Pat17 ent and Trademark Office’’ each place such term ap18 pears and inserting ‘‘Trademark Office’’.

19 (M) Section 8(a) is amended by striking ‘‘Pat20 ent and Trademark Office’’ and inserting ‘‘Trade21 mark Office’’.

22 (N) Section 8(b) is amended by striking ‘‘Pat23 ent and Trademark Office’’ and inserting ‘‘Trade24 mark Office’’.
80

•S 1961 IS

1 (O) Section 10 is amended by striking ‘‘Patent

2 and Trademark Office’’ each place such term ap3 pears and inserting ‘‘Trademark Office’’.

4 (P) Section 12(a) is amended by striking ‘‘Pat5 ent and Trademark Office’’ and inserting ‘‘Trade6 mark Office’’.

7 (Q) Section 13(a) is amended by striking ‘‘Pat8 ent and Trademark Office’’ and inserting ‘‘Trade9 mark Office’’.

10 (R) Section 13(b)(1) is amended by striking

11 ‘‘Patent and Trademark Office’’ each place such

12 term appears and inserting ‘‘Trademark Office’’.

13 (S) Section 15(2) is amended by striking ‘‘Pat14 ent and Trademark Office’’ and inserting ‘‘Trade15 mark Office’’.

16 (T) Section 17 is amended by striking ‘‘Patent

17 and Trademark Office’’ and inserting ‘‘Trademark

18 Office’’.

19 (U) Section 21(a)(2) is amended by striking

20 ‘‘Patent and Trademark Office’’ and inserting

21 ‘‘Trademark Office’’.

22 (V) Section 21(a)(3) is amended by striking

23 ‘‘Patent and Trademark Office’’ each place such

24 term appears and inserting ‘‘Trademark Office’’.
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•S 1961 IS

1 (W) Section 21(a)(4) is amended by striking

2 ‘‘Patent and Trademark Office’’ each place such

3 term appears and inserting ‘‘Trademark Office’’.

4 (X) Section 21(b)(3) is amended by striking

5 ‘‘Patent and Trademark Office’’ each place such

6 term appears and inserting ‘‘Trademark Office’’.

7 (Y) Section 21(b)(4) is amended by striking

8 ‘‘Patent and Trademark Office’’ and inserting

9 ‘‘Trademark Office’’.

10 (Z) Section 24 is amended by striking ‘‘Patent

11 and Trademark Office’’ and inserting ‘‘Trademark

12 Office’’.

13 (AA) Section 29 is amended by striking ‘‘Pat14 ent and Trademark Office’’ each place such term ap15 pears and inserting ‘‘Trademark Office’’.

16 (BB) Section 30 is amended by striking ‘‘Pat17 ent and Trademark Office’’ and inserting ‘‘Trade18 mark Office’’.

19 (CC) Section 31(a) is amended by striking

20 ‘‘Patent and Trademark Office’’ and inserting

21 ‘‘Trademark Office’’.

22 (DD) Section 34(a) is amended by striking

23 ‘‘Patent and Trademark Office’’ and inserting

24 ‘‘Trademark Office’’.
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•S 1961 IS

1 (EE) Section 34(d)(1)(B)(i) is amended by

2 striking ‘‘Patent and Trademark Office’’ and insert3 ing ‘‘Trademark Office’’.

4 (FF) Section 35(a) is amended by striking

5 ‘‘Patent and Trademark Office’’ and inserting

6 ‘‘Trademark Office’’.

7 (GG) Section 36 is amended by striking ‘‘Pat8 ent and Trademark Office’’ and inserting ‘‘Trade9 mark Office’’.

10 (HH) Section 37 is amended by striking ‘‘Pat11 ent and Trademark Office’’ and inserting ‘‘Trade12 mark Office’’.

13 (II) Section 38 is amended by striking ‘‘Patent

14 and Trademark Office’’ and inserting ‘‘Trademark

15 Office’’.

16 (JJ) Section 39(b) is amended by striking

17 ‘‘Patent and Trademark Office’’ and inserting

18 ‘‘Trademark Office’’.

19 (KK) Section 41 is amended by striking ‘‘Pat20 ent and Trademark Office’’ and inserting ‘‘Trade21 mark Office’’.

22 (LL) Section 61 (as redesignated under section

23 115(a)(2) of this Act) is amended in the undesig24 nated paragraph relating to the definition of ‘‘reg25 istered mark’’—
83

•S 1961 IS

1 (i) by striking ‘‘Patent and Trade Mark

2 Office’’ and inserting ‘‘Trademark Office; and

3 (ii) by striking ‘‘Patent and Trade Office’’

4 and inserting ‘‘Trademark Office’’.

5 (MM) Section 72(a) (as redesignated under sec6 tion 115(a)(2) of this Act) is amended by striking

7 ‘‘Patent and Trademark Office’’ and inserting

8 ‘‘Trademark Office’’.

9 (NN) Section 75 (as redesignated under section

10 115(a)(2) of this Act) is amended by striking ‘‘Pat11 ent and Trademark Office’’ and inserting ‘‘Trade12 mark Office’’.

13 (c) AMENDMENTS TO TITLE 17.—

14 (1) REFERENCES.—All amendments in this

15 subsection refer to title 17, United States Code.

16 (2) DEFINITION OF COMMISSIONER.—Section

17 101 is amended by inserting after the undesignated

18 paragraph relating to the definition of a ‘‘collective

19 work’’ the following new undesignated paragraph:

20 ‘‘The term ‘Commissioner’ means the Commissioner

21 of Copyrights appointed under section 701(b)(1).’’.

22 (3) TABLE OF SECTIONS.—The table of sections

23 for chapter 7 is amended by adding at the end the

24 following:

‘‘711. Copyright Office Management Advisory Board.’’.
84

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1 (4) AMENDMENT RELATING TO D.C. CIRCUIT

2 COURT.—Section 1010(g) is amended by striking

3 ‘‘District of Columbia’’ and inserting ‘‘Federal’’.

4 (5) AMENDMENTS TO REGISTER.—(A) Section

5 111(d)(1) is amended by striking ‘‘Register shall’’

6 and inserting ‘‘Commissioner shall’’.

7 (B) Section 113(d)(3) is amended by striking

8 ‘‘Register shall’’ and inserting ‘‘Commissioner

9 shall’’.

10 (C) Section 115(c)(5) is amended by striking

11 ‘‘Register shall’’ and inserting ‘‘Commissioner

12 shall’’.

13 (D) Section 119(a)(2)(C) is amended by strik14 ing ‘‘Register shall’’ and inserting ‘‘Commissioner

15 shall’’.

16 (E) Section 119(b)(1) is amended by striking

17 ‘‘Register shall’’ and inserting ‘‘Commissioner

18 shall’’.

19 (F) Section 302(d) is amended by striking

20 ‘‘Register shall’’ and inserting ‘‘Commissioner

21 shall’’.

22 (G) Section 302(d) is amended by striking

23 ‘‘Register considers’’ and inserting ‘‘Commissioner

24 considers’’.
85

•S 1961 IS

1 (H) Section 408(b), in the matter following

2 paragraph (4), is amended by striking ‘‘Register’’

3 each place it appears and inserting ‘‘Commissioner’’.

4 (I) Section 408(d) is amended by striking

5 ‘‘Register’’ and inserting ‘‘Commissioner’’.

6 (J) Section 410(a) is amended by striking

7 ‘‘Register shall’’ and inserting ‘‘Commissioner

8 shall’’.

9 (K) Section 410(b) is amended by striking

10 ‘‘Register shall’’ and inserting ‘‘Commissioner

11 shall’’.

12 (L) Section 411(a) is amended by striking

13 ‘‘Register may’’ and inserting ‘‘Commissioner may’’.

14 (M) Section 508(a) is amended by striking

15 ‘‘Register within’’ and inserting ‘‘Commissioner

16 within’’.

17 (N) Section 508(b) is amended by striking

18 ‘‘Register’’ and inserting ‘‘Commissioner’’.

19 (O) Section 508(c) is amended by striking

20 ‘‘Register’’ and inserting ‘‘Commissioner’’.

21 (P) Section 704(d) is amended by striking

22 ‘‘Register and’’ and inserting ‘‘Commissioner and’’.

23 (Q) Section 707(a) is amended by striking

24 ‘‘Register has’’ and inserting ‘‘Commissioner has’’.
86

•S 1961 IS

1 (R) Section 707(b) is amended by striking

2 ‘‘Register’’ each place it appears and inserting

3 ‘‘Commissioner’’.

4 (S) Section 709 is amended by striking ‘‘Reg5 ister may’’ and inserting ‘‘Commissioner may’’.

