I

106TH CONGRESS

1ST SESSION H. R. 1907

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.

IN THE HOUSE OF REPRESENTATIVES

MAY 24, 1999

Mr. COBLE (for himself, Mr. BERMAN, Mr. HYDE, Mr. CONYERS, Mr. ROHRABACHER, Mr. CAMPBELL, Mr. GOODLATTE, Mr. LOFGREN, Mr.

DELAHUNT, Mr. PEASE, Mr. WEXLER, and Mr. GALLEGLY) introduced

the following bill; which was referred to the Committee on the Judiciary

A BILL

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:

Sec. 1. Short title.

Sec. 2. Table of contents.
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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—PATENT LITIGATION REDUCTION ACT

Sec. 501. Short title.

Sec. 502. Definitions.

Sec. 503. Reexamination procedures.

Sec. 504. Conforming amendments.

Sec. 505. Report to Congress.

Sec. 506. 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. Personnel flexibility.

Sec. 615. Public Advisory Committees.

Sec. 616. Patent and Trademark Office funding.

Sec. 617. Conforming amendments.

Sec. 618. Trademark Trial and Appeal Board.

Sec. 619. Board of Patent Appeals and Interferences.

Sec. 620. Annual report of Director.

Sec. 621. Suspension or exclusion from practice.
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Sec. 622. Pay of Director.

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.

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:

8 ‘‘CHAPTER 5—INVENTION PROMOTION SERVICES

‘‘Sec.

‘‘51. Definitions.

‘‘52. Contracting requirements.

‘‘53. Standard provisions for cover notice.

‘‘54. Reports to customer required.

‘‘55. Mandatory contract terms.

‘‘56. Remedies.
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‘‘57. Records of complaints.

‘‘58. Fraudulent representation by an invention promoter.

‘‘59. Rule of construction.

1 ‘‘§ 51. Definitions

2 ‘‘For purposes of this chapter—

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

4 services’ means a contract by which an invention

5 promoter undertakes invention promotion services

6 for a customer;

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

8 firm, partnership, corporation, or other entity who

9 enters into a financial relationship or a contract with

10 an invention promoter for invention promotion serv11 ices;

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

13 person, firm, partnership, corporation, or other enti14 ty who offers to perform or performs for, or on be15 half of, a customer any act described under para16 graph (4), but does not include—

17 ‘‘(A) any department or agency of the Fed18 eral Government or of a State or local govern19 ment;

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

21 or educational organization, qualified under ap22 plicable State law or described under section

23 170(b)(1)(A) of the Internal Revenue Code of

24 1986; or
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1 ‘‘(C) any person duly registered with, and

2 in good standing before, the United States Pat3 ent and Trademark Office acting within the

4 scope of that person’s registration to practice

5 before the Patent and Trademark Office, except

6 when that person performs any act described in

7 subparagraph (B) or (C) of paragraph (4); and

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

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

10 any act involved in—

11 ‘‘(A) evaluating the invention to determine

12 its protectability as some form of intellectual

13 property, other than evaluation by a person li14 censed by a State to practice law who is acting

15 solely within the scope of that person’s profes16 sional license;

17 ‘‘(B) evaluating the invention to determine

18 its commercial potential by any person for pur19 poses other than providing venture capital; or

20 ‘‘(C) marketing, brokering, offering to li21 cense or sell, or promoting the invention or a

22 product or service in which the invention is in23 corporated or used, except that the display only

24 of an invention at a trade show or exhibit shall
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1 not be considered to be invention promotion

2 services.

3 ‘‘§ 52. Contracting requirements

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

5 promotion services shall be in writing and shall be subject

6 to the provisions of this chapter. A copy of the signed writ7 ten contract shall be given to the customer at the time

8 the customer enters into the contract.

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

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

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

12 be considered a customer for purposes of this chapter.

13 ‘‘(b) REQUIREMENTS OF INVENTION PROMOTER.—

14 The invention promoter shall—

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

16 a customer enters into a contract for invention pro17 motion services, whether the usual business practice

18 of the invention promoter is to—

19 ‘‘(A) seek more than 1 contract in connec20 tion with an invention; or

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

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

23 performance of each phase covered in 1 or more

24 subsequent contracts; and
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1 ‘‘(2) supply to the customer a copy of the writ2 ten document together with a written summary of

3 the usual business practices of the invention pro4 moter, including—

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

6 and

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

8 fees or other consideration that may be required

9 from the customer for each of the services pro10 vided by the invention promoter.

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

12 (1) Notwithstanding any contractual provision to the con13 trary, a customer shall have the right to terminate a con14 tract for invention promotion services by sending a written

15 letter to the invention promoter stating the customer’s in16 tent to cancel the contract. The letter of termination must

17 be deposited with the United States Postal Service on or

18 before 5 business days after the date upon which the cus19 tomer or the invention promoter executes the contract,

20 whichever is later.

21 ‘‘(2) Delivery of a promissory note, check, bill of ex22 change, or negotiable instrument of any kind to the inven23 tion promoter or to a third party for the benefit of the

24 invention promoter, without regard to the date or dates

25 appearing in such instrument, shall be deemed payment
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1 received by the invention promoter on the date received

2 for purposes of this section.

3 ‘‘§ 53. Standard provisions for cover notice

4 ‘‘(a) CONTENTS.—Every contract for invention pro5 motion services shall have a conspicuous and legible cover

6 sheet attached with the following notice imprinted in bold7 face type of not less than 12-point size:

8 ‘YOU HAVE THE RIGHT TO TERMINATE THIS

9 CONTRACT. TO TERMINATE THIS CONTRACT,

10 YOU MUST SEND A WRITTEN LETTER TO THE

11 COMPANY STATING YOUR INTENT TO CANCEL

12 THIS CONTRACT.

13 ‘THE LETTER OF TERMINATION MUST BE

14 DEPOSITED WITH THE UNITED STATES POSTAL

15 SERVICE ON OR BEFORE FIVE (5) BUSINESS

16 DAYS AFTER THE DATE ON WHICH YOU OR THE

17 COMPANY EXECUTE THE CONTRACT, WHICH18 EVER IS LATER.

19 ‘THE TOTAL NUMBER OF INVENTIONS

20 EVALUATED BY THE INVENTION PROMOTER

21 FOR COMMERCIAL POTENTIAL IN THE PAST

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

23 XXXXX RECEIVED POSITIVE EVALUATIONS AND

24 XXXXX RECEIVED NEGATIVE EVALUATIONS.
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1 ‘IF YOU ASSIGN EVEN A PARTIAL INTEREST

2 IN THE INVENTION TO THE INVENTION PRO3 MOTER, THE INVENTION PROMOTER MAY HAVE

4 THE RIGHT TO SELL OR DISPOSE OF THE IN5 VENTION WITHOUT YOUR CONSENT AND MAY

6 NOT HAVE TO SHARE THE PROFITS WITH YOU.

7 ‘THE TOTAL NUMBER OF CUSTOMERS WHO

8 HAVE CONTRACTED WITH THE INVENTION PRO9 MOTER IN THE PAST FIVE (5) YEARS IS XXXXX.

10 THE TOTAL NUMBER OF CUSTOMERS KNOWN

11 BY THIS INVENTION PROMOTER TO HAVE RE12 CEIVED, BY VIRTUE OF THIS INVENTION PRO13 MOTER’S PERFORMANCE, AN AMOUNT OF

14 MONEY IN EXCESS OF THE AMOUNT PAID BY

15 THE CUSTOMER TO THIS INVENTION PRO16 MOTER IS XXXXXXX. AS A RESULT OF THE EF17 FORTS OF THIS INVENTION PROMOTER, XXXXX

18 NUMBER OF CUSTOMERS HAVE RECEIVED LI19 CENSE AGREEMENTS FOR THEIR INVENTIONS.

20 ‘THE OFFICERS OF THIS INVENTION PRO21 MOTER HAVE COLLECTIVELY OR INDIVIDUALLY

22 BEEN AFFILIATED IN THE LAST TEN (10) YEARS

23 WITH THE FOLLOWING INVENTION PROMOTION

24 COMPANIES: (LIST THE NAMES AND ADDRESSES

25 OF ALL PREVIOUS INVENTION PROMOTION
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1 COMPANIES WITH WHICH THE PRINCIPAL OFFI2 CERS HAVE BEEN AFFILIATED AS OWNERS,

3 AGENTS, OR EMPLOYEES). YOU ARE ENCOUR4 AGED TO CHECK WITH THE UNITED STATES

5 PATENT AND TRADEMARK OFFICE, THE FED6 ERAL TRADE COMMISSION, YOUR STATE ATTOR7 NEY GENERAL’S OFFICE, AND THE BETTER

8 BUSINESS BUREAU FOR ANY COMPLAINTS

9 FILED AGAINST ANY OF THESE COMPANIES

10 WHICH RESULTED IN REGULATORY SANCTIONS

11 OR OTHER CORRECTIVE ACTIONS.

12 ‘YOU ARE ENCOURAGED TO CONSULT WITH

13 AN ATTORNEY OF YOUR OWN CHOOSING BE14 FORE SIGNING THIS CONTRACT. BY PRO15 CEEDING WITHOUT THE ADVICE OF AN ATTOR16 NEY REGISTERED TO PRACTICE BEFORE THE

17 UNITED STATES PATENT AND TRADEMARK OF18 FICE, YOU COULD LOSE ANY RIGHTS YOU

19 MIGHT HAVE IN YOUR IDEA OR INVENTION.’.

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

21 The cover notice shall contain the items required under

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

23 local office address of the invention promoter, and may

24 contain no other matter.
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1 ‘‘(c) DISCLOSURE OF CERTAIN CUSTOMERS NOT RE2 QUIRED.—The requirement in the notice set forth in sub3 section (a) to include the ‘TOTAL NUMBER OF CUS4 TOMERS WHO HAVE CONTRACTED WITH THE

5 INVENTION PROMOTER IN THE PAST FIVE (5)

6 YEARS’ need not include information with respect to cus7 tomers who have purchased trade show services, research,

8 advertising, or other nonmarketing services from the in9 vention promoter, nor with respect to customers who have

10 defaulted in their payment to the invention promoter.

11 ‘‘§ 54. Reports to customer required

12 ‘‘With respect to every contract for invention pro13 motion services, the invention promoter shall deliver to the

14 customer at the address specified in the contract, at least

15 once every 3 months throughout the term of the contract,

16 a written report that identifies the contract and includes—

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

18 services performed to the date of the report and of

19 the services yet to be performed and names of all

20 persons who it is known will perform the services;

21 and

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

23 firm, corporation, or other entity to whom the sub24 ject matter of the contract has been disclosed, the

25 reason for each such disclosure, the nature of the
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1 disclosure, and complete and accurate summaries of

2 all responses received as a result of those disclo3 sures.

4 ‘‘§ 55. Mandatory contract terms

5 ‘‘(a) MANDATORY TERMS.—Each contract for inven6 tion promotion services shall include in boldface type of

7 not less than 12-point size—

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

9 contract termination rights required under section

10 52;

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

12 entering into the contract by not making the initial

13 payment to the invention promoter;

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

15 specific acts or services that the invention promoter

16 undertakes to perform for the customer;

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

18 promoter undertakes to construct, sell, or distribute

19 one or more prototypes, models, or devices embody20 ing the invention of the customer;

21 ‘‘(5) the full name and principal place of busi22 ness of the invention promoter and the name and

23 principal place of business of any parent, subsidiary,

24 agent, independent contractor, and any affiliated

25 company or person who it is known will perform any
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1 of the services or acts that the invention promoter

2 undertakes to perform for the customer;

3 ‘‘(6) if any oral or written representation of es4 timated or projected customer earnings is given by

5 the invention promoter (or any agent, employee, offi6 cer, director, partner, or independent contractor of

7 such invention promoter), a statement of that esti8 mation or projection and a description of the data

9 upon which such representation is based;

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

11 all records and correspondence relating to the con12 tracted for invention promotion services, and a state13 ment that the invention promoter is required to

14 maintain all records and correspondence relating to

15 performance of the invention promotion services for

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

17 after expiration of the term of such contract; and

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

19 for performance of the invention promotion services,

20 including an estimated date in which such perform21 ance is expected to be completed.

