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[Congressional Bills 106th Congress]
[From the U.S. Government Publishing Office]
[H.R. 1907 Reported in Senate (RS)]

                                                       Calendar No. 400

106th CONGRESS

  1st Session

                               H. R. 1907

_______________________________________________________________________

                                 AN ACT

 To amend title 35, United States Code, to provide enhanced protection 
   for inventors and innovators, protect patent terms, reduce patent 
                  litigation, and for other purposes.

_______________________________________________________________________

                            November 5, 1999

                       Reported with an amendment
                                                       Calendar No. 400
106th CONGRESS
  1st Session
                                H. R. 1907

_______________________________________________________________________

                   IN THE SENATE OF THE UNITED STATES

                             August 4, 1999

                                Received

                            October 8, 1999

       Read twice and referred to the Committee on the Judiciary

                            November 5, 1999

                Reported by Mr. Hatch, with an amendment
 [Strike out all after the enacting clause and insert the part printed 
                               in italic]

_______________________________________________________________________

                                 AN ACT

 
 To amend title 35, United States Code, to provide enhanced protection 
   for inventors and innovators, protect patent terms, reduce patent 
                  litigation, and for other purposes.

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

<DELETED>SECTION 1. SHORT TITLE.</DELETED>

<DELETED>    This Act may be cited as the ``American Inventors 
Protection Act of 1999''.</DELETED>

<DELETED>SEC. 2. TABLE OF CONTENTS.</DELETED>

<DELETED>    The table of contents is as follows:</DELETED>

<DELETED>Sec. 1. Short title.
<DELETED>Sec. 2. Table of contents.
                  <DELETED>TITLE I--INVENTORS' RIGHTS

<DELETED>Sec. 101. Short title.
<DELETED>Sec. 102. Invention promotion services.
<DELETED>Sec. 103. Effective date.
               <DELETED>TITLE II--FIRST INVENTOR DEFENSE

<DELETED>Sec. 201. Short title.
<DELETED>Sec. 202. Defense to patent infringement based on earlier 
                            inventor.
<DELETED>Sec. 203. Effective date and applicability.
               <DELETED>TITLE III--PATENT TERM GUARANTEE

<DELETED>Sec. 301. Short title.
<DELETED>Sec. 302. Patent term guarantee authority.
<DELETED>Sec. 303. Continued examination of patent applications.
<DELETED>Sec. 304. Technical clarification.
<DELETED>Sec. 305. Effective date.
  <DELETED>TITLE IV--UNITED STATES PUBLICATION OF PATENT APPLICATIONS 
                            PUBLISHED ABROAD

<DELETED>Sec. 401. Short title.
<DELETED>Sec. 402. Publication.
<DELETED>Sec. 403. Time for claiming benefit of earlier filing date.
<DELETED>Sec. 404. Provisional rights.
<DELETED>Sec. 405. Prior art effect of published applications.
<DELETED>Sec. 406. Cost recovery for publication.
<DELETED>Sec. 407. Conforming amendments.
<DELETED>Sec. 408. Effective date.
    <DELETED>TITLE V--OPTIONAL INTER PARTES REEXAMINATION PROCEDURE

<DELETED>Sec. 501. Short title.
<DELETED>Sec. 502. Ex parte reexamination of patents.
<DELETED>Sec. 503. Definitions.
<DELETED>Sec. 504. Optional inter partes reexamination procedures.
<DELETED>Sec. 505. Conforming amendments.
<DELETED>Sec. 506. Report to Congress.
<DELETED>Sec. 507. Estoppel effect of reexamination.
<DELETED>Sec. 508. Effective date.
             <DELETED>TITLE VI--PATENT AND TRADEMARK OFFICE

<DELETED>Sec. 601. Short title.
     <DELETED>Subtitle A--United States Patent and Trademark Office

<DELETED>Sec. 611. Establishment of Patent and Trademark Office.
<DELETED>Sec. 612. Powers and duties.
<DELETED>Sec. 613. Organization and management.
<DELETED>Sec. 614. Public Advisory Committees.
<DELETED>Sec. 615. Patent and Trademark Office funding.
<DELETED>Sec. 616. Conforming amendments.
<DELETED>Sec. 617. Trademark Trial and Appeal Board.
<DELETED>Sec. 618. Board of Patent Appeals and Interferences.
<DELETED>Sec. 619. Annual report of Director.
<DELETED>Sec. 620. Suspension or exclusion from practice.
<DELETED>Sec. 621. Pay of Director and Deputy Director.
<DELETED>Sec. 622. Study on Alternative Fee Structures.
       <DELETED>Subtitle B--Effective Date; Technical Amendments

<DELETED>Sec. 631. Effective date.
<DELETED>Sec. 632. Technical and conforming amendments.
             <DELETED>Subtitle C--Miscellaneous Provisions

<DELETED>Sec. 641. References.
<DELETED>Sec. 642. Exercise of authorities.
<DELETED>Sec. 643. Savings provisions.
<DELETED>Sec. 644. Transfer of assets.
<DELETED>Sec. 645. Delegation and assignment.
<DELETED>Sec. 646. Authority of Director of the Office of Management 
                            and Budget with respect to functions 
                            transferred.
<DELETED>Sec. 647. Certain vesting of functions considered transfers.
<DELETED>Sec. 648. Availability of existing funds.
<DELETED>Sec. 649. Definitions.
          <DELETED>TITLE VII--MISCELLANEOUS PATENT PROVISIONS

<DELETED>Sec. 701. Provisional applications.
<DELETED>Sec. 702. International applications.
<DELETED>Sec. 703. Certain limitations on damages for patent 
                            infringement not applicable.
<DELETED>Sec. 704. Electronic filing and publications.
<DELETED>Sec. 705. Study and report on biological deposits in support 
                            of biotechnology patents.
<DELETED>Sec. 706. Prior invention.
<DELETED>Sec. 707. Prior art exclusion for certain commonly assigned 
                            patents.

             <DELETED>TITLE I--INVENTORS' RIGHTS</DELETED>

<DELETED>SEC. 101. SHORT TITLE.</DELETED>

<DELETED>    This title may be cited as the ``Inventors' Rights 
Act''.</DELETED>

<DELETED>SEC. 102. INVENTION PROMOTION SERVICES.</DELETED>

<DELETED>    Part I of title 35, United States Code, is amended by 
adding after chapter 4 the following chapter:</DELETED>

      <DELETED>``CHAPTER 5--INVENTION PROMOTION SERVICES</DELETED>

<DELETED>``Sec.
<DELETED>``51. Definitions.
<DELETED>``52. Contracting requirements.
<DELETED>``53. Standard provisions for cover notice.
<DELETED>``54. Reports to customer required.
<DELETED>``55. Mandatory contract terms.
<DELETED>``56. Remedies.
<DELETED>``57. Records of complaints.
<DELETED>``58. Fraudulent representation by an invention promoter.
<DELETED>``59. Rule of construction.
<DELETED>``Sec. 51. Definitions</DELETED>
<DELETED>    ``For purposes of this chapter--</DELETED>
        <DELETED>    ``(1) the term `contract for invention promotion 
        services' means a contract by which an invention promoter 
        undertakes invention promotion services for a 
        customer;</DELETED>
        <DELETED>    ``(2) the term `customer' means any person, firm, 
        partnership, corporation, or other entity who enters into a 
        financial relationship or a contract with an invention promoter 
        for invention promotion services;</DELETED>
        <DELETED>    ``(3) the term `invention promoter' means any 
        person, firm, partnership, corporation, or other entity who 
        offers to perform or performs for, or on behalf of, a customer 
        any act described under paragraph (4), but does not include--
        </DELETED>
                <DELETED>    ``(A) any department or agency of the 
                Federal Government or of a State or local 
                government;</DELETED>
                <DELETED>    ``(B) any nonprofit, charitable, 
                scientific, or educational organization, qualified 
                under applicable State law or described under section 
                170(b)(1)(A) of the Internal Revenue Code of 
                1986;</DELETED>
                <DELETED>    ``(C) any person duly registered with, and 
                in good standing before, the United States Patent and 
                Trademark Office acting within the scope of that 
                person's registration to practice before the Patent and 
                Trademark Office, except when that person performs any 
                act described in subparagraph (B) or (C) of paragraph 
                (4); or</DELETED>
                <DELETED>    ``(D) any person or entity involved in the 
                evaluation to determine commercial potential of, or 
                offering to license or sell, a utility patent or a 
                previously filed nonprovisional utility patent 
                application; and</DELETED>
        <DELETED>    ``(4) the term `invention promotion services' 
        means, with respect to an invention by a customer, any act 
        involved in--</DELETED>
                <DELETED>    ``(A) evaluating the invention to 
                determine its protectability as some form of 
                intellectual property, other than evaluation by a 
                person licensed by a State to practice law who is 
                acting solely within the scope of that person's 
                professional license;</DELETED>
                <DELETED>    ``(B) evaluating the invention to 
                determine its commercial potential by any person for 
                purposes other than providing venture capital; 
                or</DELETED>
                <DELETED>    ``(C) marketing, brokering, offering to 
                license or sell, or promoting the invention or a 
                product or service in which the invention is 
                incorporated or used, except that the display only of 
                an invention at a trade show or exhibit shall not be 
                considered to be invention promotion 
                services.</DELETED>
<DELETED>``Sec. 52. Contracting requirements</DELETED>
<DELETED>    ``(a) In General.--(1) Every contract for invention 
promotion services shall be in writing and shall be subject to the 
provisions of this chapter. A copy of the signed written contract shall 
be given to the customer at the time the customer enters into the 
contract.</DELETED>
<DELETED>    ``(2) If a contract is entered into for the benefit of a 
third party, the identity and address of such party shall be disclosed 
by such party's agent and such party shall be considered a customer for 
purposes of this chapter.</DELETED>
<DELETED>    ``(b) Requirements of Invention Promoter.--The invention 
promoter shall--</DELETED>
        <DELETED>    ``(1) state in a written document, at the time a 
        customer enters into a contract for invention promotion 
        services, whether the usual business practice of the invention 
        promoter is to--</DELETED>
                <DELETED>    ``(A) seek more than 1 contract in 
                connection with an invention; or</DELETED>
                <DELETED>    ``(B) seek to perform services in 
                connection with an invention in 1 or more phases, with 
                the performance of each phase covered in 1 or more 
                subsequent contracts; and</DELETED>
        <DELETED>    ``(2) supply to the customer a copy of the written 
        document together with a written summary of the usual business 
        practices of the invention promoter, including--</DELETED>
                <DELETED>    ``(A) the usual business terms of 
                contracts; and</DELETED>
                <DELETED>    ``(B) the approximate amount of the usual 
                fees or other consideration that may be required from 
                the customer for each of the services provided by the 
                invention promoter.</DELETED>
<DELETED>    ``(c) Right of Customer To Cancel Contract.--(1) 
Notwithstanding any contractual provision to the contrary, a customer 
shall have the right to terminate a contract for invention promotion 
services by sending a written letter to the invention promoter stating 
the customer's intent to cancel the contract. The letter of termination 
must be deposited with the United States Postal Service on or before 5 
business days after the date upon which the customer or the invention 
promoter executes the contract, whichever is later.</DELETED>
<DELETED>    ``(2) Delivery of a promissory note, check, bill of 
exchange, or negotiable instrument of any kind to the invention 
promoter or to a third party for the benefit of the invention promoter, 
without regard to the date or dates appearing in such instrument, shall 
be deemed payment received by the invention promoter on the date 
received for purposes of this section.</DELETED>
<DELETED>``Sec. 53. Standard provisions for cover notice</DELETED>
<DELETED>    ``(a) Contents.--Every contract for invention promotion 
services shall have a conspicuous and legible cover sheet attached with 
the following notice imprinted in boldface type of not less than 12-
point size:</DELETED>
<DELETED>    `YOU HAVE THE RIGHT TO TERMINATE THIS CONTRACT. TO 
TERMINATE THIS CONTRACT, YOU MUST SEND A WRITTEN LETTER TO THE COMPANY 
STATING YOUR INTENT TO CANCEL THIS CONTRACT.</DELETED>
<DELETED>    `THE LETTER OF TERMINATION MUST BE DEPOSITED WITH THE 
UNITED STATES POSTAL SERVICE ON OR BEFORE FIVE (5) BUSINESS DAYS AFTER 
THE DATE ON WHICH YOU OR THE COMPANY EXECUTE THE CONTRACT, WHICHEVER IS 
LATER.</DELETED>
<DELETED>    `THE TOTAL NUMBER OF INVENTIONS EVALUATED BY THE INVENTION 
PROMOTER FOR COMMERCIAL POTENTIAL IN THE PAST FIVE (5) YEARS IS XXXXX. 
OF THAT NUMBER, XXXXX RECEIVED POSITIVE EVALUATIONS AND XXXXX RECEIVED 
NEGATIVE EVALUATIONS.</DELETED>
<DELETED>    `IF YOU ASSIGN EVEN A PARTIAL INTEREST IN THE INVENTION TO 
THE INVENTION PROMOTER, THE INVENTION PROMOTER MAY HAVE THE RIGHT TO 
SELL OR DISPOSE OF THE INVENTION WITHOUT YOUR CONSENT AND MAY NOT HAVE 
TO SHARE THE PROFITS WITH YOU.</DELETED>
<DELETED>    `THE TOTAL NUMBER OF CUSTOMERS WHO HAVE CONTRACTED WITH 
THE INVENTION PROMOTER IN THE PAST FIVE (5) YEARS IS XXXXX. THE TOTAL 
NUMBER OF CUSTOMERS KNOWN BY THIS INVENTION PROMOTER TO HAVE RECEIVED, 
BY VIRTUE OF THIS INVENTION PROMOTER'S PERFORMANCE, AN AMOUNT OF MONEY 
IN EXCESS OF THE AMOUNT PAID BY THE CUSTOMER TO THIS INVENTION PROMOTER 
IS XXXXXXX. AS A RESULT OF THE EFFORTS OF THIS INVENTION PROMOTER, 
XXXXX NUMBER OF CUSTOMERS HAVE RECEIVED LICENSE AGREEMENTS FOR THEIR 
INVENTIONS.</DELETED>
<DELETED>    `THE OFFICERS OF THIS INVENTION PROMOTER HAVE COLLECTIVELY 
OR INDIVIDUALLY BEEN AFFILIATED IN THE LAST TEN (10) YEARS WITH THE 
FOLLOWING INVENTION PROMOTION COMPANIES: (LIST THE NAMES AND ADDRESSES 
OF ALL PREVIOUS INVENTION PROMOTION COMPANIES WITH WHICH THE PRINCIPAL 
OFFICERS HAVE BEEN AFFILIATED AS OWNERS, AGENTS, OR EMPLOYEES). YOU ARE 
ENCOURAGED TO CHECK WITH THE UNITED STATES PATENT AND TRADEMARK OFFICE, 
THE FEDERAL TRADE COMMISSION, YOUR STATE ATTORNEY GENERAL'S OFFICE, AND 
THE BETTER BUSINESS BUREAU FOR ANY COMPLAINTS FILED AGAINST ANY OF 
THESE COMPANIES WHICH RESULTED IN REGULATORY SANCTIONS OR OTHER 
CORRECTIVE ACTIONS.</DELETED>
<DELETED>    `YOU ARE ENCOURAGED TO CONSULT WITH AN ATTORNEY OF YOUR 
OWN CHOOSING BEFORE SIGNING THIS CONTRACT. BY PROCEEDING WITHOUT THE 
ADVICE OF AN ATTORNEY REGISTERED TO PRACTICE BEFORE THE UNITED STATES 
PATENT AND TRADEMARK OFFICE, YOU COULD LOSE ANY RIGHTS YOU MIGHT HAVE 
IN YOUR IDEA OR INVENTION.'.</DELETED>
<DELETED>    ``(b) Other Requirements for Cover Notice.--The cover 
notice shall contain the items required under subsection (a) and the 
name, primary office address, and local office address of the invention 
promoter, and may contain no other matter.</DELETED>
<DELETED>    ``(c) Disclosure of Certain Customers Not Required.--The 
requirement in the notice set forth in subsection (a) to include the 
`TOTAL NUMBER OF CUSTOMERS WHO HAVE CONTRACTED WITH THE INVENTION 
PROMOTER IN THE PAST FIVE (5) YEARS' need not include information with 
respect to customers who have purchased trade show services, research, 
advertising, or other nonmarketing services from the invention 
promoter, nor with respect to customers who have defaulted in their 
payment to the invention promoter.</DELETED>
<DELETED>``Sec. 54. Reports to customer required</DELETED>
<DELETED>    ``With respect to every contract for invention promotion 
services, the invention promoter shall deliver to the customer at the 
address specified in the contract, at least once every 3 months 
throughout the term of the contract, a written report that identifies 
the contract and includes--</DELETED>
        <DELETED>    ``(1) a full, clear, and concise description of 
        the services performed to the date of the report and of the 
        services yet to be performed and names of all persons who it is 
        known will perform the services; and</DELETED>
        <DELETED>    ``(2) the name and address of each person, firm, 
        corporation, or other entity to whom the subject matter of the 
        contract has been disclosed, the reason for each such 
        disclosure, the nature of the disclosure, and complete and 
        accurate summaries of all responses received as a result of 
        those disclosures.</DELETED>
<DELETED>``Sec. 55. Mandatory contract terms</DELETED>
<DELETED>    ``(a) Mandatory Terms.--Each contract for invention 
promotion services shall include in boldface type of not less than 12-
point size--</DELETED>
        <DELETED>    ``(1) the terms and conditions of payment and 
        contract termination rights required under section 
        52;</DELETED>
        <DELETED>    ``(2) a statement that the customer may avoid 
        entering into the contract by not making the initial payment to 
        the invention promoter;</DELETED>
        <DELETED>    ``(3) a full, clear, and concise description of 
        the specific acts or services that the invention promoter 
        undertakes to perform for the customer;</DELETED>
        <DELETED>    ``(4) a statement as to whether the invention 
        promoter undertakes to construct, sell, or distribute one or 
        more prototypes, models, or devices embodying the invention of 
        the customer;</DELETED>
        <DELETED>    ``(5) the full name and principal place of 
        business of the invention promoter and the name and principal 
        place of business of any parent, subsidiary, agent, independent 
        contractor, and any affiliated company or person who it is 
        known will perform any of the services or acts that the 
        invention promoter undertakes to perform for the 
        customer;</DELETED>
        <DELETED>    ``(6) if any oral or written representation of 
        estimated or projected customer earnings is given by the 
        invention promoter (or any agent, employee, officer, director, 
        partner, or independent contractor of such invention promoter), 
        a statement of that estimation or projection and a description 
        of the data upon which such representation is based;</DELETED>
        <DELETED>    ``(7) the name and address of the custodian of all 
        records and correspondence relating to the contracted for 
        invention promotion services, and a statement that the 
        invention promoter is required to maintain all records and 
        correspondence relating to performance of the invention 
        promotion services for such customer for a period of not less 
        than 2 years after expiration of the term of such contract; 
        and</DELETED>
        <DELETED>    ``(8) a statement setting forth a time schedule 
        for performance of the invention promotion services, including 
        an estimated date in which such performance is expected to be 
        completed.</DELETED>
<DELETED>    ``(b) Invention Promoter as Fiduciary.--To the extent that 
the description of the specific acts or services affords discretion to 
the invention promoter with respect to what specific acts or services 
shall be performed, the invention promoter shall be deemed a 
fiduciary.</DELETED>
<DELETED>    ``(c) Availability of Information.--Records and 
correspondence described under subsection (a)(7) shall be made 
available after 7 days written notice to the customer or the 
representative of the customer to review and copy at a reasonable cost 
on the invention promoter's premises during normal business 
hours.</DELETED>
<DELETED>``Sec. 56. Remedies</DELETED>
<DELETED>    ``(a) In General.--(1) Any contract for invention 
promotion services that does not comply with the applicable provisions 
of this chapter shall be voidable at the option of the 
customer.</DELETED>
<DELETED>    ``(2) Any contract for invention promotion services 
entered into in reliance upon any material false, fraudulent, or 
misleading information, representation, notice, or advertisement of the 
invention promoter (or any agent, employee, officer, director, partner, 
or independent contractor of such invention promoter) shall be voidable 
at the option of the customer.</DELETED>
<DELETED>    ``(3) Any waiver by the customer of any provision of this 
chapter shall be deemed contrary to public policy and shall be void and 
unenforceable.</DELETED>
<DELETED>    ``(4) Any contract for invention promotion services which 
provides for filing for and obtaining utility, design, or plant patent 
protection shall be voidable at the option of the customer unless the 
invention promoter offers to perform or performs such act through a 
person duly registered to practice before, and in good standing with, 
the Patent and Trademark Office.</DELETED>
<DELETED>    ``(b) Civil Action.--(1) Any customer who is injured by a 
violation of this chapter by an invention promoter or by any material 
false or fraudulent statement or representation, or any omission of 
material fact, by an invention promoter (or any agent, employee, 
director, officer, partner, or independent contractor of such invention 
promoter) or by failure of an invention promoter to make all the 
disclosures required under this chapter, may recover in a civil action 
against the invention promoter (or the officers, directors, or partners 
of such invention promoter) in addition to reasonable costs and 
attorneys' fees, the greater of--</DELETED>
        <DELETED>    ``(A) $5,000; or</DELETED>
        <DELETED>    ``(B) the amount of actual damages sustained by 
        the customer.</DELETED>
<DELETED>    ``(2) Notwithstanding paragraph (1), the court may 
increase damages to not more than 3 times the amount awarded, taking 
into account past complaints made against the invention promoter that 
resulted in regulatory sanctions or other corrective actions based on 
those records compiled by the Director under section 57.</DELETED>
<DELETED>    ``(c) Rebuttable Presumption of Injury.--For purposes of 
this section, substantial violation of any provision of this chapter by 
an invention promoter or execution by the customer of a contract for 
invention promotion services in reliance on any material false or 
fraudulent statements or representations or omissions of material fact 
shall establish a rebuttable presumption of injury.</DELETED>
<DELETED>``Sec. 57. Records of complaints</DELETED>
<DELETED>    ``(a) Release of Complaints.--The Director shall make all 
complaints received by the United States Patent and Trademark Office 
involving invention promoters publicly available, together with any 
response of the invention promoters.</DELETED>
<DELETED>    ``(b) Request for Complaints.--The Director may request 
complaints relating to invention promotion services from any Federal or 
State agency and include such complaints in the records maintained 
under subsection (a), together with any response of the invention 
promoters.</DELETED>
<DELETED>``Sec. 58. Fraudulent representation by an invention 
              promoter</DELETED>
<DELETED>    ``Whoever, in providing invention promotion services, 
knowingly provides any false or misleading statement, representation, 
or omission of material fact to a customer or fails to make all the 
disclosures required under this chapter, shall be guilty of a 
misdemeanor and fined not more than $10,000 for each offense.</DELETED>
<DELETED>``Sec. 59. Rule of construction</DELETED>
<DELETED>    ``Except as expressly provided in this chapter, no 
provision of this chapter shall be construed to affect any obligation, 
right, or remedy provided under any other Federal or State 
law.''.</DELETED>