6 (T) Section 709 is amended by striking ‘‘Reg7 ister determines’’ and inserting ‘‘Commissioner de8 termines’’.

9 (U) Section 908(c) is amended by striking

10 ‘‘Register’’ and inserting ‘‘Commissioner’’.

11 (V) Section 908(d) is amended by striking

12 ‘‘Register shall’’ and inserting ‘‘Commissioner

13 shall’’.

14 (W) Section 908(e) is amended by striking

15 ‘‘Register shall’’ and inserting ‘‘Commissioner

16 shall’’.

17 (X) Section 910(b)(2) is amended by striking

18 ‘‘Register may’’ and inserting ‘‘Commissioner may’’.

19 (Y) Section 910(b)(2) is amended by striking

20 ‘‘Register to’’ and inserting ‘‘Commissioner to’’.

21 (Z) Section 1003(b) is amended by striking

22 ‘‘Register’’ and inserting ‘‘Commissioner’’.

23 (AA) Section 1003(c)(1) is amended by striking

24 ‘‘content as the Register’’ and inserting ‘‘content as

25 the Commissioner’’.
87

•S 1961 IS

1 (BB) Section 1003(c)(1) is amended by striking

2 ‘‘distribution as the Register’’ and inserting ‘‘dis3 tribution as the Commissioner’’.

4 (CC) Section 1003(c)(2) is amended by striking

5 ‘‘Register’’ and inserting ‘‘Commissioner’’.

6 (DD) Section 1005 is amended by striking

7 ‘‘Register may, in the Register’s discretion,’’ and in8 serting ‘‘Commissioner may, in the Commissioner’s

9 discretion,’’.

10 (EE) Section 1009(e) is amended by striking

11 ‘‘Register’’ and inserting ‘‘Commissioner’’.

12 (6) AMENDMENTS TO REGISTER OF COPY13 RIGHTS.—The provisions of title 17, United States

14 Code, are amended by striking ‘‘Register of Copy15 rights’’ each place such term appears and inserting

16 ‘‘Commissioner’’.

17 (d) AMENDMENTS RELATING TO THE LIBRARIAN OF

18 CONGRESS.—

19 (1) REFERENCES.—All amendments in this

20 subsection refer to title 17, United States Code.

21 (2) AMENDMENTS.—(A) Section 111(d)(2) is

22 amended by striking ‘‘Librarian of Congress’’ and

23 inserting ‘‘Commissioner’’.
88

•S 1961 IS

1 (B) Section 111(d)(4)(A) is amended by strik2 ing ‘‘Librarian of Congress’’ each place it appears

3 and inserting ‘‘Commissioner’’.

4 (C) Section 111(d)(4)(B) is amended by strik5 ing ‘‘Librarian of Congress shall, upon the rec6 ommendation of the Register of Copyrights’’ and in7 serting ‘‘Commissioner shall’’.

8 (D) Section 111(d)(4)(B) is amended by strik9 ing ‘‘Librarian’’ each place it appears and inserting

10 ‘‘Commissioner’’.

11 (E) Section 111(d)(4)(C) is amended by strik12 ing ‘‘Librarian of Congress’’ and inserting ‘‘Commis13 sioner’’.

14 (F) Section 115(c)(3)(C) is amended by strik15 ing ‘‘Librarian of Congress’’ each place it appears

16 and inserting ‘‘Commissioner’’.

17 (G) Section 115(c)(3)(D) is amended by strik18 ing ‘‘Librarian of Congress’’ each place it appears

19 and inserting ‘‘Commissioner’’.

20 (H) Section 115(c)(3)(E) is amended by strik21 ing ‘‘Librarian of Congress’’ and inserting ‘‘Commis22 sioner’’.

23 (I) Section 115(c)(3)(F) is amended by striking

24 ‘‘Librarian of Congress’’ and inserting ‘‘Commis25 sioner’’.
89

•S 1961 IS

1 (J) Section 1010(e) is amended by striking ‘‘Li2 brarian of Congress’’ and inserting ‘‘Commissioner’’.

3 (K) Section 116(b)(2) is amended by striking

4 ‘‘Librarian of Congress’’ each place it appears and

5 inserting ‘‘Commissioner’’.

6 (L) Section 118(b)(1) is amended by striking

7 ‘‘Librarian of Congress’’ each place it appears and

8 inserting ‘‘Commissioner’’.

9 (M) Section 118(b)(2) is amended by striking

10 ‘‘Librarian of Congress’’ and inserting ‘‘Commis11 sioner’’.

12 (N) Section 118(b)(3) is amended by striking

13 ‘‘Librarian of Congress’’ each place it appears and

14 inserting ‘‘Commissioner’’.

15 (O) Section 118(c) is amended by striking ‘‘Li16 brarian of Congress’’ and inserting ‘‘Commissioner’’.

17 (P) Section 119(b)(2) is amended by striking

18 ‘‘Librarian of Congress’’ and inserting ‘‘Commis19 sioner’’.

20 (Q) Section 119(b)(3) is amended by striking

21 ‘‘Librarian of Congress’’ and inserting ‘‘Commis22 sioner’’.

23 (R) Section 119(b)(4) is amended by striking

24 ‘‘Librarian of Congress’’ each place it appears and

25 inserting ‘‘Commissioner’’.
90

•S 1961 IS

1 (S) Section 119(c)(2) is amended by striking

2 ‘‘Librarian of Congress’’ each place it appears and

3 inserting ‘‘Commissioner’’.

4 (T) Section 119(c)(3)(A) is amended by strik5 ing ‘‘Librarian of Congress’’ and inserting ‘‘Commis6 sioner’’.

7 (U) Section 1004(a) is amended by striking

8 ‘‘Librarian of Congress’’ each place it appears and

9 inserting ‘‘Commissioner’’.

10 (V) Section 1006(c) is amended by striking

11 ‘‘Librarian of Congress’’ and inserting ‘‘Commis12 sioner’’.

13 (W) Section 1007(a) is amended by striking

14 ‘‘Librarian of Congress’’ each place it appears and

15 inserting ‘‘Commissioner’’.

16 (X) Section 1007(b) is amended by striking

17 ‘‘Librarian of Congress’’ each place it appears and

18 inserting ‘‘Commissioner’’.

19 (Y) Section 1007(c) is amended by striking

20 ‘‘Librarian of Congress’’ each place it appears and

21 inserting ‘‘Commissioner’’.

22 (Z) Section 1007(c) is amended by striking

23 ‘‘Librarian shall’’ and inserting ‘‘Commissioner

24 shall’’.
91

•S 1961 IS

1 (AA) Section 1007(c) is amended by striking

2 ‘‘Librarian under’’ and inserting ‘‘Commissioner

3 under’’.

4 (BB) Section 1010(b) is amended by striking

5 ‘‘Librarian of Congress’’ each place it appears and

6 inserting ‘‘Commissioner’’.

7 (CC) Section 1010(e) is amended by striking

8 ‘‘Librarian of Congress’’ and inserting ‘‘Commis9 sioner’’.

10 (DD) Section 1010(f) is amended by striking

11 ‘‘Librarian of Congress’’ and inserting ‘‘Commis12 sioner’’.

13 (EE) Section 1010(g) is amended by striking

14 ‘‘Librarian of Congress’’ and inserting ‘‘Commis15 sioner’’.

