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[Congressional Bills 103th Congress]
[From the U.S. Government Publishing Office]
[S. 2368 Introduced in Senate (IS)]

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.

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

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Trade-Related Aspects of 
Intellectual Property Rights Implementation Act of 1994''.

SEC. 2. RENTAL RIGHTS IN COMPUTER PROGRAMS.

    Section 804(c) of the Computer Software Rental Amendments Act of 
1990 (Public Law 101-650; 104 Stat. 5089, 5136) is amended by striking 
out the first sentence.

SEC. 3. CREATION AND TRAFFICKING IN BOOTLEG SOUND RECORDINGS 
              PROHIBITED.

    (a) In General.--Chapter 113 of title 18, United States Code, is 
amended by inserting after section 2319 the following new section:
``Sec. 2319a. Creation of and traffic in bootleg sound recordings 
              prohibited
    ``(a) Whoever, willfully and for purposes of commercial advantage 
or private financial gain, without the consent of a performer or a 
performer's agent--
            ``(1) fixes or causes to be fixed in a sound recording;
            ``(2) broadcasts, transmits, or otherwise communicates to 
        the public or causes to be so broadcast, transmitted, or 
        otherwise communicated, the sounds of a live performance; or
            ``(3) reproduces, distributes, sells, rents, offers for 
        sale or rent, transports, broadcasts, transmits, or otherwise 
        communicates to the public or possesses, for the purpose of--
                    ``(A) creating any article in violation of 
                paragraph (1); or
                    ``(B) fixing the sounds therein,
shall, upon judgment of conviction, be fined not more than $250,000 or 
imprisoned for not more than 5 years, or both.
    ``(b) When any person is convicted of any violation of subsection 
(a), the court in its judgment of conviction shall, in addition to the 
penalty therein prescribed, order the forfeiture, destruction, or other 
disposition of the applicable articles, implements, devices, and 
equipment as required under section 4 (b) and (d) of the Intellectual 
Property Rights General Agreement on Tariffs and Trade Implementation 
Act of 1994.
    ``(c) The provisions of this section do not preempt any State 
statute or civil or criminal cause of action arising under a State's 
common law.''.
    (b) Technical and Conforming Amendment.--The table of sections for 
chapter 113 of title 18, United States Code, is amended by inserting 
after the item relating to section 2319 the following:

``2319a. Creation of and traffic in bootleg sound recordings 
                            prohibited.''.
    (c) Effective Date.--This section shall take effect 1 year after 
the date of entry into force of the World Trade Organization Agreement 
as referred to under the Uruguay Round Implementation Act and shall 
apply to--
            (1) all performances fixed on and after that date; and
            (2)(A) all traffic in articles containing sounds fixed 
        without their performer's authorization; and
            (B) all broadcasts, transmissions or other disseminations 
        of sounds fixed without their performer's authorization on and 
        after that date without regard to the date upon which the 
        article containing such sounds was fixed.

SEC. 4. PROHIBITION OF CREATION AND TRAFFICKING IN BOOTLEG SOUND 
              RECORDINGS.

    (a) In General.--Whoever, without the consent of a performer or a 
performer's agent--
            (1) fixes or causes to be fixed in a sound recording;
            (2) broadcasts, transmits, or otherwise communicates to the 
        public or causes to be so broadcast, transmitted, or otherwise 
        communicated the sounds of a live performance; or
            (3) reproduces, distributes, sells, rents, offers for sale 
        or rent, transports, broadcasts, transmits, or otherwise 
        communicates to the public or possesses, for the purpose of--
                    (A) creating any article in violation of paragraph 
                (1); or
                    (B) fixing the sounds therein,
shall, upon judgment of liability in a civil proceeding, be subject to 
the sanctions under sections 502 through 505 of title 17, United States 
Code, as if he were an infringer of copyright under section 501 of such 
title.
    (b) Disposition of Articles Containing Unauthorized Fixations.--
When any person is held liable for a violation of subsection (a), the 
court in its judgment shall, in addition to the other relief therein 
granted, order the forfeiture and destruction or other disposition of 
all articles created in violation thereof and all implements, devices, 
or equipment used in the manufacture of such articles.
    (c) No Preemption.--The provisions of this section do not preempt 
any State statute or civil or criminal cause of action arising under a 
State's common law.
    (d) Foreign-Manufactured Articles.--(1) In a case where the fixing 
of sounds in articles outside the United States would have been a 
violation of subsection (a) if said fixation had taken place within the 
United States, the importation, sale, rental, or other distribution of 
such articles is prohibited. Persons committing these acts shall be 
subject to the sanctions set out in subsection (a) to the same extent 
as if that subsection had been violated.
    (2)(A) The Secretary of the Treasury and the United States Postal 
Service shall separately or jointly prescribe regulations for the 
enforcement of the provisions of this section prohibiting importation.
    (B) The Secretary of the Treasury shall prescribe, by regulation, a 
procedure under which any performer or representative thereof may, upon 
payment of a specified fee, be entitled to notification by the United 
States Customs Service of the importation of articles that appear to 
consist of fixations of a particular performance.
    (C) Articles imported in violation of the importation prohibitions 
of this section are subject to seizure and forfeiture in the same 
manner as property imported in violation of the customs revenue laws. 
Forfeited articles shall be destroyed as directed by the Secretary of 
the Treasury or the court, as the case may be, except that the articles 
may be returned to the country of export whenever it is shown to the 
satisfaction of the Secretary of the Treasury that the importer had no 
reasonable grounds for believing that his or her acts constituted a 
violation of law.
    (e) Effective Date.--This section shall take effect 1 year after 
the date of entry into force of the World Trade Organization Agreement 
as referred to under the Uruguay Round Implementation Act and shall 
apply to--
            (1) all performances fixed on and after that date; and
            (2)(A) all traffic in articles containing sounds fixed 
        without their performer's authorization; and
            (B) all broadcasts, transmissions or other disseminations 
        of sounds fixed without their performer's authorization on and 
        after that date without regard to the date upon which the 
        article containing such sounds was fixed.

