Calendar No. 400

106TH CONGRESS

1ST SESSION H. R. 1907

AN ACT

To amend title 35, United States Code, to provide

enhanced protection for inventors and innovators,protect patent terms, reduce patent litigation,and for other purposes.

NOVEMBER 5, 1999

Reported with an amendment
II

Calendar No. 400

106TH CONGRESS

1ST SESSION H. R. 1907

IN THE SENATE OF THE UNITED STATES

AUGUST 4, 1999

Received

OCTOBER 8, 1999

Read twice and referred to the Committee on the Judiciary

NOVEMBER 5, 1999

Reported by Mr. HATCH, with an amendment

[Strike out all after the enacting clause and insert the part printed in italic]

AN ACT

To amend title 35, United States Code, to provide enhanced

protection for inventors and innovators, protect patent

terms, reduce patent litigation, 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 ‘‘American Inventors

5 Protection Act of 1999’’.

6 SEC. 2. TABLE OF CONTENTS.

7 The table of contents is as follows:
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Sec. 1. Short title.

Sec. 2. Table of contents.

TITLE I—INVENTORS’ RIGHTS

Sec. 101. Short title.

Sec. 102. Invention promotion services.

Sec. 103. Effective date.

TITLE II—FIRST INVENTOR DEFENSE

Sec. 201. Short title.

Sec. 202. Defense to patent infringement based on earlier inventor.

Sec. 203. Effective date and applicability.

TITLE III—PATENT TERM GUARANTEE

Sec. 301. Short title.

Sec. 302. Patent term guarantee authority.

Sec. 303. Continued examination of patent applications.

Sec. 304. Technical clarification.

Sec. 305. Effective date.

TITLE IV—UNITED STATES PUBLICATION OF PATENT

APPLICATIONS PUBLISHED ABROAD

Sec. 401. Short title.

Sec. 402. Publication.

Sec. 403. Time for claiming benefit of earlier filing date.

Sec. 404. Provisional rights.

Sec. 405. Prior art effect of published applications.

Sec. 406. Cost recovery for publication.

Sec. 407. Conforming amendments.

Sec. 408. Effective date.

TITLE V—OPTIONAL INTER PARTES REEXAMINATION

PROCEDURE

Sec. 501. Short title.

Sec. 502. Ex parte reexamination of patents.

Sec. 503. Definitions.

Sec. 504. Optional inter partes reexamination procedures.

Sec. 505. Conforming amendments.

Sec. 506. Report to Congress.

Sec. 507. Estoppel effect of reexamination.

Sec. 508. Effective date.

TITLE VI—PATENT AND TRADEMARK OFFICE

Sec. 601. Short title.

Subtitle A—United States Patent and Trademark Office

Sec. 611. Establishment of Patent and Trademark Office.

Sec. 612. Powers and duties.

Sec. 613. Organization and management.

Sec. 614. Public Advisory Committees.

Sec. 615. Patent and Trademark Office funding.
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Sec. 616. Conforming amendments.

Sec. 617. Trademark Trial and Appeal Board.

Sec. 618. Board of Patent Appeals and Interferences.

Sec. 619. Annual report of Director.

Sec. 620. Suspension or exclusion from practice.

Sec. 621. Pay of Director and Deputy Director.

Sec. 622. Study on Alternative Fee Structures.

Subtitle B—Effective Date; Technical Amendments

Sec. 631. Effective date.

Sec. 632. Technical and conforming amendments.

Subtitle C—Miscellaneous Provisions

Sec. 641. References.

Sec. 642. Exercise of authorities.

Sec. 643. Savings provisions.

Sec. 644. Transfer of assets.

Sec. 645. Delegation and assignment.

Sec. 646. Authority of Director of the Office of Management and Budget with

respect to functions transferred.

Sec. 647. Certain vesting of functions considered transfers.

Sec. 648. Availability of existing funds.

Sec. 649. Definitions.

TITLE VII—MISCELLANEOUS PATENT PROVISIONS

Sec. 701. Provisional applications.

Sec. 702. International applications.

Sec. 703. Certain limitations on damages for patent infringement not applicable.

Sec. 704. Electronic filing and publications.

Sec. 705. Study and report on biological deposits in support of biotechnology

patents.

Sec. 706. Prior invention.

Sec. 707. Prior art exclusion for certain commonly assigned patents.

1 TITLE I—INVENTORS’ RIGHTS

2 SEC. 101. SHORT TITLE.

3 This title may be cited as the ‘‘Inventors’ Rights

4 Act’’.

5 SEC. 102. INVENTION PROMOTION SERVICES.

6 Part I of title 35, United States Code, is amended

7 by adding after chapter 4 the following chapter:
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1 ‘‘CHAPTER 5—INVENTION PROMOTION

2 SERVICES

‘‘Sec.

‘‘51. Definitions.

‘‘52. Contracting requirements.

‘‘53. Standard provisions for cover notice.

‘‘54. Reports to customer required.

‘‘55. Mandatory contract terms.

‘‘56. Remedies.

‘‘57. Records of complaints.

‘‘58. Fraudulent representation by an invention promoter.

‘‘59. Rule of construction.

3 ‘‘§ 51. Definitions

4 ‘‘For purposes of this chapter—

5 ‘‘(1) the term ‘contract for invention promotion

6 services’ means a contract by which an invention

7 promoter undertakes invention promotion services

8 for a customer;

9 ‘‘(2) the term ‘customer’ means any person,

10 firm, partnership, corporation, or other entity who

11 enters into a financial relationship or a contract with

12 an invention promoter for invention promotion serv13 ices;

14 ‘‘(3) the term ‘invention promoter’ means any

15 person, firm, partnership, corporation, or other enti16 ty who offers to perform or performs for, or on be17 half of, a customer any act described under para18 graph (4), but does not include—
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1 ‘‘(A) any department or agency of the Fed2 eral Government or of a State or local govern3 ment;

4 ‘‘(B) any nonprofit, charitable, scientific,

5 or educational organization, qualified under ap6 plicable State law or described under section

7 170(b)(1)(A) of the Internal Revenue Code of

8 1986;

9 ‘‘(C) any person duly registered with, and

10 in good standing before, the United States Pat11 ent and Trademark Office acting within the

12 scope of that person’s registration to practice

13 before the Patent and Trademark Office, except

14 when that person performs any act described in

15 subparagraph (B) or (C) of paragraph (4); or

16 ‘‘(D) any person or entity involved in the

17 evaluation to determine commercial potential of,

18 or offering to license or sell, a utility patent or

19 a previously filed nonprovisional utility patent

20 application; and

21 ‘‘(4) the term ‘invention promotion services’

22 means, with respect to an invention by a customer,

23 any act involved in—

24 ‘‘(A) evaluating the invention to determine

25 its protectability as some form of intellectual
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1 property, other than evaluation by a person li2 censed by a State to practice law who is acting

3 solely within the scope of that person’s profes4 sional license;

5 ‘‘(B) evaluating the invention to determine

6 its commercial potential by any person for pur7 poses other than providing venture capital; or

8 ‘‘(C) marketing, brokering, offering to li9 cense or sell, or promoting the invention or a

10 product or service in which the invention is in11 corporated or used, except that the display only

12 of an invention at a trade show or exhibit shall

13 not be considered to be invention promotion

14 services.

15 ‘‘§ 52. Contracting requirements

16 ‘‘(a) IN GENERAL.—(1) Every contract for invention

17 promotion services shall be in writing and shall be subject

18 to the provisions of this chapter. A copy of the signed writ19 ten contract shall be given to the customer at the time

20 the customer enters into the contract.

21 ‘‘(2) If a contract is entered into for the benefit of

22 a third party, the identity and address of such party shall

23 be disclosed by such party’s agent and such party shall

24 be considered a customer for purposes of this chapter.
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1 ‘‘(b) REQUIREMENTS OF INVENTION PROMOTER.—

2 The invention promoter shall—

3 ‘‘(1) state in a written document, at the time

4 a customer enters into a contract for invention pro5 motion services, whether the usual business practice

6 of the invention promoter is to—

7 ‘‘(A) seek more than 1 contract in connec8 tion with an invention; or

9 ‘‘(B) seek to perform services in connection

10 with an invention in 1 or more phases, with the

11 performance of each phase covered in 1 or more

12 subsequent contracts; and

13 ‘‘(2) supply to the customer a copy of the writ14 ten document together with a written summary of

15 the usual business practices of the invention pro16 moter, including—

17 ‘‘(A) the usual business terms of contracts;

18 and

19 ‘‘(B) the approximate amount of the usual

20 fees or other consideration that may be required

21 from the customer for each of the services pro22 vided by the invention promoter.

23 ‘‘(c) RIGHT OF CUSTOMER TO CANCEL CONTRACT.—

24 (1) Notwithstanding any contractual provision to the con25 trary, a customer shall have the right to terminate a con-
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1 tract for invention promotion services by sending a written

2 letter to the invention promoter stating the customer’s in3 tent to cancel the contract. The letter of termination must

4 be deposited with the United States Postal Service on or

5 before 5 business days after the date upon which the cus6 tomer or the invention promoter executes the contract,

7 whichever is later.

8 ‘‘(2) Delivery of a promissory note, check, bill of ex9 change, or negotiable instrument of any kind to the inven10 tion promoter or to a third party for the benefit of the

11 invention promoter, without regard to the date or dates

12 appearing in such instrument, shall be deemed payment

13 received by the invention promoter on the date received

14 for purposes of this section.

15 ‘‘§ 53. Standard provisions for cover notice

16 ‘‘(a) CONTENTS.—Every contract for invention pro17 motion services shall have a conspicuous and legible cover

18 sheet attached with the following notice imprinted in bold19 face type of not less than 12-point size:

20 ‘YOU HAVE THE RIGHT TO TERMINATE THIS

21 CONTRACT. TO TERMINATE THIS CONTRACT,

22 YOU MUST SEND A WRITTEN LETTER TO THE

23 COMPANY STATING YOUR INTENT TO CANCEL

24 THIS CONTRACT.
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1 ‘THE LETTER OF TERMINATION MUST BE

2 DEPOSITED WITH THE UNITED STATES POSTAL

3 SERVICE ON OR BEFORE FIVE (5) BUSINESS

4 DAYS AFTER THE DATE ON WHICH YOU OR THE

5 COMPANY EXECUTE THE CONTRACT, WHICH6 EVER IS LATER.

7 ‘THE TOTAL NUMBER OF INVENTIONS

8 EVALUATED BY THE INVENTION PROMOTER

9 FOR COMMERCIAL POTENTIAL IN THE PAST

10 FIVE (5) YEARS IS XXXXX. OF THAT NUMBER,

11 XXXXX RECEIVED POSITIVE EVALUATIONS AND

12 XXXXX RECEIVED NEGATIVE EVALUATIONS.

13 ‘IF YOU ASSIGN EVEN A PARTIAL INTEREST

14 IN THE INVENTION TO THE INVENTION PRO15 MOTER, THE INVENTION PROMOTER MAY HAVE

16 THE RIGHT TO SELL OR DISPOSE OF THE IN17 VENTION WITHOUT YOUR CONSENT AND MAY

18 NOT HAVE TO SHARE THE PROFITS WITH YOU.

19 ‘THE TOTAL NUMBER OF CUSTOMERS WHO

20 HAVE CONTRACTED WITH THE INVENTION PRO21 MOTER IN THE PAST FIVE (5) YEARS IS XXXXX.

22 THE TOTAL NUMBER OF CUSTOMERS KNOWN

23 BY THIS INVENTION PROMOTER TO HAVE RE24 CEIVED, BY VIRTUE OF THIS INVENTION PRO25 MOTER’S PERFORMANCE, AN AMOUNT OF
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1 MONEY IN EXCESS OF THE AMOUNT PAID BY

2 THE CUSTOMER TO THIS INVENTION PRO3 MOTER IS XXXXXXX. AS A RESULT OF THE EF4 FORTS OF THIS INVENTION PROMOTER, XXXXX

5 NUMBER OF CUSTOMERS HAVE RECEIVED LI6 CENSE AGREEMENTS FOR THEIR INVENTIONS.

7 ‘THE OFFICERS OF THIS INVENTION PRO8 MOTER HAVE COLLECTIVELY OR INDIVIDUALLY

9 BEEN AFFILIATED IN THE LAST TEN (10) YEARS

10 WITH THE FOLLOWING INVENTION PROMOTION

11 COMPANIES: (LIST THE NAMES AND ADDRESSES

12 OF ALL PREVIOUS INVENTION PROMOTION

13 COMPANIES WITH WHICH THE PRINCIPAL OFFI14 CERS HAVE BEEN AFFILIATED AS OWNERS,

15 AGENTS, OR EMPLOYEES). YOU ARE ENCOUR16 AGED TO CHECK WITH THE UNITED STATES

17 PATENT AND TRADEMARK OFFICE, THE FED18 ERAL TRADE COMMISSION, YOUR STATE ATTOR19 NEY GENERAL’S OFFICE, AND THE BETTER

20 BUSINESS BUREAU FOR ANY COMPLAINTS

21 FILED AGAINST ANY OF THESE COMPANIES

22 WHICH RESULTED IN REGULATORY SANCTIONS

23 OR OTHER CORRECTIVE ACTIONS.

24 ‘YOU ARE ENCOURAGED TO CONSULT WITH

25 AN ATTORNEY OF YOUR OWN CHOOSING BE-
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1 FORE SIGNING THIS CONTRACT. BY PRO2 CEEDING WITHOUT THE ADVICE OF AN ATTOR3 NEY REGISTERED TO PRACTICE BEFORE THE

4 UNITED STATES PATENT AND TRADEMARK OF5 FICE, YOU COULD LOSE ANY RIGHTS YOU

6 MIGHT HAVE IN YOUR IDEA OR INVENTION.’.

7 ‘‘(b) OTHER REQUIREMENTS FOR COVER NOTICE.—

8 The cover notice shall contain the items required under

9 subsection (a) and the name, primary office address, and

10 local office address of the invention promoter, and may

11 contain no other matter.

12 ‘‘(c) DISCLOSURE OF CERTAIN CUSTOMERS NOT RE13 QUIRED.—The requirement in the notice set forth in sub14 section (a) to include the ‘TOTAL NUMBER OF CUS15 TOMERS WHO HAVE CONTRACTED WITH THE

16 INVENTION PROMOTER IN THE PAST FIVE (5)

17 YEARS’ need not include information with respect to cus18 tomers who have purchased trade show services, research,

19 advertising, or other nonmarketing services from the in20 vention promoter, nor with respect to customers who have

21 defaulted in their payment to the invention promoter.

22 ‘‘§ 54. Reports to customer required

23 ‘‘With respect to every contract for invention pro24 motion services, the invention promoter shall deliver to the

25 customer at the address specified in the contract, at least
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1 once every 3 months throughout the term of the contract,

2 a written report that identifies the contract and includes—

3 ‘‘(1) a full, clear, and concise description of the

4 services performed to the date of the report and of

5 the services yet to be performed and names of all

6 persons who it is known will perform the services;

7 and

8 ‘‘(2) the name and address of each person,

9 firm, corporation, or other entity to whom the sub10 ject matter of the contract has been disclosed, the

11 reason for each such disclosure, the nature of the

12 disclosure, and complete and accurate summaries of

13 all responses received as a result of those disclo14 sures.

15 ‘‘§ 55. Mandatory contract terms

16 ‘‘(a) MANDATORY TERMS.—Each contract for inven17 tion promotion services shall include in boldface type of

18 not less than 12-point size—

19 ‘‘(1) the terms and conditions of payment and

20 contract termination rights required under section

21 52;

22 ‘‘(2) a statement that the customer may avoid

23 entering into the contract by not making the initial

24 payment to the invention promoter;
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1 ‘‘(3) a full, clear, and concise description of the

2 specific acts or services that the invention promoter

3 undertakes to perform for the customer;

4 ‘‘(4) a statement as to whether the invention

5 promoter undertakes to construct, sell, or distribute

6 one or more prototypes, models, or devices embody7 ing the invention of the customer;

8 ‘‘(5) the full name and principal place of busi9 ness of the invention promoter and the name and

10 principal place of business of any parent, subsidiary,

11 agent, independent contractor, and any affiliated

12 company or person who it is known will perform any

13 of the services or acts that the invention promoter

14 undertakes to perform for the customer;

15 ‘‘(6) if any oral or written representation of es16 timated or projected customer earnings is given by

17 the invention promoter (or any agent, employee, offi18 cer, director, partner, or independent contractor of

19 such invention promoter), a statement of that esti20 mation or projection and a description of the data

21 upon which such representation is based;

22 ‘‘(7) the name and address of the custodian of

23 all records and correspondence relating to the con24 tracted for invention promotion services, and a state25 ment that the invention promoter is required to
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1 maintain all records and correspondence relating to

2 performance of the invention promotion services for

3 such customer for a period of not less than 2 years

4 after expiration of the term of such contract; and

5 ‘‘(8) a statement setting forth a time schedule

6 for performance of the invention promotion services,

7 including an estimated date in which such perform8 ance is expected to be completed.

9 ‘‘(b) INVENTION PROMOTER AS FIDUCIARY.—To the

10 extent that the description of the specific acts or services

11 affords discretion to the invention promoter with respect

12 to what specific acts or services shall be performed, the

13 invention promoter shall be deemed a fiduciary.

14 ‘‘(c) AVAILABILITY OF INFORMATION.—Records and

15 correspondence described under subsection (a)(7) shall be

16 made available after 7 days written notice to the customer

17 or the representative of the customer to review and copy

18 at a reasonable cost on the invention promoter’s premises

19 during normal business hours.

20 ‘‘§ 56. Remedies

21 ‘‘(a) IN GENERAL.—(1) Any contract for invention

22 promotion services that does not comply with the applica23 ble provisions of this chapter shall be voidable at the op24 tion of the customer.
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1 ‘‘(2) Any contract for invention promotion services

2 entered into in reliance upon any material false, fraudu3 lent, or misleading information, representation, notice, or

4 advertisement of the invention promoter (or any agent,

5 employee, officer, director, partner, or independent con6 tractor of such invention promoter) shall be voidable at

7 the option of the customer.

8 ‘‘(3) Any waiver by the customer of any provision of

9 this chapter shall be deemed contrary to public policy and

10 shall be void and unenforceable.

11 ‘‘(4) Any contract for invention promotion services

12 which provides for filing for and obtaining utility, design,

13 or plant patent protection shall be voidable at the option

14 of the customer unless the invention promoter offers to

15 perform or performs such act through a person duly reg16 istered to practice before, and in good standing with, the

17 Patent and Trademark Office.

18 ‘‘(b) CIVIL ACTION.—(1) Any customer who is in19 jured by a violation of this chapter by an invention pro20 moter or by any material false or fraudulent statement

21 or representation, or any omission of material fact, by an

22 invention promoter (or any agent, employee, director, offi23 cer, partner, or independent contractor of such invention

24 promoter) or by failure of an invention promoter to make

25 all the disclosures required under this chapter, may re-
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1 cover in a civil action against the invention promoter (or

2 the officers, directors, or partners of such invention pro3 moter) in addition to reasonable costs and attorneys’ fees,

4 the greater of—

5 ‘‘(A) $5,000; or

6 ‘‘(B) the amount of actual damages sustained

7 by the customer.

8 ‘‘(2) Notwithstanding paragraph (1), the court may

9 increase damages to not more than 3 times the amount

10 awarded, taking into account past complaints made

11 against the invention promoter that resulted in regulatory

12 sanctions or other corrective actions based on those

13 records compiled by the Director under section 57.

14 ‘‘(c) REBUTTABLE PRESUMPTION OF INJURY.—For

15 purposes of this section, substantial violation of any provi16 sion of this chapter by an invention promoter or execution

17 by the customer of a contract for invention promotion

18 services in reliance on any material false or fraudulent

19 statements or representations or omissions of material

20 fact shall establish a rebuttable presumption of injury.

21 ‘‘§ 57. Records of complaints

22 ‘‘(a) RELEASE OF COMPLAINTS.—The Director shall

23 make all complaints received by the United States Patent

24 and Trademark Office involving invention promoters pub-
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1 licly available, together with any response of the invention

2 promoters.

3 ‘‘(b) REQUEST FOR COMPLAINTS.—The Director

4 may request complaints relating to invention promotion

5 services from any Federal or State agency and include

6 such complaints in the records maintained under sub7 section (a), together with any response of the invention

8 promoters.

9 ‘‘§ 58. Fraudulent representation by an invention pro10 moter

11 ‘‘Whoever, in providing invention promotion services,

12 knowingly provides any false or misleading statement, rep13 resentation, or omission of material fact to a customer or

14 fails to make all the disclosures required under this chap15 ter, shall be guilty of a misdemeanor and fined not more

16 than $10,000 for each offense.

17 ‘‘§ 59. Rule of construction

18 ‘‘Except as expressly provided in this chapter, no pro19 vision of this chapter shall be construed to affect any obli20 gation, right, or remedy provided under any other Federal

21 or State law.’’.

22 SEC. 103. EFFECTIVE DATE.

23 This title and the amendments made by this title

24 shall take effect 60 days after the date of the enactment

25 of this Act.
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1 TITLE II—FIRST INVENTOR

2 DEFENSE

3 SEC. 201. SHORT TITLE.

4 This title may be cited as the ‘‘First Inventor Defense

5 Act’’.

6 SEC. 202. DEFENSE TO PATENT INFRINGEMENT BASED ON

7 EARLIER INVENTOR.

8 (a) DEFENSE.—Chapter 28 of title 35, United States

9 Code, is amended by adding at the end the following new

10 section:

11 ‘‘§ 273. Defense to infringement based on earlier in12 ventor

13 ‘‘(a) DEFINITIONS.—For purposes of this section—

14 ‘‘(1) the terms ‘commercially used’ and ‘com15 mercial use’ mean use of a method in the United

16 States, so long as such use is in connection with an

17 internal commercial use or an actual arm’s-length

18 sale or other arm’s-length commercial transfer of a

19 useful end result, whether or not the subject matter

20 at issue is accessible to or otherwise known to the

21 public, except that the subject matter for which com22 mercial marketing or use is subject to a premar23 keting regulatory review period during which the

24 safety or efficacy of the subject matter is estab25 lished, including any period specified in section
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1 156(g), shall be deemed ‘commercially used’ and in

2 ‘commercial use’ during such regulatory review pe3 riod;

4 ‘‘(2) in the case of activities performed by a

5 nonprofit research laboratory, or nonprofit entity

6 such as a university, research center, or hospital, a

7 use for which the public is the intended beneficiary

8 shall be considered to be a use described in para9 graph (1), except that the use—

10 ‘‘(A) may be asserted as a defense under

11 this section only for continued use by and in

12 the laboratory or nonprofit entity; and

13 ‘‘(B) may not be asserted as a defense

14 with respect to any subsequent commercializa15 tion or use outside such laboratory or nonprofit

16 entity;

17 ‘‘(3) the term ‘method’ means a method of

18 doing or conducting business; and

19 ‘‘(4) the ‘effective filing date’ of a patent is the

20 earlier of the actual filing date of the application for

21 the patent or the filing date of any earlier United

22 States, foreign, or international application to which

23 the subject matter at issue is entitled under section

24 119, 120, or 365 of this title.