<DELETED>SEC. 103. EFFECTIVE DATE.</DELETED>

<DELETED>    This title and the amendments made by this title shall 
take effect 60 days after the date of the enactment of this 
Act.</DELETED>

          <DELETED>TITLE II--FIRST INVENTOR DEFENSE</DELETED>

<DELETED>SEC. 201. SHORT TITLE.</DELETED>

<DELETED>    This title may be cited as the ``First Inventor Defense 
Act''.</DELETED>

<DELETED>SEC. 202. DEFENSE TO PATENT INFRINGEMENT BASED ON EARLIER 
              INVENTOR.</DELETED>

<DELETED>    (a) Defense.--Chapter 28 of title 35, United States Code, 
is amended by adding at the end the following new section:</DELETED>
<DELETED>``Sec. 273. Defense to infringement based on earlier 
              inventor</DELETED>
<DELETED>    ``(a) Definitions.--For purposes of this section--
</DELETED>
        <DELETED>    ``(1) the terms `commercially used' and 
        `commercial use' mean use of a method in the United States, so 
        long as such use is in connection with an internal commercial 
        use or an actual arm's-length sale or other arm's-length 
        commercial transfer of a useful end result, whether or not the 
        subject matter at issue is accessible to or otherwise known to 
        the public, except that the subject matter for which commercial 
        marketing or use is subject to a premarketing regulatory review 
        period during which the safety or efficacy of the subject 
        matter is established, including any period specified in 
        section 156(g), shall be deemed `commercially used' and in 
        `commercial use' during such regulatory review 
        period;</DELETED>
        <DELETED>    ``(2) in the case of activities performed by a 
        nonprofit research laboratory, or nonprofit entity such as a 
        university, research center, or hospital, a use for which the 
        public is the intended beneficiary shall be considered to be a 
        use described in paragraph (1), except that the use--</DELETED>
                <DELETED>    ``(A) may be asserted as a defense under 
                this section only for continued use by and in the 
                laboratory or nonprofit entity; and</DELETED>
                <DELETED>    ``(B) may not be asserted as a defense 
                with respect to any subsequent commercialization or use 
                outside such laboratory or nonprofit entity;</DELETED>
        <DELETED>    ``(3) the term `method' means a method of doing or 
        conducting business; and</DELETED>
        <DELETED>    ``(4) the `effective filing date' of a patent is 
        the earlier of the actual filing date of the application for 
        the patent or the filing date of any earlier United States, 
        foreign, or international application to which the subject 
        matter at issue is entitled under section 119, 120, or 365 of 
        this title.</DELETED>
<DELETED>    ``(b) Defense to Infringement.--.</DELETED>
        <DELETED>    ``(1) In general.--It shall be a defense to an 
        action for infringement under section 271 of this title with 
        respect to any subject matter that would otherwise infringe one 
        or more claims for a method in the patent being asserted 
        against a person, if such person had, acting in good faith, 
        actually reduced the subject matter to practice at least one 
        year before the effective filing date of such patent, and 
        commercially used the subject matter before the effective 
        filing date of such patent.</DELETED>
        <DELETED>    ``(2) Exhaustion of right.--The sale or other 
        disposition, of a useful end result produced by a patented 
        method, by a person entitled to assert a defense under this 
        section with respect to that useful end result shall exhaust 
        the patent owner's rights under the patent to the extent such 
        rights would have been exhausted had such sale or other 
        disposition been made by the patent owner.</DELETED>
        <DELETED>    ``(3) Limitations and qualifications of defense.--
        The defense to infringement under this section is subject to 
        the following:</DELETED>
                <DELETED>    ``(A) Patent.--A person may not assert the 
                defense under this section unless the invention for 
                which the defense is asserted is for a 
                method.</DELETED>
                <DELETED>    ``(B) Derivation.--A person may not assert 
                the defense under this section if the subject matter on 
                which the defense is based was derived from the 
                patentee or persons in privity with the 
                patentee.</DELETED>
                <DELETED>    ``(C) Not a general license.--The defense 
                asserted by a person under this section is not a 
                general license under all claims of the patent at 
                issue, but extends only to the specific subject matter 
                claimed in the patent with respect to which the person 
                can assert a defense under this chapter, except that 
                the defense shall also extend to variations in the 
                quantity or volume of use of the claimed subject 
                matter, and to improvements in the claimed subject 
                matter that do not infringe additional specifically 
                claimed subject matter of the patent.</DELETED>
        <DELETED>    ``(4) Burden of proof.--A person asserting the 
        defense under this section shall have the burden of 
        establishing the defense by clear and convincing 
        evidence.</DELETED>
        <DELETED>    ``(5) Abandonment of use.--A person who has 
        abandoned commercial use of subject matter may not rely on 
        activities performed before the date of such abandonment in 
        establishing a defense under this section with respect to 
        actions taken after the date of such abandonment.</DELETED>
        <DELETED>    ``(6) Personal defense.--The defense under this 
        section may be asserted only by the person who performed the 
        acts necessary to establish the defense and, except for any 
        transfer to the patent owner, the right to assert the defense 
        shall not be licensed or assigned or transferred to another 
        person except as an ancillary and subordinate part of a good 
        faith assignment or transfer for other reasons of the entire 
        enterprise or line of business to which the defense 
        relates.</DELETED>
        <DELETED>    ``(7) Limitation on sites.--A defense under this 
        section, when acquired as part of a good faith assignment or 
        transfer of an entire enterprise or line of business to which 
        the defense relates, may only be asserted for uses at sites 
        where the subject matter that would otherwise infringe one or 
        more of the claims is in use before the later of the effective 
        filing date of the patent or the date of the assignment or 
        transfer of such enterprise or line of business.</DELETED>
        <DELETED>    ``(8) Unsuccessful assertion of defense.--If the 
        defense under this section is pleaded by a person who is found 
        to infringe the patent and who subsequently fails to 
        demonstrate a reasonable basis for asserting the defense, the 
        court shall find the case exceptional for the purpose of 
        awarding attorney's fees under section 285 of this 
        title.</DELETED>
        <DELETED>    ``(9) Invalidity.--A patent shall not be deemed to 
        be invalid under section 102 or 103 of this title solely 
        because a defense is raised or established under this 
        section.''.</DELETED>
<DELETED>    (b) Conforming Amendment.--The table of sections at the 
beginning of chapter 28 of title 35, United States Code, is amended by 
adding at the end the following new item:</DELETED>

<DELETED>``273. Defense to infringement based on earlier inventor.''.

<DELETED>SEC. 203. EFFECTIVE DATE AND APPLICABILITY.</DELETED>

<DELETED>    This title and the amendments made by this title shall 
take effect on the date of the enactment of this Act, but shall not 
apply to any action for infringement that is pending on such date of 
the enactment or with respect to any subject matter for which an 
adjudication of infringement, including a consent judgment, has been 
made before such date of the enactment.</DELETED>

          <DELETED>TITLE III--PATENT TERM GUARANTEE</DELETED>

<DELETED>SEC. 301. SHORT TITLE.</DELETED>

<DELETED>    This title may be cited as the ``Patent Term Guarantee 
Act''.</DELETED>

<DELETED>SEC. 302. PATENT TERM GUARANTEE AUTHORITY.</DELETED>

<DELETED>    (a) Adjustment of Patent Term.--Section 154(b) of title 
35, United States Code, is amended to read as follows:</DELETED>
<DELETED>    ``(b) Adjustment of Patent Term.--</DELETED>
        <DELETED>    ``(1) Patent term guarantees.--</DELETED>
                <DELETED>    ``(A) Guarantee of prompt patent and 
                trademark office responses.--Subject to the limitations 
                under paragraph (2), if the issue of an original patent 
                is delayed due to the failure of the Patent and 
                Trademark Office to--</DELETED>
                        <DELETED>    ``(i) make a notification of the 
                        rejection of any claim for a patent or any 
                        objection or argument under section 132, or 
                        give or mail a written notice of allowance 
                        under section 151, within 14 months after the 
                        date on which the application was 
                        filed;</DELETED>
                        <DELETED>    ``(ii) respond to a reply under 
                        section 132, or to an appeal taken under 
                        section 134, within 4 months after the date on 
                        which the reply was filed or the appeal was 
                        taken;</DELETED>
                        <DELETED>    ``(iii) act on an application 
                        within 4 months after the date of a decision by 
                        the Board of Patent Appeals and Interferences 
                        under section 134 or 135 or a decision by a 
                        Federal court under section 141, 145, or 146 in 
                        a case in which allowable claims remain in the 
                        application; or</DELETED>
                        <DELETED>    ``(iv) issue a patent within 4 
                        months after the date on which the issue fee 
                        was paid under section 151 and all outstanding 
                        requirements were satisfied,</DELETED>
                <DELETED>the term of the patent shall be extended one 
                day for each day after the end of the period specified 
                in clause (i), (ii), (iii), or (iv), as the case may 
                be, until the action described in such clause is 
                taken.</DELETED>
                <DELETED>    ``(B) Guarantee of no more than 3-year 
                application pendency.--Subject to the limitations under 
                paragraph (2), if the issue of an original patent is 
                delayed due to the failure of the Patent and Trademark 
                Office to issue a patent within 3 years after the 
                actual filing date of the application in the United 
                States, not including--</DELETED>
                        <DELETED>    ``(i) any time consumed by 
                        continued examination of the application 
                        requested by the applicant under section 
                        132(b);</DELETED>
                        <DELETED>    ``(ii) any time consumed by a 
                        proceeding under section 135(a), any time 
                        consumed by the imposition of an order pursuant 
                        to section 181, or any time consumed by 
                        appellate review by the Board of Patent Appeals 
                        and Interferences or by a Federal court; 
                        or</DELETED>
                        <DELETED>    ``(iii) any delay in the 
                        processing of the application by the Patent and 
                        Trademark Office requested by the applicant 
                        except as permitted by paragraph 
                        (3)(C),</DELETED>
                <DELETED>the term of the patent shall be extended 1 day 
                for each day after the end of that 3-year period until 
                the patent is issued.</DELETED>
                <DELETED>    ``(C) Guarantee or adjustments for delays 
                due to interferences, secrecy orders, and appeals.--
                Subject to the limitations under paragraph (2), if the 
                issue of an original patent is delayed due to--
                </DELETED>
                        <DELETED>    ``(i) a proceeding under section 
                        135(a);</DELETED>
                        <DELETED>    ``(ii) the imposition of an order 
                        pursuant to section 181; or</DELETED>
                        <DELETED>    ``(iii) appellate review by the 
                        Board of Patent Appeals and Interferences or by 
                        a Federal court in a case in which the patent 
                        was issued pursuant to a decision in the review 
                        reversing an adverse determination of 
                        patentability,</DELETED>
                <DELETED>the term of the patent shall be extended one 
                day for each day of the pendency of the proceeding, 
                order, or review, as the case may be.</DELETED>
        <DELETED>    ``(2) Limitations.--</DELETED>
                <DELETED>    ``(A) In general.--To the extent that 
                periods of delay attributable to grounds specified in 
                paragraph (1) overlap, the period of any adjustment 
                granted under this subsection shall not exceed the 
                actual number of days the issuance of the patent was 
                delayed.</DELETED>
                <DELETED>    ``(B) Disclaimed term.--No patent the term 
                of which has been disclaimed beyond a specified date 
                may be adjusted under this section beyond the 
                expiration date specified in the disclaimer.</DELETED>
                <DELETED>    ``(C) Reduction of period of adjustment.--
                </DELETED>
                        <DELETED>    ``(i) The period of adjustment of 
                        the term of a patent under paragraph (1) shall 
                        be reduced by a period equal to the period of 
                        time during which the applicant failed to 
                        engage in reasonable efforts to conclude 
                        prosecution of the application.</DELETED>
                        <DELETED>    ``(ii) With respect to adjustments 
                        to patent term made under the authority of 
                        paragraph (1)(B), an applicant shall be deemed 
                        to have failed to engage in reasonable efforts 
                        to conclude processing or examination of an 
                        application for the cumulative total of any 
                        periods of time in excess of 3 months that are 
                        taken to respond to a notice from the Office 
                        making any rejection, objection, argument, or 
                        other request, measuring such 3-month period 
                        from the date the notice was given or mailed to 
                        the applicant.</DELETED>
                        <DELETED>    ``(iii) The Director shall 
                        prescribe regulations establishing the 
                        circumstances that constitute a failure of an 
                        applicant to engage in reasonable efforts to 
                        conclude processing or examination of an 
                        application.</DELETED>
        <DELETED>    ``(3) Procedures for patent term adjustment 
        determination.--</DELETED>
                <DELETED>    ``(A) The Director shall prescribe 
                regulations establishing procedures for the application 
                for and determination of patent term adjustments under 
                this subsection.</DELETED>
                <DELETED>    ``(B) Under the procedures established 
                under subparagraph (A), the Director shall--</DELETED>
                        <DELETED>    ``(i) make a determination of the 
                        period of any patent term adjustment under this 
                        subsection, and shall transmit a notice of that 
                        determination with the written notice of 
                        allowance of the application under section 151; 
                        and</DELETED>
                        <DELETED>    ``(ii) provide the applicant one 
                        opportunity to request reconsideration of any 
                        patent term adjustment determination made by 
                        the Director.</DELETED>
                <DELETED>    ``(C) The Director shall reinstate all or 
                part of the cumulative period of time of an adjustment 
                under paragraph (2)(C) if the applicant, prior to the 
                issuance of the patent, makes a showing that, in spite 
                of all due care, the applicant was unable to respond 
                within the 3-month period, but in no case shall more 
                than 3 additional months for each such response beyond 
                the original 3-month period be reinstated.</DELETED>
                <DELETED>    ``(D) The Director shall proceed to grant 
                the patent after completion of the Director's 
                determination of a patent term adjustment under the 
                procedures established under this subsection, 
                notwithstanding any appeal taken by the applicant of 
                such determination.</DELETED>
        <DELETED>    ``(4) Appeal of patent term adjustment 
        determination.--</DELETED>
                <DELETED>    ``(A) An applicant dissatisfied with a 
                determination made by the Director under paragraph (3) 
                shall have remedy by a civil action against the 
                Director filed in the United States District Court for 
                the District of Columbia within 180 days after the 
                grant of the patent. Chapter 7 of title 5 shall apply 
                to such action. Any final judgment resulting in a 
                change to the period of adjustment of the patent term 
                shall be served on the Director, and the Director shall 
                thereafter alter the term of the patent to reflect such 
                change.</DELETED>
                <DELETED>    ``(B) The determination of a patent term 
                adjustment under this subsection shall not be subject 
                to appeal or challenge by a third party prior to the 
                grant of the patent.''.</DELETED>
<DELETED>    (b) Conforming Amendments.--</DELETED>
        <DELETED>    (1) Section 282 of title 35, United States Code, 
        is amended in the fourth paragraph by striking ``156 of this 
        title'' and inserting ``154(b) or 156 of this 
        title''.</DELETED>
        <DELETED>    (2) Section 1295(a)(4)(C) of title 28, United 
        States Code, is amended by striking ``145 or 146'' and 
        inserting ``145, 146, or 154(b)''.</DELETED>