16 (e) AMENDMENTS RELATING TO SATELLITE HOME

17 VIEWER ACT AMENDMENTS.—Section 119(c) of title 17,

18 United States Code, is amended—

19 (1) in paragraph (3)—

20 (A) in subparagraph (A) by striking the

21 last sentence and inserting ‘‘Such notice shall

22 include the names and qualifications of poten23 tial arbitrators chosen by the Commissioner

24 from a list of available arbitrators obtained

25 from the American Arbitration Association or
92

•S 1961 IS

1 such similar organization as the Commissioner

2 shall select.’’;

3 (B) by amending subparagraph (B) to read

4 as follows:

5 ‘‘(B) SELECTION OF ARBITRATION

6 PANEL.—Not later than 10 days after publica7 tion of the notice initiating an arbitration pro8 ceeding, and in accordance with the procedures

9 to be specified by the Commissioner, one arbi10 trator shall be selected from the published list

11 by copyright owners who claim to be entitled to

12 royalty fees under subsection (b)(4) and who

13 are not party to a voluntary agreement filed

14 with the Copyright Office in accordance with

15 paragraph (2), and one arbitrator shall be se16 lected from the published list by satellite car17 riers and distributors who are not parties to

18 such a voluntary agreement. The two arbitra19 tors so selected shall, within 10 days after their

20 selection, choose a third arbitrator from the

21 same list, who shall serve as chairperson of the

22 arbitrators. If either group fail to agree upon

23 the selection of an arbitrator, or if the arbitra24 tors selected by such groups fail to agree upon

25 the selection of a chairperson, the Commis-
93

•S 1961 IS

1 sioner shall promptly select the arbitrator or

2 chairperson, respectively. The arbitrators se3 lected under this subparagraph shall constitute

4 and Arbitration Panel.’’;

5 (C) by amending subparagraph (C) to read

6 as follows:

7 ‘‘(C) ARBITRATION PROCEEDING.—The

8 Arbitration Panel shall conduct an arbitration

9 proceeding in accordance with such procedures

10 as it may adopt. The panel shall act on the

11 basis of a fully documented written record. Any

12 copyright owner who claims to be entitled to

13 royalty fees under subsection (b)(4), any sat14 ellite carrier, and any distributor, who is not

15 party to a voluntary agreement filed with the

16 Copyright Office in accordance with paragraph

17 (2), may submit relevant information and pro18 posals to the Panel. The parties to the proceed19 ing shall bear the entire cost thereof in such

20 manner and proportion as the Panel shall di21 rect.’’;

22 (D) in subparagraph (D) by striking

23 ‘‘Copyright’’; and

24 (E) by adding at the end the following new

25 subparagraphs:
94

•S 1961 IS

1 ‘‘(E) REPORT TO THE COMMISSIONER.—

2 Not later than 60 days after publication of the

3 notice initiating an arbitration proceeding, the

4 Arbitration Panel shall report to the Commis5 sioner its determination concerning the royalty

6 fee. Such report shall be accompanied by the

7 written record, and shall set forth the facts that

8 the Panel found relevant to its determination

9 and the reasons why its determination is con10 sistent with the criteria set forth in subpara11 graph (D).

12 ‘‘(F) ACTION BY COMMISSIONER.—Within

13 60 days after receiving the report of the Arbi14 tration Panel under subparagraph (E), the

15 Commissioner shall adopt or reject the deter16 mination of the Panel. The Commissioner shall

17 adopt the determination of the Panel unless the

18 Commissioner finds that the determination is

19 clearly inconsistent with the criteria set forth in

20 subparagraph (D). If the Commissioner rejects

21 the determination of the Panel, the Commis22 sioner shall, before the end of that 60-day pe23 riod, and after full examination of the record

24 created in the arbitration proceeding, issue an

25 order, consistent with the criteria set forth in
95

•S 1961 IS

1 subparagraph (D), setting the royalty fee under

2 this paragraph. The Commissioner shall cause

3 to be published in the Federal Register the de4 termination of the Panel, and the decision of

5 the Commissioner with respect to the deter6 mination (including any order issued under the

7 preceding sentence). The Commissioner shall

8 also publicize such determination and decision

9 in such other manner as the Commissioner con10 siders appropriate. The Commissioner shall also

11 make the report of the Arbitration Panel and

12 the accompanying record available for public in13 spection and copying.

14 ‘‘(G) PERIOD DURING WHICH DECISION OF

15 ARBITRATION PANEL OR ORDER OF COMMIS16 SIONER EFFECTIVE.—The obligation to pay the

17 royalty fee established under a determination of

18 the Arbitration Panel which is confirmed by the

19 Commissioner in accordance with this para20 graph, or established by any order issued under

21 subparagraph (F), shall become effective as

22 provided under paragraph (4) or July 1, 1997,

23 whichever is later.’’; and

24 (2) by adding at the end the following new

25 paragraph:
96

•S 1961 IS

1 ‘‘(4) JUDICIAL REVIEW.—

2 ‘‘(A) IN GENERAL.—Any decision of the

3 Commissioner under paragraph (3) with respect

4 to a determination of the Arbitration Panel may

5 be appealed, by any aggrieved party who would

6 be bound by the determination, to the United

7 States Court of Appeals for the Federal Circuit,

8 within 30 days after the publication of the deci9 sion in the Federal Register. If no appeal is

10 brought within such 30-day period, the decision

11 of the Commissioner is final, and the royalty

12 fee shall take effect as set forth in the decision.

13 The pendency of an appeal under this para14 graph shall not relieve satellite carriers of the

15 obligation under subsection (b)(1) to deposit

16 the statement of account and royalty fees speci17 fied in that subsection.

18 ‘‘(B) JUDICIAL ACTIONS.—The court shall

19 have jurisdiction to modify or vacate a decision

20 of the Commissioner only if it finds, on the

21 basis of the record before the Commissioner

22 and the statutory criteria set forth in para23 graph (3)(D), that the Arbitration Panel or the

24 Commissioner acted in an arbitrary manner. If

25 the court modifies the decision of the Commis-
97

•S 1961 IS

1 sioner, the court shall have jurisdiction to enter

2 its own determination with respect to royalty

3 fees, to order the repayment of any excess fees

4 deposited under subsection (b)(1)(B), and to

5 order the payment of any underpaid fees, and

6 the interest pertaining respectively thereto, in

7 accordance with its final judgment. The court

8 may further vacate the decision of the Commis9 sioner and remand the case for arbitration pro10 ceedings in accordance with paragraph (3).’’.

11 (f) AMENDMENTS TO TITLE 5.—Section 5316 of title

12 5, United States Code, is amended—

13 (1) by striking ‘‘Commissioner of Patents, De14 partment of Commerce.’’; and

15 (2) by striking:

16 ‘‘Deputy Commissioner of Patents and Trade17 marks.

18 ‘‘Assistant Commissioner for Patents.

19 ‘‘Assistant Commissioner for Trademarks.’’.

20 (g) AMENDMENT TO TITLE 31.—Section 9101(3) of

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

22 end the following:

23 ‘‘(O) the United States Intellectual Prop24 erty Organization.’’.
98

•S 1961 IS

1 Subtitle C—Miscellaneous

2 Provisions

3 SEC. 141. REFERENCES.

4 Any reference in any other Federal law, Executive

5 order, rule, regulation, or delegation of authority, or any

6 document of or pertaining to a department, agency, or of7 fice from which a function is transferred by this title—

8 (1) to the head of such department, agency, or

9 office is deemed to refer to the head of the depart10 ment, agency, or office to which such function is

11 transferred; or

12 (2) to such department, agency, or office is

13 deemed to refer to the department, agency, or office

14 to which such function is transferred.

15 SEC. 142. EXERCISE OF AUTHORITIES.

16 Except as otherwise provided by law, a Federal offi17 cial to whom a function is transferred by this title may,

18 for purposes of performing the function, exercise all au19 thorities under any other provision of law that were avail20 able with respect to the performance of that function to

21 the official responsible for the performance of the function

22 immediately before the effective date of the transfer of the

23 function under this title.
99

•S 1961 IS

1 SEC. 143. SAVINGS PROVISIONS.

2 (a) LEGAL DOCUMENTS.—All orders, determinations,

3 rules, regulations, permits, grants, loans, contracts, agree4 ments, certificates, licenses, and privileges that—

5 (1) have been issued, made, granted, or allowed

6 to become effective by the President, the Secretary

7 of Commerce, any officer or employee of any office

8 transferred by this title, or any other Government

9 official, or by a court of competent jurisdiction, in

10 the performance of any function that is transferred

11 by this title, and

12 (2) are in effect on the effective date of such

13 transfer (or become effective after such date pursu14 ant to their terms as in effect on such effective

15 date), shall continue in effect according to their

16 terms until modified, terminated, superseded, set

17 aside, or revoked in accordance with law by the

18 President, any other authorized official, a court of

19 competent jurisdiction, or operation of law.

20 (b) PROCEEDINGS.—This title shall not affect any

21 proceedings or any application for any benefits, service,

22 license, permit, certificate, or financial assistance pending

23 on the effective date of this title before an office trans24 ferred by this title, but such proceedings and applications

25 shall be continued. Orders shall be issued in such proceed26 ings, appeals shall be taken therefrom, and payments shall
100

•S 1961 IS

1 be made pursuant to such orders, as if this title had not

2 been enacted, and orders issued in any such proceeding

3 shall continue in effect until modified, terminated, super4 seded, or revoked by a duly authorized official, by a court

5 of competent jurisdiction, or by operation of law. Nothing

6 in this subsection shall be considered to prohibit the dis7 continuance or modification of any such proceeding under

8 the same terms and conditions and to the same extent that

9 such proceeding could have been discontinued or modified

10 if this title had not been enacted.

