II

103D CONGRESS

2D SESSION S. 2368

To implement the intellectual property right provisions of the Uruguay Round

of the General Agreement on Tariffs and Trade, and for other purposes.

IN THE SENATE OF THE UNITED STATES

AUGUST 5, 1994

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

referred to the Committee on the Judiciary

A BILL

To implement the intellectual property right provisions of

the Uruguay Round of the General Agreement on Tariffs

and Trade, 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 ‘‘Trade-Related Aspects

5 of Intellectual Property Rights Implementation Act of

6 1994’’.

7 SEC. 2. RENTAL RIGHTS IN COMPUTER PROGRAMS.

8 Section 804(c) of the Computer Software Rental

9 Amendments Act of 1990 (Public Law 101–650; 104 Stat.

10 5089, 5136) is amended by striking out the first sentence.
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1 SEC. 3. CREATION AND TRAFFICKING IN BOOTLEG SOUND

2 RECORDINGS PROHIBITED.

3 (a) IN GENERAL.—Chapter 113 of title 18, United

4 States Code, is amended by inserting after section 2319

5 the following new section:

6 ‘‘§ 2319a. Creation of and traffic in bootleg sound re7 cordings prohibited

8 ‘‘(a) Whoever, willfully and for purposes of commer9 cial advantage or private financial gain, without the con10 sent of a performer or a performer’s agent—

11 ‘‘(1) fixes or causes to be fixed in a sound re12 cording;

13 ‘‘(2) broadcasts, transmits, or otherwise com14 municates to the public or causes to be so broadcast,

15 transmitted, or otherwise communicated, the sounds

16 of a live performance; or

17 ‘‘(3) reproduces, distributes, sells, rents, offers

18 for sale or rent, transports, broadcasts, transmits, or

19 otherwise communicates to the public or possesses,

20 for the purpose of—

21 ‘‘(A) creating any article in violation of

22 paragraph (1); or

23 ‘‘(B) fixing the sounds therein,

24 shall, upon judgment of conviction, be fined not more than

25 $250,000 or imprisoned for not more than 5 years, or

26 both.
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1 ‘‘(b) When any person is convicted of any violation

2 of subsection (a), the court in its judgment of conviction

3 shall, in addition to the penalty therein prescribed, order

4 the forfeiture, destruction, or other disposition of the ap5 plicable articles, implements, devices, and equipment as

6 required under section 4 (b) and (d) of the Intellectual

7 Property Rights General Agreement on Tariffs and Trade

8 Implementation Act of 1994.

9 ‘‘(c) The provisions of this section do not preempt

10 any State statute or civil or criminal cause of action aris11 ing under a State’s common law.’’.

12 (b) TECHNICAL AND CONFORMING AMENDMENT.—

13 The table of sections for chapter 113 of title 18, United

14 States Code, is amended by inserting after the item relat15 ing to section 2319 the following:

‘‘2319a. Creation of and traffic in bootleg sound recordings prohibited.’’.

16 (c) EFFECTIVE DATE.—This section shall take effect

17 1 year after the date of entry into force of the World

18 Trade Organization Agreement as referred to under the

19 Uruguay Round Implementation Act and shall apply to—

20 (1) all performances fixed on and after that

21 date; and

22 (2)(A) all traffic in articles containing sounds

23 fixed without their performer’s authorization; and

24 (B) all broadcasts, transmissions or other dis25 seminations of sounds fixed without their perform-
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1 er’s authorization on and after that date without re2 gard to the date upon which the article containing

3 such sounds was fixed.

4 SEC. 4. PROHIBITION OF CREATION AND TRAFFICKING IN

5 BOOTLEG SOUND RECORDINGS.

6 (a) IN GENERAL.—Whoever, without the consent of

7 a performer or a performer’s agent—

8 (1) fixes or causes to be fixed in a sound re9 cording;

10 (2) broadcasts, transmits, or otherwise commu11 nicates to the public or causes to be so broadcast,

12 transmitted, or otherwise communicated the sounds

13 of a live performance; or

14 (3) reproduces, distributes, sells, rents, offers

15 for sale or rent, transports, broadcasts, transmits, or

16 otherwise communicates to the public or possesses,

17 for the purpose of—

18 (A) creating any article in violation of

19 paragraph (1); or

20 (B) fixing the sounds therein,

21 shall, upon judgment of liability in a civil proceeding, be

22 subject to the sanctions under sections 502 through 505

23 of title 17, United States Code, as if he were an infringer

24 of copyright under section 501 of such title.
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1 (b) DISPOSITION OF ARTICLES CONTAINING UNAU2 THORIZED FIXATIONS.—When any person is held liable

3 for a violation of subsection (a), the court in its judgment

4 shall, in addition to the other relief therein granted, order

5 the forfeiture and destruction or other disposition of all

6 articles created in violation thereof and all implements, de7 vices, or equipment used in the manufacture of such arti8 cles.

9 (c) NO PREEMPTION.—The provisions of this section

10 do not preempt any State statute or civil or criminal cause

11 of action arising under a State’s common law.

12 (d) FOREIGN-MANUFACTURED ARTICLES.—(1) In a

13 case where the fixing of sounds in articles outside the

14 United States would have been a violation of subsection

15 (a) if said fixation had taken place within the United

16 States, the importation, sale, rental, or other distribution

17 of such articles is prohibited. Persons committing these

18 acts shall be subject to the sanctions set out in subsection

19 (a) to the same extent as if that subsection had been vio20 lated.