<DELETED>SEC. 303. CONTINUED EXAMINATION OF PATENT 
              APPLICATIONS.</DELETED>

<DELETED>    Section 132 of title 35, United States Code, is amended--
</DELETED>
        <DELETED>    (1) in the first sentence by striking ``Whenever'' 
        and inserting ``(a) Whenever''; and</DELETED>
        <DELETED>    (2) by adding at the end the following:</DELETED>
<DELETED>    ``(b) The Director shall prescribe regulations to provide 
for the continued examination of applications for patent at the request 
of the applicant. The Director may establish appropriate fees for such 
continued examination and shall provide a 50 percent reduction in such 
fees for small entities that qualify for reduced fees under section 
41(h)(1) of this title.''.</DELETED>

<DELETED>SEC. 304. TECHNICAL CLARIFICATION.</DELETED>

<DELETED>    Section 156(a) of title 35, United States Code, is amended 
in the matter preceding paragraph (1) by inserting ``, which shall 
include any patent term adjustment granted under section 154(b),'' 
after ``the original expiration date of the patent''.</DELETED>

<DELETED>SEC. 305. EFFECTIVE DATE.</DELETED>

<DELETED>    (a) Sections 302 and 304.--The amendments made by sections 
302 and 304 shall take effect on the date of the enactment of this Act 
and, except for a design patent application filed under chapter 16 of 
title 35, United States Code, shall apply to any application filed on 
or after the date of the enactment of this Act.</DELETED>
<DELETED>    (b) Section 303.--The amendments made by section 303 shall 
take effect 6 months after the date of the enactment of this 
Act.</DELETED>

  <DELETED>TITLE IV--UNITED STATES PUBLICATION OF PATENT APPLICATIONS 
                       PUBLISHED ABROAD</DELETED>

<DELETED>SEC. 401. SHORT TITLE.</DELETED>

<DELETED>    This title may be referred to as the ``Publication of 
Foreign Filed Applications Act''.</DELETED>

<DELETED>SEC. 402. PUBLICATION.</DELETED>

<DELETED>    (a) Publication.--Section 122 of title 35, United States 
Code, is amended to read as follows:</DELETED>
<DELETED>``Sec. 122. Confidential status of applications; publication 
              of patent applications</DELETED>
<DELETED>    ``(a) Confidentiality.--Except as provided in subsection 
(b), applications for patents shall be kept in confidence by the Patent 
and Trademark Office and no information concerning any such application 
shall be given without authority of the applicant or owner unless 
necessary to carry out the provisions of an Act of Congress or in such 
special circumstances as may be determined by the Director.</DELETED>
<DELETED>    ``(b) United States Publication of Applications Published 
Abroad.--</DELETED>
        <DELETED>    ``(1) In general.--(A) Subject to paragraph (2), 
        each application for patent, except applications for design 
        patents filed under chapter 16 and provisional applications 
        filed under section 111(b), shall be published, in accordance 
        with procedures determined by the Director, promptly upon the 
        expiration of a period of 18 months after the earliest filing 
        date for which a benefit is sought under this title. At the 
        request of the applicant, an application may be published 
        earlier than the end of such 18-month period.</DELETED>
        <DELETED>    ``(B) No information concerning published patent 
        applications shall be made available to the public except as 
        the Director determines.</DELETED>
        <DELETED>    ``(C) Pursuant to this title and notwithstanding 
        any other provision of law, a determination by the Director to 
        release or not to release information concerning a published 
        patent application shall be final and nonreviewable.</DELETED>
        <DELETED>    ``(2) Exceptions.--(A) An application that is no 
        longer pending shall not be published.</DELETED>
        <DELETED>    ``(B) An application that is subject to a secrecy 
        order under section 181 shall not be published.</DELETED>
        <DELETED>    ``(C)(i) If an applicant, upon filing, makes a 
        request that an application not be published pursuant to 
        paragraph (1), and states in such request that the invention 
        disclosed in the application has not been the subject of an 
        application filed in another country, or under a multilateral 
        international agreement, that requires publication of 
        applications 18 months after filing, the application shall not 
        be published as provided in paragraph (1).</DELETED>
        <DELETED>    ``(ii) An applicant may rescind a request made 
        under clause (i) at any time.</DELETED>
        <DELETED>    ``(iii) An applicant who has made a request under 
        clause (i) but who subsequently files, in a foreign country or 
        under a multilateral international agreement specified in 
        clause (i), an application directed to the invention disclosed 
        in the application filed in the Patent and Trademark Office, 
        shall notify the Director of such filing not later than 45 days 
        after the date of the filing of such foreign or international 
        application. A failure of the applicant to provide such notice 
        within the prescribed period shall result in the application 
        being regarded as abandoned, unless it is shown to the 
        satisfaction of the Director that the delay in submitting the 
        notice was unintentional.</DELETED>
        <DELETED>    ``(iv) If a notice is made pursuant to clause 
        (iii), or the applicant rescinds a request pursuant to clause 
        (ii), the Director shall publish the application on or as soon 
        as is practical after the date that is specified in clause 
        (i).</DELETED>
        <DELETED>    ``(v) If an applicant has filed applications in 
        one or more foreign countries, directly or through a 
        multilateral international agreement, and such foreign filed 
        applications corresponding to an application filed in the 
        Patent and Trademark Office or the description of the invention 
        in such foreign filed applications is less extensive than the 
        application or description of the invention in the application 
        filed in the Patent and Trademark Office, the applicant may 
        submit a redacted copy of the application filed in the Patent 
        and Trademark Office eliminating any part or description of the 
        invention in such application that is not also contained in any 
        of the corresponding applications filed in a foreign country. 
        The Director may only publish the redacted copy of the 
        application unless the redacted copy of the application is not 
        received within 16 months after the earliest effective filing 
        date for which a benefit is sought under this title. The 
        provisions of section 154(d) shall not apply to a claim if the 
        description of the invention published in the redacted 
        application filed under this clause with respect to the claim 
        does not enable a person skilled in the art to make and use the 
        subject matter of the claim.</DELETED>
<DELETED>    ``(c) Protest and Pre-Issuance Opposition.--The Director 
shall establish appropriate procedures to ensure that no protest or 
other form of pre-issuance opposition to the grant of a patent on an 
application may be initiated after publication of the application 
without the express written consent of the applicant.''.</DELETED>
<DELETED>    (b) Study by GAO.--</DELETED>
        <DELETED>    (1) In general.--The Comptroller General of the 
        United States shall conduct a study of applicants for patents 
        who file only in the United States during the 3-year period 
        beginning on the effective date of this title.</DELETED>
        <DELETED>    (2) Contents.--The study conducted under paragraph 
        (1) shall--</DELETED>
                <DELETED>    (A) consider the number of such applicants 
                for patent in relation to the number of applicants who 
                file in the United States and outside the United 
                States;</DELETED>
                <DELETED>    (B) examine how many domestic-only filers 
                request at the time of filing not to be 
                published;</DELETED>
                <DELETED>    (C) examine how many such filers rescind 
                that request or later choose to file abroad; 
                and</DELETED>
                <DELETED>    (D) examine the manner of entity seeking 
                an application and any correlation that may exist 
                between such manner and publication of patent 
                applications.</DELETED>
        <DELETED>    (3) Report to judiciary committees.--The 
        Comptroller General shall submit to the Committees on the 
        Judiciary of the House of Representatives and the Senate the 
        results of the study conducted under this subsection.</DELETED>

<DELETED>SEC. 403. TIME FOR CLAIMING BENEFIT OF EARLIER FILING 
              DATE.</DELETED>

<DELETED>    (a) In a Foreign Country.--Section 119(b) of title 35, 
United States Code, is amended to read as follows:</DELETED>
<DELETED>    ``(b)(1) No application for patent shall be entitled to 
this right of priority unless a claim, identifying the foreign 
application by specifying its application number, country, and the day, 
month, and year of its filing, is filed in the Patent and Trademark 
Office at such time during the pendency of the application as required 
by the Director.</DELETED>
<DELETED>    ``(2) The Director may consider the failure of the 
applicant to file a timely claim for priority as a waiver of any such 
claim. The Director may establish procedures, including the payment of 
a surcharge, to accept an unintentionally delayed claim under this 
section.</DELETED>
<DELETED>    ``(3) The Director may require a certified copy of the 
original foreign application, specification, and drawings upon which it 
is based, a translation if not in the English language, and such other 
information as the Director considers necessary. Any such certification 
shall be made by the foreign intellectual property authority in which 
the foreign application was filed and show the date of the application 
and of the filing of the specification and other papers.''.</DELETED>
<DELETED>    (b) In the United States.--Section 120 of title 35, United 
States Code, is amended by adding at the end the following: ``The 
Director may determine the time period during the pendency of the 
application within which an amendment containing the specific reference 
to the earlier filed application is submitted. The Director may 
consider the failure to submit such an amendment within that time 
period as a waiver of any benefit under this section. The Director may 
establish procedures, including the payment of a surcharge, to accept 
unintentionally late submissions of amendments under this 
section.''.</DELETED>

<DELETED>SEC. 404. PROVISIONAL RIGHTS.</DELETED>

<DELETED>    Section 154 of title 35, United States Code, is amended--
</DELETED>
        <DELETED>    (1) in the section caption by inserting ``; 
        provisional rights'' after ``patent''; and</DELETED>
        <DELETED>    (2) by adding at the end the following new 
        subsection:</DELETED>
<DELETED>    ``(d) Provisional Rights.--</DELETED>
        <DELETED>    ``(1) In general.--In addition to other rights 
        provided by this section, a patent shall include the right to 
        obtain a reasonable royalty from any person who, during the 
        period beginning on the date of publication of the application 
        for such patent pursuant to section 122(b), or in the case of 
        an international application filed under the treaty defined in 
        section 351(a) designating the United States under Article 
        21(2)(a) of such treaty, the date of publication of the 
        application, and ending on the date the patent is issued--
        </DELETED>
                <DELETED>    ``(A)(i) makes, uses, offers for sale, or 
                sells in the United States the invention as claimed in 
                the published patent application or imports such an 
                invention into the United States; or</DELETED>
                <DELETED>    ``(ii) if the invention as claimed in the 
                published patent application is a process, uses, offers 
                for sale, or sells in the United States or imports into 
                the United States products made by that process as 
                claimed in the published patent application; 
                and</DELETED>
                <DELETED>    ``(B) had actual notice of the published 
                patent application, and in a case in which the right 
                arising under this paragraph is based upon an 
                international application designating the United States 
                that is published in a language other than English, a 
                translation of the international application into the 
                English language.</DELETED>
        <DELETED>    ``(2) Right based on substantially identical 
        inventions.--The right under paragraph (1) to obtain a 
        reasonable royalty shall not be available under this subsection 
        unless the invention as claimed in the patent is substantially 
        identical to the invention as claimed in the published patent 
        application.</DELETED>
        <DELETED>    ``(3) time limitation on obtaining a reasonable 
        royalty.--The right under paragraph (1) to obtain a reasonable 
        royalty shall be available only in an action brought not later 
        than 6 years after the patent is issued. The right under 
        paragraph (1) to obtain a reasonable royalty shall not be 
        affected by the duration of the period described in paragraph 
        (1).</DELETED>
        <DELETED>    ``(4) Requirements for international 
        applications.--</DELETED>
                <DELETED>    ``(A) Effective date.--The right under 
                paragraph (1) to obtain a reasonable royalty based upon 
                the publication under the treaty defined in section 
                351(a) of an international application designating the 
                United States shall commence on the date on which the 
                Patent and Trademark Office receives a copy of the 
                publication under the treaty of the international 
                application, or, if the publication under the treaty of 
                the international application is in a language other 
                than English, on the date on which the Patent and 
                Trademark Office receives a translation of the 
                international application in the English 
                language.</DELETED>
                <DELETED>    ``(B) Copies.--The Director may require 
                the applicant to provide a copy of the international 
                application and a translation thereof.''.</DELETED>

<DELETED>SEC. 405. PRIOR ART EFFECT OF PUBLISHED 
              APPLICATIONS.</DELETED>

<DELETED>    Section 102(e) of title 35, United States Code, is amended 
to read as follows:</DELETED>
<DELETED>    ``(e) the invention was described in--</DELETED>
        <DELETED>    ``(1)(A) an application for patent, published 
        pursuant to section 122(b), by another filed in the United 
        States before the invention by the applicant for patent, except 
        that an international application filed under the treaty 
        defined in section 351(a) shall have the effect under this 
        subsection of a national application published under section 
        122(b) only if the international application designating the 
        United States was published under Article 21(2)(a) of such 
        treaty in the English language; or</DELETED>
        <DELETED>    ``(B) a patent granted on an application for 
        patent by another filed in the United States before the 
        invention by the applicant for patent, except that a patent 
        shall not be deemed filed in the United States for the purposes 
        of this subsection based on the filing of an international 
        application filed under the treaty defined in section 351(a); 
        or''.</DELETED>

<DELETED>SEC. 406. COST RECOVERY FOR PUBLICATION.</DELETED>

<DELETED>    The Director of the United States Patent and Trademark 
Office shall recover the cost of early publication required by the 
amendment made by section 402 by charging a separate publication fee 
after notice of allowance is given pursuant to section 151 of title 35, 
United States Code.</DELETED>

<DELETED>SEC. 407. CONFORMING AMENDMENTS.</DELETED>

<DELETED>    The following provisions of title 35, United States Code, 
are amended:</DELETED>
        <DELETED>    (1) Section 11 is amended in paragraph 1 of 
        subsection (a) by inserting ``and published applications for 
        patents'' after ``Patents''.</DELETED>
        <DELETED>    (2) Section 12 is amended--</DELETED>
                <DELETED>    (A) in the section caption by inserting 
                ``and applications'' after ``patents''; and</DELETED>
                <DELETED>    (B) by inserting ``and published 
                applications for patents'' after ``patents''.</DELETED>
        <DELETED>    (3) Section 13 is amended--</DELETED>
                <DELETED>    (A) in the section caption by inserting 
                ``and applications'' after ``patents''; and</DELETED>
                <DELETED>    (B) by inserting ``and published 
                applications for patents'' after ``patents''.</DELETED>
        <DELETED>    (4) The item relating to section 122 in the table 
        of sections for chapter 11 is amended by inserting ``; 
        publication of patent applications'' after 
        ``applications''.</DELETED>
        <DELETED>    (5) The item relating to section 154 in the table 
        of sections for chapter 14 is amended by inserting ``; 
        provisional rights'' after ``patent''.</DELETED>
        <DELETED>    (6) Section 181 is amended--</DELETED>
                <DELETED>    (A) in the first undesignated paragraph--
                </DELETED>
                        <DELETED>    (i) by inserting ``by the 
                        publication of an application or'' after 
                        ``disclosure''; and</DELETED>
                        <DELETED>    (ii) by inserting ``the 
                        publication of the application or'' after 
                        ``withhold'';</DELETED>
                <DELETED>    (B) in the second undesignated paragraph 
                by inserting ``by the publication of an application 
                or'' after ``disclosure of an invention'';</DELETED>
                <DELETED>    (C) in the third undesignated paragraph--
                </DELETED>
                        <DELETED>    (i) by inserting ``by the 
                        publication of the application or'' after 
                        ``disclosure of the invention''; and</DELETED>
                        <DELETED>    (ii) by inserting ``the 
                        publication of the application or'' after 
                        ``withhold''; and</DELETED>
                <DELETED>    (D) in the fourth undesignated paragraph 
                by inserting ``the publication of an application or'' 
                after ``and'' in the first sentence.</DELETED>
        <DELETED>    (7) Section 252 is amended in the first 
        undesignated paragraph by inserting ``substantially'' before 
        ``identical'' each place it appears.</DELETED>
        <DELETED>    (8) Section 284 is amended by adding at the end of 
        the second undesignated paragraph the following: ``Increased 
        damages under this paragraph shall not apply to provisional 
        rights under section 154(d) of this title.''.</DELETED>
        <DELETED>    (9) Section 374 is amended to read as 
        follows:</DELETED>
<DELETED>``Sec. 374. Publication of international application: 
              effect</DELETED>
<DELETED>    ``The publication under the treaty defined in section 
351(a) of this title of an international application designating the 
United States shall confer the same rights and shall have the same 
effect under this title as an application for patent published under 
section 122(b), except as provided in sections 102(e) and 
154(d).''.</DELETED>