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

23 extent that the description of the specific acts or services

24 affords discretion to the invention promoter with respect
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1 to what specific acts or services shall be performed, the

2 invention promoter shall be deemed a fiduciary.

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

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

5 made available after 7 days written notice to the customer

6 or the representative of the customer to review and copy

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

8 during normal business hours.

9 ‘‘§ 56. Remedies

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

11 promotion services that does not comply with the applica12 ble provisions of this chapter shall be voidable at the op13 tion of the customer.

14 ‘‘(2) Any contract for invention promotion services

15 entered into in reliance upon any material false, fraudu16 lent, or misleading information, representation, notice, or

17 advertisement of the invention promoter (or any agent,

18 employee, officer, director, partner, or independent con19 tractor of such invention promoter) shall be voidable at

20 the option of the customer.

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

22 this chapter shall be deemed contrary to public policy and

23 shall be void and unenforceable.

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

25 which provides for filing for and obtaining utility, design,
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1 or plant patent protection shall be voidable at the option

2 of the customer unless the invention promoter offers to

3 perform or performs such act through a person duly reg4 istered to practice before, and in good standing with, the

5 Patent and Trademark Office.

6 ‘‘(b) CIVIL ACTION.—(1) Any customer who is in7 jured by a violation of this chapter by an invention pro8 moter or by any material false or fraudulent statement

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

10 invention promoter (or any agent, employee, director, offi11 cer, partner, or independent contractor of such invention

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

13 all the disclosures required under this chapter, may re14 cover in a civil action against the invention promoter (or

15 the officers, directors, or partners of such invention pro16 moter) in addition to reasonable costs and attorneys’ fees,

17 the greater of—

18 ‘‘(A) $5,000; or

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

20 by the customer.

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

22 increase damages to not more than 3 times the amount

23 awarded, taking into account past complaints made

24 against the invention promoter that resulted in regulatory
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1 sanctions or other corrective actions based on those record

2 compiled by the Director under section 57.

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

4 purposes of this section, substantial violation of any provi5 sion of this chapter by an invention promoter or execution

6 by the customer of a contract for invention promotion

7 services in reliance on any material false or fraudulent

8 statements or representations or omissions of material

9 fact shall establish a rebuttable presumption of injury.

10 ‘‘§ 57. Records of complaints

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

12 make all complaints received by the United States Patent

13 and Trademark Office involving invention promoters pub14 licly available, together with any response of the invention

15 promoters.

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

17 may request complaints relating to invention promotion

18 services from any Federal or State agency and include

19 such complaints in the records maintained under sub20 section (a), together with any response of the invention

21 promoters.

22 ‘‘§ 58. Fraudulent representation by an invention pro23 moter

24 ‘‘Whoever, in providing invention promotion services,

25 knowingly provides any false or misleading statement, rep-
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1 resentation, or omission of material fact to a customer or

2 fails to make all the disclosures required under this chap3 ter, shall be guilty of a misdemeanor and fined not more

4 than $10,000 for each offense.

5 ‘‘§ 59. Rule of construction

6 ‘‘Except as expressly provided in this chapter, no pro7 vision of this chapter shall be construed to affect any obli8 gation, right, or remedy provided under any other Federal

9 or State law.’’.

10 SEC. 103. EFFECTIVE DATE.

11 This title and the amendments made by this title

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

13 of this Act.

14 TITLE II—FIRST INVENTOR

15 DEFENSE

16 SEC. 201. SHORT TITLE.

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

18 Act’’.

19 SEC. 202. DEFENSE TO PATENT INFRINGEMENT BASED ON

20 EARLIER INVENTOR.

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

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

23 section:
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1 ‘‘§ 273. Defense to infringement based on earlier in2 ventor

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

4 ‘‘(1) the terms ‘commercially used’ and ‘com5 mercial use’ mean use of a process or method in the

6 United States or the use of a process or method in

7 the design, testing, or production in the United

8 States of a product or service, so long as such use

9 is in connection with an actual arm’s-length sale or

10 other arm’s-length commercial transfer of a product

11 or service, whether or not the subject matter at issue

12 is accessible to or otherwise known to the public, ex13 cept that the subject matter for which commercial

14 marketing or use is subject to a premarketing regu15 latory review period during which the safety or effi16 cacy of the subject matter is established, including

17 any period specified in section 156(g), shall be

18 deemed ‘commercially used’ and in ‘commercial use’

19 during such regulatory review period;

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

21 nonprofit research laboratory, or nonprofit entity

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

23 use for which the public is the intended beneficiary

24 shall be considered to be a use described in para25 graph (1), except that the use—
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1 ‘‘(A) may be asserted as a defense under

2 this section only for continued use by and in

3 the laboratory or nonprofit entity; and

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

5 with respect to any subsequent commercializa6 tion or use outside such laboratory or nonprofit

7 entity;

8 ‘‘(3) the term ‘process or method’ means ‘proc9 ess’ as defined in section 100(b), and includes any

10 invention that produces a useful end product or

11 service which has been or could have been claimed

12 in a patent in the form of a process; and

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

14 earlier of the actual filing date of the application for

15 the patent or the filing date of any earlier United

16 States, foreign, or international application to which

17 the subject matter at issue is entitled under section

18 119, 120, or 365 of this title.

19 ‘‘(b) DEFENSE TO INFRINGEMENT.—

20 ‘‘(1) IN GENERAL.—It shall be a defense to an

21 action for infringement under section 271 of this

22 title with respect to any subject matter that would

23 otherwise infringe one or more claims asserting a

24 process or method in the patent being asserted

25 against a person, if such person had, acting in good
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1 faith, actually reduced the subject matter to practice

2 at least one year before the effective filing date of

3 such patent, and commercially used the subject mat4 ter before the effective filing date of such patent.

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

6 other disposition, of a product or service produced

7 by a patented process or method, by a person enti8 tled to assert a defense under this section with re9 spect to that product or service shall exhaust the

10 patent owner’s rights under the patent to the extent

11 such rights would have been exhausted had such sale

12 or other disposition been made by the patent owner.

13 ‘‘(3) LIMITATIONS AND QUALIFICATIONS OF DE14 FENSE.—The defense to infringement under this

15 section is subject to the following:

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

17 the defense under this section unless the inven18 tion for which the defense is asserted is for a

19 process or method, the exclusive purpose of

20 which is to produce a useful end product or

21 service.

22 ‘‘(B) DERIVATION.—A person may not as23 sert the defense under this section if the subject

24 matter on which the defense is based was de-
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1 rived from the patentee or persons in privity

2 with the patentee.

3 ‘‘(C) NOT A GENERAL LICENSE.—The de4 fense asserted by a person under this section is

5 not a general license under all claims of the

6 patent at issue, but extends only to the specific

7 subject matter claimed in the patent with re8 spect to which the person can assert a defense

9 under this chapter, except that the defense shall

10 also extend to variations in the quantity or vol11 ume of use of the claimed subject matter, and

12 to improvements in the claimed subject matter

13 that do not infringe additional specifically

14 claimed subject matter of the patent.

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

16 the defense under this section shall have the burden

17 of establishing the defense by clear and convincing

18 evidence.

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

20 has abandoned commercial use of subject matter

21 may not rely on activities performed before the date

22 of such abandonment in establishing a defense under

23 this section with respect to actions taken after the

24 date of such abandonment.
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1 ‘‘(6) PERSONAL DEFENSE.—The defense under

2 this section may be asserted only by the person who

3 performed the acts necessary to establish the defense

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

5 right to assert the defense shall not be licensed or

6 assigned or transferred to another person except as

7 an ancillary and subordinate part of a good faith as8 signment or transfer for other reasons of the entire

9 enterprise or line of business to which the defense

10 relates.

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

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

13 assignment or transfer of an entire enterprise or line

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

15 asserted for uses at sites where the subject matter

16 that would otherwise infringe one or more of the

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

18 date of the patent or the date of the assignment or

19 transfer of such enterprise or line of business.

20 ‘‘(8) UNSUCCESSFUL ASSERTION OF DE21 FENSE.—If the defense under this section is pleaded

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

23 who subsequently fails to demonstrate a reasonable

24 basis for asserting the defense, the court shall find
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1 the case exceptional for the purpose of awarding at2 torney’s fees under section 285 of this title.

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

4 deemed to be invalid under section 102 or 103 of

5 this title solely because a defense is raised or estab6 lished under this section.’’.

7 (b) CONFORMING AMENDMENT.—The table of sec8 tions at the beginning of chapter 28 of title 35, United

9 States Code, is amended by adding at the end the fol10 lowing new item:

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

11 SEC. 203. EFFECTIVE DATE AND APPLICABILITY.

12 This title and the amendments made by this title

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

14 but shall not apply to any action for infringement that

15 is pending on such date of enactment or with respect to

16 any subject matter for which an adjudication of infringe17 ment, including a consent judgment, has been made before

18 such date of enactment.

19 TITLE III—PATENT TERM

20 GUARANTEE

21 SEC. 301. SHORT TITLE.

22 This title may be cited as the ‘‘Patent Term Guar23 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 (2)(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 Commissioner shall prescribe regulations to

14 provide for the continued examination of applications for

15 patent at the request of the applicant. The Commissioner

16 may establish appropriate fees for such continued exam17 ination and shall provide a 50 percent reduction on such

18 fees for small entities that qualify for reduced fees under

19 section 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
33

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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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•HR 1907 IH

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
35

•HR 1907 IH

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-
36

•HR 1907 IH

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-
37

•HR 1907 IH

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 ‘‘(5) ISSUANCE OF PATENTS ON INDIVIDUAL

21 CLAIMS.—If the Director in a notification to the ap22 plicant under section 132 indicates that one or more

23 claims of a published application are allowable, the

24 applicant may request the issuance of a patent in25 corporating those claims. The applicant may con-
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1 tinue prosecution of the remaining claims as pro2 vided in chapter 12 of this title. Any subsequently

3 allowed claims may be incorporated into the patent

4 or issued in a separate patent, in accordance with

5 regulations adopted by the Director. The Director

6 may establish appropriate fees to cover the costs of

7 incorporating any additional claims into the patent

8 or issuing a separate patent.’’.

9 SEC. 405. 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

20 application published under section 122(b) only if

21 the 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

25 patent by another filed in the United States before
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1 the invention by the applicant for patent, except that

2 a patent shall not be deemed filed in the United

3 States for the purposes of this subsection based on

4 the filing of an international application filed under

5 the treaty defined in section 351(a), or’’.

6 SEC. 406. COST RECOVERY FOR PUBLICATION.

7 The Director of the United States Patent and Trade8 mark Office shall recover the cost of early publication re9 quired by the amendment made by section 402 by charg10 ing a separate publication fee after notice of allowance is

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

12 Code.

13 SEC. 407. CONFORMING AMENDMENTS.

14 The following provisions of title 35, United States

15 Code, are amended:

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

17 subsection (a) by inserting ‘‘and published applica18 tions for patents’’ after ‘‘Patents’’.

19 (2) Section 12 is amended—

20 (A) in the section caption by inserting

21 ‘‘and applications’’ after ‘‘patents’’; and

22 (B) by inserting ‘‘and published applica23 tions for patents’’ after ‘‘patents’’.

24 (3) Section 13 is amended—
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1 (4) The items relating to sections 12 and 13 in

2 the table of sections for chapter 1 are each amended

3 by inserting ‘‘and applications’’ after ‘‘patents’’.

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

5 of sections for chapter 11 is amended by inserting

6 ‘‘; publication of patent applications’’ after ‘‘applica7 tions’’.

8 (6) The item relating to section 154 in the table

9 of sections for chapter 14 is amended by inserting

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

11 (7) Section 181 is amended—

12 (A) in the first undesignated paragraph—

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

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

15 (ii) by inserting ‘‘the publication of

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

17 (B) in the second undesignated paragraph

18 by inserting ‘‘by the publication of an applica19 tion or’’ after ‘‘disclosure of an invention’’;

20 (C) in the third undesignated paragraph—

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

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

23 invention’’; and

24 (ii) ‘‘the publication of the application

25 or’’ after ‘‘withhold’’; and
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1 (D) in the fourth undesignated paragraph

2 by inserting ‘‘the publication of an application

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

4 (8) Section 252 is amended in the first undesig5 nated paragraph by inserting ‘‘substantially’’ before

6 ‘‘identical’’ each place it appears.