25 ‘‘(b) DEFENSE TO INFRINGEMENT.—.
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1 ‘‘(1) IN GENERAL.—It shall be a defense to an

2 action for infringement under section 271 of this

3 title with respect to any subject matter that would

4 otherwise infringe one or more claims for a method

5 in the patent being asserted against a person, if

6 such person had, acting in good faith, actually re7 duced the subject matter to practice at least one

8 year before the effective filing date of such patent,

9 and commercially used the subject matter before the

10 effective filing date of such patent.

11 ‘‘(2) EXHAUSTION OF RIGHT.—The sale or

12 other disposition, of a useful end result produced by

13 a patented method, by a person entitled to assert a

14 defense under this section with respect to that useful

15 end result shall exhaust the patent owner’s rights

16 under the patent to the extent such rights would

17 have been exhausted had such sale or other disposi18 tion been made by the patent owner.

19 ‘‘(3) LIMITATIONS AND QUALIFICATIONS OF DE20 FENSE.—The defense to infringement under this

21 section is subject to the following:

22 ‘‘(A) PATENT.—A person may not assert

23 the defense under this section unless the inven24 tion for which the defense is asserted is for a

25 method.
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1 ‘‘(B) DERIVATION.—A person may not as2 sert the defense under this section if the subject

3 matter on which the defense is based was de4 rived from the patentee or persons in privity

5 with the patentee.

6 ‘‘(C) NOT A GENERAL LICENSE.—The de7 fense asserted by a person under this section is

8 not a general license under all claims of the

9 patent at issue, but extends only to the specific

10 subject matter claimed in the patent with re11 spect to which the person can assert a defense

12 under this chapter, except that the defense shall

13 also extend to variations in the quantity or vol14 ume of use of the claimed subject matter, and

15 to improvements in the claimed subject matter

16 that do not infringe additional specifically

17 claimed subject matter of the patent.

18 ‘‘(4) BURDEN OF PROOF.—A person asserting

19 the defense under this section shall have the burden

20 of establishing the defense by clear and convincing

21 evidence.

22 ‘‘(5) ABANDONMENT OF USE.—A person who

23 has abandoned commercial use of subject matter

24 may not rely on activities performed before the date

25 of such abandonment in establishing a defense under
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1 this section with respect to actions taken after the

2 date of such abandonment.

3 ‘‘(6) PERSONAL DEFENSE.—The defense under

4 this section may be asserted only by the person who

5 performed the acts necessary to establish the defense

6 and, except for any transfer to the patent owner, the

7 right to assert the defense shall not be licensed or

8 assigned or transferred to another person except as

9 an ancillary and subordinate part of a good faith as10 signment or transfer for other reasons of the entire

11 enterprise or line of business to which the defense

12 relates.

13 ‘‘(7) LIMITATION ON SITES.—A defense under

14 this section, when acquired as part of a good faith

15 assignment or transfer of an entire enterprise or line

16 of business to which the defense relates, may only be

17 asserted for uses at sites where the subject matter

18 that would otherwise infringe one or more of the

19 claims is in use before the later of the effective filing

20 date of the patent or the date of the assignment or

21 transfer of such enterprise or line of business.

22 ‘‘(8) UNSUCCESSFUL ASSERTION OF DE23 FENSE.—If the defense under this section is pleaded

24 by a person who is found to infringe the patent and

25 who subsequently fails to demonstrate a reasonable
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1 basis for asserting the defense, the court shall find

2 the case exceptional for the purpose of awarding at3 torney’s fees under section 285 of this title.

4 ‘‘(9) INVALIDITY.—A patent shall not be

5 deemed to be invalid under section 102 or 103 of

6 this title solely because a defense is raised or estab7 lished under this section.’’.

8 (b) CONFORMING AMENDMENT.—The table of sec9 tions at the beginning of chapter 28 of title 35, United

10 States Code, is amended by adding at the end the fol11 lowing new item:

‘‘273. Defense to infringement based on earlier inventor.’’.

12 SEC. 203. EFFECTIVE DATE AND APPLICABILITY.

13 This title and the amendments made by this title

14 shall take effect on the date of the enactment of this Act,

15 but shall not apply to any action for infringement that

16 is pending on such date of the enactment or with respect

17 to any subject matter for which an adjudication of in18 fringement, including a consent judgment, has been made

19 before such date of the enactment.

20 TITLE III—PATENT TERM

21 GUARANTEE

22 SEC. 301. SHORT TITLE.

23 This title may be cited as the ‘‘Patent Term Guar24 antee Act’’.
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1 SEC. 302. PATENT TERM GUARANTEE AUTHORITY.

2 (a) ADJUSTMENT OF PATENT TERM.—Section

3 154(b) of title 35, United States Code, is amended to read

4 as follows:

5 ‘‘(b) ADJUSTMENT OF PATENT TERM.—

6 ‘‘(1) PATENT TERM GUARANTEES.—

7 ‘‘(A) GUARANTEE OF PROMPT PATENT

8 AND TRADEMARK OFFICE RESPONSES.—Subject

9 to the limitations under paragraph (2), if the

10 issue of an original patent is delayed due to the

11 failure of the Patent and Trademark Office

12 to—

13 ‘‘(i) make a notification of the rejec14 tion of any claim for a patent or any objec15 tion or argument under section 132, or

16 give or mail a written notice of allowance

17 under section 151, within 14 months after

18 the date on which the application was filed;

19 ‘‘(ii) respond to a reply under section

20 132, or to an appeal taken under section

21 134, within 4 months after the date on

22 which the reply was filed or the appeal was

23 taken;

24 ‘‘(iii) act on an application within 4

25 months after the date of a decision by the

26 Board of Patent Appeals and Interferences
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1 under section 134 or 135 or a decision by

2 a Federal court under section 141, 145, or

3 146 in a case in which allowable claims re4 main in the application; or

5 ‘‘(iv) issue a patent within 4 months

6 after the date on which the issue fee was

7 paid under section 151 and all outstanding

8 requirements were satisfied,

9 the term of the patent shall be extended one

10 day for each day after the end of the period

11 specified in clause (i), (ii), (iii), or (iv), as the

12 case may be, until the action described in such

13 clause is taken.

14 ‘‘(B) GUARANTEE OF NO MORE THAN 3-

15 YEAR APPLICATION PENDENCY.—Subject to the

16 limitations under paragraph (2), if the issue of

17 an original patent is delayed due to the failure

18 of the Patent and Trademark Office to issue a

19 patent within 3 years after the actual filing

20 date of the application in the United States, not

21 including—

22 ‘‘(i) any time consumed by continued

23 examination of the application requested

24 by the applicant under section 132(b);
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1 ‘‘(ii) any time consumed by a pro2 ceeding under section 135(a), any time

3 consumed by the imposition of an order

4 pursuant to section 181, or any time con5 sumed by appellate review by the Board of

6 Patent Appeals and Interferences or by a

7 Federal court; or

8 ‘‘(iii) any delay in the processing of

9 the application by the Patent and Trade10 mark Office requested by the applicant ex11 cept as permitted by paragraph (3)(C),

12 the term of the patent shall be extended 1 day

13 for each day after the end of that 3-year period

14 until the patent is issued.

15 ‘‘(C) GUARANTEE OR ADJUSTMENTS FOR

16 DELAYS DUE TO INTERFERENCES, SECRECY OR17 DERS, AND APPEALS.—Subject to the limita18 tions under paragraph (2), if the issue of an

19 original patent is delayed due to—

20 ‘‘(i) a proceeding under section

21 135(a);

22 ‘‘(ii) the imposition of an order pursu23 ant to section 181; or

24 ‘‘(iii) appellate review by the Board of

25 Patent Appeals and Interferences or by a
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1 Federal court in a case in which the patent

2 was issued pursuant to a decision in the

3 review reversing an adverse determination

4 of patentability,

5 the term of the patent shall be extended one

6 day for each day of the pendency of the pro7 ceeding, order, or review, as the case may be.

8 ‘‘(2) LIMITATIONS.—

9 ‘‘(A) IN GENERAL.—To the extent that pe10 riods of delay attributable to grounds specified

11 in paragraph (1) overlap, the period of any ad12 justment granted under this subsection shall

13 not exceed the actual number of days the

14 issuance of the patent was delayed.

15 ‘‘(B) DISCLAIMED TERM.—No patent the

16 term of which has been disclaimed beyond a

17 specified date may be adjusted under this sec18 tion beyond the expiration date specified in the

19 disclaimer.

20 ‘‘(C) REDUCTION OF PERIOD OF ADJUST21 MENT.—

22 ‘‘(i) The period of adjustment of the

23 term of a patent under paragraph (1) shall

24 be reduced by a period equal to the period

25 of time during which the applicant failed
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1 to engage in reasonable efforts to conclude

2 prosecution of the application.

3 ‘‘(ii) With respect to adjustments to

4 patent term made under the authority of

5 paragraph (1)(B), an applicant shall be

6 deemed to have failed to engage in reason7 able efforts to conclude processing or ex8 amination of an application for the cumu9 lative total of any periods of time in excess

10 of 3 months that are taken to respond to

11 a notice from the Office making any rejec12 tion, objection, argument, or other request,

13 measuring such 3-month period from the

14 date the notice was given or mailed to the

15 applicant.

16 ‘‘(iii) The Director shall prescribe reg17 ulations establishing the circumstances

18 that constitute a failure of an applicant to

19 engage in reasonable efforts to conclude

20 processing or examination of an applica21 tion.

22 ‘‘(3) PROCEDURES FOR PATENT TERM ADJUST23 MENT DETERMINATION.—

24 ‘‘(A) The Director shall prescribe regula25 tions establishing procedures for the application
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1 for and determination of patent term adjust2 ments under this subsection.

3 ‘‘(B) Under the procedures established

4 under subparagraph (A), the Director shall—

5 ‘‘(i) make a determination of the pe6 riod of any patent term adjustment under

7 this subsection, and shall transmit a notice

8 of that determination with the written no9 tice of allowance of the application under

10 section 151; and

11 ‘‘(ii) provide the applicant one oppor12 tunity to request reconsideration of any

13 patent term adjustment determination

14 made by the Director.

15 ‘‘(C) The Director shall reinstate all or

16 part of the cumulative period of time of an ad17 justment under paragraph (2)(C) if the appli18 cant, prior to the issuance of the patent, makes

19 a showing that, in spite of all due care, the ap20 plicant was unable to respond within the 3-

21 month period, but in no case shall more than 3

22 additional months for each such response be23 yond the original 3-month period be reinstated.

24 ‘‘(D) The Director shall proceed to grant

25 the patent after completion of the Director’s de-
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1 termination of a patent term adjustment under

2 the procedures established under this sub3 section, notwithstanding any appeal taken by

4 the applicant of such determination.

5 ‘‘(4) APPEAL OF PATENT TERM ADJUSTMENT

6 DETERMINATION.—

7 ‘‘(A) An applicant dissatisfied with a de8 termination made by the Director under para9 graph (3) shall have remedy by a civil action

10 against the Director filed in the United States

11 District Court for the District of Columbia

12 within 180 days after the grant of the patent.

13 Chapter 7 of title 5 shall apply to such action.

14 Any final judgment resulting in a change to the

15 period of adjustment of the patent term shall be

16 served on the Director, and the Director shall

17 thereafter alter the term of the patent to reflect

18 such change.

19 ‘‘(B) The determination of a patent term

20 adjustment under this subsection shall not be

21 subject to appeal or challenge by a third party

22 prior to the grant of the patent.’’.

23 (b) CONFORMING AMENDMENTS.—

24 (1) Section 282 of title 35, United States Code,

25 is amended in the fourth paragraph by striking ‘‘156
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1 of this title’’ and inserting ‘‘154(b) or 156 of this

2 title’’.

3 (2) Section 1295(a)(4)(C) of title 28, United

4 States Code, is amended by striking ‘‘145 or 146’’

5 and inserting ‘‘145, 146, or 154(b)’’.

6 SEC. 303. CONTINUED EXAMINATION OF PATENT APPLICA7 TIONS.

8 Section 132 of title 35, United States Code, is

9 amended—

10 (1) in the first sentence by striking ‘‘Whenever’’

11 and inserting ‘‘(a) Whenever’’; and

12 (2) by adding at the end the following:

13 ‘‘(b) The Director shall prescribe regulations to pro14 vide for the continued examination of applications for pat15 ent at the request of the applicant. The Director may es16 tablish appropriate fees for such continued examination

17 and shall provide a 50 percent reduction in such fees for

18 small entities that qualify for reduced fees under section

19 41(h)(1) of this title.’’.

20 SEC. 304. TECHNICAL CLARIFICATION.

21 Section 156(a) of title 35, United States Code, is

22 amended in the matter preceding paragraph (1) by insert23 ing ‘‘, which shall include any patent term adjustment

24 granted under section 154(b),’’ after ‘‘the original expira25 tion date of the patent’’.
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1 SEC. 305. EFFECTIVE DATE.

2 (a) SECTIONS 302 AND 304.—The amendments made

3 by sections 302 and 304 shall take effect on the date of

4 the enactment of this Act and, except for a design patent

5 application filed under chapter 16 of title 35, United

6 States Code, shall apply to any application filed on or after

7 the date of the enactment of this Act.

8 (b) SECTION 303.—The amendments made by sec9 tion 303 shall take effect 6 months after the date of the

10 enactment of this Act.

11 TITLE IV—UNITED STATES PUB12 LICATION OF PATENT APPLI13 CATIONS PUBLISHED

14 ABROAD

15 SEC. 401. SHORT TITLE.

16 This title may be referred to as the ‘‘Publication of

17 Foreign Filed Applications Act’’.

18 SEC. 402. PUBLICATION.

19 (a) PUBLICATION.—Section 122 of title 35, United

20 States Code, is amended to read as follows:

21 ‘‘§ 122. Confidential status of applications; publica22 tion of patent applications

23 ‘‘(a) CONFIDENTIALITY.—Except as provided in sub24 section (b), applications for patents shall be kept in con25 fidence by the Patent and Trademark Office and no infor26 mation concerning any such application shall be given
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1 without authority of the applicant or owner unless nec2 essary to carry out the provisions of an Act of Congress

3 or in such special circumstances as may be determined by

4 the Director.

5 ‘‘(b) UNITED STATES PUBLICATION OF APPLICA6 TIONS PUBLISHED ABROAD.—

7 ‘‘(1) IN GENERAL.—(A) Subject to paragraph

8 (2), each application for patent, except applications

9 for design patents filed under chapter 16 and provi10 sional applications filed under section 111(b), shall

11 be published, in accordance with procedures deter12 mined by the Director, promptly upon the expiration

13 of a period of 18 months after the earliest filing date

14 for which a benefit is sought under this title. At the

15 request of the applicant, an application may be pub16 lished earlier than the end of such 18-month period.

17 ‘‘(B) No information concerning published pat18 ent applications shall be made available to the public

19 except as the Director determines.

20 ‘‘(C) Pursuant to this title and notwithstanding

21 any other provision of law, a determination by the

22 Director to release or not to release information con23 cerning a published patent application shall be final

24 and nonreviewable.
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1 ‘‘(2) EXCEPTIONS.—(A) An application that is

2 no longer pending shall not be published.

3 ‘‘(B) An application that is subject to a secrecy

4 order under section 181 shall not be published.

5 ‘‘(C)(i) If an applicant, upon filing, makes a re6 quest that an application not be published pursuant

7 to paragraph (1), and states in such request that the

8 invention disclosed in the application has not been

9 the subject of an application filed in another coun10 try, or under a multilateral international agreement,

11 that requires publication of applications 18 months

12 after filing, the application shall not be published as

13 provided in paragraph (1).

14 ‘‘(ii) An applicant may rescind a request made

15 under clause (i) at any time.

16 ‘‘(iii) An applicant who has made a request

17 under clause (i) but who subsequently files, in a for18 eign country or under a multilateral international

19 agreement specified in clause (i), an application di20 rected to the invention disclosed in the application

21 filed in the Patent and Trademark Office, shall no22 tify the Director of such filing not later than 45

23 days after the date of the filing of such foreign or

24 international application. A failure of the applicant

25 to provide such notice within the prescribed period
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1 shall result in the application being regarded as

2 abandoned, unless it is shown to the satisfaction of

3 the Director that the delay in submitting the notice

4 was unintentional.

5 ‘‘(iv) If a notice is made pursuant to clause

6 (iii), or the applicant rescinds a request pursuant to

7 clause (ii), the Director shall publish the application

8 on or as soon as is practical after the date that is

9 specified in clause (i).

10 ‘‘(v) If an applicant has filed applications in

11 one or more foreign countries, directly or through a

12 multilateral international agreement, and such for13 eign filed applications corresponding to an applica14 tion filed in the Patent and Trademark Office or the

15 description of the invention in such foreign filed ap16 plications is less extensive than the application or

17 description of the invention in the application filed

18 in the Patent and Trademark Office, the applicant

19 may submit a redacted copy of the application filed

20 in the Patent and Trademark Office eliminating any

21 part or description of the invention in such applica22 tion that is not also contained in any of the cor23 responding applications filed in a foreign country.

24 The Director may only publish the redacted copy of

25 the application unless the redacted copy of the appli-
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1 cation is not received within 16 months after the

2 earliest effective filing date for which a benefit is

3 sought under this title. The provisions of section

4 154(d) shall not apply to a claim if the description

5 of the invention published in the redacted applica6 tion filed under this clause with respect to the claim

7 does not enable a person skilled in the art to make

8 and use the subject matter of the claim.

9 ‘‘(c) PROTEST AND PRE-ISSUANCE OPPOSITION.—

10 The Director shall establish appropriate procedures to en11 sure that no protest or other form of pre-issuance opposi12 tion to the grant of a patent on an application may be

13 initiated after publication of the application without the

14 express written consent of the applicant.’’.

15 (b) STUDY BY GAO.—

16 (1) IN GENERAL.—The Comptroller General of

17 the United States shall conduct a study of appli18 cants for patents who file only in the United States

19 during the 3-year period beginning on the effective

20 date of this title.

21 (2) CONTENTS.—The study conducted under

22 paragraph (1) shall—

23 (A) consider the number of such applicants

24 for patent in relation to the number of appli-
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1 cants who file in the United States and outside

2 the United States;

3 (B) examine how many domestic-only filers

4 request at the time of filing not to be published;

5 (C) examine how many such filers rescind

6 that request or later choose to file abroad; and

7 (D) examine the manner of entity seeking

8 an application and any correlation that may

9 exist between such manner and publication of

10 patent applications.

11 (3) REPORT TO JUDICIARY COMMITTEES.—The

12 Comptroller General shall submit to the Committees

13 on the Judiciary of the House of Representatives

14 and the Senate the results of the study conducted

15 under this subsection.

16 SEC. 403. TIME FOR CLAIMING BENEFIT OF EARLIER FIL17 ING DATE.

18 (a) IN A FOREIGN COUNTRY.—Section 119(b) of title

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

20 ‘‘(b)(1) No application for patent shall be entitled to

21 this right of priority unless a claim, identifying the foreign

22 application by specifying its application number, country,

23 and the day, month, and year of its filing, is filed in the

24 Patent and Trademark Office at such time during the

25 pendency of the application as required by the Director.
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1 ‘‘(2) The Director may consider the failure of the ap2 plicant to file a timely claim for priority as a waiver of

3 any such claim. The Director may establish procedures,

4 including the payment of a surcharge, to accept an unin5 tentionally delayed claim under this section.

6 ‘‘(3) The Director may require a certified copy of the

7 original foreign application, specification, and drawings

8 upon which it is based, a translation if not in the English

9 language, and such other information as the Director con10 siders necessary. Any such certification shall be made by

11 the foreign intellectual property authority in which the for12 eign application was filed and show the date of the appli13 cation and of the filing of the specification and other pa14 pers.’’.

15 (b) IN THE UNITED STATES.—Section 120 of title

16 35, United States Code, is amended by adding at the end

17 the following: ‘‘The Director may determine the time pe18 riod during the pendency of the application within which

19 an amendment containing the specific reference to the ear20 lier filed application is submitted. The Director may con21 sider the failure to submit such an amendment within that

22 time period as a waiver of any benefit under this section.

23 The Director may establish procedures, including the pay24 ment of a surcharge, to accept unintentionally late submis25 sions of amendments under this section.’’.
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1 SEC. 404. PROVISIONAL RIGHTS.

2 Section 154 of title 35, United States Code, is

3 amended—

4 (1) in the section caption by inserting ‘‘; pro5 visional rights’’ after ‘‘patent’’; and

6 (2) by adding at the end the following new sub7 section:

8 ‘‘(d) PROVISIONAL RIGHTS.—

9 ‘‘(1) IN GENERAL.—In addition to other rights

10 provided by this section, a patent shall include the

11 right to obtain a reasonable royalty from any person

12 who, during the period beginning on the date of pub13 lication of the application for such patent pursuant

14 to section 122(b), or in the case of an international

15 application filed under the treaty defined in section

16 351(a) designating the United States under Article

17 21(2)(a) of such treaty, the date of publication of

18 the application, and ending on the date the patent

19 is issued—

20 ‘‘(A)(i) makes, uses, offers for sale, or sells

21 in the United States the invention as claimed in

22 the published patent application or imports

23 such an invention into the United States; or

24 ‘‘(ii) if the invention as claimed in the pub25 lished patent application is a process, uses, of26 fers for sale, or sells in the United States or
40

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1 imports into the United States products made

2 by that process as claimed in the published pat3 ent application; and

4 ‘‘(B) had actual notice of the published

5 patent application, and in a case in which the

6 right arising under this paragraph is based

7 upon an international application designating

8 the United States that is published in a lan9 guage other than English, a translation of the

10 international application into the English lan11 guage.

12 ‘‘(2) RIGHT BASED ON SUBSTANTIALLY IDEN13 TICAL INVENTIONS.—The right under paragraph (1)

14 to obtain a reasonable royalty shall not be available

15 under this subsection unless the invention as claimed

16 in the patent is substantially identical to the inven17 tion as claimed in the published patent application.

18 ‘‘(3) TIME LIMITATION ON OBTAINING A REA19 SONABLE ROYALTY.—The right under paragraph (1)

20 to obtain a reasonable royalty shall be available only

21 in an action brought not later than 6 years after the

22 patent is issued. The right under paragraph (1) to

23 obtain a reasonable royalty shall not be affected by

24 the duration of the period described in paragraph

25 (1).
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1 ‘‘(4) REQUIREMENTS FOR INTERNATIONAL AP2 PLICATIONS.—

3 ‘‘(A) EFFECTIVE DATE.—The right under

4 paragraph (1) to obtain a reasonable royalty

5 based upon the publication under the treaty de6 fined in section 351(a) of an international ap7 plication designating the United States shall

8 commence on the date on which the Patent and

9 Trademark Office receives a copy of the publi10 cation under the treaty of the international ap11 plication, or, if the publication under the treaty

12 of the international application is in a language

13 other than English, on the date on which the

14 Patent and Trademark Office receives a trans15 lation of the international application in the

16 English language.

17 ‘‘(B) COPIES.—The Director may require

18 the applicant to provide a copy of the inter19 national application and a translation thereof.’’.

20 SEC. 405. PRIOR ART EFFECT OF PUBLISHED APPLICA21 TIONS.

22 Section 102(e) of title 35, United States Code, is

23 amended to read as follows:

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

2 pursuant to section 122(b), by another filed in the

3 United States before the invention by the applicant

4 for patent, except that an international application

5 filed under the treaty defined in section 351(a) shall

6 have the effect under this subsection of a national

7 application published under section 122(b) only if

8 the international application designating the United

9 States was published under Article 21(2)(a) of such

10 treaty in the English language; or

11 ‘‘(B) a patent granted on an application for

12 patent by another filed in the United States before

13 the invention by the applicant for patent, except that

14 a patent shall not be deemed filed in the United

15 States for the purposes of this subsection based on

16 the filing of an international application filed under

17 the treaty defined in section 351(a); or’’.