11 (c) SUITS.—This title shall not affect suits com12 menced before the effective date of this title, and in all

13 such suits, proceedings shall be had, appeals taken, and

14 judgments rendered in the same manner and with the

15 same effect as if this title had not been enacted.

16 (d) NONABATEMENT OF ACTIONS.—No suit, action,

17 or other proceeding commenced by or against the Depart18 ment of Commerce or the Secretary of Commerce, or by

19 or against any individual in the official capacity of such

20 individual as an officer or employee of an office trans21 ferred by this title, shall abate by reason of the enactment

22 of this title.

23 (e) CONTINUANCE OF SUITS.—If any Government of24 ficer in the official capacity of such officer is party to a

25 suit with respect to a function of the officer, and under
101

•S 1961 IS

1 this title such function is transferred to any other officer

2 or office, then such suit shall be continued with the other

3 officer or the head of such other office, as applicable, sub4 stituted or added as a party.

5 (f) ADMINISTRATIVE PROCEDURE AND JUDICIAL RE6 VIEW.—Except as otherwise provided by this title, any

7 statutory requirements relating to notice, hearings, action

8 upon the record, or administrative or judicial review that

9 apply to any function transferred by this title shall apply

10 to the exercise of such function by the head of the Federal

11 agency, and other officers of the agency, to which such

12 function is transferred by this title.

13 SEC. 144. TRANSFER OF ASSETS.

14 Except as otherwise provided in this title, so much

15 of the personnel, property, records, and unexpended bal16 ances of appropriations, allocations, and other funds em17 ployed, used, held, available, or to be made available in

18 connection with a function transferred to an official or

19 agency by this title shall be available to the official or the

20 head of that agency, respectively, at such time or times

21 as the Director of the Office of Management and Budget

22 directs for use in connection with the functions trans23 ferred.
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1 SEC. 145. DELEGATION AND ASSIGNMENT.

2 (a) IN GENERAL.—Except as otherwise expressly

3 prohibited by law or otherwise provided in this title, an

4 official to whom functions are transferred under this title

5 (including the head of any office to which functions are

6 transferred under this title) may—

7 (1) delegate any of the functions so transferred

8 to such officers and employees of the office of the

9 official as the official may designate; and

10 (2) authorize successive redelegations of such

11 functions as may be necessary or appropriate.

12 (b) RESPONSIBILITY FOR ADMINISTRATION.—No

13 delegation of functions under this section or under any

14 other provision of this title shall relieve the official to

15 whom a function is transferred under this title of respon16 sibility for the administration of the function.

17 SEC. 146. AUTHORITY OF DIRECTOR OF THE OFFICE OF

18 MANAGEMENT AND BUDGET WITH RESPECT

19 TO FUNCTIONS TRANSFERRED.

20 (a) DETERMINATIONS.—If necessary, the Director of

21 the Office of Management and Budget shall make any de22 termination of the functions that are transferred under

23 this title.

24 (b) INCIDENTAL TRANSFERS.—The Director of the

25 Office of Management and Budget, at such time or times

26 as the Director shall provide, may make such determina-
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1 tions as may be necessary with regard to the functions

2 transferred by this title, and to make such additional inci3 dental dispositions of personnel, assets, liabilities, grants,

4 contracts, property, records, and unexpended balances of

5 appropriations, authorizations, allocations, and other

6 funds held, used, arising from, available to, or to be made

7 available in connection with such functions, as may be nec8 essary to carry out the provisions of this title.

9 (c) TERMINATION OF AFFAIRS.—The Director shall

10 provide for the termination of the affairs of all entities

11 terminated by this title and for such further measures and

12 dispositions as may be necessary to effectuate the pur13 poses of this title.

14 SEC. 147. CERTAIN VESTING OF FUNCTIONS CONSIDERED

15 TRANSFERS.

16 For purposes of this title, the vesting of a function

17 in a department, agency, or office pursuant to reestablish18 ment of an office shall be considered to be the transfer

19 of the function.

20 SEC. 148. AVAILABILITY OF EXISTING FUNDS.

21 Existing appropriations and funds available for the

22 performance of functions, programs, and activities termi23 nated pursuant to this title shall remain available, for the

24 duration of their period of availability, for necessary ex-
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1 penses in connection with the termination and resolution

2 of such functions, programs, and activities.

3 SEC. 149. DEFINITIONS.

4 For purposes of this title—

5 (1) the term ‘‘function’’ includes any duty, obli6 gation, power, authority, responsibility, right, privi7 lege, activity, or program; and

8 (2) the term ‘‘office’’ includes any office, ad9 ministration, agency, bureau, institute, council, unit,

10 organizational entity, or component thereof.

11 TITLE II—EARLY PUBLICATION

12 OF PATENT APPLICATIONS

13 SEC. 201. SHORT TITLE.

14 This title may be cited as the ‘‘Patent Application

15 Publication Act of 1996’’.

16 SEC. 202. EARLY PUBLICATION.

17 Section 122 of title 35, United States Code, is

18 amended to read as follows:

19 ‘‘§ 122. Confidential status of applications; publica20 tion of patent applications

21 ‘‘(a) CONFIDENTIALITY.—Except as provided in sub22 section (b), applications for patents shall be kept in con23 fidence by the Patent Office and no information concern24 ing the same given without authority of the applicant or

25 owner unless necessary to carry out the provisions of an
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1 Act of Congress or in such special circumstances as may

2 be determined by the Commissioner.

3 ‘‘(b) PUBLICATION.—

4 ‘‘(1) IN GENERAL.—(A) Subject to paragraph

5 (2), each application for patent, except applications

6 for design patents filed under chapter 16 of this title

7 and provisional applications filed under section

8 111(b) of this title, shall be published, in accordance

9 with procedures determined by the Commissioner, as

10 soon as possible after the expiration of a period of

11 18 months from the earliest filing date for which a

12 benefit is sought under this title. At the request of

13 the applicant, an application may be published ear14 lier than the end of such 18-month period.

15 ‘‘(B) No information concerning published pat16 ent applications shall be made available to the public

17 except as the Commissioner determines.

18 ‘‘(C) Notwithstanding any other provision of

19 law, a determination by the Commissioner to release

20 or not to release information concerning a published

21 patent application shall be final and nonreviewable.

22 ‘‘(2) EXCEPTIONS.—(A) An application that is

23 no longer pending shall not be published.
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1 ‘‘(B) An application that is subject to a secrecy

2 order pursuant to section 181 of this title shall not

3 be published.

4 ‘‘(C)(i) Upon the request of the applicant at the

5 time of application shall not be published in accord6 ance with paragraph (1) until 3 months after the

7 Commissioner makes a notification to the applicant

8 under section 132 of this title.

9 ‘‘(ii) Applications filed pursuant to section 363

10 of this title, applications asserting priority under

11 section 119 or 365(a) of this title, and applications

12 asserting the benefit of an earlier application under

13 section 120, 121, or 365(c) of this title shall not be

14 eligible for a request pursuant to this subparagraph.

15 ‘‘(iii) In a request under this subparagraph, the

16 applicant shall certify that the invention disclosed in

17 the application was not and will not be the subject

18 of an application filed in a foreign country.

19 ‘‘(iv) The Commissioner may establish appro20 priate procedures and fees for making a request

21 under this subparagraph.

22 ‘‘(c) PRE-ISSUANCE OPPOSITION.—The provisions of

23 this section shall not operate to create any new oppor24 tunity for pre-issuance opposition. The Commissioner may

25 establish appropriate procedures to ensure that this sec-
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1 tion does not create any new opportunity for pre-issuance

2 opposition that did not exist prior to the adoption of this

3 section.’’.

4 SEC. 203. TIME FOR CLAIMING BENEFIT OF EARLIER FIL5 ING DATE.

6 (a) IN A FOREIGN COUNTRY.—Section 119(b) of title

7 35, United States Code, is amended to read as follows:

8 ‘‘(b)(1) No application for patent shall be entitled to

9 this right of priority unless a claim, identifying the foreign

10 application by specifying its application number, country,

11 and the day, month, and year of its filing, is filed in the

12 Patent Office at such time during the pendency of the ap13 plication as required by the Commissioner.

14 ‘‘(2) The Commissioner may consider the failure of

15 the applicant to file a timely claim for priority as a waiver

16 of any such claim, and may require the payment of a sur17 charge as a condition of accepting an untimely claim dur18 ing the pendency of the application.

19 ‘‘(3) The Commissioner may require a certified copy

20 of the original foreign application, specification, and draw21 ings upon which it is based, a translation if not in the

22 English language, and such other information as the Com23 missioner considers necessary. Any such certification shall

24 be made by the foreign intellectual property authority in

25 which the foreign application was filed and show the date
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1 of the application and of the filing of the specification and

2 other papers.’’.