7 (9) Section 284 is amended by adding at the

8 end of the second undesignated paragraph the fol9 lowing: ‘Increased damages under this paragraph

10 shall not apply to provisional rights under section

11 154(d) of this title.’’.

12 (10) Section 374 is amended to read as follows:

13 ‘‘§ 374. Publication of international application: effect

14 ‘‘The publication under the treaty defined in section

15 351(a) of this title of an international application desig16 nating the United States shall confer the same rights and

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

18 for patent published under section 122(b), except as pro19 vided in sections 102(e) and 154(d).’’.

20 SEC. 408. EFFECTIVE DATE.

21 This title and the amendments made by this title,

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

23 of the enactment of this Act and shall apply to all applica24 tions filed under section 111 of title 35, United States

25 Code, on or after that date, and all applications complying
46

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1 with section 371 of title 35, United States Code, that re2 sulted from international applications filed on or after that

3 date. The amendment made by section 404 shall also

4 apply to international applications designating the United

5 States that are filed on or after the date that is 1 year

6 after the date of the enactment of this Act.

7 TITLE V—PATENT LITIGATION

8 REDUCTION ACT

9 SEC. 501. SHORT TITLE.

10 This title may be cited as the ‘‘Patent Litigation Re11 duction Act’’.

12 SEC. 502. DEFINITIONS.

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

14 amended by adding at the end the following new sub15 section:

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

17 requesting reexamination under section 302 of this title

18 who is not the patent owner.’’.

19 SEC. 503. REEXAMINATION PROCEDURES.

20 (a) CITATION OF PRIOR ART.—Section 301 of title

21 35, United States Code, is amended to read as follows:

22 ‘‘§ 301. Citation of prior art

23 ‘‘Any person at any time may cite to the Office in

24 writing prior art consisting of patents or printed publica25 tions which that person believes to have a bearing on the
47

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1 patentability of any claim of a particular patent. If the

2 person explains in writing the pertinency and manner of

3 applying such prior art to at least one claim of the patent,

4 the citation of such prior art and the explanation thereof

5 will become a part of the official file of the patent.’’.

6 (b) REQUEST FOR REEXAMINATION.—Section 302 of

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

9 ‘‘§ 302. Request for reexamination

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

11 a request for reexamination by the Office of a patent on

12 the basis of any prior art cited under the provisions of

13 section 301.

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

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

16 real party in interest, and be accompanied by pay17 ment of a reexamination fee established by the Di18 rector under section 41; and

19 ‘‘(2) set forth the pertinency and manner of ap20 plying cited prior art to every claim for which reex21 amination is requested.

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

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

24 copy of the request to the owner of record of the patent.’’.
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1 (c) DETERMINATION OF ISSUE BY DIRECTOR.—Sec2 tion 303 of title 35, United States Code, is amended to

3 read as follows:

4 ‘‘§ 303. Determination of issue by Director

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

6 after the filing of a request for reexamination under sec7 tion 302, the Director shall determine whether a substan8 tial new question of patentability affecting any claim of

9 the patent concerned is raised by the request, with or with10 out consideration of other patents or printed publications.

11 On the Director’s initiative, and any time, the Director

12 may determine whether a substantial new question of pat13 entability is raised by patents and publications.

14 ‘‘(b) RECORD.—A record of the Director’s determina15 tion under subsection (a) shall be placed in the official

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

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

18 third-party requester, if any.

19 ‘‘(c) FINAL DECISION.—A determination by the Di20 rector pursuant to subsection (a) shall be final and non21 appealable. Upon a determination that no substantial new

22 question of patentability has been raised, the Director may

23 refund a portion of the reexamination fee required under

24 section 302.’’.
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1 (d) REEXAMINATION ORDER BY DIRECTOR.—Section

2 304 of title 35, United States Code, is amended to read

3 as follows:

4 ‘‘§ 304. Reexamination order by Director

5 ‘‘If, in a determination made under section 303(a),

6 the Director finds that a substantial new question of pat7 entability affecting a claim of a patent is raised, the deter8 mination shall include an order for reexamination of the

9 patent for resolution of the question. The order may be

10 accompanied by the initial action of the Patent and Trade11 mark Office on the merits of the reexamination conducted

12 in accordance with section 305.’’.

13 (e) CONDUCT OF REEXAMINATION PROCEEDINGS.—

14 Section 305 of title 35, United States Code, is amended

15 to read as follows:

16 ‘‘§ 305. Conduct of reexamination proceedings

17 ‘‘(a) IN GENERAL.—Subject to subsection (b), reex18 amination shall be conducted according to the procedures

19 established for initial examination under the provisions of

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

21 section. In any reexamination proceeding under this chap22 ter, the patent owner shall be permitted to propose any

23 amendment to the patent and a new claim or claims, ex24 cept that no proposed amended or new claim enlarging

25 the scope of the claims of the patent shall be permitted.
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1 ‘‘(b) RESPONSE.—(1) This subsection shall apply to

2 any reexamination proceeding in which the order for reex3 amination is based upon a request by a third-party re4 quester.

5 ‘‘(2) With the exception of the reexamination request,

6 any document filed by either the patent owner or the

7 third-party requester shall be served on the other party.

8 In addition, the third-party requester shall receive a copy

9 of any communication sent by the Office to the patent

10 owner concerning the patent subject to the reexamination

11 proceeding.

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

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

14 Office, the third-party requester shall have one oppor15 tunity to file written comments addressing issues raised

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

17 thereto, if those written comments are received by the Of18 fice within 30 days after the date of service of the patent

19 owner’s response.

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

21 by the Director for good cause, all reexamination pro22 ceedings under this section, including any appeal to the

23 Board of Patent Appeals and Interferences, shall be con24 ducted with special dispatch within the Office.’’.
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1 (f) APPEAL.—Section 306 of title 35, United States

2 Code, is amended to read as follows:

3 ‘‘§ 306. Appeal

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

5 a reexamination proceeding under this chapter—

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

7 134, and may appeal under the provisions of sec8 tions 141 through 144, with respect to any decision

9 adverse to the patentability of any original or pro10 posed amended or new claim of the patent; and

11 ‘‘(2) may be a party to any appeal taken by a

12 third-party requester under subsection (b).

13 ‘‘(b) THIRD-PARTY REQUESTER.—A third-party re14 quester may—

15 ‘‘(1) appeal under the provisions of section 134,

16 and may appeal under the provisions of sections 141

17 through 144, with respect to any final decision fa18 vorable to the patentability of any original or pro19 posed amended or new claim of the patent; or

20 ‘‘(2) be a party to any appeal taken by the pat21 ent owner, subject to subsection (c).

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

23 request for a reexamination results in an order under sec24 tion 304 is estopped from asserting at a later time, in any

25 civil action arising in whole or in part under section 1338
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•HR 1907 IH

1 of title 28, the invalidity of any claim finally determined

2 to be valid and patentable on any ground which the third3 party requester raised or could have raised during the re4 examination proceedings. This subsection does not prevent

5 the assertion of invalidity based on newly discovered prior

6 art unavailable to the third-party requester and the Patent

7 and Trademark Office at the time of the reexamination

8 proceedings.’’.

9 (g) REEXAMINATION PROHIBITED; STAY OF LITIGA10 TION.—

11 (1) IN GENERAL.—Chapter 30 of title 35,

12 United States Code, is amended by adding at the

13 end the following new section:

14 ‘‘§ 308. Reexamination prohibited

15 ‘‘(a) ORDER FOR REEXAMINATION.—Notwith16 standing any provision of this chapter, once an order for

17 reexamination of a patent has been issued under section

18 304, neither the patent owner nor the third-party re19 quester, if any, nor privies of either, may file a subsequent

20 request for reexamination of the patent until a reexamina21 tion certificate is issued and published under section 307,

22 unless authorized by the Director.

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

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

25 whole or in part under section 1338 of title 28 that the
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1 party has not sustained its burden of proving the invalidity

2 of any patent claim in suit or if a final decision in a reex3 amination proceeding instituted by a third-party requester

4 is favorable to the patentability of any original or proposed

5 amended or new claim of the patent then neither that

6 party nor its privies may thereafter request reexamination

7 of any such patent claim on the basis of issues which that

8 party or its privies raised or could have raised in such

9 civil action or reexamination proceeding, and a reexamina10 tion requested by that party or its privies on the basis

11 of such issues may not thereafter be maintained by the

12 Office, notwithstanding any other provision of this chap13 ter. This subsection does not prevent the assertion of inva14 lidity based on newly discovered prior art unavailable to

15 the third-party requester and the Patent and Trademark

16 Office at the time of the reexamination proceedings.

17 ‘‘§ 309. Stay of litigation

18 ‘‘Once an order for reexamination of a patent has

19 been issued under section 304, the patent owner may ob20 tain a stay of any pending litigation which involves an

21 issue of patentability of any claims of the patent which

22 are the subject of the reexamination order, unless the

23 court before which such litigation is pending determines

24 that a stay would not serve the interests of justice.’’.
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1 (2) TECHNICAL AND CONFORMING AMEND2 MENT.—The table of sections for chapter 30 of title

3 35, United States Code, is amended to read as fol4 lows:

5 ‘‘CHAPTER 30—PRIOR ART CITATIONS TO OFFICE

6 AND REEXAMINATION OF PATENTS

‘‘Sec.

‘‘301. Citation of prior art.

‘‘302. Request for reexamination.

‘‘303. Determination of issue by Director.

‘‘304. Reexamination order by Director.

‘‘305. Conduct of reexamination proceedings.

‘‘306. Appeal.

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

‘‘308. Reexamination prohibited.

‘‘309. Stay of litigation.’’.

7 SEC. 504. CONFORMING AMENDMENTS.

8 (a) PATENT FEES; PATENT SEARCH SYSTEMS.—Sec9 tion 41(a)(7) of title 35, United States Code, is amended

10 to read as follows:

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

12 unintentionally abandoned application for a patent,

13 for the unintentionally delayed payment of the fee

14 for issuing each patent, or for an unintentionally de15 layed response by the patent owner in a reexamina16 tion proceeding, $1,210, unless the petition is filed

17 under section 133 or 151 of this title, in which case

18 the fee shall be $110.’’.
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1 (b) APPEAL TO THE BOARD OF PATENT APPEALS

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

3 States Code, is amended to read as follows:

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

5 Interferences

6 ‘‘(a) PATENT APPLICANT.—An applicant for a pat7 ent, any of whose claims has been twice rejected, may ap8 peal from the decision of the primary examiner to the

9 Board of Patent Appeals and Interferences, having once

10 paid the fee for such appeal.

11 ‘‘(b) PATENT OWNER.—A patent owner in a reexam12 ination proceeding may appeal from the final rejection of

13 any claim by the primary examiner to the Board of Patent

14 Appeals and Interferences, having once paid the fee for

15 such appeal.

16 ‘‘(c) THIRD-PARTY.—A third-party requester may

17 appeal to the Board of Patent Appeals and Interferences

18 from the final decision of the primary examiner favorable

19 to the patentability of any original or proposed amended

20 or new claim of a patent, having once paid the fee for

21 such appeal.’’.

22 (c) APPEAL TO COURT OF APPEALS FOR THE FED23 ERAL CIRCUIT.—Section 141 of title 35, United States

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

25 sentence: ‘‘A patent owner or third-party requester in a
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1 reexamination proceeding dissatisfied with the final deci2 sion in an appeal to the Board of Patent Appeals and

3 Interferences under section 134 may appeal the decision

4 only to the United States Court of Appeals for the Federal

5 Circuit.’’.

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

7 35, United States Code, is amended by amending the third

8 sentence to read as follows: ‘In ex parte and reexamination

9 cases, the Director shall submit to the court in writing

10 the grounds for the decision of the Patent and Trademark

11 Office, addressing all the issues involved in the appeal.’’.

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

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

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

15 SEC. 505. REPORT TO CONGRESS.

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

17 title, the Director of the United States Patent and Trade18 mark Office shall submit to the Congress a report evalu19 ating whether the reexamination proceedings established

20 under the amendments made by this title are inequitable

21 to any of the parties in interest and, if so, the report shall

22 contain recommendations for changes to the amendments

23 made by this title to remove such inequity.
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1 SEC. 506. EFFECTIVE DATE.