21 (2)(A) The Secretary of the Treasury and the United

22 States Postal Service shall separately or jointly prescribe

23 regulations for the enforcement of the provisions of this

24 section prohibiting importation.
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1 (B) The Secretary of the Treasury shall prescribe,

2 by regulation, a procedure under which any performer or

3 representative thereof may, upon payment of a specified

4 fee, be entitled to notification by the United States Cus5 toms Service of the importation of articles that appear to

6 consist of fixations of a particular performance.

7 (C) Articles imported in violation of the importation

8 prohibitions of this section are subject to seizure and for9 feiture in the same manner as property imported in viola10 tion of the customs revenue laws. Forfeited articles shall

11 be destroyed as directed by the Secretary of the Treasury

12 or the court, as the case may be, except that the articles

13 may be returned to the country of export whenever it is

14 shown to the satisfaction of the Secretary of the Treasury

15 that the importer had no reasonable grounds for believing

16 that his or her acts constituted a violation of law.

17 (e) EFFECTIVE DATE.—This section shall take effect

18 1 year after the date of entry into force of the World

19 Trade Organization Agreement as referred to under the

20 Uruguay Round Implementation Act and shall apply to—

21 (1) all performances fixed on and after that

22 date; and

23 (2)(A) all traffic in articles containing sounds

24 fixed without their performer’s authorization; and
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1 (B) all broadcasts, transmissions or other dis2 seminations of sounds fixed without their perform3 er’s authorization on and after that date without re4 gard to the date upon which the article containing

5 such sounds was fixed.

6 SEC. 5. RESTORATION OF COPYRIGHT.

7 (a) IN GENERAL.—Section 104A of title 17, United

8 States Code, is amended to read as follows:

9 ‘‘§ 104A. Copyright in certain works

10 ‘‘(a) RESTORATION OF COPYRIGHT; TERM OF RE11 STORED COPYRIGHT.—(1) Copyright in a restorable work

12 shall vest automatically on the date of restoration.

13 ‘‘(2) Subject to the provisions of subsections (b)

14 through (j), any restorable work shall have copyright pro15 tection under this title for the remainder of the term of

16 copyright protection that it would have otherwise enjoyed

17 in the United States.

18 ‘‘(3) Copyrights in certain motion pictures and works

19 included therein as to which restoration was properly

20 sought under section 104A of this title as it was in force

21 on the day prior to the effective date of this section shall

22 be deemed to have been restored thereunder, but shall oth23 erwise be subject to all of the provisions of this section.

24 ‘‘(b) OWNERSHIP OF RESTORED COPYRIGHT.—A re25 stored copyright shall vest initially in the author of a
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1 restorable work as determined under the law of its source

2 country.

3 ‘‘(c) ELIGIBILITY TO FILE NOTICE OF INTENT TO

4 ENFORCE A RESTORED COPYRIGHT AGAINST RELIANCE

5 PARTIES.—(1) Any person who owns a restored copyright,

6 or any exclusive right therein, may file or serve a notice

7 of intent to enforce that copyright against reliance parties

8 under the provisions of subsections (d) and (e) of this sec9 tion.

10 ‘‘(2) The filing or service of such a notice shall create

11 no presumption as to the truth of any statement set out

12 in such notice.

13 ‘‘(d) REMEDIES AND LIMITATIONS THEREON.—(1)

14 Subject to paragraphs (2) through (4) of this subsection,

15 the remedies set out in chapter 5 of this title shall be avail16 able, in respect of a restored copyright, immediately upon

17 restoration, with respect to any act committed on or after

18 the date of restoration.

19 ‘‘(2) The remedies for infringement set out in chapter

20 5 of this title shall be available against reliance parties

21 only upon satisfaction of at least one of the following con22 ditions:

23 ‘‘(A) The owner of the restored copyright files,

24 between the date of restoration and 24 months

25 thereafter, a notice of intent to enforce a restored
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1 copyright that complies with regulations of the

2 Copyright Office that shall be published in the Fed3 eral Register no later than 60 days prior to the

4 TRIPs effective date.

5 ‘‘(B) As against a particular reliance party, the

6 owner serves upon that reliance party a proper no7 tice of intent to enforce a restored copyright.

8 ‘‘(3) Notwithstanding the provisions of paragraph

9 (2), no reliance party shall be subject to liability under

10 this title, for any act other than reproduction of the work

11 in which a restored copyright subsists, if such act is per12 formed prior to the completion of 12 months after the ear13 lier of publication of the title of the restored work in the

14 Federal Register or receipt of notice in compliance with

15 paragraph (2)(B).

16 ‘‘(4) Notwithstanding any other provision of law, a

17 reliance party shall be subject to statutory damages or at18 torney’s fees only with respect to any act of infringement

19 committed after both—

20 ‘‘(A) January 1, 2000; and

21 ‘‘(B) receipt of notice that complies with sub22 section (e) (1), (2), and (4).

23 ‘‘(e) NOTICES OF INTENT TO ENFORCE A RESTORED

24 COPYRIGHT.—(1) Any notice of intent shall clearly iden25 tify—
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1 ‘‘(A) the person who owns the restored copy2 right; and

3 ‘‘(B) the title of the restorable work, includ4 ing—

5 ‘‘(i) an English translation of a foreign

6 language title; and

7 ‘‘(ii) alternative titles by which the work,

8 or a derivative work based thereon, may reason9 ably be expected to have been known in the

10 United States, and any other information speci11 fied by regulation.

12 ‘‘(2) If a work has no formal title, it shall be de13 scribed in sufficient detail so as to maximize the prob14 ability of its identification. Such notice shall be signed by

15 the owner of the restored copyright or his agent. If such

16 notice is signed by an agent, the agency shall have been

17 constituted in a writing signed by the owner prior to exe18 cution of notice by the agent.