18 SEC. 406. COST RECOVERY FOR PUBLICATION.

19 The Director of the United States Patent and Trade20 mark Office shall recover the cost of early publication re21 quired by the amendment made by section 402 by charg22 ing a separate publication fee after notice of allowance is

23 given pursuant to section 151 of title 35, United States

24 Code.
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1 SEC. 407. CONFORMING AMENDMENTS.

2 The following provisions of title 35, United States

3 Code, are amended:

4 (1) Section 11 is amended in paragraph 1 of

5 subsection (a) by inserting ‘‘and published applica6 tions for patents’’ after ‘‘Patents’’.

7 (2) Section 12 is amended—

8 (A) in the section caption by inserting

9 ‘‘and applications’’ after ‘‘patents’’; and

10 (B) by inserting ‘‘and published applica11 tions for patents’’ after ‘‘patents’’.

12 (3) Section 13 is amended—

13 (A) in the section caption by inserting

14 ‘‘and applications’’ after ‘‘patents’’; and

15 (B) by inserting ‘‘and published applica16 tions for patents’’ after ‘‘patents’’.

17 (4) The item relating to section 122 in the table

18 of sections for chapter 11 is amended by inserting

19 ‘‘; publication of patent applications’’ after ‘‘applica20 tions’’.

21 (5) The item relating to section 154 in the table

22 of sections for chapter 14 is amended by inserting

23 ‘‘; provisional rights’’ after ‘‘patent’’.

24 (6) Section 181 is amended—

25 (A) in the first undesignated paragraph—
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1 (i) by inserting ‘‘by the publication of

2 an application or’’ after ‘‘disclosure’’; and

3 (ii) by inserting ‘‘the publication of

4 the application or’’ after ‘‘withhold’’;

5 (B) in the second undesignated paragraph

6 by inserting ‘‘by the publication of an applica7 tion or’’ after ‘‘disclosure of an invention’’;

8 (C) in the third undesignated paragraph—

9 (i) by inserting ‘‘by the publication of

10 the application or’’ after ‘‘disclosure of the

11 invention’’; and

12 (ii) by inserting ‘‘the publication of

13 the application or’’ after ‘‘withhold’’; and

14 (D) in the fourth undesignated paragraph

15 by inserting ‘‘the publication of an application

16 or’’ after ‘‘and’’ in the first sentence.

17 (7) Section 252 is amended in the first undesig18 nated paragraph by inserting ‘‘substantially’’ before

19 ‘‘identical’’ each place it appears.

20 (8) Section 284 is amended by adding at the

21 end of the second undesignated paragraph the fol22 lowing: ‘‘Increased damages under this paragraph

23 shall not apply to provisional rights under section

24 154(d) of this title.’’.

25 (9) Section 374 is amended to read as follows:
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1 ‘‘§ 374. Publication of international application: effect

2 ‘‘The publication under the treaty defined in section

3 351(a) of this title of an international application desig4 nating the United States shall confer the same rights and

5 shall have the same effect under this title as an application

6 for patent published under section 122(b), except as pro7 vided in sections 102(e) and 154(d).’’.

8 SEC. 408. EFFECTIVE DATE.

9 This title and the amendments made by this title,

10 shall take effect on the date that is 1 year after the date

11 of the enactment of this Act and shall apply to all applica12 tions filed under section 111 of title 35, United States

13 Code, on or after that date, and all applications complying

14 with section 371 of title 35, United States Code, that re15 sulted from international applications filed on or after that

16 date. The amendments made by sections 404 and 405

17 shall apply to any such application voluntarily published

18 by the applicant under procedures established under this

19 title that is pending on the date that is 1 year after the

20 date of the enactment of this Act. The amendment made

21 by section 404 shall also apply to international applica22 tions designating the United States that are filed on or

23 after the date that is 1 year after the date of the enact24 ment of this Act.
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1 TITLE V—OPTIONAL INTER

2 PARTES REEXAMINATION

3 PROCEDURE

4 SEC. 501. SHORT TITLE.

5 This title may be cited as the ‘‘Optional Inter Partes

6 Reexamination Procedure Act’’.

7 SEC. 502. EX PARTE REEXAMINATION OF PATENTS.

8 Chapter 30 of title 35, United States Code, is amend9 ed in the title by inserting ‘‘EX PARTE’’ before ‘‘RE10 EXAMINATION OF PATENTS’’.

11 SEC. 503. DEFINITIONS.

12 Section 100 of title 35, United States Code, is

13 amended by adding at the end the following new sub14 section:

15 ‘‘(e) The term ‘third-party requester’ means a person

16 requesting ex parte reexamination under section 302 or

17 inter partes reexamination under section 311 who is not

18 the patent owner.’’.

19 SEC. 504. OPTIONAL INTER PARTES REEXAMINATION PRO20 CEDURES.

21 (a) IN GENERAL.—Part 3 of title 35, United Stats

22 Code, is amended by adding after chapter 30 the following

23 new chapter:
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1 ‘‘CHAPTER 31—OPTIONAL INTER PARTES

2 REEXAMINATION PROCEDURES

‘‘Sec.

‘‘311. Request for inter partes reexamination.

‘‘312. Determination of issue by Director.

‘‘313. Inter partes reexamination order by Director.

‘‘314. Conduct of inter partes reexamination proceedings.

‘‘315. Appeal.

‘‘316. Certificate of patentability, unpatentability, and claim cancellation.

‘‘317. Inter partes reexamination prohibited.

‘‘318. Stay of litigation.

3 ‘‘§ 311. Request for inter partes reexamination

4 ‘‘(a) IN GENERAL.—Any person at any time may file

5 a request for inter partes reexamination by the Office of

6 a patent on the basis of any prior art cited under the pro7 visions of section 301.

8 ‘‘(b) REQUIREMENTS.—The request shall—

9 ‘‘(1) be in writing, include the identity of the

10 real party in interest, and be accompanied by pay11 ment of an inter partes reexamination fee estab12 lished by the Director under section 41; and

13 ‘‘(2) set forth the pertinency and manner of ap14 plying cited prior art to every claim for which reex15 amination is requested.

16 ‘‘(c) COPY.—Unless the requesting person is the

17 owner of the patent, the Director promptly shall send a

18 copy of the request to the owner of record of the patent.
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1 ‘‘§ 312. Determination of issue by Director

2 ‘‘(a) REEXAMINATION.—Not later than 3 months

3 after the filing of a request for inter partes reexamination

4 under section 311, the Director shall determine whether

5 a substantial new question of patentability affecting any

6 claim of the patent concerned is raised by the request,

7 with or without consideration of other patents or printed

8 publications. On the Director’s initiative, and at any time,

9 the Director may determine whether a substantial new

10 question of patentability is raised by patents and publica11 tions.

12 ‘‘(b) RECORD.—A record of the Director’s determina13 tion under subsection (a) shall be placed in the official

14 file of the patent, and a copy shall be promptly given or

15 mailed to the owner of record of the patent and to the

16 third-party requester, if any.

17 ‘‘(c) FINAL DECISION.—A determination by the Di18 rector pursuant to subsection (a) shall be final and non19 appealable. Upon a determination that no substantial new

20 question of patentability has been raised, the Director may

21 refund a portion of the inter partes reexamination fee re22 quired under section 311.

23 ‘‘§ 313. Inter partes reexamination order by Director

24 ‘‘If, in a determination made under section 312(a),

25 the Director finds that a substantial new question of pat26 entability affecting a claim of a patent is raised, the deter-
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1 mination shall include an order for inter partes reexamina2 tion of the patent for resolution of the question. The order

3 may be accompanied by the initial action of the Patent

4 and Trademark Office on the merits of the inter partes

5 reexamination conducted in accordance with section 314.

6 ‘‘§ 314. Conduct of inter partes reexamination pro7 ceedings

8 ‘‘(a) IN GENERAL.—Subject to subsection (b), reex9 amination shall be conducted according to the procedures

10 established for initial examination under the provisions of

11 sections 132 and 133, except as provided for under this

12 section. In any inter partes reexamination proceeding

13 under this chapter, the patent owner shall be permitted

14 to propose any amendment to the patent and a new claim

15 or claims, except that no proposed amended or new claim

16 enlarging the scope of the claims of the patent shall be

17 permitted.

18 ‘‘(b) RESPONSE.—(1) This subsection shall apply to

19 any inter partes reexamination proceeding in which the

20 order for inter partes reexamination is based upon a re21 quest by a third-party requester.

22 ‘‘(2) With the exception of the inter partes reexam23 ination request, any document filed by either the patent

24 owner or the third-party requester shall be served on the

25 other party. In addition, the third-party requester shall
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1 receive a copy of any communication sent by the Office

2 to the patent owner concerning the patent subject to the

3 inter partes reexamination proceeding.

4 ‘‘(3) Each time that the patent owner files a response

5 to an action on the merits from the Patent and Trademark

6 Office, the third-party requester shall have one oppor7 tunity to file written comments addressing issues raised

8 by the action of the Office or the patent owner’s response

9 thereto, if those written comments are received by the Of10 fice within 30 days after the date of service of the patent

11 owner’s response.

12 ‘‘(c) SPECIAL DISPATCH.—Unless otherwise provided

13 by the Director for good cause, all inter partes reexamina14 tion proceedings under this section, including any appeal

15 to the Board of Patent Appeals and Interferences, shall

16 be conducted with special dispatch within the Office.

17 ‘‘§ 315. Appeal

18 ‘‘(a) PATENT OWNER.—The patent owner involved in

19 an inter partes reexamination proceeding under this

20 chapter—

21 ‘‘(1) may appeal under the provisions of section

22 134, and may appeal under the provisions of sec23 tions 141 through 144, with respect to any decision

24 adverse to the patentability of any original or pro25 posed amended or new claim of the patent; and
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1 ‘‘(2) may be a party to any appeal taken by a

2 third-party requester under subsection (b).

3 ‘‘(b) THIRD-PARTY REQUESTER.—A third-party re4 quester may—

5 ‘‘(1) appeal under the provisions of section 134

6 with respect to any final decision favorable to the

7 patentability of any original or proposed amended or

8 new claim of the patent; or

9 ‘‘(2) be a party to any appeal taken by the pat10 ent owner under the provisions of section 134, sub11 ject to subsection (c).

12 ‘‘(c) CIVIL ACTION.—A third-party requester whose

13 request for an inter partes reexamination results in an

14 order under section 313 is estopped from asserting at a

15 later time, in any civil action arising in whole or in part

16 under section 1338 of title 28, the invalidity of any claim

17 finally determined to be valid and patentable on any

18 ground which the third-party requester raised or could

19 have raised during the inter partes reexamination pro20 ceedings. This subsection does not prevent the assertion

21 of invalidity based on newly discovered prior art unavail22 able to the third-party requester and the Patent and

23 Trademark Office at the time of the inter partes reexam24 ination proceedings.
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1 ‘‘§ 316. Certificate of patentability, unpatentability,

2 and claim cancellation

3 ‘‘(a) IN GENERAL.—In an inter partes reexamination

4 proceeding under this chapter, when the time for appeal

5 has expired or any appeal proceeding has terminated, the

6 Director shall issue and publish a certificate canceling any

7 claim of the patent finally determined to be unpatentable,

8 confirming any claim of the patent determined to be pat9 entable, and incorporating in the patent any proposed

10 amended or new claim determined to be patentable.

11 ‘‘(b) AMENDED OR NEW CLAIM.—Any proposed

12 amended or new claim determined to be patentable and

13 incorporated into a patent following an inter partes reex14 amination proceeding shall have the same effect as that

15 specified in section 252 of this title for reissued patents

16 on the right of any person who made, purchased, or used

17 within the United States, or imported into the United

18 States, anything patented by such proposed amended or

19 new claim, or who made substantial preparation for the

20 same, prior to issuance of a certificate under the provi21 sions of subsection (a) of this section.

22 ‘‘§ 317. Inter partes reexamination prohibited

23 ‘‘(a) ORDER FOR REEXAMINATION.—Notwith24 standing any provision of this chapter, once an order for

25 inter partes reexamination of a patent has been issued

26 under section 313, neither the patent owner nor the third-
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1 party requester, if any, nor privies of either, may file a

2 subsequent request for inter partes reexamination of the

3 patent until an inter partes reexamination certificate is

4 issued and published under section 316, unless authorized

5 by the Director.

6 ‘‘(b) FINAL DECISION.—Once a final decision has

7 been entered against a party in a civil action arising in

8 whole or in part under section 1338 of title 28 that the

9 party has not sustained its burden of proving the invalidity

10 of any patent claim in suit or if a final decision in an

11 inter partes reexamination proceeding instituted by a

12 third-party requester is favorable to the patentability of

13 any original or proposed amended or new claim of the pat14 ent then neither that party nor its privies may thereafter

15 request inter partes reexamination of any such patent

16 claim on the basis of issues which that party or its privies

17 raised or could have raised in such civil action or inter

18 partes reexamination proceeding, and an inter partes reex19 amination requested by that party or its privies on the

20 basis of such issues may not thereafter be maintained by

21 the Office, notwithstanding any other provision of this

22 chapter. This subsection does not prevent the assertion of

23 invalidity based on newly discovered prior art unavailable

24 to the third-party requester and the Patent and Trade-
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1 mark Office at the time of the inter partes reexamination

2 proceedings.

3 ‘‘§ 318. Stay of litigation

4 ‘‘Once an order for inter partes reexamination of a

5 patent has been issued under section 313, the patent

6 owner may obtain a stay of any pending litigation which

7 involves an issue of patentability of any claims of the pat8 ent which are the subject of the inter partes reexamination

9 order, unless the court before which such litigation is

10 pending determines that a stay would not serve the inter11 ests of justice.’’.

12 (b) CONFORMING AMENDMENTS.—The table of chap13 ters for part III of title 35, United States Code, is amend14 ed by striking the item relating to chapter 30 and insert15 ing the following:

‘‘30. Prior Art Citations to Office and Ex Parte Reexamination of Patents .................................................. 301

‘‘31. Optional Inter Partes Reexamination of Patents ........ 311’’.

16 SEC. 505. CONFORMING AMENDMENTS.

17 (a) PATENT FEES; PATENT SEARCH SYSTEMS.—Sec18 tion 41(a)(7) of title 35, United States Code, is amended

19 to read as follows:

20 ‘‘(7) On filing each petition for the revival of an

21 unintentionally abandoned application for a patent,

22 for the unintentionally delayed payment of the fee

23 for issuing each patent, or for an unintentionally de-
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1 layed response by the patent owner in any reexam2 ination proceeding, $1,210, unless the petition is

3 filed under section 133 or 151 of this title, in which

4 case the fee shall be $110.’’.

5 (b) APPEAL TO THE BOARD OF PATENT APPEALS

6 AND INTERFERENCES.—Section 134 of title 35, United

7 States Code, is amended to read as follows:

8 ‘‘§ 134. Appeal to the Board of Patent Appeals and

9 Interferences

10 ‘‘(a) PATENT APPLICANT.—An applicant for a pat11 ent, any of whose claims has been twice rejected, may ap12 peal from the decision of the primary examiner to the

13 Board of Patent Appeals and Interferences, having once

14 paid the fee for such appeal.

15 ‘‘(b) PATENT OWNER.—A patent owner in any reex16 amination proceeding may appeal from the final rejection

17 of any claim by the primary examiner to the Board of Pat18 ent Appeals and Interferences, having once paid the fee

19 for such appeal.

20 ‘‘(c) THIRD-PARTY.—A third-party requester in an

21 inter partes proceeding may appeal to the Board of Patent

22 Appeals and Interferences from the final decision of the

23 primary examiner favorable to the patentability of any

24 original or proposed amended or new claim of a patent,

25 having once paid the fee for such appeal. The third-party
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1 requester may not appeal the decision of the Board of Pat2 ent Appeals and Interferences.’’.

3 (c) APPEAL TO COURT OF APPEALS FOR THE FED4 ERAL CIRCUIT.—Section 141 of title 35, United States

5 Code, is amended by adding the following after the second

6 sentence: ‘‘A patent owner in any reexamination pro7 ceeding dissatisfied with the final decision in an appeal

8 to the Board of Patent Appeals and Interferences under

9 section 134 may appeal the decision only to the United

10 States Court of Appeals for the Federal Circuit.’’.

11 (d) PROCEEDINGS ON APPEAL.—Section 143 of title

12 35, United States Code, is amended by amending the third

13 sentence to read as follows: ‘‘In any reexamination cases,

14 the Director shall submit to the court in writing the

15 grounds for the decision of the Patent and Trademark Of16 fice, addressing all the issues involved in the appeal.’’.

17 (e) CIVIL ACTION TO OBTAIN PATENT.—Section 145

18 of title 35, United States Code, is amended in the first

19 sentence by inserting ‘‘(a)’’ after ‘‘section 134’’.

20 SEC. 506. REPORT TO CONGRESS.

21 Not later than 5 years after the effective date of this

22 title, the Director of the United States Patent and Trade23 mark Office shall submit to the Congress a report evalu24 ating whether the inter partes reexamination proceedings

25 established under the amendments made by this title are
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1 inequitable to any of the parties in interest and, if so, the

2 report shall contain recommendations for changes to the

3 amendments made by this title to remove such inequity.

4 SEC. 507. ESTOPPEL EFFECT OF REEXAMINATION.

5 Any party who requests an inter partes reexamina6 tion under section 311 of title 35, United States Code,

7 is estopped from challenging at a later time, in any civil

8 action, any fact determined during the process of such re9 examination, except with respect to a fact determination

10 later proved to be erroneous based on information unavail11 able at the time of the inter partes reexamination decision.

12 If this section is held to be unenforceable, the enforce13 ability of the rest of this title or of this Act shall not be

14 denied as a result.

15 SEC. 508. EFFECTIVE DATE.

16 This title and the amendments made by this title

17 shall take effect on the date that is 1 year after the date

18 of the enactment of this Act and shall apply to inter partes

19 reexamination requests filed on or after such date.

20 TITLE VI—PATENT AND

21 TRADEMARK OFFICE

22 SEC. 601. SHORT TITLE.

23 This title may be cited as the ‘‘Patent and Trade24 mark Office Efficiency Act’’.
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1 Subtitle A—United States Patent

2 and Trademark Office

3 SEC. 611. ESTABLISHMENT OF PATENT AND TRADEMARK

4 OFFICE.

5 Section 1 of title 35, United States Code, is amended

6 to read as follows:

7 ‘‘§ 1. Establishment

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

9 and Trademark Office is established as an agency of the

10 United States, within the Department of Commerce. In

11 carrying out its functions, the United States Patent and

12 Trademark Office shall be subject to the policy direction

13 of the Secretary of Commerce, but otherwise shall retain

14 responsibility for decisions regarding the management and

15 administration of its operations and shall exercise inde16 pendent control of its budget allocations and expenditures,

17 personnel decisions and processes, procurements, and

18 other administrative and management functions in accord19 ance with this title and applicable provisions of law. Those

20 operations designed to grant and issue patents and those

21 operations which are designed to facilitate the registration

22 of trademarks shall be treated as separate operating units

23 within the Office.

24 ‘‘(b) OFFICES.—The United States Patent and

25 Trademark Office shall maintain its principal office in the
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1 metropolitan Washington, DC, area, for the service of

2 process and papers and for the purpose of carrying out

3 its functions. The United States Patent and Trademark

4 Office shall be deemed, for purposes of venue in civil ac5 tions, to be a resident of the district in which its principal

6 office is located, except where jurisdiction is otherwise pro7 vided by law. The United States Patent and Trademark

8 Office may establish satellite offices in such other places

9 in the United States as it considers necessary and appro10 priate in the conduct of its business.

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

12 United States Patent and Trademark Office shall also be

13 referred to as the ‘Office’ and the ‘Patent and Trademark

14 Office’.’’.

15 SEC. 612. POWERS AND DUTIES.

16 Section 2 of title 35, United States Code, is amended

17 to read as follows:

18 ‘‘§ 2. Powers and duties

19 ‘‘(a) IN GENERAL.—The United States Patent and

20 Trademark Office, subject to the policy direction of the

21 Secretary of Commerce—

22 ‘‘(1) shall be responsible for the granting and

23 issuing of patents and the registration of trade24 marks; and
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1 ‘‘(2) shall be responsible for disseminating to

2 the public information with respect to patents and

3 trademarks.

4 ‘‘(b) SPECIFIC POWERS.—The Office—

5 ‘‘(1) shall adopt and use a seal of the Office,

6 which shall be judicially noticed and with which let7 ters patent, certificates of trademark registrations,

8 and papers issued by the Office shall be authenti9 cated;

10 ‘‘(2) may establish regulations, not inconsistent

11 with law, which—

12 ‘‘(A) shall govern the conduct of pro13 ceedings in the Office;

14 ‘‘(B) shall be made in accordance with sec15 tion 553 of title 5;

16 ‘‘(C) shall facilitate and expedite the proc17 essing of patent applications, particularly those

18 which can be filed, stored, processed, searched,

19 and retrieved electronically, subject to the provi20 sions of section 122 relating to the confidential

21 status of applications;

22 ‘‘(D) may govern the recognition and con23 duct of agents, attorneys, or other persons rep24 resenting applicants or other parties before the

25 Office, and may require them, before being rec-
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1 ognized as representatives of applicants or

2 other persons, to show that they are of good

3 moral character and reputation and are pos4 sessed of the necessary qualifications to render

5 to applicants or other persons valuable service,

6 advice, and assistance in the presentation or

7 prosecution of their applications or other busi8 ness before the Office;

9 ‘‘(E) shall recognize the public interest in

10 continuing to safeguard broad access to the

11 United States patent system through the re12 duced fee structure for small entities under sec13 tion 41(h)(1) of this title; and

14 ‘‘(F) provide for the development of a per15 formance-based process that includes quan16 titative and qualitative measures and standards

17 for evaluating cost-effectiveness and is con18 sistent with the principles of impartiality and

19 competitiveness;

20 ‘‘(3) may acquire, construct, purchase, lease,

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

22 any real, personal, or mixed property, or any interest

23 therein, as it considers necessary to carry out its

24 functions;
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1 ‘‘(4)(A) may make such purchases, contracts

2 for the construction, maintenance, or management

3 and operation of facilities, and contracts for supplies

4 or services, without regard to the provisions of the

5 Federal Property and Administrative Services Act of

6 1949 (40 U.S.C. 471 et seq.), the Public Buildings

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

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

9 11301 et seq.); and

10 ‘‘(B) may enter into and perform such pur11 chases and contracts for printing services, including

12 the process of composition, platemaking, presswork,

13 silk screen processes, binding, microform, and the

14 products of such processes, as it considers necessary

15 to carry out the functions of the Office, without re16 gard to sections 501 through 517 and 1101 through

17 1123 of title 44, United States Code;

18 ‘‘(5) may use, with their consent, services,

19 equipment, personnel, and facilities of other depart20 ments, agencies, and instrumentalities of the Fed21 eral Government, on a reimbursable basis, and co22 operate with such other departments, agencies, and

23 instrumentalities in the establishment and use of

24 services, equipment, and facilities of the Office;
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1 ‘‘(6) may, when the Director determines that it

2 is practicable, efficient, and cost-effective to do so,

3 use, with the consent of the United States and the

4 agency, instrumentality, patent and trademark of5 fice, or international organization concerned, the

6 services, records, facilities, or personnel of any State

7 or local government agency or instrumentality or

8 foreign patent and trademark office or international

9 organization to perform functions on its behalf;

10 ‘‘(7) may retain and use all of its revenues and

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

12 disposal of any real, personal, or mixed property, or

13 any interest therein, of the Office;

14 ‘‘(8) shall advise the President, through the

15 Secretary of Commerce, on national and certain

16 international intellectual property policy issues;

17 ‘‘(9) shall advise Federal departments and

18 agencies on matters of intellectual property policy in

19 the United States and intellectual property protec20 tion in other countries;

21 ‘‘(10) shall provide guidance, as appropriate,

22 with respect to proposals by agencies to assist for23 eign governments and international intergovern24 mental organizations on matters of intellectual prop25 erty protection;
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1 ‘‘(11) may conduct programs, studies, or ex2 changes of items or services regarding domestic and

3 international intellectual property law and the effec4 tiveness of intellectual property protection domesti5 cally and throughout the world;

6 ‘‘(12)(A) shall advise the Secretary of Com7 merce on programs and studies relating to intellec8 tual property policy that are conducted, or author9 ized to be conducted, cooperatively with foreign in10 tellectual property offices and international intergov11 ernmental organizations; and

12 ‘‘(B) may conduct programs and studies de13 scribed in subparagraph (A); and

14 ‘‘(13)(A) in coordination with the Department

15 of State, may conduct programs and studies coop16 eratively with foreign intellectual property offices

17 and international intergovernmental organizations;

18 and

19 ‘‘(B) with the concurrence of the Secretary of

20 State, may authorize the transfer of not to exceed

21 $100,000 in any year to the Department of State

22 for the purpose of making special payments to inter23 national intergovernmental organizations for studies

24 and programs for advancing international coopera-
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1 tion concerning patents, trademarks, and other mat2 ters.