2 This title and the amendments made by this title

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

4 of the enactment of this Act and shall apply to all reexam5 ination requests filed on or after such date.

6 TITLE VI—PATENT AND

7 TRADEMARK OFFICE

8 SEC. 601. SHORT TITLE.

9 This title may be cited as the ‘‘Patent and Trade10 mark Office Efficiency Act’’.

11 Subtitle A—United States Patent

12 and Trademark Office

13 SEC. 611. ESTABLISHMENT OF PATENT AND TRADEMARK

14 OFFICE.

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

16 to read as follows:

17 ‘‘§ 1. Establishment

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

19 and Trademark Office is established as an agency of the

20 United States, within the Department of Commerce. In

21 carrying out its functions, the United States Patent and

22 Trademark Office shall be subject to the policy direction

23 of the Secretary of Commerce, but shall retain responsi24 bility for decisions regarding the management and admin25 istration of its operations and shall exercise independent

26 control of its budget allocations and expenditures, per-
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1 sonnel decisions and processes, procurements, and other

2 administrative and management functions in accordance

3 with this title and applicable provisions of law.

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

5 Trademark Office shall maintain its principal office in the

6 metropolitan Washington, DC, area, for the service of

7 process and papers and for the purpose of carrying out

8 its functions. The United States Patent and Trademark

9 Office shall be deemed, for purposes of venue in civil ac10 tions, to be a resident of the district in which its principal

11 office is located, except where jurisdiction is otherwise pro12 vided by law. The United States Patent and Trademark

13 Office may establish satellite offices in such other places

14 in the United States as it considers necessary and appro15 priate in the conduct of its business.

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

17 United States Patent and Trademark Office shall also be

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

19 Office’.

20 SEC. 612. POWERS AND DUTIES.

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

22 to read as follows:
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1 ‘‘§ 2. Powers and duties

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

3 Trademark Office, subject to the policy direction of the

4 Secretary of Commerce—

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

6 issuing of patents and the registration of trade7 marks; and

8 ‘‘(2) shall be responsible for disseminating to

9 the public information with respect to patents and

10 trademarks.

11 ‘‘(b) SPECIFIC POWERS.—The Office—

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

13 which shall be judicially noticed and with which let14 ters patent, certificates of trademark registrations,

15 and papers issued by the Office shall be authenti16 cated;

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

18 with law, which—

19 ‘‘(A) shall govern the conduct of pro20 ceedings in the Office;

21 ‘‘(B) shall be made after notice and oppor22 tunity for full participation by interested public

23 and private parties;

24 ‘‘(C) shall facilitate and expedite the proc25 essing of patent applications, particularly those

26 which can be filed, stored, processed, searched,
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1 and retrieved electronically, subject to the provi2 sions of section 122 relating to the confidential

3 status of applications;

4 ‘‘(D) may govern the recognition and con5 duct of agents, attorneys, or other persons rep6 resenting applicants or other parties before the

7 Office, and may require them, before being rec8 ognized as representatives of applicants or

9 other persons, to show that they are of good

10 moral character and reputation and are pos11 sessed of the necessary qualifications to render

12 to applicants or other persons valuable service,

13 advice, and assistance in the presentation or

14 prosecution of their applications or other busi15 ness before the Office;

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

17 continuing to safeguard broad access to the

18 United States patent system through the re19 duced fee structure for small entities under sec20 tion 41(b)(1) of this title; and

21 ‘‘(F) provide for the development of a per22 formance-based process that includes quan23 titative and qualitative measures and standards

24 for evaluating cost-effectiveness and is con-
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•HR 1907 IH

1 sistent with the principles of impartiality and

2 competitiveness;

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

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

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

6 therein, as it considers necessary to carry out its

7 functions;

8 ‘‘(4)(A) may make such purchases, contracts

9 for the construction, maintenance, or management

10 and operation of facilities, and contracts for supplies

11 or services, without regard to the provisions of the

12 Federal Property and Administrative Services Act of

13 1949 (40 U.S.C. 471 and following), the Public

14 Buildings Act (40 U.S.C. 601 and following), and

15 the Stewart B. McKinney Homeless Assistance Act

16 (42 U.S.C.11301 and following); and

17 ‘‘(B) may enter into and perform such pur18 chases and contracts for printing services, including

19 the process of composition, platemaking, presswork,

20 silk screen processes, binding, microform, and the

21 products of such processes, as it considers necessary

22 to carry out the functions of the Office, without re23 gard to sections 501 through 517 and 1101 through

24 1123 of title 44;
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•HR 1907 IH

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

2 equipment, personnel, and facilities of other depart3 ments, agencies, and instrumentalities of the Fed4 eral Government, on a reimbursable basis, and co5 operate with such other departments, agencies, and

6 instrumentalities in the establishment and use of

7 services, equipment, and facilities of the Office;

8 ‘‘(6) may, when the Director determines that it

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

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

11 agency, government, or international organization

12 concerned, the services, records, facilities, or per13 sonnel of any State or local government agency or

14 instrumentality or foreign government or inter15 national organization to perform functions on its be16 half;

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

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

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

20 any interest therein, of the Office;

21 ‘‘(8) in coordination with the Under Secretary

22 of Commerce for International Trade, shall promote

23 exports of goods and services of the United States

24 industries that rely on intellectual property;
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•HR 1907 IH

1 ‘‘(9) shall advise the President, through the

2 Secretary of Commerce, on national and certain

3 international intellectual property policy issues;

4 ‘‘(10) shall advise Federal departments and

5 agencies on matters of intellectual property policy in

6 the United States and intellectual property protec7 tion in other countries;

8 ‘‘(11) shall provide guidance, as appropriate,

9 with respect to proposals by agencies to assist for10 eign governments and international intergovern11 mental organizations on matters of intellectual prop12 erty protection;

13 ‘‘(12) may conduct programs, studies, or ex14 changes of items or services regarding domestic and

15 international intellectual property law and the effec16 tiveness of intellectual property protection domesti17 cally and throughout the world;

18 ‘‘(13)(A) shall advise the Secretary of Com19 merce on programs and studies relating to intellec20 tual property policy that are conducted, or author21 ized to be conducted, cooperatively with foreign in22 tellectual property offices and international intergov23 ernmental organizations; and

24 ‘‘(B) may conduct programs and studies de25 scribed in subparagraph (A); and
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•HR 1907 IH

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

2 of State, may conduct programs and studies coop3 eratively with foreign intellectual property offices

4 and international intergovernmental organizations;

5 and

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

7 State, may authorize the transfer of not to exceed

8 $100,000 in any year to the Department of State

9 for the purpose of making special payments to inter10 national intergovernmental organizations for studies

11 and programs for advancing international coopera12 tion concerning patents, trademarks, and other mat13 ters.

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

15 special payments under paragraph (14)(B) shall be in ad16 dition to any other payments or contributions to inter17 national organizations described in paragraph (14)(B) and

18 shall not be subject to any limitations imposed by law on

19 the amounts of such other payments or contributions by

20 the United States Government.

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

22 the duties of the Secretary of State or from the duties

23 of the United States Trade Representative as set forth in

24 section 141 of the Trade Act of 1974 (19 U.S.C. 2171).
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1 ‘‘(3) Nothing in subsection (b) shall derogate from

2 the duties and functions of the Register of Copyrights or

3 otherwise alter current authorities relating to copyright

4 matters.

5 ‘‘(4) In exercising the Director’s powers under para6 graphs (3) and (4)(A) of subsection (b), the Director shall

7 consult with the Administrator of General Services.

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

9 be construed to nullify, void, cancel, or interrupt any pend10 ing request-for-proposal let or contract issued by the Gen11 eral Services Administration for the specific purpose of re12 locating or leasing space to the United States Patent and

13 Trademark Office.’’.

14 SEC. 613. ORGANIZATION AND MANAGEMENT.

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

16 to read as follows:

17 ‘‘§ 3. Officers and employees

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

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

20 the United States Patent and Trademark Office

21 shall be vested in an Under Secretary of Commerce

22 and Director of the United States Patent and

23 Trademark Office (in this title referred to as the

24 ‘Director’), who shall be a citizen of the United

25 States and who shall be appointed by the President,
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1 by and with the advice and consent of the Senate.

2 The Director shall be a person who, by reason of

3 professional background and experience in patent or

4 trademark law, is especially qualified to manage the

5 Office.

6 ‘‘(2) DUTIES.—

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

8 responsible for the management and direction

9 of the Office, including the issuance of patents

10 and the registration of trademarks, and shall

11 perform these duties in a fair, impartial, and

12 equitable manner.

13 ‘‘(B) CONSULTING WITH THE PUBLIC AD14 VISORY COMMITTEES.—The Director shall con15 sult with the Patent Public Advisory Committee

16 established in section 5 on a regular basis on

17 matters relating to the patent operations of the

18 Office, shall consult with the Trademark Public

19 Advisory Committee established in section 5 on

20 a regular basis on matters relating to the trade21 mark operations of the Office, and shall consult

22 with the respective Public Advisory Committee

23 before submitting budgetary proposals to the

24 Office of Management and Budget or changing

25 or proposing to change patent or trademark
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1 user fees or patent or trademark regulations, as

2 the case may be.

3 ‘‘(C) SECURITY CLEARANCES.—The Direc4 tor, in consultation with the Director of the Of5 fice of Personnel Management, shall maintain a

6 program for identifying national security posi7 tions and providing for appropriate security

8 clearances.

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

10 office, take an oath to discharge faithfully the duties

11 of the Office.

12 ‘‘(4) COMPENSATION.—In addition to the Di13 rector’s pay as prescribed in section 5314 of title 5,

14 the Director may receive a bonus in an amount up

15 to, but not in excess of, 50 percent of the Director’s

16 annual rate of pay, based upon an evaluation by the

17 Secretary of Commerce of the Director’s perform18 ance as defined in an annual performance agreement

19 between the Director and the Secretary. The annual

20 performance agreement shall incorporate measurable

21 organization and individual goals in key operational

22 areas as delineated in an annual performance plan

23 agreed to by the Director and the Secretary and

24 made public in the annual report of the Director.

25 Payment of a bonus under this paragraph may be
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1 made to the Director only to the extent that such

2 payment does not cause the Director’s total aggre3 gate compensation in a calendar year to equal or ex4 ceed the amount of the salary of the President under

5 section 102 of title 3.

6 ‘‘(5) REMOVAL.—The Director may be removed

7 from office by the President. The President shall

8 provide notification of any such removal to both

9 Houses of Congress.

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

11 ‘‘(1) DEPUTY UNDER SECRETARY AND DEPUTY

12 DIRECTOR.—The Director shall appoint a Deputy

13 Under Secretary of Commerce and Deputy Director

14 of the United States Patent and Trademark Office

15 who shall be vested with the authority to act in the

16 capacity of the Director in the event of the absence

17 or incapacity of the Director.

18 ‘‘(2) COMMISSIONERS.—The Director shall ap19 point a Commissioner for Patents and a Commis20 sioner for Trademarks. The Commissioner for Pat21 ents shall be a citizen of the United States with

22 demonstrated experience in patent law and the Com23 missioner for Trademarks shall be a citizen of the

24 United States with demonstrated experience in

25 trademark law. The Commissioner for Patents and
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•HR 1907 IH

1 the Commissioner for Trademarks shall be the prin2 cipal management advisers to the Director on all as3 pects of the activities of the Office that affect the

4 administration of patent and trademark operations,

5 respectively.

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

7 Director shall—

8 ‘‘(A) appoint such officers, employees (in9 cluding attorneys), and agents of the Office as

10 the Director considers necessary to carry out

11 the functions of the Office; and

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

13 of such officers and employees and delegate to

14 them such of the powers vested in the Office as

15 the Director may determine.

16 The Office shall not be subject to any administra17 tively or statutorily imposed limitation on positions

18 or personnel, and no positions or personnel of the

19 Office shall be taken into account for purposes of

20 applying any such limitation.

21 ‘‘(4) TRAINING OF EXAMINERS.—The Patent

22 and Trademark Office shall develop an incentive

23 program to retain as employees patent and trade24 mark examiners of the primary examiner grade or

25 higher who are eligible for retirement, for the sole
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1 purpose of training patent and trademark exam2 iners.