SEC. 5. RESTORATION OF COPYRIGHT.

    (a) In General.--Section 104A of title 17, United States Code, is 
amended to read as follows:
``Sec. 104A. Copyright in certain works
    ``(a) Restoration of Copyright; Term of Restored Copyright.--(1) 
Copyright in a restorable work shall vest automatically on the date of 
restoration.
    ``(2) Subject to the provisions of subsections (b) through (j), any 
restorable work shall have copyright protection under this title for 
the remainder of the term of copyright protection that it would have 
otherwise enjoyed in the United States.
    ``(3) Copyrights in certain motion pictures and works included 
therein as to which restoration was properly sought under section 104A 
of this title as it was in force on the day prior to the effective date 
of this section shall be deemed to have been restored thereunder, but 
shall otherwise be subject to all of the provisions of this section.
    ``(b) Ownership of Restored Copyright.--A restored copyright shall 
vest initially in the author of a restorable work as determined under 
the law of its source country.
    ``(c) Eligibility To File Notice of Intent To Enforce a Restored 
Copyright Against Reliance Parties.--(1) Any person who owns a restored 
copyright, or any exclusive right therein, may file or serve a notice 
of intent to enforce that copyright against reliance parties under the 
provisions of subsections (d) and (e) of this section.
    ``(2) The filing or service of such a notice shall create no 
presumption as to the truth of any statement set out in such notice.
    ``(d) Remedies and Limitations Thereon.--(1) Subject to paragraphs 
(2) through (4) of this subsection, the remedies set out in chapter 5 
of this title shall be available, in respect of a restored copyright, 
immediately upon restoration, with respect to any act committed on or 
after the date of restoration.
    ``(2) The remedies for infringement set out in chapter 5 of this 
title shall be available against reliance parties only upon 
satisfaction of at least one of the following conditions:
            ``(A) The owner of the restored copyright files, between 
        the date of restoration and 24 months thereafter, a notice of 
        intent to enforce a restored copyright that complies with 
        regulations of the Copyright Office that shall be published in 
        the Federal Register no later than 60 days prior to the TRIPs 
        effective date.
            ``(B) As against a particular reliance party, the owner 
        serves upon that reliance party a proper notice of intent to 
        enforce a restored copyright.
    ``(3) Notwithstanding the provisions of paragraph (2), no reliance 
party shall be subject to liability under this title, for any act other 
than reproduction of the work in which a restored copyright subsists, 
if such act is performed prior to the completion of 12 months after the 
earlier of publication of the title of the restored work in the Federal 
Register or receipt of notice in compliance with paragraph (2)(B).
    ``(4) Notwithstanding any other provision of law, a reliance party 
shall be subject to statutory damages or attorney's fees only with 
respect to any act of infringement committed after both--
            ``(A) January 1, 2000; and
            ``(B) receipt of notice that complies with subsection (e) 
        (1), (2), and (4).
    ``(e) Notices of Intent To Enforce a Restored Copyright.--(1) Any 
notice of intent shall clearly identify--
            ``(A) the person who owns the restored copyright; and
            ``(B) the title of the restorable work, including--
                    ``(i) an English translation of a foreign language 
                title; and
                    ``(ii) alternative titles by which the work, or a 
                derivative work based thereon, may reasonably be 
                expected to have been known in the United States, and 
                any other information specified by regulation.
    ``(2) If a work has no formal title, it shall be described in 
sufficient detail so as to maximize the probability of its 
identification. Such notice shall be signed by the owner of the 
restored copyright or his agent. If such notice is signed by an agent, 
the agency shall have been constituted in a writing signed by the owner 
prior to execution of notice by the agent.
    ``(3) For a notice filed with the Copyright Office--
            ``(A) a reasonable fee may be imposed to cover its receipt, 
        processing, recordation, or publication of the information set 
        out in such notice of intent; and
            ``(B) minor errors and omissions may be corrected after the 
        period established in subsection (d)(2)(A), and such 
        corrections shall be published in the Federal Register.
    ``(4) For a notice served upon a reliance party, the notice shall 
identify with substantial precision the use to which the owner of the 
restored copyright objects.
    ``(5) Any material false statement or claim knowingly made in any 
notice of intent shall make void all claims and assertions set out 
therein, with respect to all titles set out therein.
    ``(6) The Copyright Office shall publish in the Federal Register, 
on a quarterly basis, beginning no later than 4 months after the TRIPs 
effective date, a list containing at least the information required 
under paragraph (1) with respect to restored copyrights as to which a 
notice of intent has been filed. With respect to works whose copyrights 
are restored after the TRIPs effective date, the Copyright Office shall 
publish a list containing at least the information required under 
paragraph (1) with respect to restored copyrights as to which a notice 
of intent has been filed, on a quarterly basis as established by 
regulation.
    ``(7) Such lists shall be cumulative on an annual basis. In order 
to facilitate the public identification of restored copyrights as to 
which enforcement is intended, at least one complete list shall be 
maintained in one or more files distinct from other Copyright Office 
records.
    ``(f) Effect of Restoration of Copyright in Derivative Works, 
Collective Works, and Compilations.--A copyright restored under this 
section shall protect only the copyrightable authorship contributed to 
the work whose title is set out in the notice of intent. Neither a 
restored copyright in a work upon which a derivative work is based nor 
a restored copyright in a separately copyrightable work contained in a 
collective work or compilation shall be enforceable against a reliance 
party unless a notice of intent has been filed in the Copyright Office 
or served on the reliance party.
    ``(g) Immunity From Warranty and Related Liability.--(1) No person 
who warranted, promised or otherwise undertook to guarantee that a work 
created by such person infringes no rights of another, and which 
warranty, promise, or guarantee is breached by virtue of the 
restoration of copyright under this section, shall be liable to any 
claimant seeking legal, equitable, arbitral, or administrative relief 
of any type whatsoever therefore.
    ``(2) No person shall be compelled to perform, or held liable for 
failure to perform, any act the performance of which is made infringing 
under the provisions of this section.