3 (b) IN THE UNITED STATES.—Section 120 of title

4 35, United States Code, is amended by adding at the end

5 the following: ‘‘The Commissioner may determine the time

6 period during the pendency of the application within which

7 an amendment containing the specific reference to the ear8 lier filed application is submitted. The Commissioner may

9 consider the failure to submit such an amendment within

10 that time period as a waiver of any benefit under this sec11 tion. The Commissioner may establish procedures, includ12 ing the payment of a surcharge, to accept unavoidably late

13 submissions of amendments under this section.’’.

14 SEC. 204. PROVISIONAL RIGHTS.

15 Section 154 of title 35, United States Code, is

16 amended—

17 (1) in the section caption by inserting ‘‘; pro18 visional rights’’ after ‘‘patent’’; and

19 (2) by adding at the end the following new sub20 section:

21 ‘‘(d) PROVISIONAL RIGHTS.—

22 ‘‘(1) IN GENERAL.—In addition to other rights

23 provided by this section, a patent shall include the

24 right to obtain a reasonable royalty from any person

25 who, during the period beginning on the date of pub-
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1 lication of the application for such patent pursuant

2 to section 122(b) of this title, or in the case of an

3 international application designating the United

4 States, the date of international publication of the

5 application, and ending on the date the patent is is6 sued—

7 ‘‘(A)(i) makes, uses, offers for sale, or sells

8 in the United States the invention as claimed in

9 the published patent application or imports

10 such an invention into the United States; or

11 ‘‘(ii) if the invention as claimed in the pub12 lished patent application is a process, uses, of13 fers for sale, or sells in the United States or

14 imports into the United States products made

15 by that process as claimed in the published pat16 ent application; and

17 ‘‘(B) had actual notice of the published

18 patent application and where the right arising

19 under this paragraph is based upon an inter20 national application designating the United

21 States that is published in a language other

22 than English, a translation of the international

23 application into the English language.

24 ‘‘(2) RIGHT BASED ON SUBSTANTIALLY IDEN25 TICAL INVENTIONS.—The right under paragraph (1)
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1 to obtain a reasonable royalty shall not be available

2 under this subsection unless the invention as claimed

3 in the patent is substantially identical to the inven4 tion as claimed in the published patent application.

5 ‘‘(3) TIME LIMITATION ON OBTAINING A REA6 SONABLE ROYALTY.—The right under paragraph (1)

7 to obtain a reasonable royalty shall be available only

8 in an action brought not later than 6 years after the

9 patent is issued. The right under paragraph (1) to

10 obtain a reasonable royalty shall not be affected by

11 the duration of the period described in paragraph

12 (1).

13 ‘‘(4) REQUIREMENTS FOR INTERNATIONAL AP14 PLICATIONS.—

15 ‘‘(A) EFFECTIVE DATE.—The right under

16 paragraph (1) to obtain a reasonable royalty

17 based upon the publication under the treaty of

18 an international application designating the

19 United States shall commence from the date

20 that the Patent Office receives a copy of the

21 publication under the treaty of the international

22 application, or, if the publication under the

23 treaty of the international application is in a

24 language other than English, from the date

25 that the Patent Office receives a translation of
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1 the international application in the English lan2 guage.

3 ‘‘(B) COPIES.—The Commissioner may re4 quire the applicant to provide a copy of the

5 international application and a translation

6 thereof.’’.

7 SEC. 205. PRIOR ART EFFECT OF PUBLISHED APPLICA8 TIONS.

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

10 amended to read as follows:

11 ‘‘(e) the invention was described in—

12 ‘‘(1)(A) an application for patent, published

13 pursuant to section 122(b) of this title, by another

14 filed in the United States before the invention by the

15 applicant for patent, except that an international ap16 plication filed under the treaty defined in section

17 351(a) of this title shall have the effect under this

18 subsection of a national application published under

19 section 122(b) of this title only if the international

20 application designating the United States was pub21 lished under Article 21(2)(a) of such treaty in the

22 English language, or

23 ‘‘(B) a patent granted on an application for

24 patent by another filed in the United States before

25 the invention by the applicant for patent, except that
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1 a patent granted on an international application

2 filed under the treaty defined in section 351(a) of

3 this title shall have the effect under this subsection

4 of a patent granted on a national application only

5 if the international application was published under

6 Article 21(2)(a) of such treaty in the English lan7 guage, or’’.

8 SEC. 206. COST RECOVERY FOR PUBLICATION.

9 The Commissioner shall recover the cost of early pub10 lication required by the amendment made by section 202

11 by adjusting the filing, issue, and maintenance fees under

12 title 35, United States Code, by charging a separate publi13 cation fee, or by any combination of these methods.

14 SEC. 207. CONFORMING CHANGES.

15 The following provisions of title 35, United States

16 Code, are amended:

17 (1) Section 11 is amended in paragraph 1 of

18 subsection (a) by inserting ‘‘and published applica19 tions for patents’’ after ‘‘Patents’’.

20 (2) Section 12 is amended—

21 (A) in the section caption by inserting

22 ‘‘and applications’’ after ‘‘patents’’; and

23 (B) by inserting ‘‘and published applica24 tions for patents’’ after ‘‘patents’’.

25 (3) Section 13 is amended—
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1 (A) in the section caption by inserting

2 ‘‘and applications’’ after ‘‘patents’’; and

3 (B) by inserting ‘‘and published applica4 tions for patents’’ after ‘‘patents’’.

5 (4) The items relating to sections 12 and 13 in

6 the table of sections for chapter 1 are each amended

7 by inserting ‘‘and applications’’ after ‘‘patents’’.

8 (5) The item relating to section 122 in the table

9 of sections for chapter 11 is amended by inserting

10 ‘‘; publication of patent applications’’ after ‘‘applica11 tions’’.

12 (6) The item relating to section 154 in the table

13 of sections for chapter 14 is amended by inserting

14 ‘‘; provisional rights’’ after ‘‘patent’’.

15 (7) Section 181 is amended—

16 (A) in the first undesignated paragraph—

17 (i) by inserting ‘‘by the publication of

18 an application or’’ after ‘‘disclosure’’; and

19 (ii) ‘‘the publication of the application

20 or’’ after ‘‘withhold’’;

21 (B) in the second undesignated paragraph

22 by inserting ‘‘by the publication of an applica23 tion or’’ after ‘‘disclosure of an invention’’;

24 (C) in the third undesignated paragraph—
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1 (i) by inserting ‘‘by the publication of

2 the application or’’ after ‘‘disclosure of the

3 invention’’; and

4 (ii) ‘‘the publication of the application

5 or’’ after ‘‘withhold’’; and

6 (D) in the fourth undesignated paragraph

7 by inserting ‘‘the publication of an application

8 or’’ after ‘‘and’’ in the first sentence.

9 (8) Section 252 is amended in the first undesig10 nated paragraph by inserting ‘‘substantially’’ before

11 ‘‘identical’’ each place it appears.

12 (9) Section 284 is amended by adding at the

13 end of the second undesignated paragraph the fol14 lowing: ‘‘Increased damages under this paragraph

15 shall not apply to provisional rights under section

16 154(d) of this title.’’.

17 (10) Section 374 is amended to read as follows:

18 ‘‘§ 374. Publication of international application: Ef19 fect

20 ‘‘The publication under the treaty, defined in section

21 351(a) of this title, of an international application des22 ignating the United States shall confer the same rights

23 and shall have the same effect under this title as an appli24 cation for patent published under section 122(b), except

25 as provided in sections 102(e) and 154(d) of this title.’’.
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1 SEC. 208. LAST DAY OF PENDENCY OF PROVISIONAL APPLI2 CATION.

3 Section 119(e) of title 35, United States Code, is

4 amended by adding at the end the following:

5 ‘‘(3) If the day that is 12 months after the filing date

6 of a provisional application falls on a Saturday, Sunday,

7 or legal holiday as defined in rule 6(a) of the Federal

8 Rules of Civil Procedure, the period of pendency of the

9 provisional application shall be extended to the next suc10 ceeding business day.’’.

11 SEC. 209. EFFECTIVE DATE.

12 (a) SECTIONS 202 THROUGH 207.—Sections 202

13 through 207, and the amendments made by such sections,

14 shall take effect on April 1, 1997, and shall apply to all

15 applications filed under section 111 of title 35, United

16 States Code, on or after that date, and all applications

17 complying with section 371 of title 35, United States

18 Code, that resulted from international applications filed

19 on or after that date. The amendment made by section

20 204 shall also apply to international applications designat21 ing the United States that are filed on or after April 1,

22 1997.