3 ‘‘(c) ADOPTION OF EXISTING LABOR AGREE4 MENTS.—The Office shall adopt all labor agreements

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

6 of the Patent and Trademark Office Efficiency Act, with

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

8 ‘‘(d) CARRYOVER OF PERSONNEL.—

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

10 date of the Patent and Trademark Office Efficiency

11 Act, all officers and employees of the Patent and

12 Trademark Office on the day before such effective

13 date shall become officers and employees of the Of14 fice, without a break in service.

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

16 on the day before the effective date of the Patent

17 and Trademark Office Efficiency Act, is an officer

18 or employee of the Department of Commerce (other

19 than an officer or employee under paragraph (1))

20 shall be transferred to the Office if—

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

22 for which a major function is the performance

23 of work reimbursed by the Patent and Trade24 mark Office, as determined by the Secretary of

25 Commerce;
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•HR 1907 IH

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

2 that performed work in support of the Patent

3 and Trademark Office during at least half of

4 the incumbent’s work time, as determined by

5 the Secretary of Commerce; or

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

7 of the Office, as determined by the Secretary of

8 Commerce in consultation with the Director.

9 Any transfer under this paragraph shall be effective

10 as of the same effective date as referred to in para11 graph (1), and shall be made without a break in

12 service.

13 ‘‘(3) ACCUMULATED LEAVE.—The amount of

14 sick and annual leave and compensatory time accu15 mulated under title 5 before the effective date de16 scribed in paragraph (1), by those becoming officers

17 or employees of the Office pursuant to this sub18 section, are obligations of the Office.

19 ‘‘(e) TRANSITION PROVISIONS.—

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

21 On or after the effective date of the Patent and

22 Trademark Office Efficiency Act, the President shall

23 appoint an individual to serve as the Director until

24 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. PERSONNEL FLEXIBILITY.

17 (a) IN GENERAL.—Chapter 1 of part I of title 35,

18 United States Code, is amended by inserting after section

19 3 the following:

20 ‘‘§ 3a. Personnel flexibility

21 ‘‘(a) ADMINISTRATIVE FLEXIBILITY.—

22 ‘‘(1) RELATIONSHIP TO TITLE 5.—Any authori23 ties provided by this section shall be exercised—

24 ‘‘(A) in a manner consistent with—
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1 ‘‘(i) chapter 23 of title 5 (relating to

2 merit system principles and prohibited per3 sonnel practices);

4 ‘‘(ii) provisions of title 5 relating to

5 preference eligibles;

6 ‘‘(iii) except as otherwise specifically

7 provided, section 5307 of title 5 (relating

8 to the aggregate limitation on pay); and

9 ‘‘(iv) except as otherwise specifically

10 provided, chapter 71 of title 5 (relating to

11 labor-management relations); and

12 ‘‘(E) subject to subsections (b) and (c) of

13 section 1104 of title 5 as though such authori14 ties were delegated to the Office under section

15 1104(a)(2) of such title.

16 ‘‘(2) INFORMING OPM.—The Director shall pro17 vide the Office of Personnel Management with any

18 information the Office of Personnel Management re19 quires in carrying out its responsibilities under this

20 section.

21 ‘‘(b) WRITTEN AGREEMENTS WITH LABOR ORGANI22 ZATIONS REQUIRED.—Employees within a unit to which

23 a labor organization is accorded exclusive recognition

24 under chapter 71 of title 5 shall not be subject to the au25 thorities provided in this section unless the exclusive rep-
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1 resentative and the Office have entered into a written

2 agreement which specifically provides for the exercise of

3 those authorities. Such written agreement may not be im4 posed by the Federal Services Impasses Panel under sec5 tion 7119 of title 5.

6 ‘‘(c) SENIOR MANAGEMENT OF THE OFFICE.—

7 ‘‘(1) APPOINTMENT.—(A) The Director may

8 appoint such senior managers as the Director deter9 mines are necessary without regard to the provisions

10 of title 5 governing appointments in the competitive

11 service.

12 ‘‘(B) The senior managers described in sub13 paragraph (A) may be paid without regard to the

14 provisions of chapter 51 and subchapter III of chap15 ter 53 of title 5 relating to classification and Gen16 eral Schedule pay rates.

17 ‘‘(2) PERFORMANCE AGREEMENT.—Each year

18 the Director and each senior manager appointed

19 under this subsection shall enter into an annual per20 formance agreement that sets forth measurable or21 ganization and individual goals. The agreement shall

22 be subject to review and renegotiation at the end of

23 each term.

24 ‘‘(3) COMPENSATION.—
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1 ‘‘(A) IN GENERAL.—A senior manager ap2 pointed under this subsection may be paid at an

3 annual rate of basic pay of not more than the

4 maximum rate of basic pay for the Senior Exec5 utive Service under section 5382 of title 5, in6 cluding any applicable locality-based com7 parability payment that may be authorized

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

9 compensation of a senior manager shall be con10 sidered, for purposes of section 207(c)(2)(A) of

11 title 18, to be the equivalent of that described

12 under clause (ii) of section 207(c)(2)(A) of title

13 18.

14 ‘‘(B) BONUS.—In addition to the com15 pensation paid under subparagraph (A), a sen16 ior manager may receive a bonus in an amount

17 such that the manager’s total compensation

18 does not exceed 125 percent of the maximum

19 rate of basic pay for the Senior Executive Serv20 ice, including any applicable locality-based com21 parability payment, based upon the Director’s

22 evaluation of the manager’s performance in re23 lation to the goals set forth in the performance

24 agreement described in paragraph (2).
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1 ‘‘(4) REMOVAL.—A senior manager shall be re2 movable by the Director, or by the Secretary if the

3 position of Director is vacant.

4 ‘‘(d) GENERAL WORKFORCE PERFORMANCE MAN5 AGEMENT SYSTEM.—

6 ‘‘(1) ESTABLISHMENT.—In lieu of a perform7 ance appraisal system established under section

8 5302 of title 5, the Director shall, within 1 year

9 after the date of the enactment of the Patent and

10 Trademark Office Efficiency Act, establish for the

11 Office a performance management system that—

12 ‘‘(A) maintains individual accountability

13 by—

14 ‘‘(i) establishing 1 or more retention

15 standards for each employee related to the

16 work of the employee and expressed in

17 terms of individual performance, and com18 municating such retention standards to

19 employees;

20 ‘‘(ii) making periodic determinations

21 of whether each employee meets or does

22 not meet the employee’s established reten23 tion standards; and

24 ‘‘(iii) taking actions, in accordance

25 with applicable laws and regulations, with
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•HR 1907 IH

1 respect to any employee whose perform2 ance does not meet established retention

3 standards, including denying any increases

4 in basic pay, promotions, and credit for

5 performance under section 3502 of title 5,

6 and—

7 ‘‘(I) reassignment;

8 ‘‘(II) an action under chapter 43

9 or chapter 75 of title 5;

10 ‘‘(III) any other appropriate ac11 tion to resolve the performance prob12 lem; or

13 ‘‘(IV) any combination of actions

14 under subclauses (I) through (III);

15 and

16 ‘‘(B) strengthens the system’s effectiveness

17 by—

18 ‘‘(i) establishing goals or objectives for

19 individual, group, or organizational per20 formance (or any combination thereof),

21 consistent with the Office’s performance

22 planning procedures, including those estab23 lished under the Government Performance

24 and Results Act of 1993, and commu-
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•HR 1907 IH

1 nicating such goals or objectives to employ2 ees;

3 ‘‘(ii) using such goals and objectives

4 to make performance distinctions among

5 employees or groups of employees; and

6 ‘‘(iii) using performance assessments

7 as a basis for granting employee awards,

8 adjusting an employee’s rate of basic pay,

9 and other appropriate personnel actions, in

10 accordance with applicable laws and regu11 lations.

12 ‘‘(2) DEFINITIONS.—For purposes of this

13 subsection—

14 ‘‘(A) the term ‘performance assessment’

15 means a determination of whether or not reten16 tion standards established under paragraph

17 (1)(A)(i) are met, and any additional perform18 ance determination made on the basis of per19 formance goals and objectives established under

20 paragraph (1)(B)(i); and

21 ‘‘(B) the term ‘unacceptable performance’,

22 with respect to an employee of the Office cov23 ered by a performance management system es24 tablished under this subsection, means perform-
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•HR 1907 IH

1 ance of the employee which fails to meet a re2 tention standard established under this section.

3 ‘‘(3) AWARDS PROGRAM.—(A) The Office may

4 establish an awards program designed to provide in5 centives for and recognition of organizational, group,

6 and individual achievements by providing for grant7 ing awards to employees who, as individuals or mem8 bers of a group, contribute to meeting the perform9 ance goals and objectives established under this sec10 tion by such means as a superior individual or group

11 accomplishment, a documented productivity gain, or

12 sustained superior performance.

13 ‘‘(B) A cash award under subchapter I of chap14 ter 45 of title 5 may be granted to an employee of

15 the Office without the need for any approval under

16 section 4502(b) of title 5. The Office may approve

17 cash awards in excess of $10,000, but not in excess

18 of $25,000, to an employee for exceptional and un19 usually outstanding contributions or accomplish20 ments.

21 ‘‘(4) APPLICATION OF PROCEDURES.—(A) In

22 applying sections 4303(b)(1)(A) and 7513(b) of title

23 5 to employees of the Office, ‘30 days’ may be

24 deemed to be ‘15 days’.
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•HR 1907 IH

1 ‘‘(B) Notwithstanding the second sentence of

2 section 5335(c) of title 5, an employee of the Office

3 shall not have a right to appeal the denial of a peri4 odic step increase under section 5335 to the Merit

5 Systems Protection Board.

6 ‘‘(e) CLASSIFICATION AND PAY FLEXIBILITIES.—

7 ‘‘(1) DEFINITION.—For purposes of this sub8 section, the term ‘broad-banded system’ means a

9 system for grouping positions for pay, job evalua10 tion, and other purposes that is different from the

11 system established under chapter 51 and subchapter

12 III of chapter 53 of title 5 as a result of combining

13 grades and related ranges of rates of pay in 1 or

14 more occupational series.

15 ‘‘(2) ESTABLISHMENT OF BROAD-BANDED SYS16 TEMS.—(A)(i) The Director may, subject to criteria

17 to be prescribed by the Office of Personnel Manage18 ment, establish 1 or more broad-banded systems cov19 ering all or any portion of the Office workforce.

20 ‘‘(ii) With the approval of the Office of Per21 sonnel Management, a broad-banded system estab22 lished under this subsection may either include or

23 consist of positions that otherwise would be subject

24 to subchapter IV of chapter 53 or section 5376 of

25 title 5.
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•HR 1907 IH

1 ‘‘(B) The Office of Personnel Management may

2 require the Director to submit to the Office of Per3 sonnel Management information relating to broad4 banded systems at the Office.

5 ‘‘(C) Except as otherwise provided under this

6 section, employees under a broad-banded system

7 shall continue to be subject to the laws and regula8 tions covering employees under the pay system that

9 otherwise would apply to such employees.

10 ‘‘(D) The criteria to be prescribed by the Office

11 of Personnel Management shall, at a minimum—

12 ‘‘(i) ensure that the structure of any

13 broad-banded system maintains the principle of

14 equal pay for substantially equal work;

15 ‘‘(ii) establish the minimum and maximum

16 number of grades that may be combined into

17 pay bands;

18 ‘‘(iii) establish requirements for setting

19 minimum and maximum rates of pay in a pay

20 band;

21 ‘‘(iv) establish requirements for adjusting

22 the pay of an employee within a pay band;

23 ‘‘(v) establish requirements for setting the

24 pay of a supervisory employee whose position is
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•HR 1907 IH

1 in a pay band or who supervises employees

2 whose positions are in pay bands; and

3 ‘‘(vi) establish requirements and meth4 odologies for setting the pay of an employee

5 upon conversion to a broad-banded system, ini6 tial appointment, change of position or type of

7 appointment (including promotion, demotion,

8 transfer, reassignment, reinstatement, or place9 ment in another pay band, or movement to a

10 different geographic location), and movement

11 between a broad-banded system and another

12 pay system.