    ``(h) No Estoppel.--The act of filing any notice described in 
subsection (e) shall not prejudice the ability of a person to seek at 
any time a judicial determination that a particular work was never in 
the public domain in the United States.
    ``(i) Proclamation of Copyright Restoration.--Whenever the 
President finds that a particular foreign nation extends, to works by 
authors who are nationals or domiciliaries of the United States or to 
works that are first published in the United States, restored copyright 
protection to a similar extent as that provided to restorable works 
under this section, the President may by proclamation extend protection 
under this section to works of which one or more of the authors is, on 
the date of first publication, a national, domiciliary, or sovereign 
authority of that nation, or which was first published in that nation. 
The President may revise, suspend, or revoke any such proclamation or 
impose any conditions or limitations on protection under a 
proclamation.
    ``(j) Definitions.--For the purposes of this section and section 
109(a):
            ``(1) The term `date of adherence or proclamation' means 
        the earlier of the dates upon which a foreign country that, as 
        of the TRIPs effective date, is neither a member of the Berne 
        Union or World Trade Organization, nor the subject of a 
        proclamation under section 104A(i)--
                    ``(A) becomes a member of either the Berne Union or 
                World Trade Organization; or
                    ``(B) is effectively proclaimed under section 
                104A(i).
            ``(2) The term `date of restoration' of a restored 
        copyright means--
                    ``(A) the TRIPs effective date, if the work is 
                restorable work on that date; or
                    ``(B) the date of adherence or proclamation.
            ``(3) The term `eligible country' means a country, not the 
        United States, that on the date copyright is restored under the 
        provisions of this section has either--
                    ``(A) joined the World Trade Organization or 
                adhered to the Berne Convention for the Protection of 
                Literary and Artistic Works; or
                    ``(B) been the subject of a proclamation under 
                subsection (i).
            ``(4) The term `reliance party' means a person who, prior 
        to the date of enactment of the Intellectual Property Rights 
        General Agreement on Tariffs and Trade Implementation Act of 
        1994, or with respect to a restorable work having a source 
        country that was not an eligible country until after the TRIPs 
        effective date, prior to the date of adherence or 
        proclamation--
                    ``(A) was engaged to a significant extent in, and, 
                as of the relevant date, was continuing to do or 
                authorize any of the acts set out in section 106 with 
                respect to a restorable work; or
                    ``(B) had, in preparing to do such acts, either--
                            ``(i) acquired a substantial number of 
                        copies or phonorecords of a restorable work; or
                            ``(ii) made substantial monetary 
                        investments in respect of such work.
            ``(5)(A) The term `restorable work' means an original work 
        of authorship that is not protected under this title by virtue 
        of--
                    ``(i) noncompliance with formalities imposed at any 
                time by United States copyright law, including failure 
                of renewal, lack of proper notice, or failure to comply 
                with the manufacturing requirement;
                    ``(ii) the absence of copyright relations between 
                the United States and the source country; or
                    ``(iii) by reason of section 301(c); but not in the 
                public domain in its source country that--
                            ``(I) has at least one author or, if the 
                        work is a sound recording a producer, who was, 
                        at the time the work was created, a national or 
                        domiciliary of an eligible country; and
                            ``(II) if published, was published 
                        initially in an eligible country and not 
                        published within 30 days thereafter in the 
                        United States.
            ``(B) No work in which the copyright was ever owned or 
        administered by the Alien Property Custodian which could if 
        restored, be owned by a government or instrumentality thereof, 
        shall be a restorable work.
            ``(6) The term `restored copyright' means a copyright that 
        becomes effective under the provisions of this section, without 
        regard to whether such copyright was ever previously in effect 
        in the United States.
            ``(7)(A) The term `source country' of a restorable work 
        means--
                    ``(i) not the United States; and
                    ``(ii)(I) in the case of an unpublished work, the 
                eligible country in which--
                            ``(aa) the author is a national or 
                        domiciliary; or
                            ``(bb) if a restorable work has more than 
                        one author, the majority of foreign authors are 
                        nationals or domiciliaries; or
                    ``(II) in the case of a published work, the 
                eligible country in which the work is initially 
                published.
            ``(B) If under subparagraph (A)(ii)(I) of this definition, 
        no majority exists, or under subparagraph (A)(ii)(II) of this 
        definition, a restorable work was published on the same day in 
        two or more eligible countries, then the source country shall 
        be the country other than the United States having the most 
        significant contacts with the work.
            ``(8) The term `TRIPs effective date' is the date upon 
        which the obligations under the Agreement on Trade-Related 
        Aspects of Intellectual Property become effective with respect 
        to the United States.''.
    (b) Limitation on Exclusive Rights.--Section 109(a) of title 17, 
United States Code, is amended by striking out ``copy or phonorecord.'' 
and inserting ``copy or phonorecord; except that the sale or other 
disposition, without the authorization of the owner of a restored 
copyright, of copies or phonorecords manufactured before the date of 
restoration of works in which copyright has been restored under the 
provisions of section 104A of this title shall be authorized under this 
section--
            ``(1) only during the post-restoration grace period 
        afforded to reliance parties established by section 104A(d)(3); 
        and
            ``(2) thereafter, only as part of a sale or disposition of 
        no more than one copy or phonorecord at a time.''.
    (c) Technical and Conforming Amendment.--The table of sections for 
chapter 1 of title 17, United States Code, is amended by amending the 
item relating to section 104A to read:

``104A. Copyright in certain works.''.

SEC. 6. DEFINITION OF ``ABANDONMENT''.

    Section 45 of the Act entitled ``An Act to provide for the 
registration and protection of trademarks used in commerce, to carry 
out the provisions of certain international conventions, and for other 
purposes'', approved July 5, 1946, commonly referred to as the 
Trademark Act of 1946 (15 U.S.C. 1127) is amended by amending the 
paragraph defining ``abandonment'' to read as follows:
    ``A mark shall be deemed to be `abandoned' when either of the 
following occurs:
            ``(1) When its use has been discontinued with intent not to 
        resume such use. Intent not to resume may be inferred from 
        circumstances. Nonuse for three consecutive years shall be 
        prima facie evidence of abandonment. `Use' of a mark means the 
        bona fide use of that mark made in the ordinary course of 
        trade, and not made merely to reserve a right in a mark.
            ``(2) When any course of conduct of the owner, including 
        acts of omission as well as commission, causes the mark to 
        become the generic name for the goods or services on or in 
        connection with which it is used or otherwise to lose its 
        significance as a mark. Purchaser motivation shall not be a 
        test for determining abandonment under this paragraph.''.

SEC. 7. NONREGISTRABILITY OF MISLEADING GEOGRAPHIC INDICATIONS FOR 
              WINES AND SPIRITS.

    Section 2 of the Act entitled ``An Act to provide for the 
registration and protection of trademarks used in commerce, to carry 
out the provisions of certain international conventions, and for other 
purposes'', approved July 5, 1946, commonly referred to as the 
Trademark Act of 1946 (15 U.S.C. 1052(a)) is amended by amending 
subsection (a) to read as follows:
    ``(a) Consists of or comprises immoral, deceptive, or scandalous 
matter; or matter which may disparage or falsely suggest a connection 
with persons, living or dead, institutions, beliefs, or national 
symbols, or bring them into contempt, or disrepute; or a geographical 
indication which, when used on or in connection with wines or spirits, 
identifies a place other than the origin of the goods and is first used 
on or in connection with wines or spirits by the applicant on or after 
the date of entry into force of the World Trade Organization Agreement 
as referred to under the Uruguay Round Implementation Act.''.

SEC. 8. TREATMENT OF INVENTIVE ACTIVITY.