<DELETED>SEC. 408. EFFECTIVE DATE.</DELETED>

<DELETED>    This title and the amendments made by this title, shall 
take effect on the date that is 1 year after the date of the enactment 
of this Act and shall apply to all applications filed under section 111 
of title 35, United States Code, on or after that date, and all 
applications complying with section 371 of title 35, United States 
Code, that resulted from international applications filed on or after 
that date. The amendments made by sections 404 and 405 shall apply to 
any such application voluntarily published by the applicant under 
procedures established under this title that is pending on the date 
that is 1 year after the date of the enactment of this Act. The 
amendment made by section 404 shall also apply to international 
applications designating the United States that are filed on or after 
the date that is 1 year after the date of the enactment of this 
Act.</DELETED>

         <DELETED>TITLE V--OPTIONAL INTER PARTES REEXAMINATION 
                          PROCEDURE</DELETED>

<DELETED>SEC. 501. SHORT TITLE.</DELETED>

<DELETED>    This title may be cited as the ``Optional Inter Partes 
Reexamination Procedure Act''.</DELETED>

<DELETED>SEC. 502. EX PARTE REEXAMINATION OF PATENTS.</DELETED>

<DELETED>    Chapter 30 of title 35, United States Code, is amended in 
the title by inserting ``EX PARTE'' before ``REEXAMINATION OF 
PATENTS''.</DELETED>

<DELETED>SEC. 503. DEFINITIONS.</DELETED>

<DELETED>    Section 100 of title 35, United States Code, is amended by 
adding at the end the following new subsection:</DELETED>
<DELETED>    ``(e) The term `third-party requester' means a person 
requesting ex parte reexamination under section 302 or inter partes 
reexamination under section 311 who is not the patent 
owner.''.</DELETED>

<DELETED>SEC. 504. OPTIONAL INTER PARTES REEXAMINATION 
              PROCEDURES.</DELETED>

<DELETED>    (a) In General.--Part 3 of title 35, United Stats Code, is 
amended by adding after chapter 30 the following new chapter:</DELETED>

      <DELETED>``CHAPTER 31--OPTIONAL INTER PARTES REEXAMINATION 
                          PROCEDURES</DELETED>

<DELETED>``Sec.
<DELETED>``311. Request for inter partes reexamination.
<DELETED>``312. Determination of issue by Director.
<DELETED>``313. Inter partes reexamination order by Director.
<DELETED>``314. Conduct of inter partes reexamination proceedings.
<DELETED>``315. Appeal.
<DELETED>``316. Certificate of patentability, unpatentability, and 
                            claim cancellation.
<DELETED>``317. Inter partes reexamination prohibited.
<DELETED>``318. Stay of litigation.

<DELETED>``Sec. 311. Request for inter partes reexamination</DELETED>
<DELETED>    ``(a) In General.--Any person at any time may file a 
request for inter partes reexamination by the Office of a patent on the 
basis of any prior art cited under the provisions of section 
301.</DELETED>
<DELETED>    ``(b) Requirements.--The request shall--</DELETED>
        <DELETED>    ``(1) be in writing, include the identity of the 
        real party in interest, and be accompanied by payment of an 
        inter partes reexamination fee established by the Director 
        under section 41; and</DELETED>
        <DELETED>    ``(2) set forth the pertinency and manner of 
        applying cited prior art to every claim for which reexamination 
        is requested.</DELETED>
<DELETED>    ``(c) Copy.--Unless the requesting person is the owner of 
the patent, the Director promptly shall send a copy of the request to 
the owner of record of the patent.</DELETED>
<DELETED>``Sec. 312. Determination of issue by Director</DELETED>
<DELETED>    ``(a) Reexamination.--Not later than 3 months after the 
filing of a request for inter partes reexamination under section 311, 
the Director shall determine whether a substantial new question of 
patentability affecting any claim of the patent concerned is raised by 
the request, with or without consideration of other patents or printed 
publications. On the Director's initiative, and at any time, the 
Director may determine whether a substantial new question of 
patentability is raised by patents and publications.</DELETED>
<DELETED>    ``(b) Record.--A record of the Director's determination 
under subsection (a) shall be placed in the official file of the 
patent, and a copy shall be promptly given or mailed to the owner of 
record of the patent and to the third-party requester, if 
any.</DELETED>
<DELETED>    ``(c) Final Decision.--A determination by the Director 
pursuant to subsection (a) shall be final and nonappealable. Upon a 
determination that no substantial new question of patentability has 
been raised, the Director may refund a portion of the inter partes 
reexamination fee required under section 311.</DELETED>
<DELETED>``Sec. 313. Inter partes reexamination order by 
              Director</DELETED>
<DELETED>    ``If, in a determination made under section 312(a), the 
Director finds that a substantial new question of patentability 
affecting a claim of a patent is raised, the determination shall 
include an order for inter partes reexamination of the patent for 
resolution of the question. The order may be accompanied by the initial 
action of the Patent and Trademark Office on the merits of the inter 
partes reexamination conducted in accordance with section 
314.</DELETED>
<DELETED>``Sec. 314. Conduct of inter partes reexamination 
              proceedings</DELETED>
<DELETED>    ``(a) In General.--Subject to subsection (b), 
reexamination shall be conducted according to the procedures 
established for initial examination under the provisions of sections 
132 and 133, except as provided for under this section. In any inter 
partes reexamination proceeding under this chapter, the patent owner 
shall be permitted to propose any amendment to the patent and a new 
claim or claims, except that no proposed amended or new claim enlarging 
the scope of the claims of the patent shall be permitted.</DELETED>
<DELETED>    ``(b) Response.--(1) This subsection shall apply to any 
inter partes reexamination proceeding in which the order for inter 
partes reexamination is based upon a request by a third-party 
requester.</DELETED>
<DELETED>    ``(2) With the exception of the inter partes reexamination 
request, any document filed by either the patent owner or the third-
party requester shall be served on the other party. In addition, the 
third-party requester shall receive a copy of any communication sent by 
the Office to the patent owner concerning the patent subject to the 
inter partes reexamination proceeding.</DELETED>
<DELETED>    ``(3) Each time that the patent owner files a response to 
an action on the merits from the Patent and Trademark Office, the 
third-party requester shall have one opportunity to file written 
comments addressing issues raised by the action of the Office or the 
patent owner's response thereto, if those written comments are received 
by the Office within 30 days after the date of service of the patent 
owner's response.</DELETED>
<DELETED>    ``(c) Special Dispatch.--Unless otherwise provided by the 
Director for good cause, all inter partes reexamination proceedings 
under this section, including any appeal to the Board of Patent Appeals 
and Interferences, shall be conducted with special dispatch within the 
Office.</DELETED>
<DELETED>``Sec. 315. Appeal</DELETED>
<DELETED>    ``(a) Patent Owner.--The patent owner involved in an inter 
partes reexamination proceeding under this chapter--</DELETED>
        <DELETED>    ``(1) may appeal under the provisions of section 
        134, and may appeal under the provisions of sections 141 
        through 144, with respect to any decision adverse to the 
        patentability of any original or proposed amended or new claim 
        of the patent; and</DELETED>
        <DELETED>    ``(2) may be a party to any appeal taken by a 
        third-party requester under subsection (b).</DELETED>
<DELETED>    ``(b) Third-Party Requester.--A third-party requester 
may--</DELETED>
        <DELETED>    ``(1) appeal under the provisions of section 134 
        with respect to any final decision favorable to the 
        patentability of any original or proposed amended or new claim 
        of the patent; or</DELETED>
        <DELETED>    ``(2) be a party to any appeal taken by the patent 
        owner under the provisions of section 134, subject to 
        subsection (c).</DELETED>
<DELETED>    ``(c) Civil Action.--A third-party requester whose request 
for an inter partes reexamination results in an order under section 313 
is estopped from asserting at a later time, in any civil action arising 
in whole or in part under section 1338 of title 28, the invalidity of 
any claim finally determined to be valid and patentable on any ground 
which the third-party requester raised or could have raised during the 
inter partes reexamination proceedings. This subsection does not 
prevent the assertion of invalidity based on newly discovered prior art 
unavailable to the third-party requester and the Patent and Trademark 
Office at the time of the inter partes reexamination 
proceedings.</DELETED>
<DELETED>``Sec. 316. Certificate of patentability, unpatentability, and 
              claim cancellation</DELETED>
<DELETED>    ``(a) In General.--In an inter partes reexamination 
proceeding under this chapter, when the time for appeal has expired or 
any appeal proceeding has terminated, the Director shall issue and 
publish a certificate canceling any claim of the patent finally 
determined to be unpatentable, confirming any claim of the patent 
determined to be patentable, and incorporating in the patent any 
proposed amended or new claim determined to be patentable.</DELETED>
<DELETED>    ``(b) Amended or New Claim.--Any proposed amended or new 
claim determined to be patentable and incorporated into a patent 
following an inter partes reexamination proceeding shall have the same 
effect as that specified in section 252 of this title for reissued 
patents on the right of any person who made, purchased, or used within 
the United States, or imported into the United States, anything 
patented by such proposed amended or new claim, or who made substantial 
preparation for the same, prior to issuance of a certificate under the 
provisions of subsection (a) of this section.</DELETED>
<DELETED>``Sec. 317. Inter partes reexamination prohibited</DELETED>
<DELETED>    ``(a) Order for Reexamination.--Notwithstanding any 
provision of this chapter, once an order for inter partes reexamination 
of a patent has been issued under section 313, neither the patent owner 
nor the third-party requester, if any, nor privies of either, may file 
a subsequent request for inter partes reexamination of the patent until 
an inter partes reexamination certificate is issued and published under 
section 316, unless authorized by the Director.</DELETED>
<DELETED>    ``(b) Final Decision.--Once a final decision has been 
entered against a party in a civil action arising in whole or in part 
under section 1338 of title 28 that the party has not sustained its 
burden of proving the invalidity of any patent claim in suit or if a 
final decision in an inter partes reexamination proceeding instituted 
by a third-party requester is favorable to the patentability of any 
original or proposed amended or new claim of the patent then neither 
that party nor its privies may thereafter request inter partes 
reexamination of any such patent claim on the basis of issues which 
that party or its privies raised or could have raised in such civil 
action or inter partes reexamination proceeding, and an inter partes 
reexamination requested by that party or its privies on the basis of 
such issues may not thereafter be maintained by the Office, 
notwithstanding any other provision of this chapter. This subsection 
does not prevent the assertion of invalidity based on newly discovered 
prior art unavailable to the third-party requester and the Patent and 
Trademark Office at the time of the inter partes reexamination 
proceedings.</DELETED>
<DELETED>``Sec. 318. Stay of litigation</DELETED>
<DELETED>    ``Once an order for inter partes reexamination of a patent 
has been issued under section 313, the patent owner may obtain a stay 
of any pending litigation which involves an issue of patentability of 
any claims of the patent which are the subject of the inter partes 
reexamination order, unless the court before which such litigation is 
pending determines that a stay would not serve the interests of 
justice.''.</DELETED>
<DELETED>    (b) Conforming Amendments.--The table of chapters for part 
III of title 35, United States Code, is amended by striking the item 
relating to chapter 30 and inserting the following:</DELETED>

<DELETED>``30. Prior Art Citations to Office and Ex Parte         301  
                            Reexamination of Patents.
<DELETED>``31. Optional Inter Partes Reexamination of            311''.
                            Patents.

<DELETED>SEC. 505. CONFORMING AMENDMENTS.</DELETED>

<DELETED>    (a) Patent Fees; Patent Search Systems.--Section 41(a)(7) 
of title 35, United States Code, is amended to read as 
follows:</DELETED>
        <DELETED>    ``(7) On filing each petition for the revival of 
        an unintentionally abandoned application for a patent, for the 
        unintentionally delayed payment of the fee for issuing each 
        patent, or for an unintentionally delayed response by the 
        patent owner in any reexamination proceeding, $1,210, unless 
        the petition is filed under section 133 or 151 of this title, 
        in which case the fee shall be $110.''.</DELETED>
<DELETED>    (b) Appeal to the Board of Patent Appeals and 
Interferences.--Section 134 of title 35, United States Code, is amended 
to read as follows:</DELETED>
<DELETED>``Sec. 134. Appeal to the Board of Patent Appeals and 
              Interferences</DELETED>
<DELETED>    ``(a) Patent Applicant.--An applicant for a patent, any of 
whose claims has been twice rejected, may appeal from the decision of 
the primary examiner to the Board of Patent Appeals and Interferences, 
having once paid the fee for such appeal.</DELETED>
<DELETED>    ``(b) Patent Owner.--A patent owner in any reexamination 
proceeding may appeal from the final rejection of any claim by the 
primary examiner to the Board of Patent Appeals and Interferences, 
having once paid the fee for such appeal.</DELETED>
<DELETED>    ``(c) Third-Party.--A third-party requester in an inter 
partes proceeding may appeal to the Board of Patent Appeals and 
Interferences from the final decision of the primary examiner favorable 
to the patentability of any original or proposed amended or new claim 
of a patent, having once paid the fee for such appeal. The third-party 
requester may not appeal the decision of the Board of Patent Appeals 
and Interferences.''.</DELETED>
<DELETED>    (c) Appeal to Court of Appeals for the Federal Circuit.--
Section 141 of title 35, United States Code, is amended by adding the 
following after the second sentence: ``A patent owner in any 
reexamination proceeding dissatisfied with the final decision in an 
appeal to the Board of Patent Appeals and Interferences under section 
134 may appeal the decision only to the United States Court of Appeals 
for the Federal Circuit.''.</DELETED>
<DELETED>    (d) Proceedings on Appeal.--Section 143 of title 35, 
United States Code, is amended by amending the third sentence to read 
as follows: ``In any reexamination cases, the Director shall submit to 
the court in writing the grounds for the decision of the Patent and 
Trademark Office, addressing all the issues involved in the 
appeal.''.</DELETED>
<DELETED>    (e) Civil Action To Obtain Patent.--Section 145 of title 
35, United States Code, is amended in the first sentence by inserting 
``(a)'' after ``section 134''.</DELETED>

<DELETED>SEC. 506. REPORT TO CONGRESS.</DELETED>

<DELETED>    Not later than 5 years after the effective date of this 
title, the Director of the United States Patent and Trademark Office 
shall submit to the Congress a report evaluating whether the inter 
partes reexamination proceedings established under the amendments made 
by this title are inequitable to any of the parties in interest and, if 
so, the report shall contain recommendations for changes to the 
amendments made by this title to remove such inequity.</DELETED>

<DELETED>SEC. 507. ESTOPPEL EFFECT OF REEXAMINATION.</DELETED>

<DELETED>    Any party who requests an inter partes reexamination under 
section 311 of title 35, United States Code, is estopped from 
challenging at a later time, in any civil action, any fact determined 
during the process of such reexamination, except with respect to a fact 
determination later proved to be erroneous based on information 
unavailable at the time of the inter partes reexamination decision. If 
this section is held to be unenforceable, the enforceability of the 
rest of this title or of this Act shall not be denied as a 
result.</DELETED>

<DELETED>SEC. 508. EFFECTIVE DATE.</DELETED>

<DELETED>    This title and the amendments made by this title shall 
take effect on the date that is 1 year after the date of the enactment 
of this Act and shall apply to inter partes reexamination requests 
filed on or after such date.</DELETED>

        <DELETED>TITLE VI--PATENT AND TRADEMARK OFFICE</DELETED>

<DELETED>SEC. 601. SHORT TITLE.</DELETED>

<DELETED>    This title may be cited as the ``Patent and Trademark 
Office Efficiency Act''.</DELETED>

        <DELETED>Subtitle A--United States Patent and Trademark 
                            Office</DELETED>

<DELETED>SEC. 611. ESTABLISHMENT OF PATENT AND TRADEMARK 
              OFFICE.</DELETED>

<DELETED>    Section 1 of title 35, United States Code, is amended to 
read as follows:</DELETED>
<DELETED>``Sec. 1. Establishment</DELETED>
<DELETED>    ``(a) Establishment.--The United States Patent and 
Trademark Office is established as an agency of the United States, 
within the Department of Commerce. In carrying out its functions, the 
United States Patent and Trademark Office shall be subject to the 
policy direction of the Secretary of Commerce, but otherwise shall 
retain responsibility for decisions regarding the management and 
administration of its operations and shall exercise independent control 
of its budget allocations and expenditures, personnel decisions and 
processes, procurements, and other administrative and management 
functions in accordance with this title and applicable provisions of 
law. Those operations designed to grant and issue patents and those 
operations which are designed to facilitate the registration of 
trademarks shall be treated as separate operating units within the 
Office.</DELETED>
<DELETED>    ``(b) Offices.--The United States Patent and Trademark 
Office shall maintain its principal office in the metropolitan 
Washington, DC, area, for the service of process and papers and for the 
purpose of carrying out its functions. The United States Patent and 
Trademark Office shall be deemed, for purposes of venue in civil 
actions, to be a resident of the district in which its principal office 
is located, except where jurisdiction is otherwise provided by law. The 
United States Patent and Trademark Office may establish satellite 
offices in such other places in the United States as it considers 
necessary and appropriate in the conduct of its business.</DELETED>
<DELETED>    ``(c) Reference.--For purposes of this title, the United 
States Patent and Trademark Office shall also be referred to as the 
`Office' and the `Patent and Trademark Office'.''.</DELETED>