13 ‘‘(E) With the approval of the Office of Per14 sonnel Management and in accordance with a plan

15 for implementation submitted by the Director, the

16 Director may, with respect to the Office employees

17 who are covered by a broad-banded system estab18 lished under this section, provide for variations from

19 the provisions of subchapter VI of chapter 53 of title

20 5.

21 ‘‘(f) GENERAL WORKFORCE STAFFING.—

22 ‘‘(1) EVALUATING APPLICANTS.—(A) Notwith23 standing subchapter I of chapter 33 of title 5, the

24 Office may establish category rating systems for

25 evaluating applicants for Office positions in the com-
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•HR 1907 IH

1 petitive service under which qualified candidates are

2 divided into 2 or more quality categories on the

3 basis of relative degrees of merit, rather than as4 signed individual numerical ratings.

5 ‘‘(B) Each applicant who meets the minimum

6 qualification requirements for the position to be

7 filled shall be assigned to an appropriate category

8 based on an evaluation of the applicant’s knowledge,

9 skills, and abilities relative to those needed for suc10 cessful performance in the position to be filled.

11 ‘‘(C) Within each quality category established

12 under subparagraph (A), preference eligibles shall be

13 listed ahead of individuals who are not preference

14 eligibles. For other than scientific and professional

15 positions at or higher than GS–9 (or equivalent),

16 preference eligibles who have a compensable service17 connected disability of 10 percent or more, and who

18 meet the minimum qualification standards, shall be

19 listed in the highest quality category.

20 ‘‘(D) An appointing authority may select any

21 applicant from the highest quality category or, if

22 fewer than 3 candidates have been assigned to the

23 highest quality category, from a merged category

24 consisting of the highest and second highest cat25 egories.
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•HR 1907 IH

1 ‘‘(E) Notwithstanding subparagraph (D), the

2 appointing authority may not pass over a preference

3 eligible in the same or higher category from which

4 selection is made unless the requirements of section

5 3317(b) or 3318(b) of title 5, United States Code,

6 as applicable, are satisfied.

7 ‘‘(2) DETAILING OF EMPLOYEES.—The Direc8 tor may detail employees among the offices of the

9 Office without regard to the 120-day limitation in

10 section 3341(b) of title 5.

11 ‘‘(3) PROBATIONARY PERIODS.—Notwith12 standing any other provision of law, the Office may

13 establish a probationary period under section 3321

14 of title 5 of up to 3 years for Office positions if the

15 Director determines that the nature of the work is

16 such that a shorter period is insufficient to dem17 onstrate complete proficiency in the position.

18 ‘‘(4) PRECEDENCE OF PRESIDENTIAL AND

19 COURT ORDERS.—Nothing in this section exempts

20 the Office from—

21 ‘‘(A) any employment priority established

22 under direction of the President for the place23 ment of surplus or displaced employees; or
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•HR 1907 IH

1 ‘‘(B) any obligation under a court order or

2 decree relating to the employment practices of

3 the Office or the Department of Commerce.

4 ‘‘(g) STREAMLINED DEMONSTRATION PROJECT AU5 THORITY.—

6 ‘‘(1) DEMONSTRATION PROJECT AUTHORITY.—

7 The exercise of any of the authorities under this sec8 tion shall not affect the authority of the Office to

9 implement a demonstration project subject to chap10 ter 47 of title 5, as provided in paragraph (2).

11 ‘‘(2) APPLICABILITY OF TITLE 5.—In applying

12 section 4703 of title 5 to a demonstration project

13 described in section 4701(a)(4) of title 5 which in14 volves the Office—

15 ‘‘(A) section 4703(b)(1) shall be deemed to

16 read

17 ‘(1) develop a plan for such project which de18 scribes its purpose, the employees to be covered, the

19 project itself, its anticipated outcomes, and the

20 method of evaluating the project;’;

21 ‘‘(B) section 4703(b)(3) shall not apply;

22 ‘‘(C) the 180-day notification period in sec23 tion 4703(b)(4) shall be deemed to be a notifi24 cation period of 30 days;
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•HR 1907 IH

1 ‘‘(D) section 4703(b)(6) shall be deemed to

2 read

3 ‘(6) provide each House of Congress with the

4 final version of the plan.’;

5 ‘‘(E) section 4703(c)(1) shall be deemed to

6 read

7 ‘(1) subchapter V of chapter 63 or subpart G

8 of part III of this title;’;

9 ‘‘(F) the requirements of paragraphs

10 (1)(A) and (2) of section 4703(d) shall not

11 apply; and

12 ‘‘(G) notwithstanding section

13 4703(d)(1)(B), based on an evaluation as pro14 vided in section 4703(h), the Office of Per15 sonnel Management and the Director, except as

16 otherwise provided by this subsection, may

17 waive the termination date of a demonstration

18 project under section 4703(d).

19 ‘‘(3) NOTICE OF INTENT TO WAIVE TERMI20 NATION DATE.—At least 90 days before waiving the

21 termination date under paragraph (2)(G), the Office

22 of Personnel Management shall publish in the Fed23 eral Register a notice of its intention to waive the

24 termination date and shall inform in writing both

25 Houses of Congress of its intention.’’.
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•HR 1907 IH

1 SEC. 615. PUBLIC ADVISORY COMMITTEES.

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

3 is amended by inserting after section 4 the following:

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

5 Committees

6 ‘‘(a) ESTABLISHMENT OF PUBLIC ADVISORY COM7 MITTEES.—

8 ‘‘(1) APPOINTMENT.—The United States Pat9 ent and Trademark Office shall have a Patent Pub10 lic Advisory Committee and a Trademark Public Ad11 visory Committee, each of which shall have 9 voting

12 members who shall be appointed by the Secretary of

13 Commerce and serve at the pleasure of the Secretary

14 of Commerce. Members of each Public Advisory

15 Committee shall be appointed for a term of 3 years,

16 except that of the members first appointed, 3 shall

17 be appointed for a term of 1 year, and 3 shall be

18 appointed for a term of 2 years. In making appoint19 ments to each Committee, the Secretary of Com20 merce shall consider the risk of loss of competitive

21 advantage in international commerce or other harm

22 to United States companies as a result of such ap23 pointments.

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

25 chair of each Advisory Committee, whose term as

26 chair shall be for 3 years.
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•HR 1907 IH

1 ‘‘(3) TIMING OF APPOINTMENTS.—Initial ap2 pointments to each Advisory Committee shall be

3 made within 3 months after the effective date of the

4 Patent and Trademark Office Efficiency Act. Vacan5 cies shall be filled within 3 months after they occur.

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

7 Advisory Committee—

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

9 shall be chosen so as to represent the interests of di10 verse users of the Patent and Trademark Office with

11 respect to patents, in the case of the Patent Public

12 Advisory Committee, and with respect to trade13 marks, in the case of the Trademark Public Advi14 sory Committee;

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

16 and large entity applicants located in the United

17 States in proportion to the number of applications

18 filed by such members, but in no case shall members

19 who represent small entity patent applicants, includ20 ing small business concerns, independent inventors,

21 and nonprofit organizations, constitute less than 25

22 percent of the members of the Patent Public Advi23 sory Committee; and

24 ‘‘(3) shall include individuals with substantial

25 background and achievement in finance, manage-
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•HR 1907 IH

1 ment, labor relations, science, technology, and office

2 automation.

3 In addition to the voting members, each Advisory Com4 mittee shall include a representative of each labor organi5 zation recognized by the Patent and Trademark Office.

6 Such representatives shall be nonvoting members of the

7 Advisory Committee to which they are appointed.

8 ‘‘(c) MEETINGS.—Each Advisory Committee shall

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

10 by the Chair.

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

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

13 budget, and user fees of the Patent and Trademark

14 Office with respect to patents, in the case of the

15 Patent Public Advisory Committee, and with respect

16 to Trademarks, in the case of the Trademark Public

17 Advisory Committee, and advise the Director on

18 these matters;

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

20 year—

21 ‘‘(A) prepare an annual report on the mat22 ters referred to in paragraph (1);

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

24 of Commerce, the President, and the Commit-
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•HR 1907 IH

1 tees on the Judiciary of the Senate and the

2 House of Representatives; and

3 ‘‘(C) publish the report in the Official Ga4 zette of the Patent and Trademark Office.

5 ‘‘(e) COMPENSATION.—Each member of each Advi6 sory Committee shall be compensated for each day (includ7 ing travel time) during which such member is attending

8 meetings or conferences of that Advisory Committee or

9 otherwise engaged in the business of that Advisory Com10 mittee, at the rate which is the daily equivalent of the an11 nual rate of basic pay in effect for level III of the Execu12 tive Schedule under section 5314 of title 5. While away

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

14 such member shall be allowed travel expenses, including

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

16 5703 of title 5.

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

18 Advisory Committee shall be provided access to records

19 and information in the Patent and Trademark Office, ex20 cept for personnel or other privileged information and in21 formation concerning patent applications required to be

22 kept in confidence by section 122.

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

24 Members of each Advisory Committee shall be special Gov-
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•HR 1907 IH

1 ernment employees within the meaning of section 202 of

2 title 18.

3 ‘‘(h) INAPPLICABILITY OF FEDERAL ADVISORY COM4 MITTEE ACT.—The Federal Advisory Committee Act (5

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

6 ‘‘(i) OPEN MEETINGS.—The meetings of each Advi7 sory Committee shall be open to the public, except that

8 each Advisory Committee may by majority vote meet in

9 executive session when considering personnel or other con10 fidential information.’’.

11 SEC. 616. PATENT AND TRADEMARK OFFICE FUNDING.

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

13 amended in the second sentence—

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

15 ‘‘All fees available’’; and

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

17 SEC. 617. CONFORMING AMENDMENTS.

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

19 Code, is amended by striking section 6.

20 (b) REGULATIONS FOR AGENTS AND ATTORNEYS.—

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

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

23 3 of title 35, United States Code, are repealed.
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1 SEC. 618. TRADEMARK TRIAL AND APPEAL BOARD.

2 Section 17 of the Act of July 5, 1946 (commonly re3 ferred to as the ‘‘Trademark Act of 1946’’) (15 U.S.C.

4 1067) is amended to read as follows:

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

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

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

9 direct a Trademark Trial and Appeal Board to determine

10 and decide the respective rights of registration.

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

12 include the Director, the Commissioner for Patents, the

13 Commissioner for Trademarks, and administrative trade14 mark judges who are appointed by the Director.’’.

15 SEC. 619. BOARD OF PATENT APPEALS AND INTER16 FERENCES.

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

18 amended—

19 (1) by striking section 7 and redesignating sec20 tions 8 through 14 as sections 7 through 13, respec21 tively; and

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

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

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

25 shall be in the United States Patent and Trademark Of26 fice a Board of Patent Appeals and Interferences. The Di-
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•HR 1907 IH

1 rector, the Commissioner for Patents, the Commissioner

2 for Trademarks, and the administrative patent judges

3 shall constitute the Board. The administrative patent

4 judges shall be persons of competent legal knowledge and

5 scientific ability who are appointed by the Director.

6 ‘‘(b) DUTIES.—The Board of Patent Appeals and

7 Interferences shall, on written appeal of an applicant, re8 view adverse decisions of examiners upon applications for

9 patents and shall determine priority and patentability of

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

11 Each appeal and interference shall be heard by at least

12 3 members of the Board, who shall be designated by the

13 Director. Only the Board of Patent Appeals and Inter14 ferences may grant rehearings.’’.

15 SEC. 620. ANNUAL REPORT OF DIRECTOR.

16 Section 13 of title 35, United States Code, as redesig17 nated by section 617 of this Act, is amended to read as

18 follows:

19 ‘‘§ 13. Annual report to Congress

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

21 than 180 days after the end of each fiscal year, the mon22 eys received and expended by the Office, the purposes for

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

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

25 examiners, the evaluation of the Director by the Secretary
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1 of Commerce, the Director’s compensation, and other in2 formation relating to the Office.’’.

3 SEC. 621. SUSPENSION OR EXCLUSION FROM PRACTICE.

4 Section 32 of title 35, United States Code, is amend5 ed by inserting before the last sentence the following: ‘‘The

6 Director shall have the discretion to designate any attor7 ney who is an officer or employee of the United States

8 Patent and Trademark Office to conduct the hearing re9 quired by this section.’’.

10 SEC. 622. PAY OF DIRECTOR.

11 Section 5314 of title 5, United States Code, is

12 amended by striking

13 ‘‘Assistant Secretary of Commerce and Com14 missioner of Patents and Trademarks.’’