19 ‘‘(3) For a notice filed with the Copyright Office—

20 ‘‘(A) a reasonable fee may be imposed to cover

21 its receipt, processing, recordation, or publication of

22 the information set out in such notice of intent; and

23 ‘‘(B) minor errors and omissions may be cor24 rected after the period established in subsection
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1 (d)(2)(A), and such corrections shall be published in

2 the Federal Register.

3 ‘‘(4) For a notice served upon a reliance party, the

4 notice shall identify with substantial precision the use to

5 which the owner of the restored copyright objects.

6 ‘‘(5) Any material false statement or claim knowingly

7 made in any notice of intent shall make void all claims

8 and assertions set out therein, with respect to all titles

9 set out therein.

10 ‘‘(6) The Copyright Office shall publish in the Fed11 eral Register, on a quarterly basis, beginning no later than

12 4 months after the TRIPs effective date, a list containing

13 at least the information required under paragraph (1) with

14 respect to restored copyrights as to which a notice of in15 tent has been filed. With respect to works whose copy16 rights are restored after the TRIPs effective date, the

17 Copyright Office shall publish a list containing at least

18 the information required under paragraph (1) with respect

19 to restored copyrights as to which a notice of intent has

20 been filed, on a quarterly basis as established by regula21 tion.

22 ‘‘(7) Such lists shall be cumulative on an annual

23 basis. In order to facilitate the public identification of re24 stored copyrights as to which enforcement is intended, at
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1 least one complete list shall be maintained in one or more

2 files distinct from other Copyright Office records.

3 ‘‘(f) EFFECT OF RESTORATION OF COPYRIGHT IN

4 DERIVATIVE WORKS, COLLECTIVE WORKS, AND COM5 PILATIONS.—A copyright restored under this section shall

6 protect only the copyrightable authorship contributed to

7 the work whose title is set out in the notice of intent. Nei8 ther a restored copyright in a work upon which a deriva9 tive work is based nor a restored copyright in a separately

10 copyrightable work contained in a collective work or com11 pilation shall be enforceable against a reliance party unless

12 a notice of intent has been filed in the Copyright Office

13 or served on the reliance party.

14 ‘‘(g) IMMUNITY FROM WARRANTY AND RELATED LI15 ABILITY.—(1) No person who warranted, promised or oth16 erwise undertook to guarantee that a work created by such

17 person infringes no rights of another, and which warranty,

18 promise, or guarantee is breached by virtue of the restora19 tion of copyright under this section, shall be liable to any

20 claimant seeking legal, equitable, arbitral, or administra21 tive relief of any type whatsoever therefore.

22 ‘‘(2) No person shall be compelled to perform, or held

23 liable for failure to perform, any act the performance of

24 which is made infringing under the provisions of this sec25 tion.
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1 ‘‘(h) NO ESTOPPEL.—The act of filing any notice de2 scribed in subsection (e) shall not prejudice the ability of

3 a person to seek at any time a judicial determination that

4 a particular work was never in the public domain in the

5 United States.

6 ‘‘(i) PROCLAMATION OF COPYRIGHT RESTORA7 TION.—Whenever the President finds that a particular

8 foreign nation extends, to works by authors who are na9 tionals or domiciliaries of the United States or to works

10 that are first published in the United States, restored

11 copyright protection to a similar extent as that provided

12 to restorable works under this section, the President may

13 by proclamation extend protection under this section to

14 works of which one or more of the authors is, on the date

15 of first publication, a national, domiciliary, or sovereign

16 authority of that nation, or which was first published in

17 that nation. The President may revise, suspend, or revoke

18 any such proclamation or impose any conditions or limita19 tions on protection under a proclamation.

20 ‘‘(j) DEFINITIONS.—For the purposes of this section

21 and section 109(a):

22 ‘‘(1) The term ‘date of adherence or proclama23 tion’ means the earlier of the dates upon which a

24 foreign country that, as of the TRIPs effective date,

25 is neither a member of the Berne Union or World
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1 Trade Organization, nor the subject of a proclama2 tion under section 104A(i)—

3 ‘‘(A) becomes a member of either the

4 Berne Union or World Trade Organization; or

5 ‘‘(B) is effectively proclaimed under section

6 104A(i).

7 ‘‘(2) The term ‘date of restoration’ of a re8 stored copyright means—

9 ‘‘(A) the TRIPs effective date, if the work

10 is restorable work on that date; or

11 ‘‘(B) the date of adherence or proclama12 tion.

13 ‘‘(3) The term ‘eligible country’ means a coun14 try, not the United States, that on the date copy15 right is restored under the provisions of this section

16 has either—

17 ‘‘(A) joined the World Trade Organization

18 or adhered to the Berne Convention for the

19 Protection of Literary and Artistic Works; or

20 ‘‘(B) been the subject of a proclamation

21 under subsection (i).

22 ‘‘(4) The term ‘reliance party’ means a person

23 who, prior to the date of enactment of the Intellec24 tual Property Rights General Agreement on Tariffs

25 and Trade Implementation Act of 1994, or with re-
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1 spect to a restorable work having a source country

2 that was not an eligible country until after the

3 TRIPs effective date, prior to the date of adherence

4 or proclamation—

5 ‘‘(A) was engaged to a significant extent

6 in, and, as of the relevant date, was continuing

7 to do or authorize any of the acts set out in

8 section 106 with respect to a restorable work;

9 or

10 ‘‘(B) had, in preparing to do such acts, ei11 ther—

12 ‘‘(i) acquired a substantial number of

13 copies or phonorecords of a restorable

14 work; or

15 ‘‘(ii) made substantial monetary in16 vestments in respect of such work.