<DELETED>SEC. 612. POWERS AND DUTIES.</DELETED>

<DELETED>    Section 2 of title 35, United States Code, is amended to 
read as follows:</DELETED>
<DELETED>``Sec. 2. Powers and duties</DELETED>
<DELETED>    ``(a) In General.--The United States Patent and Trademark 
Office, subject to the policy direction of the Secretary of Commerce--
</DELETED>
        <DELETED>    ``(1) shall be responsible for the granting and 
        issuing of patents and the registration of trademarks; 
        and</DELETED>
        <DELETED>    ``(2) shall be responsible for disseminating to 
        the public information with respect to patents and 
        trademarks.</DELETED>
<DELETED>    ``(b) Specific Powers.--The Office--</DELETED>
        <DELETED>    ``(1) shall adopt and use a seal of the Office, 
        which shall be judicially noticed and with which letters 
        patent, certificates of trademark registrations, and papers 
        issued by the Office shall be authenticated;</DELETED>
        <DELETED>    ``(2) may establish regulations, not inconsistent 
        with law, which--</DELETED>
                <DELETED>    ``(A) shall govern the conduct of 
                proceedings in the Office;</DELETED>
                <DELETED>    ``(B) shall be made in accordance with 
                section 553 of title 5;</DELETED>
                <DELETED>    ``(C) shall facilitate and expedite the 
                processing of patent applications, particularly those 
                which can be filed, stored, processed, searched, and 
                retrieved electronically, subject to the provisions of 
                section 122 relating to the confidential status of 
                applications;</DELETED>
                <DELETED>    ``(D) may govern the recognition and 
                conduct of agents, attorneys, or other persons 
                representing applicants or other parties before the 
                Office, and may require them, before being recognized 
                as representatives of applicants or other persons, to 
                show that they are of good moral character and 
                reputation and are possessed of the necessary 
                qualifications to render to applicants or other persons 
                valuable service, advice, and assistance in the 
                presentation or prosecution of their applications or 
                other business before the Office;</DELETED>
                <DELETED>    ``(E) shall recognize the public interest 
                in continuing to safeguard broad access to the United 
                States patent system through the reduced fee structure 
                for small entities under section 41(h)(1) of this 
                title; and</DELETED>
                <DELETED>    ``(F) provide for the development of a 
                performance-based process that includes quantitative 
                and qualitative measures and standards for evaluating 
                cost-effectiveness and is consistent with the 
                principles of impartiality and 
                competitiveness;</DELETED>
        <DELETED>    ``(3) may acquire, construct, purchase, lease, 
        hold, manage, operate, improve, alter, and renovate any real, 
        personal, or mixed property, or any interest therein, as it 
        considers necessary to carry out its functions;</DELETED>
        <DELETED>    ``(4)(A) may make such purchases, contracts for 
        the construction, maintenance, or management and operation of 
        facilities, and contracts for supplies or services, without 
        regard to the provisions of the Federal Property and 
        Administrative Services Act of 1949 (40 U.S.C. 471 et seq.), 
        the Public Buildings Act (40 U.S.C. 601 et seq.), and the 
        Stewart B. McKinney Homeless Assistance Act (42 U.S.C. 11301 et 
        seq.); and</DELETED>
        <DELETED>    ``(B) may enter into and perform such purchases 
        and contracts for printing services, including the process of 
        composition, platemaking, presswork, silk screen processes, 
        binding, microform, and the products of such processes, as it 
        considers necessary to carry out the functions of the Office, 
        without regard to sections 501 through 517 and 1101 through 
        1123 of title 44, United States Code;</DELETED>
        <DELETED>    ``(5) may use, with their consent, services, 
        equipment, personnel, and facilities of other departments, 
        agencies, and instrumentalities of the Federal Government, on a 
        reimbursable basis, and cooperate with such other departments, 
        agencies, and instrumentalities in the establishment and use of 
        services, equipment, and facilities of the Office;</DELETED>
        <DELETED>    ``(6) may, when the Director determines that it is 
        practicable, efficient, and cost-effective to do so, use, with 
        the consent of the United States and the agency, 
        instrumentality, patent and trademark office, or international 
        organization concerned, the services, records, facilities, or 
        personnel of any State or local government agency or 
        instrumentality or foreign patent and trademark office or 
        international organization to perform functions on its 
        behalf;</DELETED>
        <DELETED>    ``(7) may retain and use all of its revenues and 
        receipts, including revenues from the sale, lease, or disposal 
        of any real, personal, or mixed property, or any interest 
        therein, of the Office;</DELETED>
        <DELETED>    ``(8) shall advise the President, through the 
        Secretary of Commerce, on national and certain international 
        intellectual property policy issues;</DELETED>
        <DELETED>    ``(9) shall advise Federal departments and 
        agencies on matters of intellectual property policy in the 
        United States and intellectual property protection in other 
        countries;</DELETED>
        <DELETED>    ``(10) shall provide guidance, as appropriate, 
        with respect to proposals by agencies to assist foreign 
        governments and international intergovernmental organizations 
        on matters of intellectual property protection;</DELETED>
        <DELETED>    ``(11) may conduct programs, studies, or exchanges 
        of items or services regarding domestic and international 
        intellectual property law and the effectiveness of intellectual 
        property protection domestically and throughout the 
        world;</DELETED>
        <DELETED>    ``(12)(A) shall advise the Secretary of Commerce 
        on programs and studies relating to intellectual property 
        policy that are conducted, or authorized to be conducted, 
        cooperatively with foreign intellectual property offices and 
        international intergovernmental organizations; and</DELETED>
        <DELETED>    ``(B) may conduct programs and studies described 
        in subparagraph (A); and</DELETED>
        <DELETED>    ``(13)(A) in coordination with the Department of 
        State, may conduct programs and studies cooperatively with 
        foreign intellectual property offices and international 
        intergovernmental organizations; and</DELETED>
        <DELETED>    ``(B) with the concurrence of the Secretary of 
        State, may authorize the transfer of not to exceed $100,000 in 
        any year to the Department of State for the purpose of making 
        special payments to international intergovernmental 
        organizations for studies and programs for advancing 
        international cooperation concerning patents, trademarks, and 
        other matters.</DELETED>
<DELETED>    ``(c) Clarification of Specific Powers.--(1) The special 
payments under subsection (b)(13)(B) shall be in addition to any other 
payments or contributions to international organizations described in 
subsection (b)(13)(B) and shall not be subject to any limitations 
imposed by law on the amounts of such other payments or contributions 
by the United States Government.</DELETED>
<DELETED>    ``(2) Nothing in subsection (b) shall derogate from the 
duties of the Secretary of State or from the duties of the United 
States Trade Representative as set forth in section 141 of the Trade 
Act of 1974 (19 U.S.C. 2171).</DELETED>
<DELETED>    ``(3) Nothing in subsection (b) shall derogate from the 
duties and functions of the Register of Copyrights or otherwise alter 
current authorities relating to copyright matters.</DELETED>
<DELETED>    ``(4) In exercising the Director's powers under paragraphs 
(3) and (4)(A) of subsection (b), the Director shall consult with the 
Administrator of General Services.</DELETED>
<DELETED>    ``(d) Construction.--Nothing in this section shall be 
construed to nullify, void, cancel, or interrupt any pending request-
for-proposal let or contract issued by the General Services 
Administration for the specific purpose of relocating or leasing space 
to the United States Patent and Trademark Office.''.</DELETED>

<DELETED>SEC. 613. ORGANIZATION AND MANAGEMENT.</DELETED>

<DELETED>    Section 3 of title 35, United States Code, is amended to 
read as follows:</DELETED>
<DELETED>``Sec. 3. Officers and employees</DELETED>
<DELETED>    ``(a) Under Secretary and Director.--</DELETED>
        <DELETED>    ``(1) In general.--The powers and duties of the 
        United States Patent and Trademark Office shall be vested in an 
        Under Secretary of Commerce for Intellectual Property and 
        Director of the United States Patent and Trademark Office (in 
        this title referred to as the `Director'), who shall be a 
        citizen of the United States and who shall be appointed by the 
        President, by and with the advice and consent of the Senate. 
        The Director shall be a person who has a professional 
        background and experience in patent or trademark law.</DELETED>
        <DELETED>    ``(2) Duties.--</DELETED>
                <DELETED>    ``(A) In general.--The Director shall be 
                responsible for providing policy direction and 
                management supervision for the Office and for the 
                issuance of patents and the registration of trademarks. 
                The Director shall perform these duties in a fair, 
                impartial, and equitable manner.</DELETED>
                <DELETED>    ``(B) Consulting with the public advisory 
                committees.--The Director shall consult with the Patent 
                Public Advisory Committee established in section 5 on a 
                regular basis on matters relating to the patent 
                operations of the Office, shall consult with the 
                Trademark Public Advisory Committee established in 
                section 5 on a regular basis on matters relating to the 
                trademark operations of the Office, and shall consult 
                with the respective Public Advisory Committee before 
                submitting budgetary proposals to the Office of 
                Management and Budget or changing or proposing to 
                change patent or trademark user fees or patent or 
                trademark regulations which are subject to the 
                requirement to provide notice and opportunity for 
                public comment pursuant to section 553 of title 5, as 
                the case may be.</DELETED>
        <DELETED>    ``(3) Oath.--The Director shall, before taking 
        office, take an oath to discharge faithfully the duties of the 
        Office.</DELETED>
        <DELETED>    ``(4) Removal.--The Director may be removed from 
        office by the President. The President shall provide 
        notification of any such removal to both Houses of 
        Congress.</DELETED>
<DELETED>    ``(b) Officers and Employees of the Office.--</DELETED>
        <DELETED>    ``(1) Deputy under secretary and deputy 
        director.--The Secretary of Commerce, upon nomination by the 
        Director, shall appoint a Deputy Under Secretary of Commerce 
        for Intellectual Property and Deputy Director of the United 
        States Patent and Trademark Office who shall be vested with the 
        authority to act in the capacity of the Director in the event 
        of the absence or incapacity of the Director. The Deputy 
        Director shall be a citizen of the United States who has a 
        professional background and experience in patent or trademark 
        law.</DELETED>
        <DELETED>    ``(2) Commissioners.--</DELETED>
                <DELETED>    ``(A) Appointment and duties.--The 
                Secretary of Commerce shall appoint a Commissioner for 
                Patents and a Commissioner for Trademarks, without 
                regard to chapter 33, 51, or 53 of title 5. The 
                Commissioner for Patents shall be a citizen of the 
                United States with demonstrated management ability and 
                professional background and experience in patent law 
                and serve for a term of 5 years. The Commissioner for 
                Trademarks shall be a citizen of the United States with 
                demonstrated management ability and professional 
                background and experience in trademark law and serve 
                for a term of 5 years. The Commissioner for Patents and 
                the Commissioner for Trademarks shall serve as the 
                chief operating officers for the operations of the 
                Office relating to patents and trademarks, 
                respectively, and shall be responsible for the 
                management and direction of all aspects of the 
                activities of the Office that affect the administration 
                of patent and trademark operations, respectively. The 
                Secretary may reappoint a Commissioner to subsequent 
                terms of 5 years as long as the performance of the 
                Commissioner as set forth in the performance agreement 
                in subparagraph (B) is satisfactory.</DELETED>
                <DELETED>    ``(B) Salary and performance agreement.--
                The Commissioners shall be paid an annual rate of basic 
                pay not to exceed the maximum rate of basic pay for the 
                Senior Executive Service established under section 5382 
                of title 5, including any applicable locality-based 
                comparability payment that may be authorized under 
                section 5304(h)(2)(C) of title 5. The compensation of 
                the Commissioners shall be considered, for purposes of 
                section 207(c)(2)(A) of title 18, to be the equivalent 
                of that described under clause (ii) of section 
                207(c)(2)(A) of title 18. In addition, the 
                Commissioners may receive a bonus in an amount of up 
                to, but not in excess of, 50 percent of the 
                Commissioner's annual rate of basic pay, based upon an 
                evaluation by the Secretary of Commerce, acting through 
                the Director, of the Commissioners' performance as 
                defined in an annual performance agreement between the 
                Commissioners and the Secretary. The annual performance 
                agreements shall incorporate measurable organization 
                and individual goals in key operational areas as 
                delineated in an annual performance plan agreed to by 
                the Commissioners and the Secretary. Payment of a bonus 
                under this subparagraph may be made to the 
                Commissioners only to the extent that such payment does 
                not cause the Commissioners' total aggregate 
                compensation in a calendar year to equal or exceed the 
                amount of the salary of the Vice President under 
                section 104 of title 3, United States Code.</DELETED>
                <DELETED>    ``(C) Removal.--The Commissioners may be 
                removed from office by the Secretary for misconduct or 
                nonsatisfactory performance under the performance 
                agreement described in subparagraph (B), without regard 
                to the provisions of title 5. The Secretary shall 
                provide notification of any such removal to both Houses 
                of Congress.</DELETED>
        <DELETED>    ``(3) Other officers and employees.--The Director 
        shall--</DELETED>
                <DELETED>    ``(A) appoint such officers, employees 
                (including attorneys), and agents of the Office as the 
                Director considers necessary to carry out the functions 
                of the Office; and</DELETED>
                <DELETED>    ``(B) define the title, authority, and 
                duties of such officers and employees and delegate to 
                them such of the powers vested in the Office as the 
                Director may determine.</DELETED>
        <DELETED>The Office shall not be subject to any 
        administratively or statutorily imposed limitation on positions 
        or personnel, and no positions or personnel of the Office shall 
        be taken into account for purposes of applying any such 
        limitation.</DELETED>
        <DELETED>    ``(4) Training of examiners.--The Office shall 
        submit to the Congress a proposal to provide an incentive 
        program to retain as employees patent and trademark examiners 
        of the primary examiner grade or higher who are eligible for 
        retirement, for the sole purpose of training patent and 
        trademark examiners.</DELETED>
<DELETED>    ``(c) Continued Applicability of Title 5.--Officers and 
employees of the Office shall be subject to the provisions of title 5 
relating to Federal employees.</DELETED>
<DELETED>    ``(d) Adoption of Existing Labor Agreements.--The Office 
shall adopt all labor agreements which are in effect, as of the day 
before the effective date of the Patent and Trademark Office Efficiency 
Act, with respect to such Office (as then in effect).</DELETED>
<DELETED>    ``(e) Carryover of Personnel.--</DELETED>
        <DELETED>    ``(1) From pto.--Effective as of the effective 
        date of the Patent and Trademark Office Efficiency Act, all 
        officers and employees of the Patent and Trademark Office on 
        the day before such effective date shall become officers and 
        employees of the Office, without a break in service.</DELETED>
        <DELETED>    ``(2) Other personnel.--Any individual who, on the 
        day before the effective date of the Patent and Trademark 
        Office Efficiency Act, is an officer or employee of the 
        Department of Commerce (other than an officer or employee under 
        paragraph (1)) shall be transferred to the Office, as necessary 
        to carry out the purposes of this Act, if--</DELETED>
                <DELETED>    ``(A) such individual serves in a position 
                for which a major function is the performance of work 
                reimbursed by the Patent and Trademark Office, as 
                determined by the Secretary of Commerce;</DELETED>
                <DELETED>    ``(B) such individual serves in a position 
                that performed work in support of the Patent and 
                Trademark Office during at least half of the 
                incumbent's work time, as determined by the Secretary 
                of Commerce; or</DELETED>
                <DELETED>    ``(C) such transfer would be in the 
                interest of the Office, as determined by the Secretary 
                of Commerce in consultation with the 
                Director.</DELETED>
        <DELETED>Any transfer under this paragraph shall be effective 
        as of the same effective date as referred to in paragraph (1), 
        and shall be made without a break in service.</DELETED>
<DELETED>    ``(f) Transition Provisions.--</DELETED>
        <DELETED>    ``(1) Interim appointment of director.--On or 
        after the effective date of the Patent and Trademark Office 
        Efficiency Act, the President shall appoint an individual to 
        serve as the Director until the date on which a Director 
        qualifies under subsection (a). The President shall not make 
        more than one such appointment under this subsection.</DELETED>
        <DELETED>    ``(2) Continuation in office of certain 
        officers.--(A) The individual serving as the Assistant 
        Commissioner for Patents on the day before the effective date 
        of the Patent and Trademark Office Efficiency Act may serve as 
        the Commissioner for Patents until the date on which a 
        Commissioner for Patents is appointed under subsection 
        (b).</DELETED>
        <DELETED>    ``(B) The individual serving as the Assistant 
        Commissioner for Trademarks on the day before the effective 
        date of the Patent and Trademark Office Efficiency Act may 
        serve as the Commissioner for Trademarks until the date on 
        which a Commissioner for Trademarks is appointed under 
        subsection (b).''.</DELETED>