    (a) In General.--Section 104 of title 35, United States Code, is 
amended to read as follows:
``Sec. 104. Invention made abroad
    ``(a) In General.--In proceedings in the Patent and Trademark 
Office, in the courts, and before any other competent authority, an 
applicant for a patent, or a patentee may not establish a date of 
invention by reference to knowledge or use thereof, or other activity 
with respect thereto, in a foreign country other than a NAFTA country 
or a WTO Member country, except as provided in sections 119 and 365 of 
this title. Where an invention was made by a person, civil or military, 
while domiciled in the United States or a NAFTA country or a WTO Member 
country serving in any other country in connection with operations by 
or on behalf of the United States or a NAFTA country or a WTO Member 
country, respectively, the person shall be entitled to the same rights 
of priority in the United States with respect to such invention as if 
such invention had been made in the United States or a NAFTA country or 
a WTO Member country, respectively. To the extent that any information 
in a NAFTA country or a WTO Member country concerning knowledge, use, 
or other activity relevant to proving or disproving a date of invention 
has not been made available for use in a proceeding in the Office, a 
court, or any other competent authority to the same extent as such 
information could be made available in the United States, the 
Commissioner, court, or such other authority shall draw appropriate 
inferences, or take other action permitted by statute, rule, or 
regulation, in favor of the party that requested the information in the 
proceeding.
    ``(b) Definitions.--For purposes of this section:
            ``(1) The term `NAFTA country' has the meaning given that 
        term in section 2(4) of the North American Free Trade Agreement 
        Implementation Act.
            ``(2) The term `WTO Member country' has the meaning given 
        that term under the Uruguay Round Implementation Act.''.
    (b) Effective Date.--The amendments made by this section shall 
apply to all patent applications that are filed on or after the date 
that is 1 year after the date of entry into force of the WTO Agreement, 
as referred to in the Uruguay Round Implementation Act, except that an 
applicant for a patent, or a patentee, may not establish a date of 
invention that is earlier than the effective date of this amendment by 
reference to knowledge or use thereof, or other activity with respect 
thereto, in a World Trade Organization country, except as provided in 
sections 119 and 365 of title 35, United States Code.

SEC. 9. PATENT RIGHTS CONFERRED.