23 (b) SECTION 208.—The amendments made by sec24 tion 208 shall take effect on the date of the enactment

25 of this Act and, except for a design patent application filed
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1 under chapter 16 of title 35, United States Code, shall

2 apply to any application filed on or after June 8, 1995.

3 TITLE III—PATENT TERM

4 RESTORATION

5 SEC. 301. PATENT TERM EXTENSION AUTHORITY.

6 Section 154(b) of title 35, United States Code, is

7 amended to read as follows:

8 ‘‘(b) TERM EXTENSION.—

9 ‘‘(1) BASIS FOR PATENT TERM EXTENSION.—

10 ‘‘(A) DELAY.—Subject to the limitations

11 under paragraph (2), if the issue of an original

12 patent is delayed due to—

13 ‘‘(i) a proceeding under section 135(a)

14 of this title;

15 ‘‘(ii) the imposition of an order pursu16 ant to section 181 of this title;

17 ‘‘(iii) appellate review by the Board of

18 Patent Appeals and Interferences or by a

19 Federal court where the patent was issued

20 pursuant to a decision in the review revers21 ing an adverse determination of patentabil22 ity; or

23 ‘‘(iv) an unusual administrative delay

24 by the Patent Office in issuing the patent,
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1 the term of the patent shall be extended for the

2 period of delay.

3 ‘‘(B) ADMINISTRATIVE DELAY.—For pur4 poses of subparagraph (A)(iv), an unusual ad5 ministrative delay by the Patent Office is the

6 failure to—

7 ‘‘(i) make a notification of the rejec8 tion of any claim for a patent or any objec9 tion or argument under section 132 of this

10 title or give or mail a written notice of al11 lowance under section 151 of this title not

12 later than 14 months after the date on

13 which the application was filed;

14 ‘‘(ii) respond to a reply under section

15 132 of this title or to an appeal taken

16 under section 134 of this title not later

17 than 4 months after the date on which the

18 reply was filed or the appeal was taken;

19 ‘‘(iii) act on an application not later

20 than 4 months after the date of a decision

21 by the Board of Patent Appeals and Inter22 ferences under section 134 or 135 of this

23 title or a decision by a Federal court under

24 section 141, 145, or 146 of this title where
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1 allowable claims remain in an application;

2 or

3 ‘‘(iv) issue a patent not later than 4

4 months after the date on which the issue

5 fee was paid under section 151 of this title

6 and all outstanding requirements were sat7 isfied.

8 ‘‘(2) LIMITATIONS.—

9 ‘‘(A) IN GENERAL.—The total duration of

10 any extensions granted pursuant to either sub11 clause (iii) or (iv) of paragraph (1)(A) or both

12 such subclauses shall not exceed 10 years. To

13 the extent that periods of delay attributable to

14 grounds specified in paragraph (1) overlap, the

15 period of any extension granted under this sub16 section shall not exceed the actual number of

17 days the issuance of the patent was delayed.

18 ‘‘(B) REDUCTION OF EXTENSION.—The

19 period of extension of the term of a patent

20 under this subsection shall be reduced by a pe21 riod equal to the time in which the applicant

22 failed to engage in reasonable efforts to con23 clude prosecution of the application. The Com24 missioner shall prescribe regulations establish25 ing the circumstances that constitute a failure
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1 of an applicant to engage in reasonable efforts

2 to conclude processing or examination of an ap3 plication.

4 ‘‘(C) DISCLAIMED TERM.—No patent the

5 term of which has been disclaimed beyond a

6 specified date may be extended under this sec7 tion beyond the expiration date specified in the

8 disclaimer.

9 ‘‘(3) PROCEDURES.—The Commissioner shall

10 prescribe regulations establishing procedures for the

11 notification of patent term extensions under this

12 subsection and procedures for contesting patent

13 term extensions under this subsection.’’.

14 SEC. 302. EFFECTIVE DATE.

15 The amendments made by section 301 shall take ef16 fect on the date of the enactment of this Act and, except

17 for a design patent application filed under chapter 16 of

18 title 35, United States Code, shall apply to any application

19 filed on or after June 8, 1995.

20 TITLE IV—PRIOR DOMESTIC

21 COMMERCIAL USE

22 SEC. 401. SHORT TITLE.

23 This title may be cited as the ‘‘Prior Domestic Com24 mercial Use Act of 1996’’.
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1 SEC. 402. DEFENSE TO PATENT INFRINGEMENT BASED ON

2 PRIOR DOMESTIC COMMERCIAL USE.

3 (a) DEFENSE.—Chapter 28 of title 35, United States

4 Code, is amended by adding at the end the following new

5 section:

6 ‘‘§ 273. Prior domestic commercial use; defense to in7 fringement

8 ‘‘(a) DEFINITIONS.—For purposes of this section—

9 ‘‘(1) the terms ‘commercially used’, ‘commer10 cially use’, and ‘commercial use’ mean the use in the

11 United States in commerce or the use in the design,

12 testing, or production in the United States of a

13 product or service which is used in commerce,

14 whether or not the subject matter at issue is acces15 sible to or otherwise known to the public;

16 ‘‘(2) the terms ‘used in commerce’, and ‘use in

17 commerce’ mean that there has been an actual sale

18 or other commercial transfer of the subject matter

19 at issue or that there has been an actual sale or

20 other commercial transfer of a product or service re21 sulting from the use of the subject matter at issue;

22 and

23 ‘‘(3) the ‘effective filing date’ of a patent is the

24 earlier of the actual filing date of the application for

25 the patent or the filing date of any earlier United

26 States, foreign, or international application to which
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1 the subject matter at issue is entitled under section

2 119, 120, or 365 of this title.

3 ‘‘(b) DEFENSE TO INFRINGEMENT.—

4 ‘‘(1) IN GENERAL.—A person shall not be liable

5 as an infringer under section 271 of this title with

6 respect to any subject matter that would otherwise

7 infringe one or more claims in the patent being as8 serted against such person, if such person had, act9 ing in good faith, commercially used the subject

10 matter before the effective filing date of such patent.

11 ‘‘(2) EXHAUSTION OF RIGHT.—The sale or

12 other disposition of the subject matter of a patent

13 by a person entitled to assert a defense under this

14 section with respect to that subject matter shall ex15 haust the patent owner’s rights under the patent to

16 the extent such rights would have been exhausted

17 had such sale or other disposition been made by the

18 patent owner.

19 ‘‘(c) LIMITATIONS AND QUALIFICATIONS OF DE20 FENSE.—The defense to infringement under this section

21 is subject to the following:

22 ‘‘(1) DERIVATION.—A person may not assert

23 the defense under this section if the subject matter

24 on which the defense is based was derived from the

25 patentee or persons in privity with the patentee.
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1 ‘‘(2) NOT A GENERAL LICENSE.—The defense

2 asserted by a person under this section is not a gen3 eral license under all claims of the patent at issue,

4 but extends only to the subject matter claimed in the

5 patent with respect to which the person can assert

6 a defense under this chapter, except that the defense

7 shall also extend to variations in the quantity or vol8 ume of use of the claimed subject matter, and to im9 provements in the claimed subject matter that do

10 not infringe additional specifically claimed subject

11 matter of the patent.

12 ‘‘(3) EFFECTIVE AND SERIOUS PREPARA13 TION.—With respect to subject matter that cannot

14 be commercialized without a significant investment

15 of time, money, and effort, a person shall be deemed

16 to have commercially used the subject matter if—

17 ‘‘(A) before the effective filing date of the

18 patent, the person reduced the subject matter

19 to practice in the United States, completed a

20 significant portion of the total investment nec21 essary to commercially use the subject matter,

22 and made a commercial transaction in the Unit23 ed States in connection with the preparation to

24 use the subject matter; and
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1 ‘‘(B) thereafter the person diligently com2 pleted the remainder of the activities and in3 vestments necessary to commercially use the

4 subject matter, and promptly began commercial

5 use of the subject matter, even if such activities

6 were conducted after the effective filing date of

7 the patent.

8 ‘‘(4) BURDEN OF PROOF.—A person asserting

9 the defense under this section shall have the burden

10 of establishing the defense.

11 ‘‘(5) ABANDONMENT OF USE.—A person who

12 has abandoned commercial use of subject matter

13 may not rely on activities performed before the date

14 of such abandonment in establishing a defense under

15 subsection (b) with respect to actions taken after the

16 date of such abandonment.