<DELETED>SEC. 614. PUBLIC ADVISORY COMMITTEES.</DELETED>

<DELETED>    Chapter 1 of part I of title 35, United States Code, is 
amended by inserting after section 4 the following:</DELETED>
<DELETED>``Sec. 5. Patent and Trademark Office Public Advisory 
              Committees</DELETED>
<DELETED>    ``(a) Establishment of Public Advisory Committees.--
</DELETED>
        <DELETED>    ``(1) Appointment.--The United States Patent and 
        Trademark Office shall have a Patent Public Advisory Committee 
        and a Trademark Public Advisory Committee, each of which shall 
        have nine voting members who shall be appointed by the 
        Secretary of Commerce and serve at the pleasure of the 
        Secretary of Commerce. Members of each Public Advisory 
        Committee shall be appointed for a term of 3 years, except that 
        of the members first appointed, three shall be appointed for a 
        term of 1 year, and three shall be appointed for a term of 2 
        years. In making appointments to each Committee, the Secretary 
        of Commerce shall consider the risk of loss of competitive 
        advantage in international commerce or other harm to United 
        States companies as a result of such appointments.</DELETED>
        <DELETED>    ``(2) Chair.--The Secretary shall designate a 
        chair of each Advisory Committee, whose term as chair shall be 
        for 3 years.</DELETED>
        <DELETED>    ``(3) Timing of appointments.--Initial 
        appointments to each Advisory Committee shall be made within 3 
        months after the effective date of the Patent and Trademark 
        Office Efficiency Act. Vacancies shall be filled within 3 
        months after they occur.</DELETED>
<DELETED>    ``(b) Basis for Appointments.--Members of each Advisory 
Committee--</DELETED>
        <DELETED>    ``(1) shall be citizens of the United States who 
        shall be chosen so as to represent the interests of diverse 
        users of the United States Patent and Trademark Office with 
        respect to patents, in the case of the Patent Public Advisory 
        Committee, and with respect to trademarks, in the case of the 
        Trademark Public Advisory Committee;</DELETED>
        <DELETED>    ``(2) shall include members who represent small 
        and large entity applicants located in the United States in 
        proportion to the number of applications filed by such 
        applicants, but in no case shall members who represent small 
        entity patent applicants, including small business concerns, 
        independent inventors, and nonprofit organizations, constitute 
        less than 25 percent of the members of the Patent Public 
        Advisory Committee, and such members shall include at least one 
        independent inventor; and</DELETED>
        <DELETED>    ``(3) shall include individuals with substantial 
        background and achievement in finance, management, labor 
        relations, science, technology, and office 
        automation.</DELETED>
<DELETED>In addition to the voting members, each Advisory Committee 
shall include a representative of each labor organization recognized by 
the United States Patent and Trademark Office. Such representatives 
shall be nonvoting members of the Advisory Committee to which they are 
appointed.</DELETED>
<DELETED>    ``(c) Meetings.--Each Advisory Committee shall meet at the 
call of the chair to consider an agenda set by the chair.</DELETED>
<DELETED>    ``(d) Duties.--Each Advisory Committee shall--</DELETED>
        <DELETED>    ``(1) review the policies, goals, performance, 
        budget, and user fees of the United States Patent and Trademark 
        Office with respect to patents, in the case of the Patent 
        Public Advisory Committee, and with respect to Trademarks, in 
        the case of the Trademark Public Advisory Committee, and advise 
        the Director on these matters;</DELETED>
        <DELETED>    ``(2) within 60 days after the end of each fiscal 
        year--</DELETED>
                <DELETED>    ``(A) prepare an annual report on the 
                matters referred to in paragraph (1);</DELETED>
                <DELETED>    ``(B) transmit the report to the Secretary 
                of Commerce, the President, and the Committees on the 
                Judiciary of the Senate and the House of 
                Representatives; and</DELETED>
                <DELETED>    ``(C) publish the report in the Official 
                Gazette of the United States Patent and Trademark 
                Office.</DELETED>
<DELETED>    ``(e) Compensation.--Each member of each Advisory 
Committee shall be compensated for each day (including travel time) 
during which such member is attending meetings or conferences of that 
Advisory Committee or otherwise engaged in the business of that 
Advisory Committee, at the rate which is the daily equivalent of the 
annual rate of basic pay in effect for level III of the Executive 
Schedule under section 5314 of title 5. While away from such member's 
home or regular place of business such member shall be allowed travel 
expenses, including per diem in lieu of subsistence, as authorized by 
section 5703 of title 5, United States Code.</DELETED>
<DELETED>    ``(f) Access to Information.--Members of each Advisory 
Committee shall be provided access to records and information in the 
United States Patent and Trademark Office, except for personnel or 
other privileged information and information concerning patent 
applications required to be kept in confidence by section 
122.</DELETED>
<DELETED>    ``(g) Applicability of Certain Ethics Laws.--Members of 
each Advisory Committee shall be special Government employees within 
the meaning of section 202 of title 18, United States Code.</DELETED>
<DELETED>    ``(h) Inapplicability of Federal Advisory Committee Act.--
The Federal Advisory Committee Act (5 U.S.C. App.) shall not apply to 
each Advisory Committee.</DELETED>
<DELETED>    ``(i) Open Meetings.--The meetings of each Advisory 
Committee shall be open to the public, except that each Advisory 
Committee may by majority vote meet in executive session when 
considering personnel or other confidential information.''.</DELETED>

<DELETED>SEC. 615. PATENT AND TRADEMARK OFFICE FUNDING.</DELETED>

<DELETED>    Section 42(c) of title 35, United States Code, is amended 
in the second sentence--</DELETED>
        <DELETED>    (1) by striking ``Fees available'' and inserting 
        ``All fees available''; and</DELETED>
        <DELETED>    (2) by striking ``may'' and inserting 
        ``shall''.</DELETED>

<DELETED>SEC. 616. CONFORMING AMENDMENTS.</DELETED>

<DELETED>    (a) Duties.--Chapter 1 of title 35, United States Code, is 
amended by striking section 6.</DELETED>
<DELETED>    (b) Regulations for Agents and Attorneys.--Section 31 of 
title 35, United States Code, and the item relating to such section in 
the table of sections for chapter 3 of title 35, United States Code, 
are repealed.</DELETED>
<DELETED>    (c) Suspension or Exclusion From Practice.--Section 32 of 
title 35, United States Code, is amended by striking ``31'' and 
inserting ``2(b)(2)(D)''.</DELETED>

<DELETED>SEC. 617. TRADEMARK TRIAL AND APPEAL BOARD.</DELETED>

<DELETED>    Section 17 of the Act of July 5, 1946 (commonly referred 
to as the ``Trademark Act of 1946'') (15 U.S.C. 1067) is amended to 
read as follows:</DELETED>
<DELETED>    ``Sec. 17. (a) In every case of interference, opposition 
to registration, application to register as a lawful concurrent user, 
or application to cancel the registration of a mark, the Director shall 
give notice to all parties and shall direct a Trademark Trial and 
Appeal Board to determine and decide the respective rights of 
registration.</DELETED>
<DELETED>    ``(b) The Trademark Trial and Appeal Board shall include 
the Director, the Commissioner for Patents, the Commissioner for 
Trademarks, and administrative trademark judges who are appointed by 
the Director.''.</DELETED>

<DELETED>SEC. 618. BOARD OF PATENT APPEALS AND INTERFERENCES.</DELETED>

<DELETED>    Chapter 1 of title 35, United States Code, is amended--
</DELETED>
        <DELETED>    (1) by striking section 7 and redesignating 
        sections 8 through 14 as sections 7 through 13, respectively; 
        and</DELETED>
        <DELETED>    (2) by inserting after section 5 the 
        following:</DELETED>
<DELETED>``Sec. 6. Board of Patent Appeals and Interferences</DELETED>
<DELETED>    ``(a) Establishment and Composition.--There shall be in 
the United States Patent and Trademark Office a Board of Patent Appeals 
and Interferences. The Director, the Commissioner for Patents, the 
Commissioner for Trademarks, and the administrative patent judges shall 
constitute the Board. The administrative patent judges shall be persons 
of competent legal knowledge and scientific ability who are appointed 
by the Director.</DELETED>
<DELETED>    ``(b) Duties.--The Board of Patent Appeals and 
Interferences shall, on written appeal of an applicant, review adverse 
decisions of examiners upon applications for patents and shall 
determine priority and patentability of invention in interferences 
declared under section 135(a). Each appeal and interference shall be 
heard by at least 3 members of the Board, who shall be designated by 
the Director. Only the Board of Patent Appeals and Interferences may 
grant rehearings.''.</DELETED>

<DELETED>SEC. 619. ANNUAL REPORT OF DIRECTOR.</DELETED>

<DELETED>    Section 13 of title 35, United States Code, as 
redesignated by section 618 of this Act, is amended to read as 
follows:</DELETED>
<DELETED>``Sec. 13. Annual report to Congress</DELETED>
<DELETED>    ``The Director shall report to the Congress, not later 
than 180 days after the end of each fiscal year, the moneys received 
and expended by the Office, the purposes for which the moneys were 
spent, the quality and quantity of the work of the Office, the nature 
of training provided to examiners, the evaluation of the Commissioner 
of Patents and the Commissioner of Trademarks by the Secretary of 
Commerce, the compensation of the Commissioners, and other information 
relating to the Office.''.</DELETED>

<DELETED>SEC. 620. SUSPENSION OR EXCLUSION FROM PRACTICE.</DELETED>

<DELETED>    Section 32 of title 35, United States Code, is amended by 
inserting before the last sentence the following: ``The Director shall 
have the discretion to designate any attorney who is an officer or 
employee of the United States Patent and Trademark Office to conduct 
the hearing required by this section.''.</DELETED>

<DELETED>SEC. 621. PAY OF DIRECTOR AND DEPUTY DIRECTOR.</DELETED>

<DELETED>    (a) Pay of Director.--Section 5314 of title 5, United 
States Code, is amended by striking:</DELETED>
        <DELETED>    ``Assistant Secretary of Commerce and Commissioner 
        of Patents and Trademarks.''.</DELETED>
<DELETED>and inserting:</DELETED>
        <DELETED>    ``Under Secretary of Commerce for Intellectual 
        Property and Director of the United States Patent and Trademark 
        Office.''.</DELETED>
<DELETED>    (b) Pay of Deputy Director.--Section 5315 of title 5, 
United States Code, is amended by adding at the end the 
following:</DELETED>
        <DELETED>    ``Deputy Under Secretary of Commerce for 
        Intellectual Property and Deputy Director of the United States 
        Patent and Trademark Office.''.</DELETED>

<DELETED>SEC. 622. STUDY ON ALTERNATIVE FEE STRUCTURES.</DELETED>

<DELETED>    The Under Secretary of Commerce for Intellectual Property 
and Director of the United States Patent and Trademark Office shall 
conduct a study of alternative fee structures that could be adopted by 
the United States Patent and Trademark Office to encourage maximum 
participation by the inventor community in the United States. The 
Director shall submit to the Committees on the Judiciary of the House 
of Representatives and the Senate a report on the study not later than 
1 year after the date of the enactment of this Act.</DELETED>

  <DELETED>Subtitle B--Effective Date; Technical Amendments</DELETED>

<DELETED>SEC. 631. EFFECTIVE DATE.</DELETED>

<DELETED>    This title and the amendments made by this title shall 
take effect 4 months after the date of the enactment of this 
Act.</DELETED>

<DELETED>SEC. 632. TECHNICAL AND CONFORMING AMENDMENTS.</DELETED>

<DELETED>    (a) Amendments to Title 35.--</DELETED>
        <DELETED>    (1) The item relating to part I in the table of 
        parts for chapter 35, United States Code, is amended to read as 
        follows:</DELETED>

<DELETED>``I. United States Patent and Trademark Office.....       1''.
        <DELETED>    (2) The heading for part I of title 35, United 
        States Code, is amended to read as follows:</DELETED>

         <DELETED>``PART I--UNITED STATES PATENT AND TRADEMARK 
                          OFFICE''.</DELETED>

        <DELETED>    (3) The table of chapters for part I of title 35, 
        United States Code, is amended by amending the item relating to 
        chapter 1 to read as follows:</DELETED>

<DELETED>``1. Establishment, Officers and Employees,               1''.
                            Functions.
        <DELETED>    (4) The table of sections for chapter 1 of title 
        35, United States Code, is amended to read as 
        follows:</DELETED>