15 and inserting

16 ‘‘Under Secretary of Commerce and Director of

17 the United States Patent and Trademark Office.’’.

18 Subtitle B—Effective Date;

19 Technical Amendments

20 SEC. 631. EFFECTIVE DATE.

21 This title and the amendments made by this title

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

23 of this Act.

24 SEC. 632. TECHNICAL AND CONFORMING AMENDMENTS.

25 (a) AMENDMENTS TO TITLE 35.—
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•HR 1907 IH

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

2 parts for chapter 35, United States Code, is amend3 ed to read as follows:

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

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

5 States Code, is amended to read as follows:

6 ‘‘PART I—UNITED STATES PATENT AND

7 TRADEMARK OFFICE’’.

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

9 United States Code, is amended by amending the

10 item relating to chapter 1 to read as follows:

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

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

12 35, United States Code, is amended to read as fol13 lows:

‘‘CHAPTER 1—ESTABLISHMENT, OFFICERS AND EMPLOYEES,

FUNCTIONS

‘‘Sec.

‘‘1. Establishment.

‘‘2. Powers and duties.

‘‘3. Officers and employees.

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

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

‘‘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 with foreign countries.

‘‘12. Copies of patents for public libraries.

‘‘13. Annual report to Congress.’’.
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1 (5) Section 41(h) of title 35, United States

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

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

5 is amended by striking ‘‘Commissioner of Patents

6 and Trademarks’’ and inserting ‘‘Director’’.

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

8 Code, is amended by striking ‘‘Commissioner of Pat9 ents and Trademarks’’ and inserting ‘‘Director’’.

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

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

12 and inserting ‘‘Director’’.

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

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

15 inserting ‘‘Director’s’’.

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

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

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

19 inserting ‘‘Director’’.

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

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

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

23 (11) Section 41(a)(8)(A) of title 35, United

24 States Code, is amended by striking ‘‘On’’ and in25 serting ‘‘on’’.
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1 (12) Section 157(d) of title 35, United States

2 Code, is amended by striking ‘‘Secretary of Com3 merce’’ and inserting ‘‘Director’’.

4 (13) Section 181 of title 35, United States

5 Code, is amended in the third paragraph by striking

6 ‘‘Secretary of Commerce under rules prescribed by

7 him’’ and inserting ‘‘Director under rules prescribed

8 by the Patent and Trademark Office’’.

9 (14) Section 188 of title 35, United States

10 Code, is amended by striking ‘‘Secretary of Com11 merce’’ and inserting ‘‘Patent and Trademark Of12 fice’’.

13 (15) Section 202(a) of title 35, United States

14 Code, is amended—

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

16 and

17 (B) by striking the second period after

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

19 sentence.

20 (b) OTHER PROVISIONS OF LAW.—

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

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

23 1946’’; 15 U.S.C. 1127), is amended by striking

24 ‘‘The term ‘Commissioner’’ means the Commissioner

25 of Patents and Trademarks.’ and inserting ‘‘The
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•HR 1907 IH

1 term ‘Director’ means the Director of the United

2 States Patent and Trademark Office.’’.

3 (B) The Act of July 5, 1946 (commonly re4 ferred to as the ‘‘Trademark Act of 1946’’; 15

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

6 amended by section 116 of this Act, is amended by

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

8 inserting ‘‘Director’’.

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

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

11 inserting ‘‘United States Patent and Trademark Of12 fice’’.

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

14 States Code, is amended to read as follows:

15 ‘‘(23) administrative patent judges and des16 ignated administrative patent judges in the United

17 States Patent and Trademark Office;’’.

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

19 (5 U.S.C. 5316) is amended by striking ‘‘Commis20 sioner of Patents, Department of Commerce.’’, ‘Dep21 uty Commissioner of Patents and Trademarks.’’,

22 ‘‘Assistant Commissioner for Patents.’’, and ‘Assist23 ant Commissioner for Trademarks.’’.
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•HR 1907 IH

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

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

3 follows:

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

5 Patent and Trademark Office; and’’.

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

7 (15 U.S.C. 1511) is amended by striking ‘‘(d) PAT8 ENT AND TRADEMARK OFFICE;’’ and redesignating

9 subsections (a) through (g) as paragraphs (1)

10 through (6), respectively.

11 (7) Section 19 of the Tennessee Valley Author12 ity Act of 1933 (16 U.S.C. 831r) is amended—

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

14 United States’’ and inserting ‘‘United States

15 Patent and Trademark Office’’; and

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

17 and inserting ‘‘Director of the United States

18 Patent and Trademark Office’’.

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

20 1974 (19 U.S.C. 2242(b)(2)(A)) is amended by

21 striking ‘‘Commissioner of Patents and Trade22 marks’’ and inserting ‘‘Director of the United States

23 Patent and Trademark Office’’.

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

25 1974 (19 U.S.C. 2412(b)(2)(D)) is amended by
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1 striking ‘‘Commissioner of Patents and Trade2 marks’’ and inserting ‘‘Director of the United States

3 Patent and Trademark Office’’.

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

5 20 U.S.C. 91) is amended by striking ‘‘Patent Of6 fice’’ and inserting ‘‘United States Patent and

7 Trademark Office’’.

8 (11) Sections 505(m) and 512(o) of the Federal

9 Food, Drug, and Cosmetic Act (21 U.S.C. 355(m)

10 and 360b(o)) are each amended by striking ‘‘Patent

11 and Trademark Office of the Department of Com12 merce’’ and inserting ‘‘United States Patent and

13 Trademark Office’’.

14 (12) Section 702(d) of the Federal Food, Drug,

15 and Cosmetic Act (21 U.S.C. 372(d)) is amended by

16 striking ‘‘Commissioner of Patents’’ and inserting

17 ‘‘Director of the United States Patent and Trade18 mark Office’’.

19 (13) Section 105(e) of the Federal Alcohol Ad20 ministration Act (27 U.S.C. 205(e)) is amended by

21 striking ‘‘United States Patent Office’’ and inserting

22 ‘‘United States Patent and Trademark Office’’.

23 (14) Section 1295(a)(4) of title 28, United

24 States Code, is amended—
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1 (A) in subparagraph (A) by inserting

2 ‘‘United States’’ before ‘‘Patent and Trade3 mark’’; and

4 (B) in subparagraph (B) by striking

5 ‘‘Commissioner of Patents and Trademarks’’

6 and inserting ‘‘Director of the United States

7 Patent and Trademark Office’’.

8 (15) Section 1744 of title 28, United States

9 Code is amended—

10 (A) by striking ‘‘Patent Office’’ each place

11 it appears in the text and section heading and

12 inserting ‘‘United States Patent and Trade13 mark Office’’;

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

15 and inserting ‘‘Director of the United States

16 Patent and Trademark Office’’; and

17 (C) by striking ‘‘Commissioner’’ and in18 serting ‘‘Director’’.

19 (16) Section 1745 of title 28, United States

20 Code, is amended by striking ‘‘United States Patent

21 Office’’ and inserting ‘‘United States Patent and

22 Trademark Office’’.

23 (17) Section 1928 of title 28, United States

24 Code, is amended by striking ‘‘Patent Office’’ and
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1 inserting ‘‘United States Patent and Trademark Of2 fice’’.

3 (18) Section 151 of the Atomic Energy Act of

4 1954 (42 U.S.C. 2181) is amended in subsections

5 (c) and (d) by striking ‘‘Commissioner of Patents’’

6 and inserting ‘‘Director of the United States Patent

7 and Trademark Office’’.

8 (19) Section 152 of the Atomic Energy Act of

9 1954 (42 U.S.C. 2182) is amended by striking

10 ‘‘Commissioner of Patents’’ each place it appears

11 and inserting ‘‘Director of the United States Patent

12 and Trademark Office’’.

13 (20) Section 305 of the National Aeronautics

14 and Space Act of 1958 (42 U.S.C. 2457) is

15 amended—

16 (A) in subsection (c) by striking ‘‘Commis17 sioner of Patents’’ and inserting ‘‘Director of

18 the United States Patent and Trademark Office

19 (hereafter in this section referred to as the ‘Di20 rector’)’’; and

21 (B) by striking ‘‘Commissioner’’ each sub22 sequent place it appears and inserting ‘‘Direc23 tor’’.

24 (21) Section 12(a) of the Solar Heating and

25 Cooling Demonstration Act of 1974 (42 U.S.C.
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1 5510(a)) is amended by striking ‘‘Commissioner of

2 the Patent Office’’ and inserting ‘‘Director of the

3 United States Patent and Trademark Office’’.

4 (22) Section 1111 of title 44, United States

5 Code, is amended by striking ‘‘the Commissioner of

6 Patents,’’.

7 (23) Section 1114 of title 44, United States

8 Code, is amended by striking ‘‘the Commissioner of

9 Patents,’’.

10 (24) Section 1123 of title 44, United States

11 Code, is amended by striking ‘‘the Patent Office,’’.

12 (25) Sections 1337 and 1338 of title 44, United

13 States Code, and the items relating to those sections

14 in the table of contents for chapter 13 of such title,

15 are repealed.

16 (26) Section 10(i) of the Trading With the

17 Enemy Act (50 U.S.C. App. 10(i)) is amended by

18 striking ‘‘Commissioner of Patents’’ and inserting

19 ‘‘Director of the United States Patent and Trade20 mark Office’’.

21 (27) Section 11 of the Inspector General Act of

22 1978 (5 U.S.C. App.) is amended—

23 (A) in paragraph (1)—
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1 (i) by striking ‘‘and’’ before ‘‘the chief

2 executive officer of the Resolution Trust

3 Corporation;’’;

4 (ii) by striking ‘‘and’’ before ‘‘the

5 Chairperson of the Federal Deposit Insur6 ance Corporation;’’;

7 (iii) by striking ‘‘or’’ before ‘‘the Com8 missioner of Social Security,’’; and

9 (iv) by inserting ‘‘or the Director of

10 the United States Patent and Trademark

11 Office;’’ after ‘‘Social Security Administra12 tion;’’; and

13 (B) in paragraph (2)—

14 (i) by striking ‘‘or’’ before ‘‘the Vet15 erans’ Administration,’’; and

16 (ii) by striking ‘‘or the Social Security

17 Administration’’ and inserting ‘‘the Social

18 Security Administration, or the United

19 States Patent and Trademark Office’’.

20 Subtitle C—Miscellaneous

21 Provisions

22 SEC. 641. REFERENCES.

23 (a) IN GENERAL.—Any reference in any other Fed24 eral law, Executive order, rule, regulation, or delegation

25 of authority, or any document of or pertaining to a depart-
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1 ment or office from which a function is transferred by this

2 title—

3 (1) to the head of such department or office is

4 deemed to refer to the head of the department or of5 fice to which such function is transferred; or

6 (2) to such department or office is deemed to

7 refer to the department or office to which such func8 tion is transferred.

9 (b) SPECIFIC REFERENCES.—Any reference in any

10 other Federal law, Executive order, rule, regulation, or

11 delegation of authority, or any document of or pertaining

12 to the Patent and Trademark Office—

13 (1) to the Commissioner of Patents and Trade14 marks is deemed to refer to the Director of the

15 United States Patent and Trademark Office;

16 (2) to the Assistant Commissioner for Patents

17 is deemed to refer to the Commissioner for Patents;

18 or

19 (3) to the Assistant Commissioner for Trade20 marks is deemed to refer to the Commissioner for

21 Trademarks.

22 SEC. 642. EXERCISE OF AUTHORITIES.

23 Except as otherwise provided by law, a Federal offi24 cial to whom a function is transferred by this title may,

25 for purposes of performing the function, exercise all au-
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1 thorities under any other provision of law that were avail2 able with respect to the performance of that function to

3 the official responsible for the performance of the function

4 immediately before the effective date of the transfer of the

5 function under this title.