3 ‘‘(c) CLARIFICATION OF SPECIFIC POWERS.—(1) The

4 special payments under subsection (b)(13)(B) shall be in

5 addition to any other payments or contributions to inter6 national organizations described in subsection (b)(13)(B)

7 and shall not be subject to any limitations imposed by law

8 on the amounts of such other payments or contributions

9 by the United States Government.

10 ‘‘(2) Nothing in subsection (b) shall derogate from

11 the duties of the Secretary of State or from the duties

12 of the United States Trade Representative as set forth in

13 section 141 of the Trade Act of 1974 (19 U.S.C. 2171).

14 ‘‘(3) Nothing in subsection (b) shall derogate from

15 the duties and functions of the Register of Copyrights or

16 otherwise alter current authorities relating to copyright

17 matters.

18 ‘‘(4) In exercising the Director’s powers under para19 graphs (3) and (4)(A) of subsection (b), the Director shall

20 consult with the Administrator of General Services.

21 ‘‘(d) CONSTRUCTION.—Nothing in this section shall

22 be construed to nullify, void, cancel, or interrupt any pend23 ing request-for-proposal let or contract issued by the Gen24 eral Services Administration for the specific purpose of re-
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1 locating or leasing space to the United States Patent and

2 Trademark Office.’’.

3 SEC. 613. ORGANIZATION AND MANAGEMENT.

4 Section 3 of title 35, United States Code, is amended

5 to read as follows:

6 ‘‘§ 3. Officers and employees

7 ‘‘(a) UNDER SECRETARY AND DIRECTOR.—

8 ‘‘(1) IN GENERAL.—The powers and duties of

9 the United States Patent and Trademark Office

10 shall be vested in an Under Secretary of Commerce

11 for Intellectual Property and Director of the United

12 States Patent and Trademark Office (in this title re13 ferred to as the ‘Director’), who shall be a citizen of

14 the United States and who shall be appointed by the

15 President, by and with the advice and consent of the

16 Senate. The Director shall be a person who has a

17 professional background and experience in patent or

18 trademark law.

19 ‘‘(2) DUTIES.—

20 ‘‘(A) IN GENERAL.—The Director shall be

21 responsible for providing policy direction and

22 management supervision for the Office and for

23 the issuance of patents and the registration of

24 trademarks. The Director shall perform these
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1 duties in a fair, impartial, and equitable man2 ner.

3 ‘‘(B) CONSULTING WITH THE PUBLIC AD4 VISORY COMMITTEES.—The Director shall con5 sult with the Patent Public Advisory Committee

6 established in section 5 on a regular basis on

7 matters relating to the patent operations of the

8 Office, shall consult with the Trademark Public

9 Advisory Committee established in section 5 on

10 a regular basis on matters relating to the trade11 mark operations of the Office, and shall consult

12 with the respective Public Advisory Committee

13 before submitting budgetary proposals to the

14 Office of Management and Budget or changing

15 or proposing to change patent or trademark

16 user fees or patent or trademark regulations

17 which are subject to the requirement to provide

18 notice and opportunity for public comment pur19 suant to section 553 of title 5, as the case may

20 be.

21 ‘‘(3) OATH.—The Director shall, before taking

22 office, take an oath to discharge faithfully the duties

23 of the Office.

24 ‘‘(4) REMOVAL.—The Director may be removed

25 from office by the President. The President shall
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1 provide notification of any such removal to both

2 Houses of Congress.

3 ‘‘(b) OFFICERS AND EMPLOYEES OF THE OFFICE.—

4 ‘‘(1) DEPUTY UNDER SECRETARY AND DEPUTY

5 DIRECTOR.—The Secretary of Commerce, upon nom6 ination by the Director, shall appoint a Deputy

7 Under Secretary of Commerce for Intellectual Prop8 erty and Deputy Director of the United States Pat9 ent and Trademark Office who shall be vested with

10 the authority to act in the capacity of the Director

11 in the event of the absence or incapacity of the Di12 rector. The Deputy Director shall be a citizen of the

13 United States who has a professional background

14 and experience in patent or trademark law.

15 ‘‘(2) COMMISSIONERS.—

16 ‘‘(A) APPOINTMENT AND DUTIES.—The

17 Secretary of Commerce shall appoint a Commis18 sioner for Patents and a Commissioner for

19 Trademarks, without regard to chapter 33, 51,

20 or 53 of title 5. The Commissioner for Patents

21 shall be a citizen of the United States with

22 demonstrated management ability and profes23 sional background and experience in patent law

24 and serve for a term of 5 years. The Commis25 sioner for Trademarks shall be a citizen of the
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1 United States with demonstrated management

2 ability and professional background and experi3 ence in trademark law and serve for a term of

4 5 years. The Commissioner for Patents and the

5 Commissioner for Trademarks shall serve as

6 the chief operating officers for the operations of

7 the Office relating to patents and trademarks,

8 respectively, and shall be responsible for the

9 management and direction of all aspects of the

10 activities of the Office that affect the adminis11 tration of patent and trademark operations, re12 spectively. The Secretary may reappoint a Com13 missioner to subsequent terms of 5 years as

14 long as the performance of the Commissioner as

15 set forth in the performance agreement in sub16 paragraph (B) is satisfactory.

17 ‘‘(B) SALARY AND PERFORMANCE AGREE18 MENT.—The Commissioners shall be paid an

19 annual rate of basic pay not to exceed the max20 imum rate of basic pay for the Senior Executive

21 Service established under section 5382 of title

22 5, including any applicable locality-based com23 parability payment that may be authorized

24 under section 5304(h)(2)(C) of title 5. The

25 compensation of the Commissioners shall be
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1 considered, for purposes of section 207(c)(2)(A)

2 of title 18, to be the equivalent of that de3 scribed under clause (ii) of section 207(c)(2)(A)

4 of title 18. In addition, the Commissioners may

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

6 in excess of, 50 percent of the Commissioner’s

7 annual rate of basic pay, based upon an evalua8 tion by the Secretary of Commerce, acting

9 through the Director, of the Commissioners’

10 performance as defined in an annual perform11 ance agreement between the Commissioners and

12 the Secretary. The annual performance agree13 ments shall incorporate measurable organiza14 tion and individual goals in key operational

15 areas as delineated in an annual performance

16 plan agreed to by the Commissioners and the

17 Secretary. Payment of a bonus under this sub18 paragraph may be made to the Commissioners

19 only to the extent that such payment does not

20 cause the Commissioners’ total aggregate com21 pensation in a calendar year to equal or exceed

22 the amount of the salary of the Vice President

23 under section 104 of title 3, United States

24 Code.
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1 ‘‘(C) REMOVAL.—The Commissioners may

2 be removed from office by the Secretary for

3 misconduct or nonsatisfactory performance

4 under the performance agreement described in

5 subparagraph (B), without regard to the provi6 sions of title 5. The Secretary shall provide no7 tification of any such removal to both Houses

8 of Congress.

9 ‘‘(3) OTHER OFFICERS AND EMPLOYEES.—The

10 Director shall—

11 ‘‘(A) appoint such officers, employees (in12 cluding attorneys), and agents of the Office as

13 the Director considers necessary to carry out

14 the functions of the Office; and

15 ‘‘(B) define the title, authority, and duties

16 of such officers and employees and delegate to

17 them such of the powers vested in the Office as

18 the Director may determine.

19 The Office shall not be subject to any administra20 tively or statutorily imposed limitation on positions

21 or personnel, and no positions or personnel of the

22 Office shall be taken into account for purposes of

23 applying any such limitation.

24 ‘‘(4) TRAINING OF EXAMINERS.—The Office

25 shall submit to the Congress a proposal to provide
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1 an incentive program to retain as employees patent

2 and trademark examiners of the primary examiner

3 grade or higher who are eligible for retirement, for

4 the sole purpose of training patent and trademark

5 examiners.

6 ‘‘(c) CONTINUED APPLICABILITY OF TITLE 5.—Offi7 cers and employees of the Office shall be subject to the

8 provisions of title 5 relating to Federal employees.

9 ‘‘(d) ADOPTION OF EXISTING LABOR AGREE10 MENTS.—The Office shall adopt all labor agreements

11 which are in effect, as of the day before the effective date

12 of the Patent and Trademark Office Efficiency Act, with

13 respect to such Office (as then in effect).

14 ‘‘(e) CARRYOVER OF PERSONNEL.—

15 ‘‘(1) FROM PTO.—Effective as of the effective

16 date of the Patent and Trademark Office Efficiency

17 Act, all officers and employees of the Patent and

18 Trademark Office on the day before such effective

19 date shall become officers and employees of the Of20 fice, without a break in service.

21 ‘‘(2) OTHER PERSONNEL.—Any individual who,

22 on the day before the effective date of the Patent

23 and Trademark Office Efficiency Act, is an officer

24 or employee of the Department of Commerce (other

25 than an officer or employee under paragraph (1))
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1 shall be transferred to the Office, as necessary to

2 carry out the purposes of this Act, if—

3 ‘‘(A) such individual serves in a position

4 for which a major function is the performance

5 of work reimbursed by the Patent and Trade6 mark Office, as determined by the Secretary of

7 Commerce;

8 ‘‘(B) such individual serves in a position

9 that performed work in support of the Patent

10 and Trademark Office during at least half of

11 the incumbent’s work time, as determined by

12 the Secretary of Commerce; or

13 ‘‘(C) such transfer would be in the interest

14 of the Office, as determined by the Secretary of

15 Commerce in consultation with the Director.

16 Any transfer under this paragraph shall be effective

17 as of the same effective date as referred to in para18 graph (1), and shall be made without a break in

19 service.

20 ‘‘(f) TRANSITION PROVISIONS.—

21 ‘‘(1) INTERIM APPOINTMENT OF DIRECTOR.—

22 On or after the effective date of the Patent and

23 Trademark Office Efficiency Act, the President shall

24 appoint an individual to serve as the Director until

25 the date on which a Director qualifies under sub-
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1 section (a). The President shall not make more than

2 one such appointment under this subsection.

3 ‘‘(2) CONTINUATION IN OFFICE OF CERTAIN

4 OFFICERS.—(A) The individual serving as the As5 sistant Commissioner for Patents on the day before

6 the effective date of the Patent and Trademark Of7 fice Efficiency Act may serve as the Commissioner

8 for Patents until the date on which a Commissioner

9 for Patents is appointed under subsection (b).

10 ‘‘(B) The individual serving as the Assistant

11 Commissioner for Trademarks on the day before the

12 effective date of the Patent and Trademark Office

13 Efficiency Act may serve as the Commissioner for

14 Trademarks until the date on which a Commissioner

15 for Trademarks is appointed under subsection (b).’’.

16 SEC. 614. PUBLIC ADVISORY COMMITTEES.

17 Chapter 1 of part I of title 35, United States Code,

18 is amended by inserting after section 4 the following:

19 ‘‘§ 5. Patent and Trademark Office Public Advisory

20 Committees

21 ‘‘(a) ESTABLISHMENT OF PUBLIC ADVISORY COM22 MITTEES.—

23 ‘‘(1) APPOINTMENT.—The United States Pat24 ent and Trademark Office shall have a Patent Pub25 lic Advisory Committee and a Trademark Public Ad-
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1 visory Committee, each of which shall have nine vot2 ing members who shall be appointed by the Sec3 retary of Commerce and serve at the pleasure of the

4 Secretary of Commerce. Members of each Public Ad5 visory Committee shall be appointed for a term of 3

6 years, except that of the members first appointed,

7 three shall be appointed for a term of 1 year, and

8 three shall be appointed for a term of 2 years. In

9 making appointments to each Committee, the Sec10 retary of Commerce shall consider the risk of loss of

11 competitive advantage in international commerce or

12 other harm to United States companies as a result

13 of such appointments.

14 ‘‘(2) CHAIR.—The Secretary shall designate a

15 chair of each Advisory Committee, whose term as

16 chair shall be for 3 years.

17 ‘‘(3) TIMING OF APPOINTMENTS.—Initial ap18 pointments to each Advisory Committee shall be

19 made within 3 months after the effective date of the

20 Patent and Trademark Office Efficiency Act. Vacan21 cies shall be filled within 3 months after they occur.

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

23 Advisory Committee—

24 ‘‘(1) shall be citizens of the United States who

25 shall be chosen so as to represent the interests of di-
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1 verse users of the United States Patent and Trade2 mark Office with respect to patents, in the case of

3 the Patent Public Advisory Committee, and with re4 spect to trademarks, in the case of the Trademark

5 Public Advisory Committee;

6 ‘‘(2) shall include members who represent small

7 and large entity applicants located in the United

8 States in proportion to the number of applications

9 filed by such applicants, but in no case shall mem10 bers who represent small entity patent applicants,

11 including small business concerns, independent in12 ventors, and nonprofit organizations, constitute less

13 than 25 percent of the members of the Patent Pub14 lic Advisory Committee, and such members shall in15 clude at least one independent inventor; and

16 ‘‘(3) shall include individuals with substantial

17 background and achievement in finance, manage18 ment, labor relations, science, technology, and office

19 automation.

20 In addition to the voting members, each Advisory Com21 mittee shall include a representative of each labor organi22 zation recognized by the United States Patent and Trade23 mark Office. Such representatives shall be nonvoting

24 members of the Advisory Committee to which they are ap25 pointed.
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1 ‘‘(c) MEETINGS.—Each Advisory Committee shall

2 meet at the call of the chair to consider an agenda set

3 by the chair.

4 ‘‘(d) DUTIES.—Each Advisory Committee shall—

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

6 budget, and user fees of the United States Patent

7 and Trademark Office with respect to patents, in the

8 case of the Patent Public Advisory Committee, and

9 with respect to Trademarks, in the case of the

10 Trademark Public Advisory Committee, and advise

11 the Director on these matters;

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

13 year—

14 ‘‘(A) prepare an annual report on the mat15 ters referred to in paragraph (1);

16 ‘‘(B) transmit the report to the Secretary

17 of Commerce, the President, and the Commit18 tees on the Judiciary of the Senate and the

19 House of Representatives; and

20 ‘‘(C) publish the report in the Official Ga21 zette of the United States Patent and Trade22 mark Office.

23 ‘‘(e) COMPENSATION.—Each member of each Advi24 sory Committee shall be compensated for each day (includ25 ing travel time) during which such member is attending
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1 meetings or conferences of that Advisory Committee or

2 otherwise engaged in the business of that Advisory Com3 mittee, at the rate which is the daily equivalent of the an4 nual rate of basic pay in effect for level III of the Execu5 tive Schedule under section 5314 of title 5. While away

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

7 such member shall be allowed travel expenses, including

8 per diem in lieu of subsistence, as authorized by section

9 5703 of title 5, United States Code.

10 ‘‘(f) ACCESS TO INFORMATION.—Members of each

11 Advisory Committee shall be provided access to records

12 and information in the United States Patent and Trade13 mark Office, except for personnel or other privileged infor14 mation and information concerning patent applications re15 quired to be kept in confidence by section 122.

16 ‘‘(g) APPLICABILITY OF CERTAIN ETHICS LAWS.—

17 Members of each Advisory Committee shall be special Gov18 ernment employees within the meaning of section 202 of

19 title 18, United States Code.

20 ‘‘(h) INAPPLICABILITY OF FEDERAL ADVISORY COM21 MITTEE ACT.—The Federal Advisory Committee Act (5

22 U.S.C. App.) shall not apply to each Advisory Committee.

23 ‘‘(i) OPEN MEETINGS.—The meetings of each Advi24 sory Committee shall be open to the public, except that

25 each Advisory Committee may by majority vote meet in
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1 executive session when considering personnel or other con2 fidential information.’’.

3 SEC. 615. PATENT AND TRADEMARK OFFICE FUNDING.

4 Section 42(c) of title 35, United States Code, is

5 amended in the second sentence—

6 (1) by striking ‘‘Fees available’’ and inserting

7 ‘‘All fees available’’; and

8 (2) by striking ‘‘may’’ and inserting ‘‘shall’’.

9 SEC. 616. CONFORMING AMENDMENTS.

10 (a) DUTIES.—Chapter 1 of title 35, United States

11 Code, is amended by striking section 6.

12 (b) REGULATIONS FOR AGENTS AND ATTORNEYS.—

13 Section 31 of title 35, United States Code, and the item

14 relating to such section in the table of sections for chapter

15 3 of title 35, United States Code, are repealed.

16 (c) SUSPENSION OR EXCLUSION FROM PRACTICE.—

17 Section 32 of title 35, United States Code, is amended

18 by striking ‘‘31’’ and inserting ‘‘2(b)(2)(D)’’.

19 SEC. 617. TRADEMARK TRIAL AND APPEAL BOARD.

20 Section 17 of the Act of July 5, 1946 (commonly re21 ferred to as the ‘‘Trademark Act of 1946’’) (15 U.S.C.

22 1067) is amended to read as follows:

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

24 to registration, application to register as a lawful concur25 rent user, or application to cancel the registration of a
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1 mark, the Director shall give notice to all parties and shall

2 direct a Trademark Trial and Appeal Board to determine

3 and decide the respective rights of registration.

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

5 include the Director, the Commissioner for Patents, the

6 Commissioner for Trademarks, and administrative trade7 mark judges who are appointed by the Director.’’.

8 SEC. 618. BOARD OF PATENT APPEALS AND INTER9 FERENCES.

10 Chapter 1 of title 35, United States Code, is

11 amended—

12 (1) by striking section 7 and redesignating sec13 tions 8 through 14 as sections 7 through 13, respec14 tively; and

15 (2) by inserting after section 5 the following:

16 ‘‘§ 6. Board of Patent Appeals and Interferences

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

18 shall be in the United States Patent and Trademark Of19 fice a Board of Patent Appeals and Interferences. The Di20 rector, the Commissioner for Patents, the Commissioner

21 for Trademarks, and the administrative patent judges

22 shall constitute the Board. The administrative patent

23 judges shall be persons of competent legal knowledge and

24 scientific ability who are appointed by the Director.
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1 ‘‘(b) DUTIES.—The Board of Patent Appeals and

2 Interferences shall, on written appeal of an applicant, re3 view adverse decisions of examiners upon applications for

4 patents and shall determine priority and patentability of

5 invention in interferences declared under section 135(a).

6 Each appeal and interference shall be heard by at least

7 3 members of the Board, who shall be designated by the

8 Director. Only the Board of Patent Appeals and Inter9 ferences may grant rehearings.’’.

10 SEC. 619. ANNUAL REPORT OF DIRECTOR.

11 Section 13 of title 35, United States Code, as redesig12 nated by section 618 of this Act, is amended to read as

13 follows:

14 ‘‘§ 13. Annual report to Congress

15 ‘‘The Director shall report to the Congress, not later

16 than 180 days after the end of each fiscal year, the mon17 eys received and expended by the Office, the purposes for

18 which the moneys were spent, the quality and quantity of

19 the work of the Office, the nature of training provided to

20 examiners, the evaluation of the Commissioner of Patents

21 and the Commissioner of Trademarks by the Secretary of

22 Commerce, the compensation of the Commissioners, and

23 other information relating to the Office.’’.
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1 SEC. 620. SUSPENSION OR EXCLUSION FROM PRACTICE.

2 Section 32 of title 35, United States Code, is amend3 ed by inserting before the last sentence the following: ‘‘The

4 Director shall have the discretion to designate any attor5 ney who is an officer or employee of the United States

6 Patent and Trademark Office to conduct the hearing re7 quired by this section.’’.

8 SEC. 621. PAY OF DIRECTOR AND DEPUTY DIRECTOR.

9 (a) PAY OF DIRECTOR.—Section 5314 of title 5,

10 United States Code, is amended by striking:

11 ‘‘Assistant Secretary of Commerce and Com12 missioner of Patents and Trademarks.’’.

13 and inserting:

14 ‘‘Under Secretary of Commerce for Intellectual

15 Property and Director of the United States Patent

16 and Trademark Office.’’.

17 (b) PAY OF DEPUTY DIRECTOR.—Section 5315 of

18 title 5, United States Code, is amended by adding at the

19 end the following:

20 ‘‘Deputy Under Secretary of Commerce for In21 tellectual Property and Deputy Director of the

22 United States Patent and Trademark Office.’’.

23 SEC. 622. STUDY ON ALTERNATIVE FEE STRUCTURES.

24 The Under Secretary of Commerce for Intellectual

25 Property and Director of the United States Patent and

26 Trademark Office shall conduct a study of alternative fee
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1 structures that could be adopted by the United States Pat2 ent and Trademark Office to encourage maximum partici3 pation by the inventor community in the United States.

4 The Director shall submit to the Committees on the Judi5 ciary of the House of Representatives and the Senate a

6 report on the study not later than 1 year after the date

7 of the enactment of this Act.

8 Subtitle B—Effective Date;

9 Technical Amendments

10 SEC. 631. EFFECTIVE DATE.

11 This title and the amendments made by this title

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

13 of this Act.

14 SEC. 632. TECHNICAL AND CONFORMING AMENDMENTS.

15 (a) AMENDMENTS TO TITLE 35.—

16 (1) The item relating to part I in the table of

17 parts for chapter 35, United States Code, is amend18 ed to read as follows:

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

19 (2) The heading for part I of title 35, United

20 States Code, is amended to read as follows:
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1 ‘‘PART I—UNITED STATES PATENT AND

2 TRADEMARK OFFICE’’.

3 (3) The table of chapters for part I of title 35,

4 United States Code, is amended by amending the

5 item relating to chapter 1 to read as follows:

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

6 (4) The table of sections for chapter 1 of title

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

9 ‘‘CHAPTER 1—ESTABLISHMENT, OFFICERS

10 AND EMPLOYEES, FUNCTIONS

‘‘Sec.