17 ‘‘(5)(A) The term ‘restorable work’ means an

18 original work of authorship that is not protected

19 under this title by virtue of—

20 ‘‘(i) noncompliance with formalities im21 posed at any time by United States copyright

22 law, including failure of renewal, lack of proper

23 notice, or failure to comply with the manufac24 turing requirement;
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1 ‘‘(ii) the absence of copyright relations be2 tween the United States and the source coun3 try; or

4 ‘‘(iii) by reason of section 301(c); but not

5 in the public domain in its source country

6 that—

7 ‘‘(I) has at least one author or, if the

8 work is a sound recording a producer, who

9 was, at the time the work was created, a

10 national or domiciliary of an eligible coun11 try; and

12 ‘‘(II) if published, was published ini13 tially in an eligible country and not pub14 lished within 30 days thereafter in the

15 United States.

16 ‘‘(B) No work in which the copyright was ever

17 owned or administered by the Alien Property Custo18 dian which could if restored, be owned by a govern19 ment or instrumentality thereof, shall be a restorable

20 work.

21 ‘‘(6) The term ‘restored copyright’ means a

22 copyright that becomes effective under the provisions

23 of this section, without regard to whether such copy24 right was ever previously in effect in the United

25 States.
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1 ‘‘(7)(A) The term ‘source country’ of a

2 restorable work means—

3 ‘‘(i) not the United States; and

4 ‘‘(ii)(I) in the case of an unpublished work,

5 the eligible country in which—

6 ‘‘(aa) the author is a national or

7 domiciliary; or

8 ‘‘(bb) if a restorable work has more

9 than one author, the majority of foreign

10 authors are nationals or domiciliaries; or

11 ‘‘(II) in the case of a published work, the

12 eligible country in which the work is initially

13 published.

14 ‘‘(B) If under subparagraph (A)(ii)(I) of this

15 definition, no majority exists, or under subparagraph

16 (A)(ii)(II) of this definition, a restorable work was

17 published on the same day in two or more eligible

18 countries, then the source country shall be the coun19 try other than the United States having the most

20 significant contacts with the work.

21 ‘‘(8) The term ‘TRIPs effective date’ is the

22 date upon which the obligations under the Agree23 ment on Trade-Related Aspects of Intellectual Prop24 erty become effective with respect to the United

25 States.’’.
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1 (b) LIMITATION ON EXCLUSIVE RIGHTS.—Section

2 109(a) of title 17, United States Code, is amended by

3 striking out ‘‘copy or phonorecord.’’ and inserting ‘‘copy

4 or phonorecord; except that the sale or other disposition,

5 without the authorization of the owner of a restored copy6 right, of copies or phonorecords manufactured before the

7 date of restoration of works in which copyright has been

8 restored under the provisions of section 104A of this title

9 shall be authorized under this section—

10 ‘‘(1) only during the post-restoration grace pe11 riod afforded to reliance parties established by sec12 tion 104A(d)(3); and

13 ‘‘(2) thereafter, only as part of a sale or dis14 position of no more than one copy or phonorecord at

15 a time.’’.

16 (c) TECHNICAL AND CONFORMING AMENDMENT.—

17 The table of sections for chapter 1 of title 17, United

18 States Code, is amended by amending the item relating

19 to section 104A to read:

‘‘104A. Copyright in certain works.’’.

20 SEC. 6. DEFINITION OF ‘‘ABANDONMENT’’.

21 Section 45 of the Act entitled ‘‘An Act to provide for

22 the registration and protection of trademarks used in com23 merce, to carry out the provisions of certain international

24 conventions, and for other purposes’’, approved July 5,

25 1946, commonly referred to as the Trademark Act of 1946
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1 (15 U.S.C. 1127) is amended by amending the paragraph

2 defining ‘‘abandonment’’ to read as follows:

3 ‘‘A mark shall be deemed to be ‘abandoned’ when ei4 ther of the following occurs:

5 ‘‘(1) When its use has been discontinued with

6 intent not to resume such use. Intent not to resume

7 may be inferred from circumstances. Nonuse for

8 three consecutive years shall be prima facie evidence

9 of abandonment. ‘Use’ of a mark means the bona

10 fide use of that mark made in the ordinary course

11 of trade, and not made merely to reserve a right in

12 a mark.

13 ‘‘(2) When any course of conduct of the owner,

14 including acts of omission as well as commission,

15 causes the mark to become the generic name for the

16 goods or services on or in connection with which it

17 is used or otherwise to lose its significance as a

18 mark. Purchaser motivation shall not be a test for

19 determining abandonment under this paragraph.’’.

20 SEC. 7. NONREGISTRABILITY OF MISLEADING GEO21 GRAPHIC INDICATIONS FOR WINES AND

22 SPIRITS.

23 Section 2 of the Act entitled ‘‘An Act to provide for

24 the registration and protection of trademarks used in com25 merce, to carry out the provisions of certain international
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1 conventions, and for other purposes’’, approved July 5,

2 1946, commonly referred to as the Trademark Act of 1946

3 (15 U.S.C. 1052(a)) is amended by amending subsection

4 (a) to read as follows:

5 ‘‘(a) Consists of or comprises immoral, deceptive, or

6 scandalous matter; or matter which may disparage or

7 falsely suggest a connection with persons, living or dead,

8 institutions, beliefs, or national symbols, or bring them

9 into contempt, or disrepute; or a geographical indication

10 which, when used on or in connection with wines or spirits,

11 identifies a place other than the origin of the goods and

12 is first used on or in connection with wines or spirits by

13 the applicant on or after the date of entry into force of

14 the World Trade Organization Agreement as referred to

15 under the Uruguay Round Implementation Act.’’.