     <DELETED>``CHAPTER 1--ESTABLISHMENT, OFFICERS AND EMPLOYEES, 
                          FUNCTIONS</DELETED>

<DELETED>``Sec.
<DELETED>`` 1. Establishment.
<DELETED>`` 2. Powers and duties.
<DELETED>`` 3. Officers and employees.
<DELETED>`` 4. Restrictions on officers and employees as to interest in 
                            patent s.
<DELETED>`` 5. Patent and Trademark Office Public Advisory Committees.
<DELETED>`` 6. Board of Patent Appeals and Interferences.
<DELETED>`` 7. Library.
<DELETED>`` 8. Classification of patents.
<DELETED>`` 9. Certified copies of records.
<DELETED>``10. Publications.
<DELETED>``11. Exchange of copies of patents and applications with 
                            foreign countries.
<DELETED>``12. Copies of patents and applications for public libraries.
<DELETED>``13. Annual report to Congress.''.
        <DELETED>    (5) Section 41(h) of title 35, United States Code, 
        is amended by striking ``Commissioner of Patents and 
        Trademarks'' and inserting ``Director''.</DELETED>
        <DELETED>    (6) Section 155 of title 35, United States Code, 
        is amended by striking ``Commissioner of Patents and 
        Trademarks'' and inserting ``Director''.</DELETED>
        <DELETED>    (7) Section 155A(c) of title 35, United States 
        Code, is amended by striking ``Commissioner of Patents and 
        Trademarks'' and inserting ``Director''.</DELETED>
        <DELETED>    (8) Section 302 of title 35, United States Code, 
        is amended by striking ``Commissioner of Patents'' and 
        inserting ``Director''.</DELETED>
        <DELETED>    (9) Section 303(b) of title 35, United States 
        Code, is amended by striking ``Commissioner's'' and inserting 
        ``Director's''.</DELETED>
        <DELETED>    (10)(A) Except as provided in subparagraph (B), 
        title 35, United States Code, is amended by striking 
        ``Commissioner'' each place it appears and inserting 
        ``Director''.</DELETED>
        <DELETED>    (B) Chapter 17 of title 35, United States Code, is 
        amended by striking ``Commissioner'' each place it appears and 
        inserting ``Commissioner of Patents''.</DELETED>
        <DELETED>    (11) Section 157(d) of title 35, United States 
        Code, is amended by striking ``Secretary of Commerce'' and 
        inserting ``Director''.</DELETED>
        <DELETED>    (12) Section 202(a) of title 35, United States 
        Code, is amended--</DELETED>
                <DELETED>    (A) by striking ``iv)'' and inserting 
                ``(iv)''; and</DELETED>
                <DELETED>    (B) by striking the second period after 
                ``Department of Energy'' at the end of the first 
                sentence.</DELETED>
<DELETED>    (b) Other Provisions of Law.--</DELETED>
        <DELETED>    (1)(A) Section 45 of the Act of July 5, 1946 
        (commonly referred to as the ``Trademark Act of 1946''; 15 
        U.S.C. 1127), is amended by striking ``The term `Commissioner'' 
        means the Commissioner of Patents and Trademarks.' and 
        inserting ``The term `Director' means the Director of the 
        United States Patent and Trademark Office.''.</DELETED>
        <DELETED>    (B) The Act of July 5, 1946 (commonly referred to 
        as the ``Trademark Act of 1946''; 15 U.S.C. 1051 and 
        following), except for section 17, as amended by section 617 of 
        this Act, is amended by striking ``Commissioner'' each place it 
        appears and inserting ``Director''.</DELETED>
        <DELETED>    (2) Section 500(e) of title 5, United States Code, 
        is amended by striking ``Patent Office'' and inserting ``United 
        States Patent and Trademark Office''.</DELETED>
        <DELETED>    (3) Section 5102(c)(23) of title 5, United States 
        Code, is amended to read as follows:</DELETED>
        <DELETED>    ``(23) administrative patent judges and designated 
        administrative patent judges in the United States Patent and 
        Trademark Office;''.</DELETED>
        <DELETED>    (4) Section 5316 of title 5, United States Code (5 
        U.S.C. 5316) is amended by striking ``Commissioner of Patents, 
        Department of Commerce.'', ``Deputy Commissioner of Patents and 
        Trademarks.'', ``Assistant Commissioner for Patents.'', and 
        ``Assistant Commissioner for Trademarks.''.</DELETED>
        <DELETED>    (5) Section 9(p)(1)(B) of the Small Business Act 
        (15 U.S.C. 638(p)(1)(B)) is amended to read as 
        follows:</DELETED>
                <DELETED>    ``(B) the Director of the United States 
                Patent and Trademark Office; and''.</DELETED>
        <DELETED>    (6) Section 12 of the Act of February 14, 1903 (15 
        U.S.C. 1511) is amended--</DELETED>
                <DELETED>    (A) by striking ``(d) Patent and Trademark 
                Office;'' and inserting:</DELETED>
        <DELETED>    ``(4) United States Patent and Trademark Office''; 
        and</DELETED>
                <DELETED>    (B) by redesignating subsections (a), (b), 
                (c), (e), (f), and (g) as paragraphs (1), (2), (3), 
                (5), (6), and (7), respectively and indenting the 
                paragraphs as so redesignated 2 ems to the 
                right.</DELETED>
        <DELETED>    (7) Section 19 of the Tennessee Valley Authority 
        Act of 1933 (16 U.S.C. 831r) is amended--</DELETED>
                <DELETED>    (A) by striking ``Patent Office of the 
                United States'' and inserting ``United States Patent 
                and Trademark Office''; and</DELETED>
                <DELETED>    (B) by striking ``Commissioner of 
                Patents'' and inserting ``Director of the United States 
                Patent and Trademark Office''.</DELETED>
        <DELETED>    (8) Section 182(b)(2)(A) of the Trade Act of 1974 
        (19 U.S.C. 2242(b)(2)(A)) is amended by striking ``Commissioner 
        of Patents and Trademarks'' and inserting ``Director of the 
        United States Patent and Trademark Office''.</DELETED>
        <DELETED>    (9) Section 302(b)(2)(D) of the Trade Act of 1974 
        (19 U.S.C. 2412(b)(2)(D)) is amended by striking ``Commissioner 
        of Patents and Trademarks'' and inserting ``Director of the 
        United States Patent and Trademark Office''.</DELETED>
        <DELETED>    (10) The Act of April 12, 1892 (27 Stat. 395; 20 
        U.S.C. 91) is amended by striking ``Patent Office'' and 
        inserting ``United States Patent and Trademark 
        Office''.</DELETED>
        <DELETED>    (11) Sections 505(m) and 512(o) of the Federal 
        Food, Drug, and Cosmetic Act (21 U.S.C. 355(m) and 360b(o)) are 
        each amended by striking ``Patent and Trademark Office of the 
        Department of Commerce'' and inserting ``United States Patent 
        and Trademark Office''.</DELETED>
        <DELETED>    (12) Section 702(d) of the Federal Food, Drug, and 
        Cosmetic Act (21 U.S.C. 372(d)) is amended by striking 
        ``Commissioner of Patents'' and inserting ``Director of the 
        United States Patent and Trademark Office'' and by striking 
        ``Commissioner'' and inserting ``Director''.</DELETED>
        <DELETED>    (13) Section 105(e) of the Federal Alcohol 
        Administration Act (27 U.S.C. 205(e)) is amended by striking 
        ``United States Patent Office'' and inserting ``United States 
        Patent and Trademark Office''.</DELETED>
        <DELETED>    (14) Section 1295(a)(4) of title 28, United States 
        Code, is amended--</DELETED>
                <DELETED>    (A) in subparagraph (A) by inserting 
                ``United States'' before ``Patent and Trademark''; 
                and</DELETED>
                <DELETED>    (B) in subparagraph (B) by striking 
                ``Commissioner of Patents and Trademarks'' and 
                inserting ``Director of the United States Patent and 
                Trademark Office''.</DELETED>
        <DELETED>    (15) Chapter 115 of title 28, United States Code, 
        is amended--</DELETED>
                <DELETED>    (A) in the item relating to section 1744 
                in the table of sections by striking ``Patent Office'' 
                and inserting ``United States Patent and Trademark 
                Office'';</DELETED>
                <DELETED>    (B) in section 1744--</DELETED>
                        <DELETED>    (i) by striking ``Patent Office'' 
                        each place it appears in the text and section 
                        heading and inserting ``United States Patent 
                        and Trademark Office''; and</DELETED>
                        <DELETED>    (ii) by striking ``Commissioner of 
                        Patents'' and inserting ``Director of the 
                        United States Patent and Trademark Office''; 
                        and</DELETED>
                <DELETED>    (C) by striking ``Commissioner'' and 
                inserting ``Director''.</DELETED>
        <DELETED>    (16) Section 1745 of title 28, United States Code, 
        is amended by striking ``United States Patent Office'' and 
        inserting ``United States Patent and Trademark 
        Office''.</DELETED>
        <DELETED>    (17) Section 1928 of title 28, United States Code, 
        is amended by striking ``Patent Office'' and inserting ``United 
        States Patent and Trademark Office''.</DELETED>
        <DELETED>    (18) Section 151 of the Atomic Energy Act of 1954 
        (42 U.S.C. 2181) is amended in subsections c. and d. by 
        striking ``Commissioner of Patents'' and inserting ``Director 
        of the United States Patent and Trademark Office''.</DELETED>
        <DELETED>    (19) Section 152 of the Atomic Energy Act of 1954 
        (42 U.S.C. 2182) is amended by striking ``Commissioner of 
        Patents'' each place it appears and inserting ``Director of the 
        United States Patent and Trademark Office''.</DELETED>
        <DELETED>    (20) Section 305 of the National Aeronautics and 
        Space Act of 1958 (42 U.S.C. 2457) is amended--</DELETED>
                <DELETED>    (A) in subsection (c) by striking 
                ``Commissioner of Patents'' and inserting ``Director of 
                the United States Patent and Trademark Office 
                (hereafter in this section referred to as the 
                `Director')''; and</DELETED>
                <DELETED>    (B) by striking ``Commissioner'' each 
                subsequent place it appears and inserting 
                ``Director''.</DELETED>
        <DELETED>    (21) Section 12(a) of the Solar Heating and 
        Cooling Demonstration Act of 1974 (42 U.S.C. 5510(a)) is 
        amended by striking ``Commissioner of the Patent Office'' and 
        inserting ``Director of the United States Patent and Trademark 
        Office''.</DELETED>
        <DELETED>    (22) Section 1111 of title 44, United States Code, 
        is amended by striking ``the Commissioner of 
        Patents,''.</DELETED>
        <DELETED>    (23) Section 1114 of title 44, United States Code, 
        is amended by striking ``the Commissioner of 
        Patents,''.</DELETED>
        <DELETED>    (24) Section 1123 of title 44, United States Code, 
        is amended by striking ``the Patent Office,''.</DELETED>
        <DELETED>    (25) Sections 1337 and 1338 of title 44, United 
        States Code, and the items relating to those sections in the 
        table of contents for chapter 13 of such title, are 
        repealed.</DELETED>
        <DELETED>    (26) Section 10(i) of the Trading with the enemy 
        Act (50 U.S.C. App. 10(i)) is amended by striking 
        ``Commissioner of Patents'' and inserting ``Director of the 
        United States Patent and Trademark Office''.</DELETED>

        <DELETED>Subtitle C--Miscellaneous Provisions</DELETED>

<DELETED>SEC. 641. REFERENCES.</DELETED>

<DELETED>    (a) In General.--Any reference in any other Federal law, 
Executive order, rule, regulation, or delegation of authority, or any 
document of or pertaining to a department or office from which a 
function is transferred by this title--</DELETED>
        <DELETED>    (1) to the head of such department or office is 
        deemed to refer to the head of the department or office to 
        which such function is transferred; or</DELETED>
        <DELETED>    (2) to such department or office is deemed to 
        refer to the department or office to which such function is 
        transferred.</DELETED>
<DELETED>    (b) Specific References.--Any reference in any other 
Federal law, Executive order, rule, regulation, or delegation of 
authority, or any document of or pertaining to the Patent and Trademark 
Office--</DELETED>
        <DELETED>    (1) to the Commissioner of Patents and Trademarks 
        is deemed to refer to the Under Secretary of Commerce for 
        Intellectual Property and Director of the United States Patent 
        and Trademark Office;</DELETED>
        <DELETED>    (2) to the Assistant Commissioner for Patents is 
        deemed to refer to the Commissioner for Patents; or</DELETED>
        <DELETED>    (3) to the Assistant Commissioner for Trademarks 
        is deemed to refer to the Commissioner for 
        Trademarks.</DELETED>

<DELETED>SEC. 642. EXERCISE OF AUTHORITIES.</DELETED>

<DELETED>    Except as otherwise provided by law, a Federal official to 
whom a function is transferred by this title may, for purposes of 
performing the function, exercise all authorities under any other 
provision of law that were available with respect to the performance of 
that function to the official responsible for the performance of the 
function immediately before the effective date of the transfer of the 
function under this title.</DELETED>

<DELETED>SEC. 643. SAVINGS PROVISIONS.</DELETED>

<DELETED>    (a) Legal Documents.--All orders, determinations, rules, 
regulations, permits, grants, loans, contracts, agreements, 
certificates, licenses, and privileges--</DELETED>
        <DELETED>    (1) that have been issued, made, granted, or 
        allowed to become effective by the President, the Secretary of 
        Commerce, any officer or employee of any office transferred by 
        this title, or any other Government official, or by a court of 
        competent jurisdiction, in the performance of any function that 
        is transferred by this title; and</DELETED>
        <DELETED>    (2) that are in effect on the effective date of 
        such transfer (or become effective after such date pursuant to 
        their terms as in effect on such effective date), shall 
        continue in effect according to their terms until modified, 
        terminated, superseded, set aside, or revoked in accordance 
        with law by the President, any other authorized official, a 
        court of competent jurisdiction, or operation of law.</DELETED>
<DELETED>    (b) Proceedings.--This title shall not affect any 
proceedings or any application for any benefits, service, license, 
permit, certificate, or financial assistance pending on the effective 
date of this title before an office transferred by this title, but such 
proceedings and applications shall be continued. Orders shall be issued 
in such proceedings, appeals shall be taken therefrom, and payments 
shall be made pursuant to such orders, as if this title had not been 
enacted, and orders issued in any such proceeding shall continue in 
effect until modified, terminated, superseded, or revoked by a duly 
authorized official, by a court of competent jurisdiction, or by 
operation of law. Nothing in this subsection shall be considered to 
prohibit the discontinuance or modification of any such proceeding 
under the same terms and conditions and to the same extent that such 
proceeding could have been discontinued or modified if this title had 
not been enacted.</DELETED>
<DELETED>    (c) Suits.--This title shall not affect suits commenced 
before the effective date of this title, and in all such suits, 
proceedings shall be had, appeals taken, and judgments rendered in the 
same manner and with the same effect as if this title had not been 
enacted.</DELETED>
<DELETED>    (d) Nonabatement of Actions.--No suit, action, or other 
proceeding commenced by or against the Department of Commerce or the 
Secretary of Commerce, or by or against any individual in the official 
capacity of such individual as an officer or employee of an office 
transferred by this title, shall abate by reason of the enactment of 
this title.</DELETED>
<DELETED>    (e) Continuance of Suits.--If any Government officer in 
the official capacity of such officer is party to a suit with respect 
to a function of the officer, and under this title such function is 
transferred to any other officer or office, then such suit shall be 
continued with the other officer or the head of such other office, as 
applicable, substituted or added as a party.</DELETED>
<DELETED>    (f) Administrative Procedure and Judicial Review.--Except 
as otherwise provided by this title, any statutory requirements 
relating to notice, hearings, action upon the record, or administrative 
or judicial review that apply to any function transferred by this title 
shall apply to the exercise of such function by the head of the Federal 
agency, and other officers of the agency, to which such function is 
transferred by this title.</DELETED>

<DELETED>SEC. 644. TRANSFER OF ASSETS.</DELETED>

<DELETED>    Except as otherwise provided in this title, so much of the 
personnel, property, records, and unexpended balances of 
appropriations, allocations, and other funds employed, used, held, 
available, or to be made available in connection with a function 
transferred to an official or agency by this title shall be available 
to the official or the head of that agency, respectively, at such time 
or times as the Director of the Office of Management and Budget directs 
for use in connection with the functions transferred.</DELETED>

<DELETED>SEC. 645. DELEGATION AND ASSIGNMENT.</DELETED>

<DELETED>    Except as otherwise expressly prohibited by law or 
otherwise provided in this title, an official to whom functions are 
transferred under this title (including the head of any office to which 
functions are transferred under this title) may delegate any of the 
functions so transferred to such officers and employees of the office 
of the official as the official may designate, and may authorize 
successive redelegations of such functions as may be necessary or 
appropriate. No delegation of functions under this section or under any 
other provision of this title shall relieve the official to whom a 
function is transferred under this title of responsibility for the 
administration of the function.</DELETED>

<DELETED>SEC. 646. AUTHORITY OF DIRECTOR OF THE OFFICE OF MANAGEMENT 
              AND BUDGET WITH RESPECT TO FUNCTIONS 
              TRANSFERRED.</DELETED>

<DELETED>    (a) Determinations.--If necessary, the Director of the 
Office of Management and Budget shall make any determination of the 
functions that are transferred under this title.</DELETED>
<DELETED>    (b) Incidental Transfers.--The Director of the Office of 
Management and Budget, at such time or times as the Director shall 
provide, may make such determinations as may be necessary with regard 
to the functions transferred by this title, and to make such additional 
incidental dispositions of personnel, assets, liabilities, grants, 
contracts, property, records, and unexpended balances of 
appropriations, authorizations, allocations, and other funds held, 
used, arising from, available to, or to be made available in connection 
with such functions, as may be necessary to carry out the provisions of 
this title. The Director shall provide for the termination of the 
affairs of all entities terminated by this title and for such further 
measures and dispositions as may be necessary to effectuate the 
purposes of this title.</DELETED>

<DELETED>SEC. 647. CERTAIN VESTING OF FUNCTIONS CONSIDERED 
              TRANSFERS.</DELETED>

<DELETED>    For purposes of this title, the vesting of a function in a 
department or office pursuant to reestablishment of an office shall be 
considered to be the transfer of the function.</DELETED>

<DELETED>SEC. 648. AVAILABILITY OF EXISTING FUNDS.</DELETED>

<DELETED>    Existing appropriations and funds available for the 
performance of functions, programs, and activities terminated pursuant 
to this title shall remain available, for the duration of their period 
of availability, for necessary expenses in connection with the 
termination and resolution of such functions, programs, and activities, 
subject to the submission of a plan to the Committees on Appropriations 
of the House and Senate in accordance with the procedures set forth in 
section 605 of the Departments of Commerce, Justice, and State, the 
Judiciary, and Related Agencies Appropriations Act, 1999, as contained 
in Public Law 105-277.</DELETED>

<DELETED>SEC. 649. DEFINITIONS.</DELETED>

<DELETED>    For purposes of this title--</DELETED>
        <DELETED>    (1) the term ``function'' includes any duty, 
        obligation, power, authority, responsibility, right, privilege, 
        activity, or program; and</DELETED>
        <DELETED>    (2) the term ``office'' includes any office, 
        administration, agency, bureau, institute, council, unit, 
        organizational entity, or component thereof.</DELETED>

     <DELETED>TITLE VII--MISCELLANEOUS PATENT PROVISIONS</DELETED>

<DELETED>SEC. 701. PROVISIONAL APPLICATIONS.</DELETED>

<DELETED>    (a) Abandonment.--Section 111(b)(5) of title 35, United 
States Code, is amended to read as follows:</DELETED>
        <DELETED>    ``(5) Abandonment.--Notwithstanding the absence of 
        a claim, upon timely request and as prescribed by the 
        Commissioner, a provisional application may be treated as an 
        application filed under subsection (a). Subject to section 
        119(e)(3) of this title, if no such request is made, the 
        provisional application shall be regarded as abandoned 12 
        months after the filing date of such application and shall not 
        be subject to revival thereafter.''.</DELETED>
<DELETED>    (b) Technical Amendment Relating to Weekends and 
Holidays.--Section 119(e) of title 35, United States code, is amended 
by adding at the end the following:</DELETED>
<DELETED>    ``(3) If the day that is 12 months after the filing date 
of a provisional application falls on a Saturday, Sunday, or Federal 
holiday within the District of Columbia, the period of pendency of the 
provisional application shall be extended to the next succeeding 
secular or business day.''.</DELETED>
<DELETED>    (c) Elimination of Copendency Requirement.--Section 
119(e)(2) of title 35, United States Code, is amended by striking ``and 
the provisional application was pending on the filing date of the 
application for patent under section 111(a) or section 363 of this 
title''.</DELETED>
<DELETED>    (d) Effective Date.--The amendments made by this section 
shall take effect on the date of the enactment of this Act and shall 
apply to any provisional application filed on or after June 8, 1995, 
except that the amendments made by subsections (b) and (c) shall have 
no effect with respect to any patent which is the subject of litigation 
in an action commenced before such date of the enactment.</DELETED>

<DELETED>SEC. 702. INTERNATIONAL APPLICATIONS.</DELETED>

<DELETED>    Section 119 of title 35, United States Code, is amended--
</DELETED>
        <DELETED>    (1) in subsection (a)--</DELETED>
                <DELETED>    (A) by inserting ``in a WTO member country 
                or'' after ``patent for the same invention''; 
                and</DELETED>
                <DELETED>    (B) by inserting ``such WTO member country 
                or'' after ``first filed in'';</DELETED>
        <DELETED>    (2) in subsection (c), by inserting ``WTO member 
        country or'' after ``application in the same''; and</DELETED>
        <DELETED>    (3) by adding at the end the following:</DELETED>
<DELETED>    ``(f) Applications for plant breeder's rights filed in a 
WTO member country (or in a foreign UPOV Contracting Party) shall have 
the same effect for the purpose of the right of priority under 
subsections (a) through (c) of this section as applications for patent, 
subject to the same conditions and requirements of this section as 
apply to applications for patents.</DELETED>
<DELETED>    ``(g) As used in this section--</DELETED>
        <DELETED>    ``(1) the term `WTO member country' has the 
        meaning given that term in section 2(10) of the Uruguay Round 
        Agreements Act; and</DELETED>
        <DELETED>    ``(2) the term `UPOV Contracting Party' means a 
        member of the International Convention for the Protection of 
        New Varieties of Plants.''.</DELETED>

<DELETED>SEC. 703. CERTAIN LIMITATIONS ON DAMAGES FOR PATENT 
              INFRINGEMENT NOT APPLICABLE.</DELETED>

<DELETED>    Section 287(c)(4) of title 35, United States Code, is 
amended by striking ``before the date of enactment of this subsection'' 
and inserting ``based on an application the earliest effective filing 
date of which is prior to September 30, 1996''.</DELETED>