17 ‘‘(6) PERSONAL DEFENSE.—The defense under

18 this section may only be asserted by the person who

19 performed the acts necessary to establish the defense

20 and, except for any transfer to the patent owner, the

21 right to assert the defense shall not be licensed or

22 assigned or transferred to another person except in

23 connection with the good faith assignment or trans24 fer of the entire enterprise or line of business to

25 which the defense relates.
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1 ‘‘(7) ONE-YEAR LIMITATION.—A person may

2 not assert a defense under this section unless the

3 subject matter on which the defense is based had

4 been commercially used or reduced to practice more

5 than one year prior to the effective filing date of the

6 patent by the person asserting the defense or some7 one in privity with that person.

8 ‘‘(d) UNSUCCESSFUL ASSERTION OF DEFENSE.—If

9 the defense under this section is pleaded by a person who

10 is found to infringe the patent and who subsequently fails

11 to demonstrate a reasonable basis for asserting the de12 fense, the court shall find the case exceptional for the pur13 pose of awarding attorney’s fees under section 285 of this

14 title.

15 ‘‘(e) INVALIDITY.—A patent shall not be deemed to

16 be invalid under section 102 or 103 of this title solely be17 cause a defense is established under this section.’’.

18 (b) CONFORMING AMENDMENT.—The table of sec19 tions at the beginning of chapter 28 of title 35, United

20 States Code, is amended by adding at the end the follow21 ing new item:

‘‘Sec. 273. Prior domestic commercial use; defense to infringement.’’.

22 SEC. 403. EFFECTIVE DATE AND APPLICABILITY.

23 This title and the amendments made by this title

24 shall take effect on the date of the enactment of this Act,

25 but shall not apply to any action for infringement that
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1 is pending on such date of enactment or with respect to

2 any subject matter for which an adjudication of infringe3 ment, including a consent judgment, has been made before

4 such date of enactment.

5 TITLE V—PATENT

6 REEXAMINATION REFORM

7 SEC. 501. SHORT TITLE.

8 This title may be cited as the ‘‘Patent Reexamination

9 Reform Act of 1996’’.

10 SEC. 502. DEFINITIONS.

11 Section 100 of title 35, United States Code, is

12 amended by adding at the end the following new sub13 section:

14 ‘‘(e) The term ‘third-party requester’ means a person

15 requesting reexamination under section 302 of this title

16 who is not the patent owner.’’.

17 SEC. 503. REEXAMINATION PROCEDURES.

18 (a) REQUEST FOR REEXAMINATION.—Section 302 of

19 title 35, United States Code, is amended to read as fol20 lows:

21 ‘‘§ 302. Request for reexamination

22 ‘‘(a) IN GENERAL.—Any person at any time may file

23 a request for reexamination by the Office of a patent on

24 the basis of any prior art cited under the provisions of

25 section 301 of this title or on the basis of the requirements
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1 of section 112 of this title except for the requirement to

2 set forth the best mode of carrying out the invention.

3 ‘‘(b) REQUIREMENTS.—The request shall—

4 ‘‘(1) be in writing, include the identity of the

5 real party in interest, and be accompanied by pay6 ment of a reexamination fee established by the Com7 missioner of Patents pursuant to the provisions of

8 section 41 of this title; and

9 ‘‘(2) set forth the pertinency and manner of ap10 plying cited prior art to every claim for which reex11 amination is requested or the manner in which the

12 patent specification or claims fail to comply with the

13 requirements of section 112 of this title.

14 ‘‘(c) COPY.—Unless the requesting person is the

15 owner of the patent, the Commissioner promptly shall

16 send a copy of the request to the owner of record of the

17 patent.’’.

18 (b) DETERMINATION OF ISSUE BY COMMISSIONER.—

19 Section 303 of title 35, United States Code, is amended

20 to read as follows:

21 ‘‘§ 303. Determination of issue by Commissioner

22 ‘‘(a) REEXAMINATION.—Not later than 3 months

23 after the filing of a request for reexamination under the

24 provisions of section 302 of this title, the Commissioner

25 shall determine whether a substantial new question of pat-
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1 entability affecting any claim of the patent concerned is

2 raised by the request, with or without consideration of

3 other patents or printed publications. On the Commis4 sioner’s initiative, and any time, the Commissioner may

5 determine whether a substantial new question of patent6 ability is raised by patents and publications or by the fail7 ure of the patent specification or claims to comply with

8 the requirements of section 112 of this title except for the

9 best mode requirement described in section 302.

10 ‘‘(b) RECORD.—A record of the Commissioner’s de11 termination under subsection (a) shall be placed in the of12 ficial file of the patent, and a copy shall be promptly given

13 or mailed to the owner of record of the patent and to the

14 third-party requester, if any.

15 ‘‘(c) FINAL DECISION.—A determination by the

16 Commissioner pursuant to subsection (a) shall be final

17 and nonappealable. Upon a determination that no sub18 stantial new question of patentability has been raised, the

19 Commissioner may refund a portion of the reexamination

20 fee required under section 302 of this title.’’.

21 (c) REEXAMINATION ORDER BY COMMISSIONER.—

22 Section 304 of title 35, United States Code, is amended

23 to read as follows:
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1 ‘‘§ 304. Reexamination order by Commissioner

2 ‘‘If, in a determination made under the provisions of

3 section 303(a) of this title, the Commissioner finds that

4 a substantial new question of patentability affecting a

5 claim of a patent is raised, the determination shall include

6 an order for reexamination of the patent for resolution of

7 the question. The order may be accompanied by the initial

8 action of the Patent Office on the merits of the reexamina9 tion conducted in accordance with section 305 of this

10 title.’’.

11 (d) CONDUCT OF REEXAMINATION PROCEEDINGS.—

12 Section 305 of title 35, United States Code, is amended

13 to read as follows:

14 ‘‘§ 305. Conduct of reexamination proceedings

15 ‘‘(a) IN GENERAL.—Subject to subsection (b), reex16 amination shall be conducted according to the procedures

17 established for initial examination under the provisions of

18 sections 132 and 133 of this title. In any reexamination

19 proceeding under this chapter, the patent owner shall be

20 permitted to propose any amendment to the patent and

21 a new claim or claims, except that no proposed amended

22 or new claim enlarging the scope of the claims of the pat23 ent shall be permitted.

24 ‘‘(b) RESPONSE.—(1) This subsection shall apply to

25 any reexamination proceeding in which the order for reex-
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1 amination is based upon a request by a third-party re2 quester.

3 ‘‘(2) With the exception of the reexamination request,

4 any document filed by either the patent owner or the

5 third-party requester shall be served on the other party.

6 ‘‘(3) If the patent owner files a response to any Pat7 ent Office action on the merits, the third-party requester

8 shall have 1 opportunity to file written comments within

9 a reasonable period not less than 1 month after the date

10 of service of the patent owner’s response. Written com11 ments provided under this paragraph shall be limited to

12 issues covered by the Patent Office action or the patent

13 owner’s response.

14 ‘‘(c) SPECIAL DISPATCH.—Unless otherwise provided

15 by the Commissioner for good cause, all reexamination

16 proceedings under this section, including any appeal to the

17 Board of Patent Appeals and Interferences, shall be con18 ducted with special dispatch within the Office.’’.

19 (e) APPEAL.—Section 306 of title 35, United States

20 Code, is amended to read as follows:

21 ‘‘§ 306. Appeal

22 ‘‘(a) PATENT OWNER.—The patent owner involved in

23 a reexamination proceeding under this chapter—

24 ‘‘(1) may appeal under the provisions of section

25 134 of this title, and may appeal under the provi-
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1 sions of sections 141 through 144 of this title, with

2 respect to any decision adverse to the patentability

3 of any original or proposed amended or new claim

4 of the patent, and

5 ‘‘(2) may be a party to any appeal taken by a

6 third-party requester pursuant to subsection (b) of

7 this section.

8 ‘‘(b) THIRD-PARTY REQUESTER.—A third-party re9 quester may—

10 ‘‘(1) appeal under the provisions of section 134

11 of this title, and may appeal under the provisions of

12 sections 141 through 144 of this title, with respect

13 to any final decision favorable to the patentability of

14 any original or proposed amended or new claim of

15 the patent; or

16 ‘‘(2) be a party to any appeal taken by the pat17 ent owner, subject to subsection (c) of this section.

18 ‘‘(c) PARTICIPATION AS PARTY.—

19 ‘‘(1) IN GENERAL.—A third-party requester

20 who, under the provisions of sections 141 through

21 144 of this title, files a notice of appeal or who par22 ticipates as a party to an appeal by the patent owner

23 is estopped from asserting at a later time, in any

24 forum, the invalidity of any claim determined to be

25 patentable on appeal on any ground which the third-
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1 party requester raised or could have raised during

2 the reexamination proceedings.