16 SEC. 8. TREATMENT OF INVENTIVE ACTIVITY.

17 (a) IN GENERAL.—Section 104 of title 35, United

18 States Code, is amended to read as follows:

19 ‘‘§ 104. Invention made abroad

20 ‘‘(a) IN GENERAL.—In proceedings in the Patent and

21 Trademark Office, in the courts, and before any other

22 competent authority, an applicant for a patent, or a pat23 entee may not establish a date of invention by reference

24 to knowledge or use thereof, or other activity with respect

25 thereto, in a foreign country other than a NAFTA country
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1 or a WTO Member country, except as provided in sections

2 119 and 365 of this title. Where an invention was made

3 by a person, civil or military, while domiciled in the United

4 States or a NAFTA country or a WTO Member country

5 serving in any other country in connection with operations

6 by or on behalf of the United States or a NAFTA country

7 or a WTO Member country, respectively, the person shall

8 be entitled to the same rights of priority in the United

9 States with respect to such invention as if such invention

10 had been made in the United States or a NAFTA country

11 or a WTO Member country, respectively. To the extent

12 that any information in a NAFTA country or a WTO

13 Member country concerning knowledge, use, or other ac14 tivity relevant to proving or disproving a date of invention

15 has not been made available for use in a proceeding in

16 the Office, a court, or any other competent authority to

17 the same extent as such information could be made avail18 able in the United States, the Commissioner, court, or

19 such other authority shall draw appropriate inferences, or

20 take other action permitted by statute, rule, or regulation,

21 in favor of the party that requested the information in

22 the proceeding.

23 ‘‘(b) DEFINITIONS.—For purposes of this section:

24 ‘‘(1) The term ‘NAFTA country’ has the mean25 ing given that term in section 2(4) of the North
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1 American Free Trade Agreement Implementation

2 Act.

3 ‘‘(2) The term ‘WTO Member country’ has the

4 meaning given that term under the Uruguay Round

5 Implementation Act.’’.

6 (b) EFFECTIVE DATE.—The amendments made by

7 this section shall apply to all patent applications that are

8 filed on or after the date that is 1 year after the date

9 of entry into force of the WTO Agreement, as referred

10 to in the Uruguay Round Implementation Act, except that

11 an applicant for a patent, or a patentee, may not establish

12 a date of invention that is earlier than the effective date

13 of this amendment by reference to knowledge or use there14 of, or other activity with respect thereto, in a World Trade

15 Organization country, except as provided in sections 119

16 and 365 of title 35, United States Code.

17 SEC. 9. PATENT RIGHTS CONFERRED.

18 (a) CONTENTS OF A PATENT.—Section 154 of title

19 35, United States Code, is amended to read as follows:

20 ‘‘§ 154. Contents and term of patent

21 ‘‘(a) IN GENERAL.—Every patent shall contain a

22 short title of the invention and a grant to the patentee,

23 his heirs or assigns, of the right to exclude others from

24 making, using, offering for sale, or selling the invention

25 throughout the United States and, if the invention is a
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1 process, of the right to exclude others from using, offering

2 for sale, or selling throughout the United States, or im3 porting into the United States, products made by that

4 process, referring to the specification for the particulars

5 thereof. Subject to the payment of fees as provided for

6 in this title, such grant shall be for a term beginning on

7 the date on which the patent issues and ending 20 years

8 from the date on which the application for the patent was

9 filed in the United States or, if the application contains

10 a specific reference to an earlier filed application or appli11 cations under sections 120, 121, or 365(c) of this title,

12 from the date on which the earliest such application was

13 filed. Priority under sections 119, 365(a), or 365(b) of

14 this title shall not be taken into account in determining

15 the term of a patent. A copy of the specification and draw16 ings shall be annexed to the patent and be a part thereof.

17 ‘‘(b) EXTENSION OF TERM IF CERTAIN DELAY.—

18 Where the issuance of an original patent is delayed be19 cause of a proceeding under section 135(a) of this title

20 or the application is placed under an order pursuant to

21 section 181 of this title, the term of the patent shall be

22 extended for the period of delay up to 5 years.’’.

23 (b) DEFINITION OF INFRINGEMENT.—Section 271 of

24 title 35, United States Code, is amended—

25 (1) in subsection (a)—
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1 (A) by inserting ‘‘, offers to sell,’’ after

2 ‘‘uses’’; and

3 (B) by inserting ‘‘or importing into the

4 United States any patented invention’’ after

5 ‘‘the United States’’;

6 (2) in subsection (c) by striking out ‘‘sells’’ and

7 inserting ‘‘offers to sell or sells within the United

8 States or imports into the United States for such

9 purposes’’;

10 (3) in subsection (e)—

11 (A) paragraph (1) by striking out ‘‘or sell’’

12 and inserting ‘‘offer to sell, or sell within the

13 United States or import into the United

14 States’’;

15 (B) paragraph (3) by striking out ‘‘or sell16 ing’’ and inserting ‘‘offering to sell, or selling

17 within the United States or importing it’’;

18 (C) paragraph (4)(B) by striking out ‘‘or

19 sale’’ and inserting ‘‘offer to sell, or sale within

20 the United States or importation into the

21 United States for such purposes’’; and

22 (D) paragraph (4)(C) by striking out ‘‘or

23 sale’’ and inserting ‘‘offer to sell, or sale within

24 the United States or importation into the Unit25 ed States’’; and
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1 (4) in subsection (g)—

2 (A) in the first sentence by striking out

3 ‘‘sells’’ and inserting ‘‘offers to sell, sells,’’;

4 (B) in the second sentence by inserting

5 ‘‘offer to sell,’’ after ‘‘importation,’’; and

6 (C) in the second sentence by inserting ‘‘,

7 offer to sell’’ after ‘‘other use’’.