    (a) Contents of a Patent.--Section 154 of title 35, United States 
Code, is amended to read as follows:
``Sec. 154. Contents and term of patent
    ``(a) In General.--Every patent shall contain a short title of the 
invention and a grant to the patentee, his heirs or assigns, of the 
right to exclude others from making, using, offering for sale, or 
selling the invention throughout the United States and, if the 
invention is a process, of the right to exclude others from using, 
offering for sale, or selling throughout the United States, or 
importing into the United States, products made by that process, 
referring to the specification for the particulars thereof. Subject to 
the payment of fees as provided for in this title, such grant shall be 
for a term beginning on the date on which the patent issues and ending 
20 years from the date on which the application for the patent was 
filed in the United States or, if the application contains a specific 
reference to an earlier filed application or applications under 
sections 120, 121, or 365(c) of this title, from the date on which the 
earliest such application was filed. Priority under sections 119, 
365(a), or 365(b) of this title shall not be taken into account in 
determining the term of a patent. A copy of the specification and 
drawings shall be annexed to the patent and be a part thereof.
    ``(b) Extension of Term if Certain Delay.--Where the issuance of an 
original patent is delayed because of a proceeding under section 135(a) 
of this title or the application is placed under an order pursuant to 
section 181 of this title, the term of the patent shall be extended for 
the period of delay up to 5 years.''.
    (b) Definition of Infringement.--Section 271 of title 35, United 
States Code, is amended--
            (1) in subsection (a)--
                    (A) by inserting ``, offers to sell,'' after 
                ``uses''; and
                    (B) by inserting ``or importing into the United 
                States any patented invention'' after ``the United 
                States'';
            (2) in subsection (c) by striking out ``sells'' and 
        inserting ``offers to sell or sells within the United States or 
        imports into the United States for such purposes'';
            (3) in subsection (e)--
                    (A) paragraph (1) by striking out ``or sell'' and 
                inserting ``offer to sell, or sell within the United 
                States or import into the United States'';
                    (B) paragraph (3) by striking out ``or selling'' 
                and inserting ``offering to sell, or selling within the 
                United States or importing it'';
                    (C) paragraph (4)(B) by striking out ``or sale'' 
                and inserting ``offer to sell, or sale within the 
                United States or importation into the United States for 
                such purposes''; and
                    (D) paragraph (4)(C) by striking out ``or sale'' 
                and inserting ``offer to sell, or sale within the 
                United States or importation into the United States''; 
                and
            (4) in subsection (g)--
                    (A) in the first sentence by striking out ``sells'' 
                and inserting ``offers to sell, sells,'';
                    (B) in the second sentence by inserting ``offer to 
                sell,'' after ``importation,''; and
                    (C) in the second sentence by inserting ``, offer 
                to sell'' after ``other use''.
    (c) Conforming Amendments.--(1) Section 41(c)(2) of title 35, 
United States Code, is amended to read as follows:
            ``(2) No patent, the term of which has been maintained as a 
        result of the acceptance of a payment of a maintenance fee 
        under this subsection, shall abridge or affect the right of any 
        person or his successors in business who made, purchased, or 
        used anything protected by the patent within the United States, 
        or imported anything protected by the patent into the United 
        States after the 6-month grace period but prior to the 
        acceptance of a maintenance fee under this subsection, to 
        continue the use of, to offer for sale, or to sell to others to 
        be used, offered for sale, or sold, the specific thing so made, 
        purchased, used, or imported. The court before which such 
        matter is in question may provide for the continued 
        manufacture, use, offer for sale, or sale of the thing made, 
        purchased, or used within the United States, or imported into 
        the United States, as specified, or for the manufacture, use, 
        offer for sale, or sale in the United States of which 
        substantial preparation was made after the 6-month grace period 
        but before the acceptance of a maintenance fee under this 
        subsection, and it may also provide for the continued practice 
        of any process, practice, or for the practice of which 
        substantial preparation was made, after the 6-month grace 
        period but prior to the acceptance of a maintenance fee under 
        this subsection, to the extent and under such terms as the 
        court deems equitable for the protection of investments made or 
        business commenced after the 6-month grace period but before 
        the acceptance of a maintenance fee under the subsection.''.
    (2) The second paragraph of section 252 of title 35, United States 
Code, is amended to read as follows:
    ``No reissued patent shall abridge or affect the right of any 
person or his successors in business who, prior to the grant of a 
reissue, made, purchased, or used within the United States, or imported 
into the United States anything patented by the reissued patent, to 
continue the use of, to offer to sell, or to sell to others to be used, 
offered for sale, or sold, the specific thing so made, purchased, used, 
or imported unless the making, using, offering for sale, or selling of 
such thing infringes a valid claim of the reissued patent which was in 
the original patent. The court before which such matter is in question 
may provide for the continued manufacture, use, offer for sale, or sale 
of the thing made, purchased or used, or imported as specified, or for 
the manufacture, use, offer for sale, or sale in the United States of 
which substantial preparation was made before the grant of the reissue, 
and it may also provide for the continued practice of any process 
patented by the reissue, practiced, or for the practice of which 
substantial preparation was made, prior to the grant of the reissue, to 
the extent and under such terms as the court deems equitable for the 
protection of investments made or business commenced before the grant 
of the reissue.''.
    (3) Section 262 of title 35, United States Code, is amended--
            (A) by inserting ``, or offer to sell,'' after ``may make 
        use''; and
            (B) by inserting ``within the United States, or import into 
        the United States,'' after ``or sell the patented invention''.
    (4) Section 272 of title 35, United States Code, is amended by 
inserting ``offered for sale,'' after ``vehicle and is not''.
    (5) Section 287 of title 35, United States Code, is amended--
            (A) in subsection (a) by striking out ``making or selling 
        any patented article for or under them,'' and inserting 
        ``making, offering for sale, or selling within the United 
        States any patented article for or under them, or importing any 
        patented article into the United States for such purposes,'';
            (B) in subsection (b)(1)(C) by inserting ``offer for 
        sale,'' after ``importation, use,'';
            (C) in subsection (b)(4)(A) by inserting ``or offered for 
        sale'' after ``or sold'';
            (D) in subsection (b)(4)(A)(ii) by inserting ``offer for 
        sale,'' after ``importation, use,'';
            (E) in subsection (b)(4)(C) by inserting ``offered for sale 
        or'' after ``patented process which have''; and
            (F) in subsection (b)(4)(C) by inserting ``or imported into 
        the United States,'' after ``United States''.
    (6) Section 292(a) of title 35, United States Code, is amended--
            (A) by inserting ``offered for sale,'' after ``anything 
        made, used,'';
            (B) by inserting ``within the United States, or imported 
        into the United States'' before ``by him''; and
            (C) by striking out ``made or sold'' and inserting ``made, 
        offered for sale, sold, or imported''.
    (7) Section 295 of title 35, United States Code, is amended by 
inserting ``, offer for sale,'' after ``importation, sale''.
    (8) Section 307(b) of title 35, United States Code, is amended by 
inserting ``within the United States, or imported into the United 
States,'' after ``purchased, or used''.

SEC. 10. PATENT TERM AND INTERNAL PRIORITY.