‘‘ 1. Establishment.

‘‘ 2. Powers and duties.

‘‘ 3. Officers and employees.

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

‘‘ 5. Patent and Trademark Office Public Advisory Committees.

‘‘ 6. Board of Patent Appeals and Interferences.

‘‘ 7. Library.

‘‘ 8. Classification of patents.

‘‘ 9. Certified copies of records.

‘‘10. Publications.

‘‘11. Exchange of copies of patents and applications with foreign countries.

‘‘12. Copies of patents and applications for public libraries.

‘‘13. Annual report to Congress.’’.

11 (5) Section 41(h) of title 35, United States

12 Code, is amended by striking ‘‘Commissioner of Pat13 ents and Trademarks’’ and inserting ‘‘Director’’.

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

15 is amended by striking ‘‘Commissioner of Patents

16 and Trademarks’’ and inserting ‘‘Director’’.
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1 (7) Section 155A(c) of title 35, United States

2 Code, is amended by striking ‘‘Commissioner of Pat3 ents and Trademarks’’ and inserting ‘‘Director’’.

4 (8) Section 302 of title 35, United States Code,

5 is amended by striking ‘‘Commissioner of Patents’’

6 and inserting ‘‘Director’’.

7 (9) Section 303(b) of title 35, United States

8 Code, is amended by striking ‘‘Commissioner’s’’ and

9 inserting ‘‘Director’s’’.

10 (10)(A) Except as provided in subparagraph

11 (B), title 35, United States Code, is amended by

12 striking ‘‘Commissioner’’ each place it appears and

13 inserting ‘‘Director’’.

14 (B) Chapter 17 of title 35, United States Code,

15 is amended by striking ‘‘Commissioner’’ each place

16 it appears and inserting ‘‘Commissioner of Patents’’.

17 (11) Section 157(d) of title 35, United States

18 Code, is amended by striking ‘‘Secretary of Com19 merce’’ and inserting ‘‘Director’’.

20 (12) Section 202(a) of title 35, United States

21 Code, is amended—

22 (A) by striking ‘‘iv)’’ and inserting ‘‘(iv)’’;

23 and
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1 (B) by striking the second period after

2 ‘‘Department of Energy’’ at the end of the first

3 sentence.

4 (b) OTHER PROVISIONS OF LAW.—

5 (1)(A) Section 45 of the Act of July 5, 1946

6 (commonly referred to as the ‘‘Trademark Act of

7 1946’’; 15 U.S.C. 1127), is amended by striking

8 ‘‘The term ‘Commissioner’’ means the Commissioner

9 of Patents and Trademarks.’ and inserting ‘‘The

10 term ‘Director’ means the Director of the United

11 States Patent and Trademark Office.’’.

12 (B) The Act of July 5, 1946 (commonly re13 ferred to as the ‘‘Trademark Act of 1946’’; 15

14 U.S.C. 1051 and following), except for section 17, as

15 amended by section 617 of this Act, is amended by

16 striking ‘‘Commissioner’’ each place it appears and

17 inserting ‘‘Director’’.

18 (2) Section 500(e) of title 5, United States

19 Code, is amended by striking ‘‘Patent Office’’ and

20 inserting ‘‘United States Patent and Trademark Of21 fice’’.

22 (3) Section 5102(c)(23) of title 5, United

23 States Code, is amended to read as follows:
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1 ‘‘(23) administrative patent judges and des2 ignated administrative patent judges in the United

3 States Patent and Trademark Office;’’.

4 (4) Section 5316 of title 5, United States Code

5 (5 U.S.C. 5316) is amended by striking ‘‘Commis6 sioner of Patents, Department of Commerce.’’,

7 ‘‘Deputy Commissioner of Patents and Trade8 marks.’’, ‘‘Assistant Commissioner for Patents.’’,

9 and ‘‘Assistant Commissioner for Trademarks.’’.

10 (5) Section 9(p)(1)(B) of the Small Business

11 Act (15 U.S.C. 638(p)(1)(B)) is amended to read as

12 follows:

13 ‘‘(B) the Director of the United States

14 Patent and Trademark Office; and’’.

15 (6) Section 12 of the Act of February 14, 1903

16 (15 U.S.C. 1511) is amended—

17 (A) by striking ‘‘(d) Patent and Trade18 mark Office;’’ and inserting:

19 ‘‘(4) United States Patent and Trademark Of20 fice’’; and

21 (B) by redesignating subsections (a), (b),

22 (c), (e), (f), and (g) as paragraphs (1), (2), (3),

23 (5), (6), and (7), respectively and indenting the

24 paragraphs as so redesignated 2 ems to the

25 right.
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1 (7) Section 19 of the Tennessee Valley Author2 ity Act of 1933 (16 U.S.C. 831r) is amended—

3 (A) by striking ‘‘Patent Office of the

4 United States’’ and inserting ‘‘United States

5 Patent and Trademark Office’’; and

6 (B) by striking ‘‘Commissioner of Patents’’

7 and inserting ‘‘Director of the United States

8 Patent and Trademark Office’’.

9 (8) Section 182(b)(2)(A) of the Trade Act of

10 1974 (19 U.S.C. 2242(b)(2)(A)) is amended by

11 striking ‘‘Commissioner of Patents and Trade12 marks’’ and inserting ‘‘Director of the United States

13 Patent and Trademark Office’’.

14 (9) Section 302(b)(2)(D) of the Trade Act of

15 1974 (19 U.S.C. 2412(b)(2)(D)) is amended by

16 striking ‘‘Commissioner of Patents and Trade17 marks’’ and inserting ‘‘Director of the United States

18 Patent and Trademark Office’’.

19 (10) The Act of April 12, 1892 (27 Stat. 395;

20 20 U.S.C. 91) is amended by striking ‘‘Patent Of21 fice’’ and inserting ‘‘United States Patent and

22 Trademark Office’’.

23 (11) Sections 505(m) and 512(o) of the Federal

24 Food, Drug, and Cosmetic Act (21 U.S.C. 355(m)

25 and 360b(o)) are each amended by striking ‘‘Patent
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1 and Trademark Office of the Department of Com2 merce’’ and inserting ‘‘United States Patent and

3 Trademark Office’’.

4 (12) Section 702(d) of the Federal Food, Drug,

5 and Cosmetic Act (21 U.S.C. 372(d)) is amended by

6 striking ‘‘Commissioner of Patents’’ and inserting

7 ‘‘Director of the United States Patent and Trade8 mark Office’’ and by striking ‘‘Commissioner’’ and

9 inserting ‘‘Director’’.

10 (13) Section 105(e) of the Federal Alcohol Ad11 ministration Act (27 U.S.C. 205(e)) is amended by

12 striking ‘‘United States Patent Office’’ and inserting

13 ‘‘United States Patent and Trademark Office’’.

14 (14) Section 1295(a)(4) of title 28, United

15 States Code, is amended—

16 (A) in subparagraph (A) by inserting

17 ‘‘United States’’ before ‘‘Patent and Trade18 mark’’; and

19 (B) in subparagraph (B) by striking

20 ‘‘Commissioner of Patents and Trademarks’’

21 and inserting ‘‘Director of the United States

22 Patent and Trademark Office’’.

23 (15) Chapter 115 of title 28, United States

24 Code, is amended—
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1 (A) in the item relating to section 1744 in

2 the table of sections by striking ‘‘Patent Office’’

3 and inserting ‘‘United States Patent and

4 Trademark Office’’;

5 (B) in section 1744—

6 (i) by striking ‘‘Patent Office’’ each

7 place it appears in the text and section

8 heading and inserting ‘‘United States Pat9 ent and Trademark Office’’; and

10 (ii) by striking ‘‘Commissioner of Pat11 ents’’ and inserting ‘‘Director of the

12 United States Patent and Trademark Of13 fice’’; and

14 (C) by striking ‘‘Commissioner’’ and in15 serting ‘‘Director’’.

16 (16) Section 1745 of title 28, United States

17 Code, is amended by striking ‘‘United States Patent

18 Office’’ and inserting ‘‘United States Patent and

19 Trademark Office’’.

20 (17) Section 1928 of title 28, United States

21 Code, is amended by striking ‘‘Patent Office’’ and

22 inserting ‘‘United States Patent and Trademark Of23 fice’’.

24 (18) Section 151 of the Atomic Energy Act of

25 1954 (42 U.S.C. 2181) is amended in subsections c.
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1 and d. by striking ‘‘Commissioner of Patents’’ and

2 inserting ‘‘Director of the United States Patent and

3 Trademark Office’’.

4 (19) Section 152 of the Atomic Energy Act of

5 1954 (42 U.S.C. 2182) is amended by striking

6 ‘‘Commissioner of Patents’’ each place it appears

7 and inserting ‘‘Director of the United States Patent

8 and Trademark Office’’.

9 (20) Section 305 of the National Aeronautics

10 and Space Act of 1958 (42 U.S.C. 2457) is

11 amended—

12 (A) in subsection (c) by striking ‘‘Commis13 sioner of Patents’’ and inserting ‘‘Director of

14 the United States Patent and Trademark Office

15 (hereafter in this section referred to as the ‘Di16 rector’)’’; and

17 (B) by striking ‘‘Commissioner’’ each sub18 sequent place it appears and inserting ‘‘Direc19 tor’’.

20 (21) Section 12(a) of the Solar Heating and

21 Cooling Demonstration Act of 1974 (42 U.S.C.

22 5510(a)) is amended by striking ‘‘Commissioner of

23 the Patent Office’’ and inserting ‘‘Director of the

24 United States Patent and Trademark Office’’.
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1 (22) Section 1111 of title 44, United States

2 Code, is amended by striking ‘‘the Commissioner of

3 Patents,’’.

4 (23) Section 1114 of title 44, United States

5 Code, is amended by striking ‘‘the Commissioner of

6 Patents,’’.

7 (24) Section 1123 of title 44, United States

8 Code, is amended by striking ‘‘the Patent Office,’’.

9 (25) Sections 1337 and 1338 of title 44, United

10 States Code, and the items relating to those sections

11 in the table of contents for chapter 13 of such title,

12 are repealed.

13 (26) Section 10(i) of the Trading with the

14 enemy Act (50 U.S.C. App. 10(i)) is amended by

15 striking ‘‘Commissioner of Patents’’ and inserting

16 ‘‘Director of the United States Patent and Trade17 mark Office’’.

18 Subtitle C—Miscellaneous

19 Provisions

20 SEC. 641. REFERENCES.

21 (a) IN GENERAL.—Any reference in any other Fed22 eral law, Executive order, rule, regulation, or delegation

23 of authority, or any document of or pertaining to a depart24 ment or office from which a function is transferred by this

25 title—
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1 (1) to the head of such department or office is

2 deemed to refer to the head of the department or of3 fice to which such function is transferred; or

4 (2) to such department or office is deemed to

5 refer to the department or office to which such func6 tion is transferred.

7 (b) SPECIFIC REFERENCES.—Any reference in any

8 other Federal law, Executive order, rule, regulation, or

9 delegation of authority, or any document of or pertaining

10 to the Patent and Trademark Office—

11 (1) to the Commissioner of Patents and Trade12 marks is deemed to refer to the Under Secretary of

13 Commerce for Intellectual Property and Director of

14 the United States Patent and Trademark Office;

15 (2) to the Assistant Commissioner for Patents

16 is deemed to refer to the Commissioner for Patents;

17 or

18 (3) to the Assistant Commissioner for Trade19 marks is deemed to refer to the Commissioner for

20 Trademarks.

21 SEC. 642. EXERCISE OF AUTHORITIES.

22 Except as otherwise provided by law, a Federal offi23 cial to whom a function is transferred by this title may,

24 for purposes of performing the function, exercise all au25 thorities under any other provision of law that were avail-
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1 able with respect to the performance of that function to

2 the official responsible for the performance of the function

3 immediately before the effective date of the transfer of the

4 function under this title.

5 SEC. 643. SAVINGS PROVISIONS.

6 (a) LEGAL DOCUMENTS.—All orders, determinations,

7 rules, regulations, permits, grants, loans, contracts, agree8 ments, certificates, licenses, and privileges—

9 (1) that have been issued, made, granted, or al10 lowed to become effective by the President, the Sec11 retary of Commerce, any officer or employee of any

12 office transferred by this title, or any other Govern13 ment official, or by a court of competent jurisdic14 tion, in the performance of any function that is

15 transferred by this title; and

16 (2) that are in effect on the effective date of

17 such transfer (or become effective after such date

18 pursuant to their terms as in effect on such effective

19 date), shall continue in effect according to their

20 terms until modified, terminated, superseded, set

21 aside, or revoked in accordance with law by the

22 President, any other authorized official, a court of

23 competent jurisdiction, or operation of law.

24 (b) PROCEEDINGS.—This title shall not affect any

25 proceedings or any application for any benefits, service,
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1 license, permit, certificate, or financial assistance pending

2 on the effective date of this title before an office trans3 ferred by this title, but such proceedings and applications

4 shall be continued. Orders shall be issued in such pro5 ceedings, appeals shall be taken therefrom, and payments

6 shall be made pursuant to such orders, as if this title had

7 not been enacted, and orders issued in any such pro8 ceeding shall continue in effect until modified, terminated,

9 superseded, or revoked by a duly authorized official, by

10 a court of competent jurisdiction, or by operation of law.

11 Nothing in this subsection shall be considered to prohibit

12 the discontinuance or modification of any such proceeding

13 under the same terms and conditions and to the same ex14 tent that such proceeding could have been discontinued

15 or modified if this title had not been enacted.

16 (c) SUITS.—This title shall not affect suits com17 menced before the effective date of this title, and in all

18 such suits, proceedings shall be had, appeals taken, and

19 judgments rendered in the same manner and with the

20 same effect as if this title had not been enacted.

21 (d) NONABATEMENT OF ACTIONS.—No suit, action,

22 or other proceeding commenced by or against the Depart23 ment of Commerce or the Secretary of Commerce, or by

24 or against any individual in the official capacity of such

25 individual as an officer or employee of an office trans-
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1 ferred by this title, shall abate by reason of the enactment

2 of this title.

3 (e) CONTINUANCE OF SUITS.—If any Government of4 ficer in the official capacity of such officer is party to a

5 suit with respect to a function of the officer, and under

6 this title such function is transferred to any other officer

7 or office, then such suit shall be continued with the other

8 officer or the head of such other office, as applicable, sub9 stituted or added as a party.

10 (f) ADMINISTRATIVE PROCEDURE AND JUDICIAL RE11 VIEW.—Except as otherwise provided by this title, any

12 statutory requirements relating to notice, hearings, action

13 upon the record, or administrative or judicial review that

14 apply to any function transferred by this title shall apply

15 to the exercise of such function by the head of the Federal

16 agency, and other officers of the agency, to which such

17 function is transferred by this title.

18 SEC. 644. TRANSFER OF ASSETS.

19 Except as otherwise provided in this title, so much

20 of the personnel, property, records, and unexpended bal21 ances of appropriations, allocations, and other funds em22 ployed, used, held, available, or to be made available in

23 connection with a function transferred to an official or

24 agency by this title shall be available to the official or the

25 head of that agency, respectively, at such time or times
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1 as the Director of the Office of Management and Budget

2 directs for use in connection with the functions trans3 ferred.

4 SEC. 645. DELEGATION AND ASSIGNMENT.

5 Except as otherwise expressly prohibited by law or

6 otherwise provided in this title, an official to whom func7 tions are transferred under this title (including the head

8 of any office to which functions are transferred under this

9 title) may delegate any of the functions so transferred to

10 such officers and employees of the office of the official as

11 the official may designate, and may authorize successive

12 redelegations of such functions as may be necessary or ap13 propriate. No delegation of functions under this section

14 or under any other provision of this title shall relieve the

15 official to whom a function is transferred under this title

16 of responsibility for the administration of the function.

17 SEC. 646. AUTHORITY OF DIRECTOR OF THE OFFICE OF

18 MANAGEMENT AND BUDGET WITH RESPECT

19 TO FUNCTIONS TRANSFERRED.

20 (a) DETERMINATIONS.—If necessary, the Director of

21 the Office of Management and Budget shall make any de22 termination of the functions that are transferred under

23 this title.

24 (b) INCIDENTAL TRANSFERS.—The Director of the

25 Office of Management and Budget, at such time or times
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1 as the Director shall provide, may make such determina2 tions as may be necessary with regard to the functions

3 transferred by this title, and to make such additional inci4 dental dispositions of personnel, assets, liabilities, grants,

5 contracts, property, records, and unexpended balances of

6 appropriations, authorizations, allocations, and other

7 funds held, used, arising from, available to, or to be made

8 available in connection with such functions, as may be nec9 essary to carry out the provisions of this title. The Direc10 tor shall provide for the termination of the affairs of all

11 entities terminated by this title and for such further meas12 ures and dispositions as may be necessary to effectuate

13 the purposes of this title.

14 SEC. 647. CERTAIN VESTING OF FUNCTIONS CONSIDERED

15 TRANSFERS.

16 For purposes of this title, the vesting of a function

17 in a department or office pursuant to reestablishment of

18 an office shall be considered to be the transfer of the func19 tion.

20 SEC. 648. AVAILABILITY OF EXISTING FUNDS.

21 Existing appropriations and funds available for the

22 performance of functions, programs, and activities termi23 nated pursuant to this title shall remain available, for the

24 duration of their period of availability, for necessary ex25 penses in connection with the termination and resolution
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1 of such functions, programs, and activities, subject to the

2 submission of a plan to the Committees on Appropriations

3 of the House and Senate in accordance with the proce4 dures set forth in section 605 of the Departments of Com5 merce, Justice, and State, the Judiciary, and Related

6 Agencies Appropriations Act, 1999, as contained in Public

7 Law 105–277.

8 SEC. 649. DEFINITIONS.

9 For purposes of this title—

10 (1) the term ‘‘function’’ includes any duty, obli11 gation, power, authority, responsibility, right, privi12 lege, activity, or program; and

13 (2) the term ‘‘office’’ includes any office, ad14 ministration, agency, bureau, institute, council, unit,

15 organizational entity, or component thereof.

16 TITLE VII—MISCELLANEOUS

17 PATENT PROVISIONS

18 SEC. 701. PROVISIONAL APPLICATIONS.

19 (a) ABANDONMENT.—Section 111(b)(5) of title 35,

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

21 ‘‘(5) ABANDONMENT.—Notwithstanding the ab22 sence of a claim, upon timely request and as pre23 scribed by the Commissioner, a provisional applica24 tion may be treated as an application filed under

25 subsection (a). Subject to section 119(e)(3) of this
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1 title, if no such request is made, the provisional ap2 plication shall be regarded as abandoned 12 months

3 after the filing date of such application and shall not

4 be subject to revival thereafter.’’.

5 (b) TECHNICAL AMENDMENT RELATING TO WEEK6 ENDS AND HOLIDAYS.—Section 119(e) of title 35, United

7 States code, is amended by adding at the end the fol8 lowing:

9 ‘‘(3) If the day that is 12 months after the filing date

10 of a provisional application falls on a Saturday, Sunday,

11 or Federal holiday within the District of Columbia, the

12 period of pendency of the provisional application shall be

13 extended to the next succeeding secular or business day.’’.

14 (c) ELIMINATION OF COPENDENCY REQUIRE15 MENT.—Section 119(e)(2) of title 35, United States Code,

16 is amended by striking ‘‘and the provisional application

17 was pending on the filing date of the application for patent

18 under section 111(a) or section 363 of this title’’.

19 (d) EFFECTIVE DATE.—The amendments made by

20 this section shall take effect on the date of the enactment

21 of this Act and shall apply to any provisional application

22 filed on or after June 8, 1995, except that the amend23 ments made by subsections (b) and (c) shall have no effect

24 with respect to any patent which is the subject of litigation
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1 in an action commenced before such date of the enact2 ment.

3 SEC. 702. INTERNATIONAL APPLICATIONS.

4 Section 119 of title 35, United States Code, is

5 amended—

6 (1) in subsection (a)—

7 (A) by inserting ‘‘in a WTO member coun8 try or’’ after ‘‘patent for the same invention’’;

9 and

10 (B) by inserting ‘‘such WTO member

11 country or’’ after ‘‘first filed in’’;

12 (2) in subsection (c), by inserting ‘‘WTO mem13 ber country or’’ after ‘‘application in the same’’; and

14 (3) by adding at the end the following:

15 ‘‘(f) Applications for plant breeder’s rights filed in

16 a WTO member country (or in a foreign UPOV Con17 tracting Party) shall have the same effect for the purpose

18 of the right of priority under subsections (a) through (c)

19 of this section as applications for patent, subject to the

20 same conditions and requirements of this section as apply

21 to applications for patents.

22 ‘‘(g) As used in this section—

23 ‘‘(1) the term ‘WTO member country’ has the

24 meaning given that term in section 2(10) of the

25 Uruguay Round Agreements Act; and
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1 ‘‘(2) the term ‘UPOV Contracting Party’ means

2 a member of the International Convention for the

3 Protection of New Varieties of Plants.’’.

4 SEC. 703. CERTAIN LIMITATIONS ON DAMAGES FOR PAT5 ENT INFRINGEMENT NOT APPLICABLE.

6 Section 287(c)(4) of title 35, United States Code, is

7 amended by striking ‘‘before the date of enactment of this

8 subsection’’ and inserting ‘‘based on an application the

9 earliest effective filing date of which is prior to September

10 30, 1996’’.

11 SEC. 704. ELECTRONIC FILING AND PUBLICATIONS.

12 (a) PRINTING OF PAPERS FILED.—Section 22 of title

13 35, United States Code, is amended by striking ‘‘printed

14 or typewritten’’ and inserting ‘‘printed, typewritten, or on

15 an electronic medium’’.

16 (b) PUBLICATIONS.—Section 11(a) of title 35, United

17 States Code, is amended by amending the matter pre18 ceding paragraph 1 to read as follows:

19 ‘‘(a) The Director may publish in printed, type20 written, or electronic form, the following:’’.

21 (c) COPIES OF PATENTS FOR PUBLIC LIBRARIES.—

22 Section 13 of title 35, United States Code, is amended

23 by striking ‘‘The Commissioner may supply printed copies

24 of specifications and drawings of patents’’ and inserting
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1 ‘‘The Director may supply copies of specifications and

2 drawings of patents in printed or electronic form’’.

3 (d) MAINTENANCE OF COLLECTIONS.—Section

4 41(i)(1) of title 35, United States Code, is amended by

5 striking ‘‘The Commissioner shall maintain, for use by the

6 public, paper or microform’’ and inserting ‘‘The Director

7 shall maintain, for use by the public, paper, microform,

8 or electronic’’.

9 SEC. 705. STUDY AND REPORT ON BIOLOGICAL DEPOSITS

10 IN SUPPORT OF BIOTECHNOLOGY PATENTS.

11 (a) IN GENERAL.—No later than 6 months after the

12 date of the enactment of this Act, the Comptroller General

13 of the United States, in consultation with the Director of

14 the United States Patent and Trademark Office, shall

15 conduct a study and submit a report to the Congress on

16 the potential risks to the United States biotechnology in17 dustry relating to biological deposits in support of bio18 technology patents.