8 (c) CONFORMING AMENDMENTS.—(1) Section

9 41(c)(2) of title 35, United States Code, is amended to

10 read as follows:

11 ‘‘(2) No patent, the term of which has been

12 maintained as a result of the acceptance of a pay13 ment of a maintenance fee under this subsection,

14 shall abridge or affect the right of any person or his

15 successors in business who made, purchased, or used

16 anything protected by the patent within the United

17 States, or imported anything protected by the patent

18 into the United States after the 6-month grace pe19 riod but prior to the acceptance of a maintenance

20 fee under this subsection, to continue the use of, to

21 offer for sale, or to sell to others to be used, offered

22 for sale, or sold, the specific thing so made, pur23 chased, used, or imported. The court before which

24 such matter is in question may provide for the con25 tinued manufacture, use, offer for sale, or sale of the
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1 thing made, purchased, or used within the United

2 States, or imported into the United States, as speci3 fied, or for the manufacture, use, offer for sale, or

4 sale in the United States of which substantial prepa5 ration was made after the 6-month grace period but

6 before the acceptance of a maintenance fee under

7 this subsection, and it may also provide for the con8 tinued practice of any process, practice, or for the

9 practice of which substantial preparation was made,

10 after the 6-month grace period but prior to the ac11 ceptance of a maintenance fee under this subsection,

12 to the extent and under such terms as the court

13 deems equitable for the protection of investments

14 made or business commenced after the 6-month

15 grace period but before the acceptance of a mainte16 nance fee under the subsection.’’.

17 (2) The second paragraph of section 252 of title 35,

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

19 ‘‘No reissued patent shall abridge or affect the right

20 of any person or his successors in business who, prior to

21 the grant of a reissue, made, purchased, or used within

22 the United States, or imported into the United States any23 thing patented by the reissued patent, to continue the use

24 of, to offer to sell, or to sell to others to be used, offered

25 for sale, or sold, the specific thing so made, purchased,
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1 used, or imported unless the making, using, offering for

2 sale, or selling of such thing infringes a valid claim of the

3 reissued patent which was in the original patent. The

4 court before which such matter is in question may provide

5 for the continued manufacture, use, offer for sale, or sale

6 of the thing made, purchased or used, or imported as spec7 ified, or for the manufacture, use, offer for sale, or sale

8 in the United States of which substantial preparation was

9 made before the grant of the reissue, and it may also pro10 vide for the continued practice of any process patented by

11 the reissue, practiced, or for the practice of which substan12 tial preparation was made, prior to the grant of the re13 issue, to the extent and under such terms as the court

14 deems equitable for the protection of investments made

15 or business commenced before the grant of the reissue.’’.

16 (3) Section 262 of title 35, United States Code, is

17 amended—

18 (A) by inserting ‘‘, or offer to sell,’’ after ‘‘may

19 make use’’; and

20 (B) by inserting ‘‘within the United States, or

21 import into the United States,’’ after ‘‘or sell the

22 patented invention’’.

23 (4) Section 272 of title 35, United States Code, is

24 amended by inserting ‘‘offered for sale,’’ after ‘‘vehicle and

25 is not’’.
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1 (5) Section 287 of title 35, United States Code, is

2 amended—

3 (A) in subsection (a) by striking out ‘‘making

4 or selling any patented article for or under them,’’

5 and inserting ‘‘making, offering for sale, or selling

6 within the United States any patented article for or

7 under them, or importing any patented article into

8 the United States for such purposes,’’;

9 (B) in subsection (b)(1)(C) by inserting ‘‘offer

10 for sale,’’ after ‘‘importation, use,’’;

11 (C) in subsection (b)(4)(A) by inserting ‘‘or of12 fered for sale’’ after ‘‘or sold’’;

13 (D) in subsection (b)(4)(A)(ii) by inserting

14 ‘‘offer for sale,’’ after ‘‘importation, use,’’;

15 (E) in subsection (b)(4)(C) by inserting ‘‘of16 fered for sale or’’ after ‘‘patented process which

17 have’’; and

18 (F) in subsection (b)(4)(C) by inserting ‘‘or im19 ported into the United States,’’ after ‘‘United

20 States’’.

21 (6) Section 292(a) of title 35, United States Code,

22 is amended—

23 (A) by inserting ‘‘offered for sale,’’ after ‘‘any24 thing made, used,’’;
29

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1 (B) by inserting ‘‘within the United States, or

2 imported into the United States’’ before ‘‘by him’’;

3 and

4 (C) by striking out ‘‘made or sold’’ and insert5 ing ‘‘made, offered for sale, sold, or imported’’.

6 (7) Section 295 of title 35, United States Code, is

7 amended by inserting ‘‘, offer for sale,’’ after ‘‘importa8 tion, sale’’.

9 (8) Section 307(b) of title 35, United States Code,

10 is amended by inserting ‘‘within the United States, or im11 ported into the United States,’’ after ‘‘purchased, or

12 used’’.