    (a) Term.--Section 154 of title 35, United States Code, is amended 
to read as follows:
``Sec. 154. Contents and term of patent
    ``(a) In General.--Every patent shall contain a short title of the 
invention and a grant to the patentee, his heirs or assigns, of the 
right to exclude others from making, using, offering for sale, or 
selling the invention throughout the United States and, if the 
invention is a process, of the right to exclude others from using, 
offering for sale, or selling throughout the United States, or 
importing into the United States, products made by that process, 
referring to the specification for the particulars thereof. Subject to 
the payment of fees as provided for in this title, such grant shall be 
for a term beginning on the date on which the patent issues and ending 
20 years from the date on which the application for the patent was 
filed in the United States or, if the application contains a specific 
reference to an earlier filed application or applications under 
sections 120, 121, or 365(c) of this title, from the date on which the 
earliest such application was filed. Priority under sections 119, 
365(a), or 365(b) of this title shall not be taken into account in 
determining the term of the patent. A copy of the specification and 
drawings shall be annexed to the patent and be a part thereof.
    ``(b) Extension of Term in Certain Delay.--Where the issuance of an 
original patent is delayed because of a proceeding under section 135(a) 
of this title or the application is placed under an order pursuant to 
section 181 of this title, the term of the patent shall be extended for 
the period of delay up to 5 years. Any and all extensions available 
under this subsection shall not extend the term of an original patent 
for more than 5 years.
    ``(c) Terms of Certain Patents.--Except for patents for designs, 
the term of a patent in force on the effective date of this section 
shall be the greater of the 20-year term provided in this section or 17 
years after the date of the grant. The remedies of sections 283, 284, 
and 285 of title 35, United States Code, shall not apply to any acts 
which were commenced or for which significant investment was made 
before the date of acceptance of the World Trade Organization Agreement 
by the United States and which became infringing because of the change 
in the term of a patent; except that such acts may only be continued 
upon the payment of an equitable remuneration to the patentee.''.
    (b) Establishment of a Domestic Priority System.--(1) Section 119 
of title 35, United States Code, is amended to read as follows:
``Sec. 119. Benefit of earlier filing date; right of priority
    ``(a) In General.--An application for patent for an invention filed 
in this country by any person who has, or whose legal representatives 
or assigns have, previously filed an application for a patent for the 
same invention in a foreign country which affords similar privileges in 
the case of applications filed in the United States shall have the same 
effect as the same application would have if filed in this country on 
the date on which the application for patent for the same invention was 
first filed in such foreign country, if the application in this country 
is filed within 12 months from the earliest date on which such foreign 
application was filed; but no patent shall be granted on any 
application for patent for an invention which had been patented or 
described in a printed publication in any country more than 1 year 
before the date of the actual filing of the application in this 
country, or which had been in public use or on sale in this country 
more than 1 year prior to such filing.
    ``(b) Right of Priority.--No application for patent shall be 
entitled to a right of priority under subsection (a) unless a claim 
therefor and a certified copy of the original foreign application, 
specification, and drawings upon which it is based are filed in the 
Patent and Trademark Office before the patent is granted, or at such 
time during the pendency of the application as required by the 
Commissioner not earlier than 6 months after the filing of the 
application in this country. Such certification shall be made by the 
patent office of the foreign country in which filed and show the date 
of the application and of the filing of the specification and other 
papers. The Commissioner may require a translation of the papers filed 
if not in the English language and such other information as he deems 
necessary.
    ``(c) Foreign Filing.--In like manner and subject to the same 
conditions and requirements, the right provided under subsection (a) 
may be based upon a subsequent regularly filed application in the same 
foreign country instead of the first filed foreign application, 
provided that any foreign application has been withdrawn, abandoned, or 
otherwise disposed of, without having been laid open to public 
inspection and without leaving any rights outstanding, and has not 
served, nor thereafter shall serve, as a basis for claiming a right of 
priority.
    ``(d) Inventor's Certificates.--Applications for inventor's 
certificates filed in a foreign country in which applicants have a 
right to apply, at their discretion, either for a patent or for an 
inventor's certificate shall be treated in this country in the same 
manner and have the same effect for purpose of the right of priority 
under subsection (a) as applications for patents, subject to the same 
conditions and requirements of this section as apply to applications 
for patents. Such applicants shall be entitled to the benefits of the 
Stockholm Revision of the Paris Convention at the time of such filing.
    ``(e) Provisional Application.--An application for patent filed 
under sections 111(a) or 363 of this title for an invention disclosed 
in the manner provided by the first paragraph of section 112 of this 
title in a provisional application filed under section 111(b) of this 
title, by an inventor or inventors named in the provisional application 
shall have the same effect, as to such invention, as though filed on 
the date of the provisional application filed under section 111(b) of 
this title, if the application for patent filed under sections 111(a) 
or 363 of this title is filed within 12 months from the date on which 
the provisional application was filed and if it contains or is amended 
to contain a specific reference to the provisional application. A 