19 (b) CONTENTS.—The study conducted under this sec20 tion shall include—

21 (1) an examination of the risk of export and the

22 risk of transfers to third parties of biological depos23 its, and the risks posed by the change to 18-month

24 publication requirements made by this Act;
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1 (2) an analysis of comparative legal and regu2 latory regimes; and

3 (3) any related recommendations.

4 (c) CONSIDERATION OF REPORT.—In drafting regu5 lations affecting biological deposits (including any modi6 fication of title 37, Code of Federal Regulations, section

7 1.801 et seq.), the Patent and Trademark Office shall con8 sider the recommendations of the study conducted under

9 this section.

10 SEC. 706. PRIOR INVENTION.

11 Section 102(g) of title 35, United States Code, is

12 amended to read as follows:

13 ‘‘(g)(1) during the course of an interference con14 ducted under section 135 or section 291, another inventor

15 involved therein establishes, to the extent permitted in sec16 tion 104, that before such person’s invention thereof the

17 invention was made by such other inventor and not aban18 doned, suppressed, or concealed, or (2) before such per19 son’s invention thereof, the invention was made in this

20 country by another inventor who had not abandoned, sup21 pressed, or concealed it. In determining priority of inven22 tion under this subsection, there shall be considered not

23 only the respective dates of conception and reduction to

24 practice of the invention, but also the reasonable diligence
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1 of one who was first to conceive and last to reduce to prac2 tice, from a time prior to conception by the other.’’.

3 SEC. 707. PRIOR ART EXCLUSION FOR CERTAIN COMMONLY

4 ASSIGNED PATENTS.

5 (a) PRIOR ART EXCLUSION.—Section 103(c) of title

6 35, United States Code, is amended by striking ‘‘sub7 section (f) or (g)’’ and inserting ‘‘one or more of sub8 sections (e), (f), and (g)’’.

9 (b) EFFECTIVE DATE.—The amendment made by

10 subsection (a) shall apply to any application for patent

11 filed on or after the date of the enactment of this Act.

12 SECTION 1. SHORT TITLE.

13 This Act may be cited as the ‘‘American Inventors Pro14 tection Act of 1999’’.

15 SEC. 2. TABLE OF CONTENTS.

16 The table of contents is as follows:

Sec. 1. Short title.

Sec. 2. Table of contents.

TITLE I—INVENTORS’ RIGHTS

Sec. 101. Short title.

Sec. 102. Integrity in invention promotion services.

Sec. 103. Effective date.

TITLE II—PATENT AND TRADEMARK FEE FAIRNESS

Sec. 201. Short title.

Sec. 202. Adjustment of patent fees.

Sec. 203. Adjustment of trademark fees.

Sec. 204. Study on alternative fee structures.

Sec. 205. Patent and Trademark Office funding.

Sec. 206. Effective date.

TITLE III—FIRST INVENTOR DEFENSE

Sec. 301. Short title.

Sec. 302. Defense to patent infringement based on earlier inventor.
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Sec. 303. Study and report on business methods patents.

Sec. 304. Effective date and applicability.

TITLE IV—PATENT TERM GUARANTEE

Sec. 401. Short title.

Sec. 402. Patent term guarantee authority.

Sec. 403. Continued examination of patent applications.

Sec. 404. Technical clarification.

Sec. 405. Effective date.

TITLE V—DOMESTIC PUBLICATION OF PATENT APPLICATIONS

PUBLISHED ABROAD

Sec. 501. Short title.

Sec. 502. Publication.

Sec. 503. Time for claiming benefit of earlier filing date.

Sec. 504. Provisional rights.

Sec. 505. Prior art effect of published applications.

Sec. 506. Cost recovery for publication.

Sec. 507. Conforming amendments.

Sec. 508. Effective date.

TITLE VI—OPTIONAL INTER PARTES REEXAMINATION PROCEDURE

Sec. 601. Short title.

Sec. 602. Ex parte reexamination of patents.

Sec. 603. Definitions.

Sec. 604. Optional inter partes reexamination procedures.

Sec. 605. Conforming amendments.

Sec. 606. Report to Congress.

Sec. 607. Estoppel effect of reexamination.

Sec. 608. Effective date.

TITLE VII—MISCELLANEOUS PATENT PROVISIONS

Sec. 701. Provisional applications.

Sec. 702. International applications.

Sec. 703. Certain limitations on damages for patent infringement not applicable.

Sec. 704. Electronic filing and publications.

Sec. 705. Study and report on biological deposits in support of biotechnology patents.

Sec. 706. Prior invention.

Sec. 707. Prior art exclusion for certain commonly assigned patents.

Sec. 708. Exchange of copies of patents with foreign countries.

Sec. 709. National security.

1 TITLE I—INVENTORS’ RIGHTS

2 SEC. 101. SHORT TITLE.

3 This title may be cited as the ‘‘Inventors’ Rights Act

4 of 1999’’.
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1 SEC. 102. INTEGRITY IN INVENTION PROMOTION SERVICES.

2 (a) Chapter 29 of title 35, United States Code, is

3 amended by adding at the end the following new section:

4 ‘‘§ 297. Improper and deceptive invention promotion

5 ‘‘(a) IN GENERAL.—An invention promoter shall have

6 a duty to disclose the following information to a customer

7 in writing, prior to entering into a contract for invention

8 promotion services:

9 ‘‘(1) the total number of inventions evaluated by

10 the invention promoter for commercial potential in

11 the past 5 years, as well as the number of those inven12 tions that received positive evaluations, and the num13 ber of those inventions that received negative evalua14 tions;

15 ‘‘(2) the total number of customers who have con16 tracted with the invention promoter in the past 5

17 years, not including customers who have purchased

18 trade show services, research, advertising, or other

19 nonmarketing services from the invention promoter,

20 or who have defaulted in their payment to the inven21 tion promoter;

22 ‘‘(3) the total number of customers known by the

23 invention promoter to have received a net financial

24 profit as a direct result of the invention promotion

25 services provided by such invention promoter;
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1 ‘‘(4) the total number of customers known by the

2 invention promoter to have received license agree3 ments for their inventions as a direct result of the in4 vention promotion services provided by such inven5 tion promoter; and

6 ‘‘(5) the names and addresses of all previous in7 vention promotion companies with which the inven8 tion promoter or its officers have collectively or indi9 vidually been affiliated in the previous 10 years.

10 ‘‘(b) CIVIL ACTION.—(1) Any customer who is found

11 by a court to have been injured by any material false or

12 fraudulent statement or representation, or any omission of

13 material fact, by an invention promoter (or any agent, em14 ployee, director, officer, partner, or independent contractor

15 of such invention promoter), or by the failure of an inven16 tion promoter to disclose such information as required

17 under subsection (a), may recover in a civil action against

18 the invention promoter (or the officers, directors, or part19 ners of such invention promoter), in addition to reasonable

20 costs and attorneys’ fees—

21 ‘‘(A) the amount of actual damages incurred by

22 the plaintiff; or

23 ‘‘(B) at the election of the plaintiff at any time

24 before final judgment is rendered, statutory damages
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1 in a sum of not more than $5,000, as the court con2 siders just.

3 ‘‘(2) Notwithstanding paragraph (1), in a case where

4 the plaintiff sustains the burden of proof, and the court

5 finds, that the invention promoter intentionally misrepre6 sented or omitted a material fact to such customer, or will7 fully failed to disclose such information as required under

8 subsection (a), with the purpose of deceiving that customer,

9 the court may increase damages to not more than 3 times

10 the amount awarded, taking into account past complaints

11 made against the invention promoter that resulted in regu12 latory sanctions or other corrective actions based on those

13 records compiled by the Commissioner under subsection (d).

14 ‘‘(c) DEFINITIONS.—For purposes of this section—

15 ‘‘(1) a ‘contract for invention promotion services’

16 means a contract by which an invention promoter

17 undertakes invention promotion services for a cus18 tomer;

19 ‘‘(2) a ‘customer’ is any person, firm, partner20 ship, corporation or other entity who enters into a

21 contract with an invention promoter for invention

22 promotion services;

23 ‘‘(3) the term ‘invention promoter’ means any

24 person, firm, partnership, corporation, or other entity

25 who offers to perform or performs invention pro-
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1 motion services for, or on behalf of, a customer, but

2 does not include—

3 ‘‘(A) any department or agency of the Fed4 eral Government or of a State or local govern5 ment;

6 ‘‘(B) any nonprofit, charitable, scientific, or

7 educational organization, qualified under appli8 cable State law or described under section

9 170(b)(1)(A) of the Internal Revenue Code of

10 1986;

11 ‘‘(C) any person or entity involved in the

12 evaluation to determine commercial potential of,

13 or offering to license or sell, a utility patent or

14 a previously filed nonprovisional utility patent

15 application;

16 ‘‘(D) any party participating in a trans17 action involving the sale of the stock or assets of

18 a business; or

19 ‘‘(E) any party who directly engages in the

20 business of retail sales of products or the dis21 tribution of products; and

22 ‘‘(4) the term ‘invention promotion services’

23 means any act, where the customer is an individual,

24 done for the purpose of procuring a firm, corporation,
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1 or other entity to develop and market products or

2 services that include the invention.

3 ‘‘(d) RECORDS OF COMPLAINTS.—

4 ‘‘(1) RELEASE OF COMPLAINTS.—The Commis5 sioner shall make all complaints received by the Pat6 ent and Trademark Office involving invention pro7 moters publicly available, together with any response

8 of the invention promoters.

9 ‘‘(2) REQUEST FOR COMPLAINTS.—The Commis10 sioner may request complaints relating to invention

11 promotion services from any Federal or State agency

12 and include such complaints in the records main13 tained under paragraph (1), together with any re14 sponse of the invention promoters.’’.

15 (b) CONFORMING AMENDMENT.—The table of sections

16 at the beginning of chapter 29 of title 35, United States

17 Code, is amended by adding at the end the following new

18 item:

‘‘§ 297. Improper and deceptive invention promotion.’’.

19 SEC. 103. EFFECTIVE DATE.

20 This title and the amendments made by this title shall

21 take effect 60 days after the date of the enactment of this

22 Act.
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1 TITLE II—PATENT AND

2 TRADEMARK FEE FAIRNESS

3 SEC. 201. SHORT TITLE.

4 This title may be cited as the ‘‘Patent and Trademark

5 Fee Fairness Act of 1999’’.

6 SEC. 202. ADJUSTMENT OF PATENT FEES.

7 (a) ORIGINAL FILING FEE.—Section 41(a)(1)(A) of

8 title 35, United States Code, relating to the fee for filing

9 an original patent application, is amended by striking

10 ‘‘$760’’ and inserting ‘‘$690’’.

11 (b) REISSUE FEE.—Section 41(a)(4)(A) of title 35,

12 United States Code, relating to the fee for filing for a reissue

13 of a patent, is amended by striking ‘‘$760’’ and inserting

14 ‘‘$690’’.

15 (c) NATIONAL FEE FOR CERTAIN INTERNATIONAL AP16 PLICATIONS.—Section 41(a)(10) of title 35, United States

17 Code, relating to the national fee for certain international

18 applications, is amended by striking ‘‘$760’’ and inserting

19 ‘‘$690’’.

20 (d) MAINTENANCE FEES.—Section 41(b)(1) of title 35,

21 United States Code, relating to certain maintenance fees,

22 is amended by striking ‘‘$940’’ and inserting ‘‘$830’’.

23 SEC. 203. ADJUSTMENT OF TRADEMARK FEES.

24 Notwithstanding the second sentence of section 31(a)

25 of the Trademark Act of 1946 (15 U.S.C. 111(a)), the Com-
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1 missioner of Patents and Trademarks is authorized in fiscal

2 year 2000 to adjust trademark fees without regard to fluc3 tuations in the Consumer Price Index during the preceding

4 12 months.

5 SEC. 204. STUDY ON ALTERNATIVE FEE STRUCTURES.

6 The Commissioner of Patents and Trademarks shall

7 conduct a study of alternative fee structures that could be

8 adopted by the United States Patent and Trademark Office

9 to encourage maximum participation by the inventor com10 munity in the United States. The Commissioner shall sub11 mit such study to the Committees on the Judiciary of the

12 House of Representatives and the Senate not later than 1

13 year after the date of enactment of this Act.

14 SEC. 205. PATENT AND TRADEMARK OFFICE FUNDING.

15 Section 42(c) of title 35, United States Code, is amend16 ed in the second sentence—

17 (1) by striking ‘‘Fees available’’ and inserting

18 ‘‘All fees available’’; and

19 (2) by striking ‘‘may’’ and inserting ‘‘shall’’.

20 SEC. 206. EFFECTIVE DATE.

21 (a) Except as provided in subsection (b), the amend22 ments made by this title shall take effect on the date of the

23 enactment of this Act.
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1 (b) The amendments made by section 202 of this title

2 shall take effect 30 days after the date of the enactment of

3 this Act.

4 TITLE III—FIRST INVENTOR

5 DEFENSE

6 SEC. 301. SHORT TITLE.

7 This title may be cited as the ‘‘First Inventor Defense

8 Act of 1999’’.

9 SEC. 302. DEFENSE TO PATENT INFRINGEMENT BASED ON

10 EARLIER INVENTOR.

11 (a) DEFENSE.—Chapter 28 of title 35, United States

12 Code, is amended by adding at the end the following new

13 section:

14 ‘‘§ 273. Defense to infringement based on earlier in15 ventor

16 ‘‘(a) DEFINITIONS.—For purposes of this section—

17 ‘‘(1) the terms ‘commercially used’ and ‘commer18 cial use’ mean use of a method in the United States,

19 so long as such use is in connection with an internal

20 commercial use or an actual arm’s-length sale or

21 other arm’s-length commercial transfer of a useful end

22 result, whether or not the subject matter at issue is

23 accessible to or otherwise known to the public, except

24 that the subject matter for which commercial mar25 keting or use is subject to a premarketing regulatory
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1 review period during which the safety or efficacy of

2 the subject matter is established, including any period

3 specified in section 156(g), shall be deemed ‘commer4 cially used’ and in ‘commercial use’ during such reg5 ulatory review period;

6 ‘‘(2) in the case of activities performed by a non7 profit research laboratory, or nonprofit entity such as

8 a university, research center, or hospital, a use for

9 which the public is the intended beneficiary shall be

10 considered to be a use described in paragraph (1), ex11 cept that the use—

12 ‘‘(A) may be asserted as a defense under

13 this section only for continued use by and in the

14 laboratory or nonprofit entity; and

15 ‘‘(B) may not be asserted as a defense with

16 respect to any subsequent commercialization or

17 use outside such laboratory or nonprofit entity;

18 ‘‘(3) the term ‘method’ means a method of doing

19 or conducting business; and

20 ‘‘(4) the ‘effective filing date’ of a patent is the

21 earlier of the actual filing date of the application for

22 the patent or the filing date of any earlier United

23 States, foreign, or international application to which

24 the subject matter at issue is entitled under section

25 199, 120, or 365 of this title.
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1 ‘‘(b) DEFENSE TO INFRINGEMENT.—

2 ‘‘(1) IN GENERAL.—It shall be a defense to an

3 action for infringement under section 271 of this title

4 with respect to any subject matter that would other5 wise infringe one or more claims for a method in the

6 patent being asserted against a person, if such person

7 had, acting in good faith, actually reduced the subject

8 matter to practice at least one year before the effective

9 filing date of such patent, and commercially used the

10 subject matter before the effective filing date of such

11 patent.

12 ‘‘(2) EXHAUSTION OF RIGHT.—The sale or other

13 disposition of a useful end product produced by a

14 patented method, by a person entitled to assert a de15 fense under this section with respect to that useful end

16 result shall exhaust the patent owner’s rights under

17 the patent to the extent such rights would have been

18 exhausted had such sale or other disposition been

19 made by the patent owner.

20 ‘‘(3) LIMITATIONS AND QUALIFICATIONS OF DE21 FENSE.—The defense to infringement under this sec22 tion is subject to the following:

23 ‘‘(A) PATENT.—A person may not assert the

24 defense under this section unless the invention

25 for which the defense is asserted is for a method.
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1 ‘‘(B) DERIVATION.—A person may not as2 sert the defense under this section if the subject

3 matter on which the defense is based was derived

4 from the patentee or persons in privity with the

5 patentee.

6 ‘‘(C) NOT A GENERAL LICENSE.—The de7 fense asserted by a person under this section is

8 not a general license under all claims of the pat9 ent at issue, but extends only to the specific sub10 ject matter claimed in the patent with respect to

11 which the person can assert a defense under this

12 chapter, except that the defense shall also extend

13 to variations in the quantity or volume of use of

14 the claimed subject matter, and to improvements

15 in the claimed subject matter that do not in16 fringe additional specifically claimed subject

17 matter of the patent.

18 ‘‘(4) BURDEN OF PROOF.—A person asserting the

19 defense under this section shall have the burden of es20 tablishing the defense by clear and convincing evi21 dence.

22 ‘‘(5) ABANDONMENT OF USE.—A person who has

23 abandoned commercial use of subject matter may not

24 rely on activities performed before the date of such

25 abandonment in establishing a defense under this sec-
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1 tion with respect to actions taken after the date of

2 such abandonment.

3 ‘‘(6) PERSONAL DEFENSE.—The defense under

4 this section may be asserted only by the person who

5 performed the acts necessary to establish the defense

6 and, except for any transfer to the patent owner, the

7 right to assert the defense shall not be licensed or as8 signed or transferred to another person except as an

9 ancillary and subordinate part of a good faith assign10 ment or transfer for other reasons of the entire enter11 prise or line of business to which the defense relates.

12 ‘‘(7) LIMITATION ON SITES.—A defense under

13 this section, when acquired as part of a good faith as14 signment or transfer of an entire enterprise or line of

15 business to which the defense relates, may only be as16 serted for uses at sites where the subject matter that

17 would otherwise infringe one or more of the claims is

18 in use before the later of the effective filing date of the

19 patent or the date of the assignment or transfer of

20 such enterprise or line of business.

21 ‘‘(8) UNSUCCESSFUL ASSERTION OF DEFENSE.—

22 If the defense under this section is pleaded by a per23 son who is found to infringe the patent and who sub24 sequently fails to demonstrate a reasonable basis for

25 asserting the defense, the court shall find the case ex-
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1 ceptional for the purpose of awarding attorney’s fees

2 under section 285 of this title.

3 ‘‘(9) INVALIDITY.—A patent shall not be deemed

4 to be invalid under section 102 or 103 of this title

5 solely because a defense is raised or established under

6 this section.’’.

7 (b) CONFORMING AMENDMENT.—The table of sections

8 at the beginning of chapter 28 of title 35, United States

9 Code, is amended by adding at the end the following new

10 item:

‘‘273. Defense to infringement based on earlier inventor.’’.

11 SEC. 303. STUDY AND REPORT ON BUSINESS METHODS PAT12 ENTS.

13 (a) IN GENERAL.—No later than 120 days after the

14 date of the enactment of this Act, the General Accounting

15 Office, in consultation with the Patent and Trademark Of16 fice, shall conduct a study and submit a report to the Judi17 ciary Committees of the Senate and House of Representa18 tives on the effect on innovation, competition (foreign and

19 domestic), and American businesses (including electronic

20 commerce) of the quality of patents being issued on business

21 methods by the Patent and Trademark Office.

22 (b) CONTENTS.—The study conducted under this sec23 tion shall include—

24 (1) an examination of the number of applica25 tions received for patents on methods of doing busi-
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1 ness, including recent trends and forecasts, and the

2 number of patents granted based on such applica3 tions;

4 (2) an examination of the nature of the appli5 cants filing for and receiving such business methods

6 patents, including by industry sectors, the extent to

7 which such applicants have filed for patent protection

8 for such business methods in foreign countries, and

9 the nature of the technologies or business models rep10 resented in such patents and patent applications;

11 (3) an evaluation of the database of patents,

12 publications, and other information used by the Pat13 ent and Trademark Office to examine applications for

14 patents on methods of doing business;

15 (4) an analysis of the types of skills needed by

16 patent examiners to adequately examine applications

17 for patents on business methods, whether there are a

18 sufficient number of examiners handling these appli19 cations with the requisite skills, and what types of

20 training, if any, may be called for to augment these

21 skills;

22 (5) an analysis of the economic and competitive

23 impact of patents issued on business methods on

24 American businesses, particularly on businesses in25 volved in electronic commerce, including the effect of
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1 such patents on companies’ abilities to raise invest2 ment capital, compete in their relevant markets, and

3 innovate in emerging markets and technologies; and

4 (6) the extent, outcome, and effects on American

5 business, competition, and innovation of litigation

6 surrounding approved business methods patents.

7 SEC. 304. EFFECTIVE DATE AND APPLICABILITY.

8 This title and the amendments made by this title shall

9 take effect on the date of the enactment of this Act, but shall

10 not apply to any action for infringement that is pending

11 on such date of the enactment or with respect to any subject

12 matter for which an adjudication of infringement, includ13 ing a consent judgment, has been made before such date of

14 enactment.

15 TITLE IV—PATENT TERM

16 GUARANTEE

17 SEC. 401. SHORT TITLE.

18 This title may be cited as the ‘‘Patent Term Guarantee

19 Act of 1999’’.

20 SEC. 402. PATENT TERM GUARANTEE AUTHORITY.

21 (a) ADJUSTMENT OF PATENT TERM.—Section 154(b)

22 of title 35, United States Code, is amended to read as fol23 lows:

24 ‘‘(b) ADJUSTMENT OF PATENT TERM.—

25 ‘‘(1) PATENT TERM GUARANTEES.—
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1 ‘‘(A) GUARANTEE OF PROMPT PATENT AND

2 TRADEMARK OFFICE RESPONSES.—Subject to the

3 limitations under paragraph (2), if the issue of

4 an original patent is delayed due to the failure

5 of the Patent and Trademark Office to—

6 ‘‘(i) provide at least 1 of the notifica7 tions under section 132 of this title or a no8 tice of allowance under section 151 of this

9 title not later than 14 months after—

10 ‘‘(I) the date on which an appli11 cation was filed under section 111(a)

12 of this title; or

13 ‘‘(II) the date on which an inter14 national application fulfilled the re15 quirements of section 371 of this title;

16 ‘‘(ii) respond to a reply under section

17 132, or to an appeal taken under section

18 134, within 4 months after the date on

19 which the reply was filed or the appeal was

20 taken;

21 ‘‘(iii) act on an application within 4

22 months after the date of a decision by the

23 Board of Patent Appeals and Interferences

24 under section 134 or 135 or a decision by

25 a Federal court under section 141, 145, or
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1 146 in a case in which allowable claims re2 main in the application; or

3 ‘‘(iv) issue a patent within 4 months

4 after the date on which the issue fee was

5 paid under section 151 and all outstanding

6 requirements were satisfied,

7 the term of the patent shall be extended one day

8 for each day after the end of the period specified

9 in clause (i), (ii), (iii), or (iv), as the case may

10 be, until the action described in such clause is

11 taken.