13 SEC. 10. PATENT TERM AND INTERNAL PRIORITY.

14 (a) TERM.—Section 154 of title 35, United States

15 Code, is amended to read as follows:

16 ‘‘§ 154. Contents and term of patent

17 ‘‘(a) IN GENERAL.—Every patent shall contain a

18 short title of the invention and a grant to the patentee,

19 his heirs or assigns, of the right to exclude others from

20 making, using, offering for sale, or selling the invention

21 throughout the United States and, if the invention is a

22 process, of the right to exclude others from using, offering

23 for sale, or selling throughout the United States, or im24 porting into the United States, products made by that

25 process, referring to the specification for the particulars
30

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1 thereof. Subject to the payment of fees as provided for

2 in this title, such grant shall be for a term beginning on

3 the date on which the patent issues and ending 20 years

4 from the date on which the application for the patent was

5 filed in the United States or, if the application contains

6 a specific reference to an earlier filed application or appli7 cations under sections 120, 121, or 365(c) of this title,

8 from the date on which the earliest such application was

9 filed. Priority under sections 119, 365(a), or 365(b) of

10 this title shall not be taken into account in determining

11 the term of the patent. A copy of the specification and

12 drawings shall be annexed to the patent and be a part

13 thereof.

14 ‘‘(b) EXTENSION OF TERM IN CERTAIN DELAY.—

15 Where the issuance of an original patent is delayed be16 cause of a proceeding under section 135(a) of this title

17 or the application is placed under an order pursuant to

18 section 181 of this title, the term of the patent shall be

19 extended for the period of delay up to 5 years. Any and

20 all extensions available under this subsection shall not ex21 tend the term of an original patent for more than 5 years.

22 ‘‘(c) TERMS OF CERTAIN PATENTS.—Except for pat23 ents for designs, the term of a patent in force on the effec24 tive date of this section shall be the greater of the 20-

25 year term provided in this section or 17 years after the
31

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1 date of the grant. The remedies of sections 283, 284, and

2 285 of title 35, United States Code, shall not apply to

3 any acts which were commenced or for which significant

4 investment was made before the date of acceptance of the

5 World Trade Organization Agreement by the United

6 States and which became infringing because of the change

7 in the term of a patent; except that such acts may only

8 be continued upon the payment of an equitable remunera9 tion to the patentee.’’.

10 (b) ESTABLISHMENT OF A DOMESTIC PRIORITY SYS11 TEM.—(1) Section 119 of title 35, United States Code,

12 is amended to read as follows:

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

14 ‘‘(a) IN GENERAL.—An application for patent for an

15 invention filed in this country by any person who has, or

16 whose legal representatives or assigns have, previously

17 filed an application for a patent for the same invention

18 in a foreign country which affords similar privileges in the

19 case of applications filed in the United States shall have

20 the same effect as the same application would have if filed

21 in this country on the date on which the application for

22 patent for the same invention was first filed in such for23 eign country, if the application in this country is filed

24 within 12 months from the earliest date on which such

25 foreign application was filed; but no patent shall be grant-
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1 ed on any application for patent for an invention which

2 had been patented or described in a printed publication

3 in any country more than 1 year before the date of the

4 actual filing of the application in this country, or which

5 had been in public use or on sale in this country more

6 than 1 year prior to such filing.

7 ‘‘(b) RIGHT OF PRIORITY.—No application for patent

8 shall be entitled to a right of priority under subsection

9 (a) unless a claim therefor and a certified copy of the

10 original foreign application, specification, and drawings

11 upon which it is based are filed in the Patent and Trade12 mark Office before the patent is granted, or at such time

13 during the pendency of the application as required by the

14 Commissioner not earlier than 6 months after the filing

15 of the application in this country. Such certification shall

16 be made by the patent office of the foreign country in

17 which filed and show the date of the application and of

18 the filing of the specification and other papers. The Com19 missioner may require a translation of the papers filed if

20 not in the English language and such other information

21 as he deems necessary.

22 ‘‘(c) FOREIGN FILING.—In like manner and subject

23 to the same conditions and requirements, the right pro24 vided under subsection (a) may be based upon a subse25 quent regularly filed application in the same foreign coun-
33

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1 try instead of the first filed foreign application, provided

2 that any foreign application has been withdrawn, aban3 doned, or otherwise disposed of, without having been laid

4 open to public inspection and without leaving any rights

5 outstanding, and has not served, nor thereafter shall

6 serve, as a basis for claiming a right of priority.

7 ‘‘(d) INVENTOR’S CERTIFICATES.—Applications for

8 inventor’s certificates filed in a foreign country in which

9 applicants have a right to apply, at their discretion, either

10 for a patent or for an inventor’s certificate shall be treated

11 in this country in the same manner and have the same

12 effect for purpose of the right of priority under subsection

13 (a) as applications for patents, subject to the same condi14 tions and requirements of this section as apply to applica15 tions for patents. Such applicants shall be entitled to the

16 benefits of the Stockholm Revision of the Paris Convention

17 at the time of such filing.

18 ‘‘(e) PROVISIONAL APPLICATION.—An application for

19 patent filed under sections 111(a) or 363 of this title for

20 an invention disclosed in the manner provided by the first

21 paragraph of section 112 of this title in a provisional ap22 plication filed under section 111(b) of this title, by an in23 ventor or inventors named in the provisional application

24 shall have the same effect, as to such invention, as though

25 filed on the date of the provisional application filed under
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1 section 111(b) of this title, if the application for patent

2 filed under sections 111(a) or 363 of this title is filed with3 in 12 months from the date on which the provisional appli4 cation was filed and if it contains or is amended to contain

5 a specific reference to the provisional application. A provi6 sional application filed under section 111(b) of this title

7 may not be relied upon in any proceeding in the Patent

8 and Trademark Office unless the fee set forth in sub9 section 41(a)(1)(C) has been paid and the provisional ap10 plication was pending on the filing date of the application

11 for patent under sections 111(a) or 363 of this title.’’.

12 (2) Section 41(a)(1) of title 35, United States Code,

13 is amended by adding at the end the following new sub14 paragraph:

15 ‘‘(C) On filing each provisional application

16 for an original patent, $150.’’.