provisional application filed under section 111(b) of this title may 
not be relied upon in any proceeding in the Patent and Trademark Office 
unless the fee set forth in subsection 41(a)(1)(C) has been paid and 
the provisional application was pending on the filing date of the 
application for patent under sections 111(a) or 363 of this title.''.
    (2) Section 41(a)(1) of title 35, United States Code, is amended by 
adding at the end the following new subparagraph:
                    ``(C) On filing each provisional application for an 
                original patent, $150.''.
    (3) Section 111 of title 35, United States Code, is amended to read 
as follows:
``Sec. 111. Application
    ``(a) In General.--(1) Application for patent shall be made, or 
authorized to be made, by the inventor, except as otherwise provided in 
this title, in writing to the Commissioner. Such application shall 
include--
            ``(A) a specification as prescribed by section 112 of this 
        title;
            ``(B) a drawing as prescribed by section 113 of this title; 
        and
            ``(C) an oath by the applicant as prescribed by section 115 
        of this title.
    ``(2) The application must be accompanied by the fee required by 
law. The fee and oath may be submitted after the specification and any 
required drawing are submitted, within such period and under such 
conditions, including the payment of a surcharge, as may be prescribed 
by the Commissioner. Upon failure to submit the fee and oath within 
such prescribed period, the application shall be regarded as abandoned, 
unless it is shown to the satisfaction of the Commissioner that the 
delay in submitting the fee and oath was unavoidable or unintentional. 
The filing date of an application shall be the date on which the 
specification and any required drawing are received in the Patent and 
Trademark Office.
    ``(b) Provisional Applications.--(1) A provisional application for 
patent shall be made, or authorized to be made, by the inventor, in 
accordance with regulations prescribed by the Commissioner. Such 
application shall include--
            ``(A) a specification as prescribed by the first paragraph 
        of section 112 of this title; and
            ``(B) a drawing as prescribed by section 113 of this title.
    ``(2) A claim shall not be required in a provisional application. 
The application must be accompanied by the fee required by law. The fee 
may be submitted after the specification and any required drawing are 
submitted, within such period and under such conditions, including the 
payment of a surcharge, as may be prescribed by the Commissioner. Upon 
failure to submit the fee within such prescribed period, the 
application shall be regarded as abandoned, unless it is shown to the 
satisfaction of the Commissioner that the delay in submitting the fee 
was unavoidable or unintentional. The filing date of a provisional 
application shall be the date on which the specification and any 
required drawing are received in the Patent and Trademark Office. The 
provisional application shall be regarded as abandoned 12 months after 
its filing date and shall not be subject to revival thereafter. Subject 
to all the conditions in this subsection, sections 111(b)(2) and 119(e) 
and as prescribed by the Commissioner, an application for patent filed 
under section 111(a) of this title may be treated as a provisional 
application for patent.
    ``(3) A provisional application shall not be entitled to the right 
of priority of any other application under sections 119 or 365(a) of 
this title or the benefit of an earlier filing date in the United 
States under sections 120, 121, or 365(c) of this title.
    ``(4) The provisions of this title relating to applications for 
patent shall be applicable to provisional applications for patent, 
except as otherwise stated and except that provisional applications for 
patent shall not be subject to sections 115, 131, 135, and 157 of this 
title.''.
    (c) Technical and Conforming Amendments.--(1) Section 156(a)(2) of 
title 35, United States Code, is amended by adding ``under subsection 
(e)(1) of this section'' after ``extended''.
    (2) Section 172 of title 35, United States Code, is amended--
            (A) by striking out ``section 119'' and inserting ``section 
        119 (a) through (d)''; and
            (B) by inserting at the end ``The right of priority 
        provided for by section 119(e) of this title shall not apply to 
        designs.''.
    (3) Section 173 of title 35, United States Code, is amended by 
inserting ``after the date of grant'' after ``years''.
    (4) Section 365 of title 35, United States Code, is amended--
            (A) in subsection (a) by striking out ``section 119'' and 
        inserting ``section 119 (a) through (d)''; and
            (B) in subsection (b) by striking out ``the first paragraph 
        of section 119'' and inserting ``section 119(a)''.
    (5) Section 373 of title 35, United States Code, is amended by 
striking out ``section 119'' and inserting ``section 119 (a) through 
(d)''.
    (6) The table of sections for chapter 11 of title 35, United States 
Code, is amended--
            (A) by striking the item relating to section 111 and 
        inserting the following:

``111. Application.'';
        and
            (B) by striking the item relating to section 119 and 
        inserting the following:

``119. Benefit of earlier filing date; right of priority.''.

SEC. 11. EFFECTIVE DATE.

    (a) In General.--Subject to subsection (b), the provisions of this 
Act and the amendments made by this Act shall take effect 1 year after 
the date of entry into force of the World Trade Organization Agreement 
as referred to under the Uruguay Round Implementation Act.
    (b) Patent Term and Internal Priority.--Section 10 shall take 
effect 6 months after the date of enactment of this Act and shall apply 
to all applications filed in the United States on or after the 
effective date. The term of a patent granted on a plant or utility 
application that is filed after the effective date and that contains a 
specific reference to an earlier filed application under the provisions 
of sections 120, 121, or 365(c) of title 35, United States Code, shall 
be determined from the filing date of the earliest filed application, a 
reference to which is made under sections 120, 121, or 365(c) of such 
title.
                                 <all>
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