6 SEC. 643. SAVINGS PROVISIONS.

7 (a) LEGAL DOCUMENTS.—All orders, determinations,

8 rules, regulations, permits, grants, loans, contracts, agree9 ments, certificates, licenses, and privileges—

10 (1) that have been issued, made, granted, or al11 lowed to become effective by the President, the Sec12 retary of Commerce, any officer or employee of any

13 office transferred by this title, or any other Govern14 ment official, or by a court of competent jurisdic15 tion, in the performance of any function that is

16 transferred by this title, and

17 (2) that are in effect on the effective date of

18 such transfer (or become effective after such date

19 pursuant to their terms as in effect on such effective

20 date), shall continue in effect according to their

21 terms until modified, terminated, superseded, set

22 aside, or revoked in accordance with law by the

23 President, any other authorized official, a court of

24 competent jurisdiction, or operation of law.
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1 (b) PROCEEDINGS.—This title shall not affect any

2 proceedings or any application for any benefits, service,

3 license, permit, certificate, or financial assistance pending

4 on the effective date of this title before an office trans5 ferred by this title, but such proceedings and applications

6 shall be continued. Orders shall be issued in such pro7 ceedings, appeals shall be taken therefrom, and payments

8 shall be made pursuant to such orders, as if this title had

9 not been enacted, and orders issued in any such pro10 ceeding shall continue in effect until modified, terminated,

11 superseded, or revoked by a duly authorized official, by

12 a court of competent jurisdiction, or by operation of law.

13 Nothing in this subsection shall be considered to prohibit

14 the discontinuance or modification of any such proceeding

15 under the same terms and conditions and to the same ex16 tent that such proceeding could have been discontinued

17 or modified if this title had not been enacted.

18 (c) SUITS.—This title shall not affect suits com19 menced before the effective date of this title, and in all

20 such suits, proceedings shall be had, appeals taken, and

21 judgments rendered in the same manner and with the

22 same effect as if this title had not been enacted.

23 (d) NONABATEMENT OF ACTIONS.—No suit, action,

24 or other proceeding commenced by or against the Depart25 ment of Commerce or the Secretary of Commerce, or by
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1 or against any individual in the official capacity of such

2 individual as an officer or employee of an office trans3 ferred by this title, shall abate by reason of the enactment

4 of this title.

5 (e) CONTINUANCE OF SUITS.—If any Government of6 ficer in the official capacity of such officer is party to a

7 suit with respect to a function of the officer, and under

8 this title such function is transferred to any other officer

9 or office, then such suit shall be continued with the other

10 officer or the head of such other office, as applicable, sub11 stituted or added as a party.

12 (f) ADMINISTRATIVE PROCEDURE AND JUDICIAL RE13 VIEW.—Except as otherwise provided by this title, any

14 statutory requirements relating to notice, hearings, action

15 upon the record, or administrative or judicial review that

16 apply to any function transferred by this title shall apply

17 to the exercise of such function by the head of the Federal

18 agency, and other officers of the agency, to which such

19 function is transferred by this title.

20 SEC. 644. TRANSFER OF ASSETS.

21 Except as otherwise provided in this title, so much

22 of the personnel, property, records, and unexpended bal23 ances of appropriations, allocations, and other funds em24 ployed, used, held, available, or to be made available in

25 connection with a function transferred to an official or
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1 agency by this title shall be available to the official or the

2 head of that agency, respectively, at such time or times

3 as the Director of the Office of Management and Budget

4 directs for use in connection with the functions trans5 ferred.

6 SEC. 645. DELEGATION AND ASSIGNMENT.

7 Except as otherwise expressly prohibited by law or

8 otherwise provided in this title, an official to whom func9 tions are transferred under this title (including the head

10 of any office to which functions are transferred under this

11 title) may delegate any of the functions so transferred to

12 such officers and employees of the office of the official as

13 the official may designate, and may authorize successive

14 redelegations of such functions as may be necessary or ap15 propriate. No delegation of functions under this section

16 or under any other provision of this title shall relieve the

17 official to whom a function is transferred under this title

18 of responsibility for the administration of the function.

19 SEC. 646. AUTHORITY OF DIRECTOR OF THE OFFICE OF

20 MANAGEMENT AND BUDGET WITH RESPECT

21 TO FUNCTIONS TRANSFERRED.

22 (a) DETERMINATIONS.—If necessary, the Director of

23 the Office of Management and Budget shall make any de24 termination of the functions that are transferred under

25 this title.
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1 (b) INCIDENTAL TRANSFERS.—The Director of the

2 Office of Management and Budget, at such time or times

3 as the Director shall provide, may make such determina4 tions as may be necessary with regard to the functions

5 transferred by this title, and to make such additional inci6 dental dispositions of personnel, assets, liabilities, grants,

7 contracts, property, records, and unexpended balances of

8 appropriations, authorizations, allocations, and other

9 funds held, used, arising from, available to, or to be made

10 available in connection with such functions, as may be nec11 essary to carry out the provisions of this title. The Direc12 tor shall provide for the termination of the affairs of all

13 entities terminated by this title and for such further meas14 ures and dispositions as may be necessary to effectuate

15 the purposes of this title.

16 SEC. 647. CERTAIN VESTING OF FUNCTIONS CONSIDERED

17 TRANSFERS.

18 For purposes of this title, the vesting of a function

19 in a department or office pursuant to reestablishment of

20 an office shall be considered to be the transfer of the func21 tion.

22 SEC. 648. AVAILABILITY OF EXISTING FUNDS.

23 Existing appropriations and funds available for the

24 performance of functions, programs, and activities termi25 nated pursuant to this title shall remain available, for the
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1 duration of their period of availability, for necessary ex2 penses in connection with the termination and resolution

3 of such functions, programs, and activities, subject to the

4 submission of a plan to the Committees on Appropriations

5 of the House and Senate in accordance with the proce6 dures set forth in section 605 of the Departments of Com7 merce, Justice, and State, the Judiciary, and Related

8 Agencies Appropriations Act, 1999, as contained in Public

9 Law 105–277.

10 SEC. 649. DEFINITIONS.

11 For purposes of this title—

12 (1) the term ‘‘function’’ includes any duty, obli13 gation, power, authority, responsibility, right, privi14 lege, activity, or program; and

15 (2) the term ‘‘office’’ includes any office, ad16 ministration, agency, bureau, institute, council, unit,

17 organizational entity, or component thereof.

18 TITLE VII—MISCELLANEOUS

19 PATENT PROVISIONS

20 SEC. 701. PROVISIONAL APPLICATIONS.

21 (a) ABANDONMENT.—Section 111(b)(5) of title 35,

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

23 ‘‘(5) ABANDONMENT.—Notwithstanding the ab24 sence of a claim, upon timely request and as pre25 scribed by the Commissioner, a provisional applica-
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1 tion may be treated as an application filed under

2 subsection (a). Subject to section 119(e)(3) of this

3 title, if no such request is made, the provisional ap4 plication shall be regarded as abandoned 12 months

5 after the filing date of such application and shall not

6 be subject to revival thereafter.’’.

7 (b) TECHNICAL AMENDMENT RELATING TO WEEK8 ENDS AND HOLIDAYS.—Section 119(e) of title 35, United

9 States Code, is amended by adding at the end the fol10 lowing:

11 ‘‘(3) If the day that is 12 months after the fil12 ing date of a provisional application falls on a Satur13 day, Sunday, or Federal holiday within the District

14 of Columbia, the period of pendency of the provi15 sional application shall be extended to the next suc16 ceeding secular or business day.’’.

17 (c) ELIMINATION OF COPENDENCY REQUIRE18 MENT.—Section 119(e)(2) of title 35, United States Code,

19 is amended by striking ‘‘and the provisional application

20 was pending on the filing date of the application for patent

21 under section 111(a) or section 363 of this title’’.

22 (d) EFFECTIVE DATE.—The amendments made by

23 this section shall take effect on the date of the enactment

24 of this Act and shall apply to any provisional application

25 filed on or after June 8, 1995, except that the amend-
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1 ments made by subsections (b) and (c) shall have no effect

2 with respect to any patent which is the subject of litigation

3 in an action commenced before such date of enactment.

4 SEC. 702. INTERNATIONAL APPLICATIONS.

5 Section 119 of title 35, United States Code, is

6 amended—

7 (1) in subsection (a)—

8 (A) by inserting ‘‘in a WTO member coun9 try or’’ after ‘‘patent for the same invention’’;

10 and

11 (B) by inserting ‘‘such WTO member

12 country or’’ after ‘‘first filed in’’;

13 (2) in subsection (c), by inserting ‘‘WTO mem14 ber country or’’ after ‘‘application in the same’’; and

15 (3) by adding at the end the following:

16 ‘‘(f) Applications for plant breeder’s rights filed in

17 a WTO member country (or in a foreign UPOV Con18 tracting Party) shall have the same effect for the purpose

19 of the right of priority under subsections (a) through (c)

20 of this section as applications for patent, subject to the

21 same conditions and requirements of this section as apply

22 to applications for patents.

23 ‘‘(g) As used in this section—
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1 ‘‘(1) the term ‘WTO member country’ has the

2 meaning given that term in section 2(10) of the

3 Uruguay Round Agreements Act; and

4 ‘‘(2) the term ‘UPOV Contracting Party’ means

5 a member of the International Convention for the

6 Protection of New Varieties of Plants.’’.

7 SEC. 703. CERTAIN LIMITATIONS ON DAMAGES FOR PAT8 ENT INFRINGEMENT NOT APPLICABLE.

9 Section 287(c)(4) of title 35, United States Code, is

10 amended by striking ‘‘before the date of enactment of this

11 subsection’’ and inserting ‘‘based on an application the

12 earliest effective filing date of which is prior to September

13 30, 1996’’.

14 SEC. 704. ELECTRONIC FILING.

15 Section 22 of title 35, United States Code, is amend16 ed by striking ‘‘printed or typewritten’’ and inserting

17 ‘‘printed, typewritten, or on an electronic medium’’.

18 SEC. 705. STUDY AND REPORT ON BIOLOGICAL DEPOSITS

19 IN SUPPORT OF BIOTECHNOLOGY PATENTS.

20 (a) IN GENERAL.—No later than 6 months after the

21 date of the enactment of this Act, the Comptroller General

22 of the United States, in consultation with the Director of

23 the United States Patent and Trademark Office, shall

24 conduct a study and submit a report to the Congress on

25 the potential risks to the United States biotechnology in-
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1 dustry relating to biological deposits in support of bio2 technology patents.

3 (b) CONTENTS.—The study conducted under this sec4 tion shall include—

5 (1) an examination of the risk of export and the

6 risk of transfers to third parties of biological depos7 its, and the risks posed by the change to 18-month

8 publication requirements made by this Act;

9 (2) an analysis of comparative legal and regu10 latory regimes; and

11 (3) any related recommendations.

12 (c) CONSIDERATION OF REPORT.—In drafting regu13 lations affecting biological deposits (including any modi14 fication of title 37, Code of Federal Regulations, section

15 1.801 et seq.), the Patent and Trademark Office shall con16 sider the recommendations of the study conducted under

17 this section.

18 SEC. 706. PRIOR INVENTION.

19 Section 102(g) of title 35, United States Code, is

20 amended to read as follows:

21 ‘‘(g)(1) during the course of an interference con22 ducted under section 135 or section 291, another inventor

23 involved therein establishes, to the extent permitted in sec24 tion 104, that before such person’s invention thereof the

25 invention was made by such other inventor and not aban-
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1 doned, suppressed, or concealed, or (2) before such per2 son’s invention thereof, the invention was made in this

3 country by another inventor who had not abandoned, sup4 pressed, or concealed it. In determining priority of inven5 tion under this subsection, there shall be considered not

6 only the respective dates of conception and reduction to

7 practice of the invention, but also the reasonable diligence

8 of one who was first to conceive and last to reduce to prac9 tice, from a time prior to conception by the other.’’.

10 SEC. 707. PRIOR ART EXCLUSION FOR CERTAIN COMMONLY

11 ASSIGNED PATENTS.

12 (a) PRIOR ART EXCLUSION.—Section 103(c) of title

13 35, United States Code, is amended by striking ‘‘sub14 section (f) or (g)’’ and inserting ‘‘one or more of sub15 sections (e), (f), and (g)’’.

16 (b) EFFECTIVE DATE.—The amendment made by

17 subsection (a) shall apply to any application for patent

18 filed on or after the date of the enactment of this Act.

Æ