17 (3) Section 111 of title 35, United States Code, is

18 amended to read as follows:

19 ‘‘§ 111. Application

20 ‘‘(a) IN GENERAL.—(1) Application for patent shall

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

22 as otherwise provided in this title, in writing to the Com23 missioner. Such application shall include—

24 ‘‘(A) a specification as prescribed by section

25 112 of this title;
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1 ‘‘(B) a drawing as prescribed by section 113 of

2 this title; and

3 ‘‘(C) an oath by the applicant as prescribed by

4 section 115 of this title.

5 ‘‘(2) The application must be accompanied by the fee

6 required by law. The fee and oath may be submitted after

7 the specification and any required drawing are submitted,

8 within such period and under such conditions, including

9 the payment of a surcharge, as may be prescribed by the

10 Commissioner. Upon failure to submit the fee and oath

11 within such prescribed period, the application shall be re12 garded as abandoned, unless it is shown to the satisfaction

13 of the Commissioner that the delay in submitting the fee

14 and oath was unavoidable or unintentional. The filing date

15 of an application shall be the date on which the specifica16 tion and any required drawing are received in the Patent

17 and Trademark Office.

18 ‘‘(b) PROVISIONAL APPLICATIONS.—(1) A provisional

19 application for patent shall be made, or authorized to be

20 made, by the inventor, in accordance with regulations pre21 scribed by the Commissioner. Such application shall in22 clude—

23 ‘‘(A) a specification as prescribed by the first

24 paragraph of section 112 of this title; and
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1 ‘‘(B) a drawing as prescribed by section 113 of

2 this title.

3 ‘‘(2) A claim shall not be required in a provisional

4 application. The application must be accompanied by the

5 fee required by law. The fee may be submitted after the

6 specification and any required drawing are submitted,

7 within such period and under such conditions, including

8 the payment of a surcharge, as may be prescribed by the

9 Commissioner. Upon failure to submit the fee within such

10 prescribed period, the application shall be regarded as

11 abandoned, unless it is shown to the satisfaction of the

12 Commissioner that the delay in submitting the fee was un13 avoidable or unintentional. The filing date of a provisional

14 application shall be the date on which the specification and

15 any required drawing are received in the Patent and

16 Trademark Office. The provisional application shall be re17 garded as abandoned 12 months after its filing date and

18 shall not be subject to revival thereafter. Subject to all

19 the conditions in this subsection, sections 111(b)(2) and

20 119(e) and as prescribed by the Commissioner, an applica21 tion for patent filed under section 111(a) of this title may

22 be treated as a provisional application for patent.

23 ‘‘(3) A provisional application shall not be entitled to

24 the right of priority of any other application under sec25 tions 119 or 365(a) of this title or the benefit of an earlier
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1 filing date in the United States under sections 120, 121,

2 or 365(c) of this title.

3 ‘‘(4) The provisions of this title relating to applica4 tions for patent shall be applicable to provisional applica5 tions for patent, except as otherwise stated and except

6 that provisional applications for patent shall not be subject

7 to sections 115, 131, 135, and 157 of this title.’’.

8 (c) TECHNICAL AND CONFORMING AMENDMENTS.—

9 (1) Section 156(a)(2) of title 35, United States Code, is

10 amended by adding ‘‘under subsection (e)(1) of this sec11 tion’’ after ‘‘extended’’.

12 (2) Section 172 of title 35, United States Code, is

13 amended—

14 (A) by striking out ‘‘section 119’’ and inserting

15 ‘‘section 119 (a) through (d)’’; and

16 (B) by inserting at the end ‘‘The right of prior17 ity provided for by section 119(e) of this title shall

18 not apply to designs.’’.

19 (3) Section 173 of title 35, United States Code, is

20 amended by inserting ‘‘after the date of grant’’ after

21 ‘‘years’’.

22 (4) Section 365 of title 35, United States Code, is

23 amended—
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1 (A) in subsection (a) by striking out ‘‘section

2 119’’ and inserting ‘‘section 119 (a) through (d)’’;

3 and

4 (B) in subsection (b) by striking out ‘‘the first

5 paragraph of section 119’’ and inserting ‘‘section

6 119(a)’’.

7 (5) Section 373 of title 35, United States Code, is

8 amended by striking out ‘‘section 119’’ and inserting ‘‘sec9 tion 119 (a) through (d)’’.

10 (6) The table of sections for chapter 11 of title 35,

11 United States Code, is amended—

12 (A) by striking the item relating to section 111

13 and inserting the following:

‘‘111. Application.’’;

14 and

15 (B) by striking the item relating to section 119

16 and inserting the following:

‘‘119. Benefit of earlier filing date; right of priority.’’.

17 SEC. 11. EFFECTIVE DATE.

18 (a) IN GENERAL.—Subject to subsection (b), the pro19 visions of this Act and the amendments made by this Act

20 shall take effect 1 year after the date of entry into force

21 of the World Trade Organization Agreement as referred

22 to under the Uruguay Round Implementation Act.

23 (b) PATENT TERM AND INTERNAL PRIORITY.—Sec24 tion 10 shall take effect 6 months after the date of enact-
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1 ment of this Act and shall apply to all applications filed

2 in the United States on or after the effective date. The

3 term of a patent granted on a plant or utility application

4 that is filed after the effective date and that contains a

5 specific reference to an earlier filed application under the

6 provisions of sections 120, 121, or 365(c) of title 35, Unit7 ed States Code, shall be determined from the filing date

8 of the earliest filed application, a reference to which is

9 made under sections 120, 121, or 365(c) of such title.

Æ

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