12 ‘‘(B) GUARANTEE OF NO MORE THAN 3-

13 YEAR APPLICATION PENDENCY.—Subject to the

14 limitations under paragraph (2), if the issue of

15 an original patent is delayed due to the failure

16 of the Patent and Trademark Office to issue a

17 patent within 3 years after the actual filing date

18 of the application in the United States, not

19 including—

20 ‘‘(i) any time consumed by continued

21 examination of the application requested by

22 the applicant under section 132(b);

23 ‘‘(ii) any time consumed by a pro24 ceeding under section 135(a), any time con25 sumed by the imposition of an order pursu-
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1 ant to section 181, or any time consumed

2 by appellate review by the Board of Patent

3 Appeals and Interferences or by a Federal

4 court; or

5 ‘‘(iii) any delay in the processing of

6 the application by the Patent and Trade7 mark Office requested by the applicant ex8 cept as permitted by paragraph (3)(C),

9 the term of the patent shall be extended 1 day for

10 each day after the end of that 3-year period until

11 the patent is issued.

12 ‘‘(C) GUARANTEE OR ADJUSTMENTS FOR

13 DELAYS DUE TO INTERFERENCES, SECRECY OR14 DERS, AND APPEALS.—Subject to the limitations

15 under paragraph (2), if the issue of an original

16 patent is delayed due to—

17 ‘‘(i) a proceeding under section 135(a);

18 ‘‘(ii) the imposition of an order pursu19 ant to section 181; or

20 ‘‘(iii) appellate review by the Board of

21 Patent Appeals and Interferences or by a

22 Federal court in a case in which the patent

23 was issued pursuant to a decision in the re24 view reversing an adverse determination of

25 patentability,
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1 the term of the patent shall be extended one day

2 for each day of the pendency of the proceeding,

3 order, or review, as the case may be.

4 ‘‘(2) LIMITATIONS.—

5 ‘‘(A) IN GENERAL.—To the extent that peri6 ods of delay attributable to grounds specified in

7 paragraph (1) overlap, the period of any adjust8 ment granted under this subsection shall not ex9 ceed the actual number of days the issuance of

10 the patent was delayed.

11 ‘‘(B) DISCLAIMED TERM.—No patent the

12 term of which has been disclaimed beyond a

13 specified date may be adjusted under this section

14 beyond the expiration date specified in the dis15 claimer.

16 ‘‘(C) REDUCTION OF PERIOD OF ADJUST17 MENT.—

18 ‘‘(i) The period of adjustment of the

19 term of a patent under paragraph (1) shall

20 be reduced by a period equal to the period

21 of time during which the applicant failed to

22 engage in reasonable efforts to conclude

23 prosecution of the application.

24 ‘‘(ii) With respect to adjustments to

25 patent term made under the authority of
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1 paragraph (1)(B), an applicant shall be

2 deemed to have failed to engage in reason3 able efforts to conclude processing or exam4 ination of an application for the cumulative

5 total of any periods of time in excess of 3

6 months that are taken to respond to a notice

7 from the Office making any rejection, objec8 tion, argument, or other request, measuring

9 such 3-month period from the date the no10 tice was given or mailed to the applicant.

11 ‘‘(iii) The Commissioner shall prescribe

12 regulations establishing the circumstances

13 that constitute a failure of an applicant to

14 engage in reasonable efforts to conclude

15 processing or examination of an applica16 tion.

17 ‘‘(3) PROCEDURES FOR PATENT TERM ADJUST18 MENT DETERMINATION.—

19 ‘‘(A) The Commissioner shall prescribe reg20 ulations establishing procedures for the applica21 tion for and determination of patent term ad22 justments under this subsection.

23 ‘‘(B) Under the procedures established under

24 subparagraph (A), the Commissioner shall—
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1 ‘‘(i) make a determination of the pe2 riod of any patent term adjustment under

3 this subsection, and shall transmit a notice

4 of that determination with the written no5 tice of allowance of the application under

6 section 151; and

7 ‘‘(ii) provide the applicant one oppor8 tunity to request reconsideration of any

9 patent term adjustment determination made

10 by the Commissioner.

11 ‘‘(C) The Commissioner shall reinstate all

12 or part of the cumulative period of time of an

13 adjustment under paragraph (2)(C) if the appli14 cant, prior to the issuance of the patent, makes

15 a showing that, in spite of all due care, the ap16 plicant was unable to respond within the 3-

17 month period, but in no case shall more than 3

18 additional months for each such response beyond

19 the original 3-month period be reinstated.

20 ‘‘(D) The Commissioner shall proceed to

21 grant the patent after completion of the Commis22 sioner’s determination of a patent term adjust23 ment under the procedures established under this

24 subsection, notwithstanding any appeal taken by

25 the applicant of such determination.
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1 ‘‘(4) APPEAL OF PATENT TERM ADJUSTMENT DE2 TERMINATION.—

3 ‘‘(A) An applicant dissatisfied with a deter4 mination made by the Commissioner under

5 paragraph (3) shall have remedy by a civil ac6 tion against the Commissioner filed in the

7 United States District Court for the District of

8 Columbia within 180 days after the grant of the

9 patent. Chapter 7 of title 5 shall apply to such

10 action. Any final judgment resulting in a change

11 to the period of adjustment of the patent term

12 shall be served on the Commissioner, and the

13 Commissioner shall thereafter alter the term of

14 the patent to reflect such change.

15 ‘‘(B) The determination of a patent term

16 adjustment under this subsection shall not be

17 subject to appeal or challenge by a third party

18 prior to the grant of the patent.’’.

19 (b) CONFORMING AMENDMENTS.—

20 (1) Section 282 of title 35, United States Code,

21 is amended in the fourth paragraph by striking ‘‘156

22 of this title’’ and inserting ‘‘154(b) or 156 of this

23 title’’.
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1 (2) Section 1295(a)(4)(C) of title 28, United

2 States Code, is amended by striking ‘‘145 or 146’’

3 and inserting ‘‘145, 146, or 154(b)’’.

4 SEC. 403. CONTINUED EXAMINATION OF PATENT APPLICA5 TIONS.

6 Section 132 of title 35, United States Code, is

7 amended—

8 (1) in the first sentence by striking ‘‘Whenever’’

9 and inserting ‘‘(a) Whenever’’; and

10 (2) by adding at the end the following:

11 ‘‘(b) The Commissioner shall prescribe regulations to

12 provide for the continued examination of applications for

13 patent at the request of the applicant. The Commissioner

14 may establish appropriate fees for such continued examina15 tion and shall provide a 50 percent reduction in such fees

16 for small entities that qualify for reduced fees under section

17 41(h)(1) of this title.’’.

18 SEC. 404. TECHNICAL CLARIFICATION.

19 Section 156(a) of title 35, United States Code, is

20 amended in the matter preceding paragraph (1) by insert21 ing ‘‘, which shall include any patent term adjustment

22 granted under section 154(b),’’ after ‘‘the original expira23 tion date of the patent’’.
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1 SEC. 405. EFFECTIVE DATE.

2 (a) AMENDMENTS MADE BY SECTIONS 402 AND 404.—

3 The amendments made by sections 402 and 404 shall take

4 effect on the date that is 6 months after the date of the enact5 ment of this Act and, except for a design patent application

6 filed under chapter 16 of title 35, United States Code, shall

7 apply to any application filed on or after the date that is

8 6 months after the date of the enactment of this Act.

9 (b) AMENDMENTS MADE BY SECTION 403.—The

10 amendments made by section 403—

11 (1) shall take effect on the date that is 6 months

12 after the date of the enactment of this Act, and shall

13 apply to all applications filed under section 111(a) of

14 title 35, United States Code, on or after June 8, 1995,

15 and all applications complying with section 371 of

16 title 35, United States Code, that resulted from inter17 national applications filed on or after June 8, 1995;

18 and

19 (2) do not apply to applications for design pat20 ents under chapter 16 of title 35, United States Code.

21 TITLE V—DOMESTIC PUBLICA22 TION OF PATENT APPLICA23 TIONS PUBLISHED ABROAD

24 SEC. 501. SHORT TITLE.

25 This title may be cited as the ‘‘Domestic Publication

26 of Foreign Filed Patent Applications Act of 1999’’.
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1 SEC. 502. PUBLICATION.

2 (a) PUBLICATION.—Section 122 of title 35, United

3 States Code, is amended to read as follows:

4 ‘‘§ 122. Confidential status of applications; publica5 tion of patent applications

6 ‘‘(a) CONFIDENTIALITY.—Except as provided in sub7 section (b), applications for patents shall be kept in con8 fidence by the Patent and Trademark Office and no infor9 mation concerning the same given without authority of the

10 applicant or owner unless necessary to carry out the provi11 sions of an Act of Congress or in such special circumstances

12 as may be determined by the Commissioner.

13 ‘‘(b) PUBLICATION.—

14 ‘‘(1) IN GENERAL.—(A) Subject to paragraph

15 (2), each application for a patent shall be published,

16 in accordance with procedures determined by the

17 Commissioner, promptly after the expiration of a pe18 riod of 18 months from the earliest filing date for

19 which a benefit is sought under this title. At the re20 quest of the applicant, an application may be pub21 lished earlier than the end of such 18-month period.

22 ‘‘(B) No information concerning published pat23 ent applications shall be made available to the public

24 except as the Commissioner determines.

25 ‘‘(C) Notwithstanding any other provision of

26 law, a determination by the Commissioner to release
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1 or not to release information concerning a published

2 patent application shall be final and nonreviewable.

3 ‘‘(2) EXCEPTIONS.—(A) An application shall not

4 be published if that application is—

5 ‘‘(i) no longer pending;

6 ‘‘(ii) subject to a secrecy order pursuant to

7 section 181 of this title;

8 ‘‘(iii) a provisional application filed under

9 section 111(b) of this title; or

10 ‘‘(iv) an application for a design patent

11 filed under chapter 16 of this title.

12 ‘‘(B)(i) Where an applicant makes a request

13 upon filing, certifying that the invention disclosed in

14 the application has not and will not be the subject of

15 an application filed in another country, or under a

16 multilateral international agreement, that requires

17 publication of applications 18 months after filing, the

18 application shall not be published as provided in

19 paragraph (1).

20 ‘‘(ii) An applicant may rescind a request made

21 under clause (i) at any time.

22 ‘‘(iii) An applicant who has made a request

23 under clause (i) but who subsequently files, in a for24 eign country or under a multilateral international

25 agreement specified in clause (i), an application di-
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1 rected to the invention disclosed in the application

2 filed in the Patent and Trademark Office, shall notify

3 the Commissioner of such filing not later than 45

4 days after the date of the filing of such foreign or

5 international application. A failure of the applicant

6 to provide such notice within the prescribed period

7 shall result in the application being regarded as

8 abandoned, unless it is shown to the satisfaction of

9 the Commissioner that the delay in submitting the

10 notice was unintentional.

11 ‘‘(iv) Where an applicant rescinds a request

12 made under clause (i) or notifies the Commissioner

13 that an application was filed in a foreign country or

14 under a multilateral international agreement speci15 fied in clause (i), the application shall be published

16 in accordance with the provisions of paragraph (1) on

17 or as soon as is practical after the date that is speci18 fied in clause (i).

19 ‘‘(v) If an applicant has filed applications in

20 one or more foreign countries, directly or through a

21 multilateral international agreement, and such for22 eign filed applications corresponding to an applica23 tion filed in the Patent and Trademark Office or the

24 description of the invention in such foreign filed ap25 plications is less extensive than the application or de-
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1 scription of the invention in the application filed in

2 the Patent and Trademark Office, the applicant may

3 submit a redacted copy of the application filed in the

4 Patent and Trademark Office eliminating any part

5 or description of the invention in such application

6 that is not also contained in any of the corresponding

7 applications filed in a foreign country. The Commis8 sioner may only publish the redacted copy of the ap9 plication unless the redacted copy of the application

10 is not received within 16 months after the earliest ef11 fective filing date for which a benefit is sought under

12 this title. The provisions of section 154(d) shall not

13 apply to a claim if the description of the invention

14 published in the redacted application filed under this

15 clause with respect to the claim does not enable a per16 son skilled in the art to make and use the subject mat17 ter of the claim.

18 ‘‘(c) PROTEST AND PRE-ISSUANCE OPPOSITION.—The

19 Commissioner shall establish appropriate procedures to en20 sure that no protest or other form of pre-issuance opposition

21 to the grant of a patent on an application may be initiated

22 after publication of the application without the express

23 written consent of the applicant.

24 ‘‘(d) NATIONAL SECURITY.—No application for patent

25 shall be published under subsection (b)(1) where the publi-
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1 cation or disclosure of such invention would be detrimental

2 to the national security. The Commissioner shall establish

3 appropriate procedures to ensure that such applications are

4 promptly identified and the secrecy of such inventions is

5 maintained in accordance with chapter 17 of this title.’’.

6 (b) STUDY.—

7 (1) IN GENERAL.—The General Accounting Of8 fice shall conduct a 3-year study of the applicants

9 who file only in the United States after the effective

10 date of this title and shall provide the results of such

11 study to the Judiciary Committees of the House of

12 Representatives and the Senate.

13 (2) CONTENTS.—The study conducted under

14 paragraph (1) shall—

15 (A) consider the number of such applicants

16 in relation to the number of applicants who file

17 in the United States and outside the United

18 States;

19 (B) examine how many domestic-only filers

20 request at the time of filing not to be published;

21 (C) examine how many such filers rescind

22 that request or later choose to file abroad;

23 (D) examine the status of the entity seeking

24 an application and any correlation that may
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1 exist between such status and the publication of

2 patent applications; and

3 (E) examine the abandonment/issuance ra4 tios and length of application pendency before

5 patent issuance or abandonment for published

6 versus unpublished applications.

7 SEC. 503. TIME FOR CLAIMING BENEFIT OF EARLIER FILING

8 DATE.

9 (a) IN A FOREIGN COUNTRY.—Section 119(b) of title

10 35, United States Code, is amended to read as follows:

11 ‘‘(b)(1) No application for patent shall be entitled to

12 this right of priority unless a claim is filed in the Patent

13 and Trademark Office, identifying the foreign application

14 by specifying the application number on that foreign appli15 cation, the intellectual property authority or country in or

16 for which the application was filed, and the date of filing

17 the application, at such time during the pendency of the

18 application as required by the Commissioner.

19 ‘‘(2) The Commissioner may consider the failure of the

20 applicant to file a timely claim for priority as a waiver

21 of any such claim. The Commissioner may establish proce22 dures, including the payment of a surcharge, to accept an

23 unintentionally delayed claim under this section.

24 ‘‘(3) The Commissioner may require a certified copy

25 of the original foreign application, specification, and draw-
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1 ings upon which it is based, a translation if not in the

2 English language, and such other information as the Com3 missioner considers necessary. Any such certification shall

4 be made by the foreign intellectual property authority in

5 which the foreign application was filed and show the date

6 of the application and of the filing of the specification and

7 other papers.’’.

8 (b) IN THE UNITED STATES.—

9 (1) IN GENERAL.—Section 120 of title 35,

10 United States Code, is amended by adding at the end

11 the following: ‘‘No application shall be entitled to the

12 benefit of an earlier filed application under this sec13 tion unless an amendment containing the specific ref14 erence to the earlier filed application is submitted at

15 such time during the pendency of the application as

16 required by the Commissioner. The Commissioner

17 may consider the failure to submit such an amend18 ment within the time period as a waiver of any ben19 efit under this section. The Commissioner may estab20 lish procedures, including the payment of a surcharge,

21 to accept an unintentionally delayed submission of an

22 amendment under this section.’’.

23 (2) RIGHT OF PRIORITY.—Section 119(e)(1) of

24 title 35, United States Code, is amended by adding

25 at the end the following: ‘‘No application shall be en-
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1 titled to the benefit of an earlier filed provisional ap2 plication under this subsection unless an amendment

3 containing the specific reference to the earlier filed

4 provisional application is submitted at such time

5 during the pendency of the application as required by

6 the Commissioner. The Commissioner may consider

7 the failure to submit such an amendment within that

8 time period as a waiver of any benefit under this sub9 section. The Commissioner may establish procedures,

10 including the payment of a surcharge, to accept an

11 unintentionally delayed submission of an amendment

12 under this subsection during the pendency of the ap13 plication.’’.

14 SEC. 504. PROVISIONAL RIGHTS.

15 Section 154 of title 35, United States Code, is

16 amended—

17 (1) in the section caption by inserting ‘‘; provi18 sional rights’’ after ‘‘patent’’; and

19 (2) by adding at the end the following new sec20 tion:

21 ‘‘(d) PROVISIONAL RIGHTS.—

22 ‘‘(1) IN GENERAL.—In addition to other rights

23 provided by this section, a patent shall include the

24 right to obtain a reasonable royalty from any person

25 who, during the period beginning on the date of pub-
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1 lication of the application for such patent pursuant

2 to section 122(b), or in the case of an international

3 application filed under the treaty defined in section

4 351(a) designating the United States under Article

5 21(2)(a) of such treaty, the date of publication of the

6 application, and ending on the date the patent is

7 issued—

8 ‘‘(A)(i) makes, uses, offers for sale, or sells

9 in the United States the invention as claimed in

10 the published patent application or imports such

11 an invention into the United States; or

12 ‘‘(ii) if the invention as claimed in the pub13 lished patent application is a process, uses, offers

14 for sale, or sells in the United States or imports

15 into the United States products made by that

16 process as claimed in the published patent appli17 cation; and

18 ‘‘(B) had actual notice of the published pat19 ent application and, in a case in which the right

20 arising under this paragraph is based upon an

21 international application designating the United

22 States that is published in a language other than

23 English, had a translation of the international

24 application into the English language.
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1 ‘‘(2) RIGHT BASED ON SUBSTANTIALLY IDEN2 TICAL INVENTIONS.—The right under paragraph (1)

3 to obtain a reasonable royalty shall not be available

4 under this subsection unless the invention as claimed

5 in the patent is substantially identical to the inven6 tion as claimed in the published patent application.

7 ‘‘(3) TIME LIMITATION ON OBTAINING A REASON8 ABLE ROYALTY.—The right under paragraph (1) to

9 obtain a reasonable royalty shall be available only in

10 an action brought not later than 6 years after the

11 patent is issued. The right under paragraph (1) to ob12 tain a reasonable royalty shall not be affected by the

13 duration of the period described in paragraph (1).

14 ‘‘(4) REQUIREMENTS FOR INTERNATIONAL APPLI15 CATIONS.—

16 ‘‘(A) EFFECTIVE DATE.—The right under

17 paragraph (1) to obtain a reasonable royalty

18 based upon the publication under the treaty de19 fined in section 351(a) of an international ap20 plication designating the United States shall

21 commence on the date on which the Patent and

22 Trademark Office receives a copy of the publica23 tion under the treaty of the international appli24 cation, or, if the publication under the treaty of

25 the international application is in a language
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1 other than English, on the date on which the

2 Patent and Trademark Office receives a trans3 lation of the international application in the

4 English language.

5 ‘‘(B) COPIES.—The Commissioner may re6 quire the applicant to provide a copy of the

7 international application and a translation

8 thereof.’’.

9 SEC. 505. PRIOR ART EFFECT OF PUBLISHED APPLICA10 TIONS.

11 Section 102(e) of title 35, United States Code, is

12 amended to read as follows:

13 ‘‘(e) the invention was described in—

14 ‘‘(1)(A) an application for patent, published

15 pursuant to section 122(b), by another filed in the

16 United States before the invention by the applicant

17 for patent, except that an international application

18 filed under the treaty defined in section 351(a) shall

19 have the effect under this subsection of a national ap20 plication published under section 122(b) only if the

21 international application designating the United

22 States was published under Article 21(2)(a) of such

23 treaty in the English language; or

24 ‘‘(B) a patent granted on an application for pat25 ent by another filed in the United States before the
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1 invention by the applicant for patent, except that a

2 patent shall not be deemed filed in the United States

3 for the purposes of this subsection based on the filing

4 of an international application filed under the treaty

5 defined in section 351(a); or’’.

6 SEC. 506. COST RECOVERY FOR PUBLICATION.

7 The Commissioner of Patents and Trademarks shall

8 recover the cost of early publication required by the amend9 ment made by section 502 by charging a separate publica10 tion fee after notice of allowance is given pursuant to sec11 tion 151 of title 35, United States Code.

12 SEC. 507. CONFORMING AMENDMENTS.

13 The following provisions of title 35, United States

14 Code, are amended:

15 (1) Section 11 is amended in paragraph (1) of

16 subsection (a) by inserting ‘‘and published applica17 tions for patents’’ after ‘‘Patents’’.

18 (2) Section 12 is amended—

19 (A) in the section caption by inserting

20 ‘‘and applications’’ after ‘‘patents’’; and

21 (B) by inserting ‘‘and published applica22 tions for patents’’ after ‘‘patents’’.

23 (3) Section 13 is amended—

24 (A) in the section caption by inserting

25 ‘‘and applications’’ after ‘‘patents’’; and
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1 (B) by inserting ‘‘and published applica2 tions for patents’’ after ‘‘patents’’.

3 (4) The items relating to sections 12 and 13 in

4 the table of sections for chapter 1 are each amended

5 by inserting ‘‘and applications’’ after ‘‘patents’’.

6 (5) The item relating to section 122 in the table

7 of sections for chapter 11 is amended by inserting ‘‘;

8 publication of patent applications’’ after ‘‘applica9 tions’’.

10 (6) The item relating to section 154 in the table

11 of sections for chapter 14 is amended by inserting ‘‘;

12 provisional rights’’ after ‘‘patent’’.

13 (7) Section 181 is amended—

14 (A) in the first undesignated paragraph—

15 (i) by inserting ‘‘by the publication of

16 an application or’’ after ‘‘disclosure’’; and

17 (ii) by inserting ‘‘the publication of the

18 application or’’ after ‘‘withhold’’;

19 (B) in the second undesignated paragraph

20 by inserting ‘‘by the publication of an applica21 tion or’’ after ‘‘disclosure of an invention’’;

22 (C) in the third undesignated paragraph—

23 (i) by inserting ‘‘by the publication of

24 the application or’’ after ‘‘disclosure of the

25 invention’’; and
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1 (ii) by inserting ‘‘the publication of the

2 application or’’ after ‘‘withhold’’; and

3 (D) in the fourth undesignated paragraph

4 by inserting ‘‘the publication of an application

5 or’’ after ‘‘and’’ in the first sentence.

6 (8) Section 252 is amended in the first undesig7 nated paragraph by inserting ‘‘substantially’’ before

8 ‘‘identical’’ each place it appears.

9 (9) Section 284 is amended by adding at the end

10 of the second undesignated paragraph the following:

11 ‘‘Increased damages under this paragraph shall not

12 apply to provisional rights under section 154(d) of

13 this title.’’.

14 (10) Section 374 is amended to read as follows:

15 ‘‘§ 374. Publication of international application

16 ‘‘The publication under the treaty defined in section

17 351(a) of this title, of an international application desig18 nating the United States shall confer the same rights and

19 shall have the same effect under this title as an application

20 for patent published under section 122(b), except as pro21 vided in sections 102(e) and 154(d) of this title.’’.

22 (11) Section 135(b) is amended—

23 (A) by inserting ‘‘(1)’’ after ‘‘(b)’’; and

24 (B) by adding at the end the following:
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1 ‘‘(2) A claim which is the same as, or for the same

2 or substantially the same subject matter as, a claim of an

3 application published pursuant to section 122(b) of this

4 title may be made in an application filed after the applica5 tion is published only if the claim is made before 1 year

6 after the date on which the application is published.’’.