3 ‘‘(2) ELECTION TO PARTICIPATE.—A third4 party requester is deemed not to have participated

5 as a party to an appeal by the patent owner unless,

6 not later than 20 days after the patent owner has

7 filed notice of appeal, the third-party requester files

8 notice with the Commissioner electing to partici9 pate.’’.

10 (f) REEXAMINATION PROHIBITED.—

11 ‘‘(1) IN GENERAL.—Chapter 30 of title 35,

12 United States Code, is amended by adding at the

13 end the following new section:

14 ‘‘§ 308. Reexamination prohibited

15 ‘‘(a) ORDER FOR REEXAMINATION.—Notwithstand16 ing any provision of this chapter, once an order for reex17 amination of a patent has been issued under section 304

18 of this title, neither the patent owner nor the third-party

19 requester, if any, nor privies of either, may file a subse20 quent request for reexamination of the patent until a reex21 amination certificate is issued and published under section

22 307 of this title, unless authorized by the Commissioner.

23 ‘‘(b) FINAL DECISION.—Once a final decision has

24 been entered against a party in a civil action arising in

25 whole or in part under section 1338 of title 28 that the
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1 party has not sustained its burden of proving the invalidity

2 of any patent claim in suit, then neither that party nor

3 its privies may thereafter request reexamination of any

4 such patent claim on the basis of issues which that party

5 or its privies raised or could have raised in such civil ac6 tion, and a reexamination requested by that party or its

7 privies on the basis of such issues may not thereafter be

8 maintained by the Office, notwithstanding any other provi9 sion of this chapter.’’.

10 (2) TECHNICAL AND CONFORMING AMEND11 MENT.—The table of sections for chapter 30 of title

12 35, United States Code, is amended by adding at

13 the end the following:

‘‘308. Reexamination prohibited.’’.

14 SEC. 504. CONFORMING AMENDMENTS.

15 (a) PATENT FEES; PATENT SEARCH SYSTEMS.—Sec16 tion 41(a)(7) of title 35, United States Code, is amended

17 to read as follows:

18 ‘‘(7) On filing each petition for the revival of an

19 unintentionally abandoned application for a patent,

20 for the unintentionally delayed payment of the fee

21 for issuing each patent, or for an unintentionally de22 layed response by the patent owner in a reexamina23 tion proceeding, $1,250, unless the petition is filed

24 under sections 133 or 151 of this title, in which case

25 the fee shall be $110.’’.
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1 (b) APPEAL TO THE BOARD OF PATENT APPEALS

2 AND INTERFERENCES.—Section 134 of title 35, United

3 States Code, is amended to read as follows:

4 ‘‘§ 134. Appeal to the Board of Patent Appeals and

5 Interferences

6 ‘‘(a) PATENT APPLICANT.—An applicant for a pat7 ent, any of whose claims has been twice rejected, may ap8 peal from the decision of the primary examiner to the

9 Board of Patent Appeals and Interferences, having once

10 paid the fee for such appeal.

11 ‘‘(b) PATENT OWNER.—A patent owner in a reexam12 ination proceeding may appeal from the final rejection of

13 any claim by the primary examiner to the Board of Patent

14 Appeals and Interferences, having once paid the fee for

15 such appeal.

16 ‘‘(c) THIRD-PARTY.—A third-party requester may

17 appeal to the Board of Patent Appeals and Interferences

18 from the final decision of the primary examiner favorable

19 to the patentability of any original or proposed amended

20 or new claim of a patent, having once paid the fee for

21 such appeal.’’.

22 (d) APPEAL TO COURT OF APPEALS FOR THE FED23 ERAL CIRCUIT.—Section 141 of title 35, United States

24 Code, is amended by amending the first sentence to read

25 as follows: ‘‘An applicant, a patent owner, or a third-party
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1 requester, dissatisfied with the final decision in an appeal

2 to the Board of Patent Appeals and Interferences under

3 section 134 of this title, may appeal the decision to the

4 United States Court of Appeals for the Federal Circuit.’’.

5 (e) PROCEEDINGS ON APPEAL.—Section 143 of title

6 35, United States Code, is amended by amending the third

7 sentence to read as follows: ‘‘In ex parte and reexamina8 tion cases, the Commissioner shall submit to the court in

9 writing the grounds for the decision of the Patent Office,

10 addressing all the issues involved in the appeal.’’.

11 (f) CIVIL ACTION TO OBTAIN PATENT.—Section 145

12 of title 35, United States Code, is amended in the first

13 sentence by inserting ‘‘(a)’’ after ‘‘section 134’’.

14 SEC. 505. EFFECTIVE DATE.

15 This title and the amendments made by this title

16 shall take effect on the date that is 6 months after the

17 date of the enactment of this Act and shall apply to all

18 reexamination requests filed on or after such date.

19 TITLE VI—MISCELLANEOUS

20 PATENT PROVISIONS

21 SEC. 601. PROVISIONAL APPLICATIONS.

22 (a) ABANDONMENT.—Section 111(b)(5) of title 35,

23 United States Code, is amended to read as follows:

24 ‘‘(5) ABANDONMENT.—Notwithstanding the ab25 sence of a claim, upon timely request and as pre-
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1 scribed by the Commissioner, a provisional applica2 tion may be treated as an application filed under

3 subsection (a). If no such request is made, the provi4 sional application shall be regarded as abandoned 12

5 months after the filing date of such application and

6 shall not be subject to revival thereafter.’’.

7 (b) EFFECTIVE DATE.—The amendments made by

8 subsection (a) apply to a provisional application filed on

9 or after June 8, 1995.

10 SEC. 602. INTERNATIONAL APPLICATIONS.

11 Section 119 of title 35, United States Code, is

12 amended as follows:

13 (1) In subsection (a), insert ‘‘or in a WTO

14 member country’’ after ‘‘or to citizens of the United

15 States,’’.

16 (2) At the end of section 119 add the following

17 new subsections:

18 ‘‘(f) Applications for plant breeder’s rights filed in

19 a WTO member country (or in a foreign UPOV Contract20 ing Party) shall have the same effect for the purpose of

21 the right of priority under subsections (a) through (c) of

22 this section as applications for patents, subject to the

23 same conditions and requirements of this section as apply

24 to applications for patents.

25 ‘‘(g) As used in this section—
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1 ‘‘(1) the term ‘WTO member country’ has the

2 same meaning as the term is defined in section

3 104(b)(2) of this title; and

4 ‘‘(2) the term ‘UPOV Contracting Party’ means

5 a member of the International Convention for the

6 Protection of New Varieties of Plants.’’.

7 SEC. 603. PLANT PATENTS.

8 (a) TUBER PROPAGATED PLANTS.—Section 161 of

9 title 35, United States Code, is amended by striking ‘‘a

10 tuber propagated plant or’’.

11 (b) RIGHTS IN PLANT PATENTS.—The text of section

12 163 of title 35, United States Code, is amended to read

13 as follows: ‘‘In the case of a plant patent, the grant to

14 the patentee, such patentee’s heirs or assigns, shall have

15 the right to exclude others from asexually reproducing the

16 plant, and from using, offering for sale, or selling the

17 plant so reproduced, or any of its parts, throughout the

18 United States, or from importing the plant so reproduced,

19 or any parts thereof, into the United States.’’.

20 (c) EFFECTIVE DATE.—The amendments by sub21 section (a) shall apply on the date of enactment of this

22 Act. The amendments made by subsection (b) shall apply

23 to any plant patent issued on or after the date of enact24 ment of this Act.
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1 SEC. 604. JUST COMPENSATION FOR UNITED STATES GOV2 ERNMENT USE OF PATENTS.

3 (a) COMPENSATION.—Section 1498(a) of title 28,

4 United States Code, is amended by adding at the end of

5 the first paragraph the following: ‘‘Reasonable and entire

6 compensation shall include the owner’s reasonable costs,

7 including reasonable fees for expert witnesses and attor8 neys, in pursuing the action if the owner is an independent

9 inventor, a nonprofit organization, or an entity that had

10 no more than 500 employees at any time during the 5-

11 year period preceding the use or manufacture of the pat12 ented invention by or for the United States.’’.

13 (b) EFFECTIVE DATE.—The amendment made by

14 subsection (a) shall apply to actions under section 1498(a)

15 of title 28, United States Code, that are pending on, or

16 brought on or after, the date of the enactment of this Act.

17 SEC. 605. ELECTRONIC FILING.

18 Section 22 of title 35, United States Code, is amend19 ed by striking ‘‘printed or typewritten’’ and inserting

20 ‘‘printed, typewritten, or on an electronic medium’’.