7 SEC. 508. EFFECTIVE DATE.

8 Sections 502 through 507, and the amendments made

9 by such sections, shall take effect on the date that is 1 year

10 after the date of enactment of this Act and shall apply to

11 all applications filed under section 111 of title 35, United

12 States Code, on or after that date, and all applications com13 plying with section 371 of title 35, United States Code, that

14 resulted from international applications filed on or after

15 that date. The amendments made by sections 504 and 505

16 shall apply to any such application voluntarily published

17 by the applicant under procedures established under this

18 title that is pending on the date that is 1 year after the

19 date of the enactment of this Act. The amendment made

20 by section 504 shall also apply to international applica21 tions designating the United States that are filed on or after

22 the date that is 1 year after the date of the enactment of

23 this Act.
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1 TITLE VI—OPTIONAL INTER

2 PARTES REEXAMINATION

3 PROCEDURE

4 SEC. 601. SHORT TITLE.

5 This title may be cited as the ‘‘Optional Inter Partes

6 Reexamination Procedure Act of 1999’’.

7 SEC. 602. EX PARTE REEXAMINATION OF PATENTS.

8 Chapter 30 of title 35, United States Code, is amended

9 in the title by inserting ‘‘EX PARTE’’ before ‘‘REEX10 AMINATION OF PATENTS’’.

11 SEC. 603. DEFINITIONS.

12 Section 100 of title 35, United States Code, is amended

13 by adding at the end the following new subsection:

14 ‘‘(e) The term ‘third-party requester’ means a person

15 requesting ex parte reexamination under section 302 or

16 inter partes reexamination under section 311 who is not

17 the patent owner.’’.

18 SEC. 604. OPTIONAL INTER PARTES REEXAMINATION PRO19 CEDURES.

20 (a) IN GENERAL.—Part 3 of title 35, United States

21 Code, is amended by adding after chapter 30 the following

22 new chapter:

23 ‘‘CHAPTER 31—OPTIONAL INTER PARTES

24 REEXAMINATION PROCEDURES

‘‘Sec.

‘‘311. Request for inter partes reexamination.
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‘‘312. Determination of issue by Commissioner.

‘‘313. Inter partes reexamination order by Commissioner.

‘‘314. Conduct of inter partes reexamination proceedings.

‘‘315. Appeal.

‘‘316. Certificate of patentability, unpatentability, and claim cancellation.

‘‘317. Inter partes reexamination prohibited.

‘‘318. Stay of litigation.

1 ‘‘§ 311. Request for inter partes reexamination

2 ‘‘(a) IN GENERAL.—Any person at any time may file

3 a request for inter partes reexamination by the Office of

4 a patent on the basis of any prior art cited under the provi5 sions of section 301.

6 ‘‘(b) REQUIREMENTS.—The request shall—

7 ‘‘(1) be in writing, include the identity of the

8 real party in interest, and be accompanied by pay9 ment of an inter partes reexamination fee established

10 by the Commissioner under section 41; and

11 ‘‘(2) set forth the pertinency and manner of ap12 plying cited prior art to every claim for which reex13 amination is requested.

14 ‘‘(c) COPY.—Unless the requesting person is the

15 owner of the patent, the Commissioner promptly shall

16 send a copy of the request to the owner of record of

17 the patent.

18 ‘‘§ 312. Determination of issue by Commissioner

19 ‘‘(a) REEXAMINATION.—Not later than 3 months after

20 the filing of a request for inter partes reexamination under

21 section 311, the Commissioner shall determine whether a

22 substantial new question of patentability affecting any
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1 claim of the patent concerned is raised by the request, with

2 or without consideration of other patents or printed publi3 cations. On the Commissioner’s initiative, and at any time,

4 the Commissioner may determine whether a substantial

5 new question of patentability is raised by patents and pub6 lications.

7 ‘‘(b) RECORD.—A record of the Commissioner’s deter8 mination under subsection (a) shall be placed in the official

9 file of the patent, and a copy shall be promptly given or

10 mailed to the owner of record of the patent and to the third11 party requester, if any.

12 ‘‘(c) FINAL DECISION.—A determination by the Com13 missioner pursuant to subsection (a) shall be final and non14 appealable. Upon a determination that no substantial new

15 question of patentability has been raised, the Commissioner

16 may refund a portion of the inter partes reexamination fee

17 required under section 311.

18 ‘‘§ 313. Inter partes reexamination order by Commis19 sioner

20 ‘‘If, in a determination made under section 312(a), the

21 Commissioner finds that a substantial new question of pat22 entability affecting a claim of a patent is raised, the deter23 mination shall include an order for inter partes reexamina24 tion of the patent for resolution of the question. The order

25 may be accompanied by the initial action of the Patent and
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1 Trademark Office on the merits of the inter partes reexam2 ination conducted in accordance with section 314.

3 ‘‘§ 314. Conduct of inter partes reexamination pro4 ceedings

5 ‘‘(a) IN GENERAL.—Subject to subsection (b), reexam6 ination shall be conducted according to the procedures es7 tablished for initial examination under the provisions of

8 sections 132 and 133, except as provided for under this sec9 tion. In any inter partes reexamination proceeding under

10 this chapter, the patent owner shall be permitted to propose

11 any amendment to the patent and a new claim or claims,

12 except that no proposed amended or new claim enlarging

13 the scope of the claims of the patent shall be permitted.

14 ‘‘(b) RESPONSE.—(1) This subsection shall apply to

15 any inter partes reexamination proceeding in which the

16 order for inter partes reexamination is based upon a request

17 by a third-party requester.

18 ‘‘(2) With the exception of the inter partes reexamina19 tion request, any document filed by either the patent owner

20 or the third-party requester shall be served on the other

21 party. In addition, the third-party requester shall receive

22 a copy of any communication sent by the Office to the pat23 ent owner concerning the patent subject to the inter partes

24 reexamination proceeding.
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1 ‘‘(3) Each time that the patent owner files a response

2 to an action on the merits from the Patent and Trademark

3 Office, the third-party requester shall have one opportunity

4 to file written comments addressing issues raised by the ac5 tion of the Office or the patent owner’s response thereto, if

6 those written comments are received by the Office within

7 30 days after the date of service of the patent owner’s re8 sponse.

9 ‘‘(c) SPECIAL DISPATCH.—Unless otherwise provided

10 by the Commissioner for good cause, all inter partes reex11 amination proceedings under this section, including any

12 appeal to the Board of Patent Appeals and Interferences,

13 shall be conducted with special dispatch within the Office.

14 ‘‘§ 315. Appeal

15 ‘‘(a) PATENT OWNER.—The patent owner involved in

16 an inter partes reexamination proceeding under this

17 chapter—

18 ‘‘(1) may appeal under the provisions of section

19 134 and may appeal under the provisions of sections

20 141 through 144, with respect to any decision adverse

21 to the patentability of any original or proposed

22 amended or new claim of the patent; and

23 ‘‘(2) may be a party to any appeal taken by a

24 third-party requester under subsection (b).
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1 ‘‘(b) THIRD-PARTY REQUESTER.—A third-party re2 quester may—

3 ‘‘(1) appeal under the provisions of section 134

4 with respect to any final decision favorable to the

5 patentability of any original or proposed amended or

6 new claim of the patent; or

7 ‘‘(2) be a party to any appeal taken by the pat8 ent owner under the provisions of section 134, subject

9 to subsection (c).

10 ‘‘(c) CIVIL ACTION.—A third-party requester whose re11 quest for an inter partes reexamination results in an order

12 under section 313 is estopped from asserting at a later time,

13 in any civil action arising in whole or in part under sec14 tion 1338 of title 28, the invalidity of any claim finally

15 determined to be valid and patentable on any ground which

16 the third-party requester raised or could have raised during

17 the inter partes reexamination proceedings. This subsection

18 does not prevent the assertion of invalidity based on newly

19 discovered prior art unavailable to the third-party requester

20 and the Patent and Trademark Office at the time of the

21 inter partes reexamination proceedings.

22 ‘‘§ 316. Certificate of patentability, unpatentability,

23 and claim cancellation

24 ‘‘(a) IN GENERAL.—In an inter partes reexamination

25 proceeding under this chapter, when the time for appeal has
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1 expired or any appeal proceeding has terminated, the Com2 missioner shall issue and publish a certificate canceling any

3 claim of the patent finally determined to be unpatentable,

4 confirming any claim of the patent determined to be patent5 able, and incorporating in the patent any proposed amend6 ed or new claim determined to be patentable.

7 ‘‘(b) AMENDED OR NEW CLAIM.—Any proposed

8 amended or new claim determined to patentable and incor9 porated into a patent following an inter partes reexamina10 tion proceeding shall have the same effect as that specified

11 in section 252 of this title for reissued patents on the right

12 of any person who made, purchased, or used within the

13 United States, or imported into the United States, anything

14 patented by such proposed amended or new claim, or who

15 made substantial preparation for the same, prior to

16 issuance of a certificate under the provisions of subsection

17 (a) of this section.

18 ‘‘§ 317. Inter partes reexamination prohibited

19 ‘‘(a) ORDER FOR REEXAMINATION.—Notwithstanding

20 any provision of this chapter, once an order for inter partes

21 reexamination of a patent has been issued under section

22 313, neither the patent owner nor the third-party requester,

23 if any, nor privies of either, may file a subsequent request

24 for inter partes reexamination of the patent until an inter
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1 partes reexamination certificate is issued and published

2 under section 316, unless authorized by the Commissioner.

3 ‘‘(b) FINAL DECISION.—Once a final decision has been

4 entered against a party in a civil action arising in whole

5 or in part under section 1338 of title 28 that the party

6 has not sustained its burden of proving the invalidity of

7 any patent claim in suit or if a final decision in an inter

8 partes reexamination proceeding instituted by a third9 party requester is favorable to the patentability of any

10 original or proposed amended or new claim of the patent

11 then neither that party nor its privies may thereafter re12 quest inter partes reexamination of any such patent claim

13 on the basis of issues which that party or its privies raised

14 or could have raised in such civil action or inter partes

15 reexamination proceeding, and an inter partes reexamina16 tion requested by that party or its privies on the basis of

17 such issues may not thereafter be maintained by the Office,

18 notwithstanding any other provision of this chapter. This

19 subsection does not prevent the assertion of invalidity based

20 on newly discovered prior art unavailable to the third-party

21 requester and the Patent and Trademark Office at the time

22 of the inter partes reexamination proceedings.

23 ‘‘§ 318. Stay of litigation

24 ‘‘Once an order for inter partes reexamination of a

25 patent has been issued under section 313, the patent owner
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1 may obtain a stay of any pending litigation which involves

2 an issue of patentability of any claims of the patent which

3 are the subject of the inter partes reexamination order, un4 less the court before which such litigation is pending deter5 mines that a stay would not serve the interests of justice.’’.

6 (b) CONFORMING AMENDMENTS.—The table of chapters

7 for part III of title 25, United States Code, is amended by

8 striking the item relating to chapter 30 and inserting the

9 following:

‘‘30. Prior Art Citations to Office and Ex Parte Reexamination of Patents ...................................................... 301

‘‘31. Optional Inter Partes Reexamination of Patents .......... 311’’.

10 SEC. 605. CONFORMING AMENDMENTS.

11 (a) PATENT FEES; PATENT SEARCH SYSTEMS.—Sec12 tion 41(a)(7) of title 35, United States Code, is amended

13 to read as follows:

14 ‘‘(7) On filing each petition for the revival of an

15 unintentionally abandoned application for a patent,

16 for the unintentionally delayed payment of the fee for

17 issuing each patent, or for an unintentionally delayed

18 response by the patent owner in any reexamination

19 proceeding, $1,210, unless the petition is filed under

20 section 133 or 151 of this title, in which case the fee

21 shall be $110.’’.

22 (b) APPEAL TO THE BOARD OF PATENTS APPEALS AND

23 INTERFERENCES.—Section 134 of title 35, United States

24 Code, is amended to read as follows:
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1 ‘‘§ 134. Appeal to the Board of Patent Appeals and

2 Interferences

3 ‘‘(a) PATENT APPLICANT.—An applicant for a patent,

4 any of whose claims has been twice rejected, may appeal

5 from the decision of the primary examiner to the Board

6 of Patent Appeals and Interferences, having once paid the

7 fee for such appeal.

8 ‘‘(b) PATENT OWNER.—A patent owner in any reex9 amination proceeding may appeal from the final rejection

10 of any claim by the primary examiner to the Board of Pat11 ent Appeals and Interferences, having once paid the fee for

12 such appeal.

13 ‘‘(c) THIRD-PARTY.—A third-party requester in an

14 inter partes proceeding may appeal to the Board of Patent

15 Appeals and Interferences from the final decision of the pri16 mary examiner favorable to the patentability of any origi17 nal or proposed amended or new claim of a patent, having

18 once paid the fee for such appeal. The third-party requester

19 may not appeal the decision of the Board of Patent Appeals

20 and Interferences.’’.

21 (c) APPEAL TO COURT OF APPEALS FOR THE FEDERAL

22 CIRCUIT.—Section 141 of title 35, United States Code, is

23 amended by adding the following after the second sentence:

24 ‘‘A patent owner in any reexamination proceeding dissatis25 fied with the final decision in an appeal to the Board of

26 Patent Appeals and Interferences under section 134 may
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1 appeal the decision only to the United States Court of Ap2 peals for the Federal Circuit.’’.

3 (d) PROCEEDINGS ON APPEAL.—Section 143 of title

4 35, United States Code, is amended by amending the third

5 sentence to read as follows: ‘‘In any reexamination cases,

6 the Commissioner shall submit to the court in writing the

7 grounds for the decision of the Patent and Trademark Of8 fice, addressing all the issues involved in the appeal.’’.

9 (e) CIVIL ACTION TO OBTAIN PATENT.—Section 145

10 of title 35, United States Code, is amended in the first sen11 tence by inserting ‘‘(a)’’ after ‘‘section 134’’.

12 SEC. 606. REPORT TO CONGRESS.

13 Not later than 5 years after the effective date of this

14 title, the Commissioner of Patents and Trademarks shall

15 submit to the Congress a report evaluating whether the inter

16 partes reexamination proceedings established under the

17 amendments made by this title are inequitable to any of

18 the parties in interest and, if so, the report shall contain

19 recommendations for changes to the amendments made by

20 this title to remove such inequity.

21 SEC. 607. ESTOPPEL EFFECT OF REEXAMINATION.

22 Any party who requests an inter partes reexamination

23 under section 311 of title 35, United States Code, is es24 topped from challenging at a later time, in any civil action,

25 any fact determined during the process of such reexamina-
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1 tion, except with respect to a fact determination later

2 proved to be erroneous based on information unavailable

3 at the time of the inter partes reexamination decision. If

4 this section is held to be unenforceable, the enforceability

5 of the rest of this title or of this Act shall not be denied

6 as a result.

7 SEC. 608. EFFECTIVE DATE.

8 This title and the amendments made by this title shall

9 take effect on the date that is 1 year after the date of the

10 enactment of this Act and shall apply to inter partes reex11 amination requests filed on or after such date.

12 TITLE VII—MISCELLANEOUS

13 PATENT PROVISIONS

14 SEC. 701. PROVISIONAL APPLICATIONS.

15 (a) ABANDONMENT.—Section 111(b)(5) of title 35,

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

17 ‘‘(5) ABANDONMENT.—Notwithstanding the ab18 sence of a claim, upon timely request and as pre19 scribed by the Commissioner, a provisional applica20 tion may be treated as an application filed under

21 subsection (a). Subject to section 119(e)(3) of this

22 title, if no such request is made, the provisional ap23 plication shall be regarded as abandoned 12 months

24 after the filing date of such application and shall not

25 be subject to revival after such 12-month period.’’.
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1 (b) TECHNICAL AMENDMENT RELATING TO WEEKENDS

2 AND HOLIDAYS.—Section 119(e) of title 35, United States

3 Code, is amended by adding at the end the following:

4 ‘‘(3) If the day that is 12 months after the filing

5 date of a provisional application falls on a Saturday,

6 Sunday, or Federal holiday within the District of Co7 lumbia, the period of pendency of the provisional ap8 plication shall be extended to the next succeeding sec9 ular or business day.’’.

10 (c) ELIMINATION OF COPENDENCY REQUIREMENT.—

11 Section 119(e)(2) of title 35, United States Code, is amend12 ed by striking ‘‘and the provisional application was pend13 ing on the filing date of the application for patent under

14 section 111(a) or section 363 of this title’’.

15 (d) EFFECTIVE DATE.—The amendments made by this

16 section shall take effect on the date of the enactment of this

17 Act and shall apply to any provisional application filed

18 on or after June 8, 1995, except that the amendments made

19 by subsections (b) and (c) shall have no effect with respect

20 to any patent which is the subject of litigation in an action

21 commenced before such date of the enactment.

22 SEC. 702. INTERNATIONAL APPLICATIONS.

23 Section 119 of title 35, United States Code, is amended

24 as follows—
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1 (1) In subsection (a), insert ‘‘or in a WTO mem2 ber country,’’ after ‘‘or citizens of the United States,’’.

3 (2) At the end of section 119 add the following

4 new subsections:

5 ‘‘(f) Applications for plant breeder’s rights filed in a

6 WTO member country (or in a foreign UPOV Contracting

7 Party) shall have the same effect for the purpose of the right

8 of priority under subsections (a) through (c) of this section

9 as applications for patents, subject to the same conditions

10 and requirements of this section as apply to applications

11 for patents.

12 ‘‘(g) As used in this section—

13 ‘‘(1) the term ‘WTO member country’ has the

14 same meaning as the term is defined in section

15 104(b)(2) of this title; and

16 ‘‘(2) the term ‘UPOV Contracting Party’ means

17 a member of the International Convention for the

18 Protection of New Varieties of Plants.’’.

19 SEC. 703. CERTAIN LIMITATIONS ON DAMAGES FOR PATENT

20 INFRINGEMENT NOT APPLICABLE.

21 Section 287(c)(4) of title 35, United States Code, is

22 amended by striking ‘‘before the date of enactment of this

23 subsection’’ and inserting ‘‘based on an application the ear24 liest effective filing date of which is prior to September 30,

25 1996’’.
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1 SEC. 704. ELECTRONIC FILING AND PUBLICATIONS.

2 (a) PRINTING OF PAPERS FILED.—Section 22 of title

3 35, United States Code, is amended by striking ‘‘printed

4 or typewritten’’ and inserting ‘‘printed, typewritten, or on

5 an electronic medium’’.

6 (b) PUBLICATIONS.—Section 11(a) of title 35, United

7 States Code, is amended by amending the matter preceding

8 paragraph 1 to read as follows:

9 ‘‘(a) The Commissioner may publish in printed, type10 written, or electronic form, the following:’’.

11 (c) COPIES OF PATENTS FOR PUBLIC LIBRARIES.—

12 Section 13 of title 35, United States Code, is amended by

13 striking ‘‘The Commissioner may supply printed copies of

14 specifications and drawings of patents’’ and inserting ‘‘The

15 Commissioner may supply copies of specifications and

16 drawings of patents in printed or electronic form’’.

17 (d) MAINTENANCE OF COLLECTIONS.—

18 (1) Section 41(i)(1) of title 35, United States

19 Code, is amended by striking ‘‘The Commissioner

20 shall maintain, for use by the public, paper or

21 microform’’ and inserting ‘‘The Commissioner shall

22 maintain, for use by the public, paper, microform, or

23 electronic’’.

24 (2) The Commissioner shall not, pursuant to the

25 amendment made by paragraph (1), cease to main26 tain, for use by the public, paper or microform collec-
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1 tions of United States patents, foreign patent docu2 ments, and United States trademark registrations, ex3 cept pursuant to notice and opportunity for public

4 comment and except the Commissioner shall first sub5 mit a report to the Committees on the Judiciary of

6 the Senate and the House of Representatives detailing

7 such plan, including a description of the mechanisms

8 in place to ensure the integrity of such collections and

9 the data contained therein, as well as to ensure

10 prompt public access to the most current available in11 formation, and certifying that the implementation of

12 such plan will not negatively impact the public.

13 SEC. 705. STUDY AND REPORT ON BIOLOGICAL DEPOSITS

14 IN SUPPORT OF BIOTECHNOLOGY PATENTS.

15 (a) IN GENERAL.—No later than 6 months after the

16 date of the enactment of this Act, the Comptroller General

17 of the United States, in consultation with the Commissioner

18 of Patents and Trademarks, shall conduct a study and sub19 mit a report to Congress on the potential risks to the United

20 States biotechnology industry relating to biological deposits

21 in support of biotechnology patents.

22 (b) CONTENTS.—The study conducted under this sec23 tion shall include—

24 (1) an examination of the risk of export and the

25 risk of transfers to third parties of biological deposits,
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1 and the risks posed by the change to 18-month publi2 cation requirements made by this Act;

3 (2) an analysis of comparative legal and regu4 latory regimes; and

5 (3) any related recommendations.

6 (c) CONSIDERATION OF REPORT.—In drafting regula7 tions affecting biological deposits (including any modifica8 tion of title 37, Code of Federal Regulations, section 1.801

9 et seq.), the Patent and Trademark Office shall consider the

10 recommendations of the study conducted under this section.

11 SEC. 706. PRIOR INVENTION.

12 Section 102(g) of title 35, United States Code, is

13 amended to read as follows:

14 ‘‘(g)(1) during the course of an interference conducted

15 under section 135 or section 291, another inventor involved

16 therein establishes, to the extent permitted in section 104,

17 that before such person’s invention thereof the invention was

18 made by such other inventor and not abandoned, sup19 pressed, or concealed, or (2) before such person’s invention

20 thereof, the invention was made in this country by another

21 inventor who had not abandoned, suppressed, or concealed

22 it. In determining priority of invention under this sub23 section, there shall be considered not only the respective

24 dates of conception and reduction to practice of the inven25 tion, but also the reasonable diligence of one who was first
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1 to conceive and last to reduce to practice, from a time prior

2 to conception by the other.’’.

3 SEC. 707. PRIOR ART EXCLUSION FOR CERTAIN COMMONLY

4 ASSIGNED PATENTS.

5 (a) PRIOR ART EXCLUSION.—Section 103(c) of title

6 35, United States Code, is amended by striking ‘‘subsection

7 (f) or (g)’’ and inserting ‘‘one or more of subsections (e),

8 (f), and (g)’’.

9 (b) EFFECTIVE DATE.—The amendment made by this

10 section shall apply to any application for patent filed on

11 or after the date of the enactment of this Act.

12 SEC. 708. EXCHANGE OF COPIES OF PATENTS WITH FOR13 EIGN COUNTRIES.

14 Section 12 of title 35, United States Code, is amended

15 by adding at the end the following: ‘‘The Commissioner

16 shall not enter into an agreement to provide such copies

17 of specifications and drawings of United States patents and

18 applications to a foreign country, other than a NAFTA

19 country or a WTO member country, without the express au20 thorization of the Secretary of Commerce. For purposes of

21 this section, the terms ‘NAFTA country’ and ‘WTO member

22 country’ have the meanings given those terms in section

23 104(b).’’.
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1 SEC. 709. NATIONAL SECURITY.

2 Section 6 of title 35, United States Code, is amended

3 by adding at the end the following new subsection:

4 ‘‘(d) The Commissioner, in consultation with the Di5 rector of the Office of Personnel Management, shall main6 tain a program for identifying national security positions

7 and providing for appropriate security clearances, in order

8 to maintain the secrecy of certain inventions, as described

9 in section 181, and to prevent disclosure of sensitive and

10 strategic information in the interest of national security.’’.