<DELETED>SEC. 704. ELECTRONIC FILING AND PUBLICATIONS.</DELETED>

<DELETED>    (a) Printing of Papers Filed.--Section 22 of title 35, 
United States Code, is amended by striking ``printed or typewritten'' 
and inserting ``printed, typewritten, or on an electronic 
medium''.</DELETED>
<DELETED>    (b) Publications.--Section 11(a) of title 35, United 
States Code, is amended by amending the matter preceding paragraph 1 to 
read as follows:</DELETED>
<DELETED>    ``(a) The Director may publish in printed, typewritten, or 
electronic form, the following:''.</DELETED>
<DELETED>    (c) Copies of Patents for Public Libraries.--Section 13 of 
title 35, United States Code, is amended by striking ``The Commissioner 
may supply printed copies of specifications and drawings of patents'' 
and inserting ``The Director may supply copies of specifications and 
drawings of patents in printed or electronic form''.</DELETED>
<DELETED>    (d) Maintenance of Collections.--Section 41(i)(1) of title 
35, United States Code, is amended by striking ``The Commissioner shall 
maintain, for use by the public, paper or microform'' and inserting 
``The Director shall maintain, for use by the public, paper, microform, 
or electronic''.</DELETED>

<DELETED>SEC. 705. STUDY AND REPORT ON BIOLOGICAL DEPOSITS IN SUPPORT 
              OF BIOTECHNOLOGY PATENTS.</DELETED>

<DELETED>    (a) In General.--No later than 6 months after the date of 
the enactment of this Act, the Comptroller General of the United 
States, in consultation with the Director of the United States Patent 
and Trademark Office, shall conduct a study and submit a report to the 
Congress on the potential risks to the United States biotechnology 
industry relating to biological deposits in support of biotechnology 
patents.</DELETED>
<DELETED>    (b) Contents.--The study conducted under this section 
shall include--</DELETED>
        <DELETED>    (1) an examination of the risk of export and the 
        risk of transfers to third parties of biological deposits, and 
        the risks posed by the change to 18-month publication 
        requirements made by this Act;</DELETED>
        <DELETED>    (2) an analysis of comparative legal and 
        regulatory regimes; and</DELETED>
        <DELETED>    (3) any related recommendations.</DELETED>
<DELETED>    (c) Consideration of Report.--In drafting regulations 
affecting biological deposits (including any modification of title 37, 
Code of Federal Regulations, section 1.801 et seq.), the Patent and 
Trademark Office shall consider the recommendations of the study 
conducted under this section.</DELETED>

<DELETED>SEC. 706. PRIOR INVENTION.</DELETED>

<DELETED>    Section 102(g) of title 35, United States Code, is amended 
to read as follows:</DELETED>
<DELETED>    ``(g)(1) during the course of an interference conducted 
under section 135 or section 291, another inventor involved therein 
establishes, to the extent permitted in section 104, that before such 
person's invention thereof the invention was made by such other 
inventor and not abandoned, suppressed, or concealed, or (2) before 
such person's invention thereof, the invention was made in this country 
by another inventor who had not abandoned, suppressed, or concealed it. 
In determining priority of invention under this subsection, there shall 
be considered not only the respective dates of conception and reduction 
to practice of the invention, but also the reasonable diligence of one 
who was first to conceive and last to reduce to practice, from a time 
prior to conception by the other.''.</DELETED>

<DELETED>SEC. 707. PRIOR ART EXCLUSION FOR CERTAIN COMMONLY ASSIGNED 
              PATENTS.</DELETED>

<DELETED>    (a) Prior Art Exclusion.--Section 103(c) of title 35, 
United States Code, is amended by striking ``subsection (f) or (g)'' 
and inserting ``one or more of subsections (e), (f), and 
(g)''.</DELETED>
<DELETED>    (b) Effective Date.--The amendment made by subsection (a) 
shall apply to any application for patent filed on or after the date of 
the enactment of this Act.</DELETED>

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``American Inventors Protection Act of 
1999''.

SEC. 2. TABLE OF CONTENTS.

    The table of contents is as follows:

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

                       TITLE I--INVENTORS' RIGHTS

Sec. 101. Short title.
Sec. 102. Integrity in invention promotion services.
Sec. 103. Effective date.

              TITLE II--PATENT AND TRADEMARK FEE FAIRNESS

Sec. 201. Short title.
Sec. 202. Adjustment of patent fees.
Sec. 203. Adjustment of trademark fees.
Sec. 204. Study on alternative fee structures.
Sec. 205. Patent and Trademark Office funding.
Sec. 206. Effective date.

                   TITLE III--FIRST INVENTOR DEFENSE

Sec. 301. Short title.
Sec. 302. Defense to patent infringement based on earlier inventor.
Sec. 303. Study and report on business methods patents.
Sec. 304. Effective date and applicability.

                    TITLE IV--PATENT TERM GUARANTEE

Sec. 401. Short title.
Sec. 402. Patent term guarantee authority.
Sec. 403. Continued examination of patent applications.
Sec. 404. Technical clarification.
Sec. 405. Effective date.

 TITLE V--DOMESTIC PUBLICATION OF PATENT APPLICATIONS PUBLISHED ABROAD

Sec. 501. Short title.
Sec. 502. Publication.
Sec. 503. Time for claiming benefit of earlier filing date.
Sec. 504. Provisional rights.
Sec. 505. Prior art effect of published applications.
Sec. 506. Cost recovery for publication.
Sec. 507. Conforming amendments.
Sec. 508. Effective date.

        TITLE VI--OPTIONAL INTER PARTES REEXAMINATION PROCEDURE

Sec. 601. Short title.
Sec. 602. Ex parte reexamination of patents.
Sec. 603. Definitions.
Sec. 604. Optional inter partes reexamination procedures.
Sec. 605. Conforming amendments.
Sec. 606. Report to Congress.
Sec. 607. Estoppel effect of reexamination.
Sec. 608. Effective date.

               TITLE VII--MISCELLANEOUS PATENT PROVISIONS

Sec. 701. Provisional applications.
Sec. 702. International applications.
Sec. 703. Certain limitations on damages for patent infringement not 
                            applicable.
Sec. 704. Electronic filing and publications.
Sec. 705. Study and report on biological deposits in support of 
                            biotechnology patents.
Sec. 706. Prior invention.
Sec. 707. Prior art exclusion for certain commonly assigned patents.
Sec. 708. Exchange of copies of patents with foreign countries.
Sec. 709. National security.

                       TITLE I--INVENTORS' RIGHTS

SEC. 101. SHORT TITLE.

    This title may be cited as the ``Inventors' Rights Act of 1999''.

SEC. 102. INTEGRITY IN INVENTION PROMOTION SERVICES.

    (a) Chapter 29 of title 35, United States Code, is amended by 
adding at the end the following new section:
``Sec. 297. Improper and deceptive invention promotion
    ``(a) In General.--An invention promoter shall have a duty to 
disclose the following information to a customer in writing, prior to 
entering into a contract for invention promotion services:
            ``(1) the total number of inventions evaluated by the 
        invention promoter for commercial potential in the past 5 
        years, as well as the number of those inventions that received 
        positive evaluations, and the number of those inventions that 
        received negative evaluations;
            ``(2) the total number of customers who have contracted 
        with the invention promoter in the past 5 years, not including 
        customers who have purchased trade show services, research, 
        advertising, or other nonmarketing services from the invention 
        promoter, or who have defaulted in their payment to the 
        invention promoter;
            ``(3) the total number of customers known by the invention 
        promoter to have received a net financial profit as a direct 
        result of the invention promotion services provided by such 
        invention promoter;
            ``(4) the total number of customers known by the invention 
        promoter to have received license agreements for their 
        inventions as a direct result of the invention promotion 
        services provided by such invention promoter; and
            ``(5) the names and addresses of all previous invention 
        promotion companies with which the invention promoter or its 
        officers have collectively or individually been affiliated in 
        the previous 10 years.
    ``(b) Civil Action.--(1) Any customer who is found by a court to 
have been injured by any material false or fraudulent statement or 
representation, or any omission of material fact, by an invention 
promoter (or any agent, employee, director, officer, partner, or 
independent contractor of such invention promoter), or by the failure 
of an invention promoter to disclose such information as required under 
subsection (a), may recover in a civil action against the invention 
promoter (or the officers, directors, or partners of such invention 
promoter), in addition to reasonable costs and attorneys' fees--
            ``(A) the amount of actual damages incurred by the 
        plaintiff; or
            ``(B) at the election of the plaintiff at any time before 
        final judgment is rendered, statutory damages in a sum of not 
        more than $5,000, as the court considers just.
    ``(2) Notwithstanding paragraph (1), in a case where the plaintiff 
sustains the burden of proof, and the court finds, that the invention 
promoter intentionally misrepresented or omitted a material fact to 
such customer, or willfully failed to disclose such information as 
required under subsection (a), with the purpose of deceiving that 
customer, the court may increase damages to not more than 3 times the 
amount awarded, taking into account past complaints made against the 
invention promoter that resulted in regulatory sanctions or other 
corrective actions based on those records compiled by the Commissioner 
under subsection (d).
    ``(c) Definitions.--For purposes of this section--
            ``(1) a `contract for invention promotion services' means a 
        contract by which an invention promoter undertakes invention 
        promotion services for a customer;
            ``(2) a `customer' is any person, firm, partnership, 
        corporation or other entity who enters into a contract with an 
        invention promoter for invention promotion services;
            ``(3) the term `invention promoter' means any person, firm, 
        partnership, corporation, or other entity who offers to perform 
        or performs invention promotion services for, or on behalf of, 
        a customer, but does not include--
                    ``(A) any department or agency of the Federal 
                Government or of a State or local government;
                    ``(B) any nonprofit, charitable, scientific, or 
                educational organization, qualified under applicable 
                State law or described under section 170(b)(1)(A) of 
                the Internal Revenue Code of 1986;
                    ``(C) any person or entity involved in the 
                evaluation to determine commercial potential of, or 
                offering to license or sell, a utility patent or a 
                previously filed nonprovisional utility patent 
                application;
                    ``(D) any party participating in a transaction 
                involving the sale of the stock or assets of a 
                business; or
                    ``(E) any party who directly engages in the 
                business of retail sales of products or the 
                distribution of products; and
            ``(4) the term `invention promotion services' means any 
        act, where the customer is an individual, done for the purpose 
        of procuring a firm, corporation, or other entity to develop 
        and market products or services that include the invention.
    ``(d) Records of Complaints.--
            ``(1) Release of complaints.--The Commissioner shall make 
        all complaints received by the Patent and Trademark Office 
        involving invention promoters publicly available, together with 
        any response of the invention promoters.
            ``(2) Request for complaints.--The Commissioner may request 
        complaints relating to invention promotion services from any 
        Federal or State agency and include such complaints in the 
        records maintained under paragraph (1), together with any 
        response of the invention promoters.''.
    (b) Conforming Amendment.--The table of sections at the beginning 
of chapter 29 of title 35, United States Code, is amended by adding at 
the end the following new item:

``Sec. 297. Improper and deceptive invention promotion.''.

SEC. 103. EFFECTIVE DATE.

    This title and the amendments made by this title shall take effect 
60 days after the date of the enactment of this Act.

              TITLE II--PATENT AND TRADEMARK FEE FAIRNESS

SEC. 201. SHORT TITLE.

    This title may be cited as the ``Patent and Trademark Fee Fairness 
Act of 1999''.

SEC. 202. ADJUSTMENT OF PATENT FEES.

    (a) Original Filing Fee.--Section 41(a)(1)(A) of title 35, United 
States Code, relating to the fee for filing an original patent 
application, is amended by striking ``$760'' and inserting ``$690''.
    (b) Reissue Fee.--Section 41(a)(4)(A) of title 35, United States 
Code, relating to the fee for filing for a reissue of a patent, is 
amended by striking ``$760'' and inserting ``$690''.
    (c) National Fee for Certain International Applications.--Section 
41(a)(10) of title 35, United States Code, relating to the national fee 
for certain international applications, is amended by striking ``$760'' 
and inserting ``$690''.
    (d) Maintenance Fees.--Section 41(b)(1) of title 35, United States 
Code, relating to certain maintenance fees, is amended by striking 
``$940'' and inserting ``$830''.

SEC. 203. ADJUSTMENT OF TRADEMARK FEES.

    Notwithstanding the second sentence of section 31(a) of the 
Trademark Act of 1946 (15 U.S.C. 111(a)), the Commissioner of Patents 
and Trademarks is authorized in fiscal year 2000 to adjust trademark 
fees without regard to fluctuations in the Consumer Price Index during 
the preceding 12 months.

SEC. 204. STUDY ON ALTERNATIVE FEE STRUCTURES.

    The Commissioner of Patents and Trademarks shall conduct a study of 
alternative fee structures that could be adopted by the United States 
Patent and Trademark Office to encourage maximum participation by the 
inventor community in the United States. The Commissioner shall submit 
such study to the Committees on the Judiciary of the House of 
Representatives and the Senate not later than 1 year after the date of 
enactment of this Act.

SEC. 205. PATENT AND TRADEMARK OFFICE FUNDING.

    Section 42(c) of title 35, United States Code, is amended in the 
second sentence--
            (1) by striking ``Fees available'' and inserting ``All fees 
        available''; and
            (2) by striking ``may'' and inserting ``shall''.

SEC. 206. EFFECTIVE DATE.

    (a) Except as provided in subsection (b), the amendments made by 
this title shall take effect on the date of the enactment of this Act.
    (b) The amendments made by section 202 of this title shall take 
effect 30 days after the date of the enactment of this Act.

                   TITLE III--FIRST INVENTOR DEFENSE

SEC. 301. SHORT TITLE.

    This title may be cited as the ``First Inventor Defense Act of 
1999''.

SEC. 302. DEFENSE TO PATENT INFRINGEMENT BASED ON EARLIER INVENTOR.

    (a) Defense.--Chapter 28 of title 35, United States Code, is 
amended by adding at the end the following new section:
``Sec. 273. Defense to infringement based on earlier inventor
    ``(a) Definitions.--For purposes of this section--
            ``(1) the terms `commercially used' and `commercial use' 
        mean use of a method in the United States, so long as such use 
        is in connection with an internal commercial use or an actual 
        arm's-length sale or other arm's-length commercial transfer of 
        a useful end result, whether or not the subject matter at issue 
        is accessible to or otherwise known to the public, except that 
        the subject matter for which commercial marketing or use is 
        subject to a premarketing regulatory review period during which 
        the safety or efficacy of the subject matter is established, 
        including any period specified in section 156(g), shall be 
        deemed `commercially used' and in `commercial use' during such 
        regulatory review period;
            ``(2) in the case of activities performed by a nonprofit 
        research laboratory, or nonprofit entity such as a university, 
        research center, or hospital, a use for which the public is the 
        intended beneficiary shall be considered to be a use described 
        in paragraph (1), except that the use--
                    ``(A) may be asserted as a defense under this 
                section only for continued use by and in the laboratory 
                or nonprofit entity; and
                    ``(B) may not be asserted as a defense with respect 
                to any subsequent commercialization or use outside such 
                laboratory or nonprofit entity;
            ``(3) the term `method' means a method of doing or 
        conducting business; and
            ``(4) the `effective filing date' of a patent is the 
        earlier of the actual filing date of the application for the 
        patent or the filing date of any earlier United States, 
        foreign, or international application to which the subject 
        matter at issue is entitled under section 199, 120, or 365 of 
        this title.
    ``(b) Defense to Infringement.--
            ``(1) In general.--It shall be a defense to an action for 
        infringement under section 271 of this title with respect to 
        any subject matter that would otherwise infringe one or more 
        claims for a method in the patent being asserted against a 
        person, if such person had, acting in good faith, actually 
        reduced the subject matter to practice at least one year before 
        the effective filing date of such patent, and commercially used 
        the subject matter before the effective filing date of such 
        patent.
            ``(2) Exhaustion of right.--The sale or other disposition 
        of a useful end product produced by a patented method, by a 
        person entitled to assert a defense under this section with 
        respect to that useful end result shall exhaust the patent 
        owner's rights under the patent to the extent such rights would 
        have been exhausted had such sale or other disposition been 
        made by the patent owner.
            ``(3) Limitations and qualifications of defense.--The 
        defense to infringement under this section is subject to the 
        following:
                    ``(A) Patent.--A person may not assert the defense 
                under this section unless the invention for which the 
                defense is asserted is for a method.
                    ``(B) Derivation.--A person may not assert the 
                defense under this section if the subject matter on 
                which the defense is based was derived from the 
                patentee or persons in privity with the patentee.
                    ``(C) Not a general license.--The defense asserted 
                by a person under this section is not a general license 
                under all claims of the patent at issue, but extends 
                only to the specific subject matter claimed in the 
                patent with respect to which the person can assert a 
                defense under this chapter, except that the defense 
                shall also extend to variations in the quantity or 
                volume of use of the claimed subject matter, and to 
                improvements in the claimed subject matter that do not 
                infringe additional specifically claimed subject matter 
                of the patent.
            ``(4) Burden of proof.--A person asserting the defense 
        under this section shall have the burden of establishing the 
        defense by clear and convincing evidence.
            ``(5) Abandonment of use.--A person who has abandoned 
        commercial use of subject matter may not rely on activities 
        performed before the date of such abandonment in establishing a 
        defense under this section with respect to actions taken after 
        the date of such abandonment.
            ``(6) Personal defense.--The defense under this section may 
        be asserted only by the person who performed the acts necessary 
        to establish the defense and, except for any transfer to the 
        patent owner, the right to assert the defense shall not be 
        licensed or assigned or transferred to another person except as 
        an ancillary and subordinate part of a good faith assignment or 
        transfer for other reasons of the entire enterprise or line of 
        business to which the defense relates.
            ``(7) Limitation on sites.--A defense under this section, 
        when acquired as part of a good faith assignment or transfer of 
        an entire enterprise or line of business to which the defense 
        relates, may only be asserted for uses at sites where the 
        subject matter that would otherwise infringe one or more of the 
        claims is in use before the later of the effective filing date 
        of the patent or the date of the assignment or transfer of such 
        enterprise or line of business.
            ``(8) Unsuccessful assertion of defense.--If the defense 
        under this section is pleaded by a person who is found to 
        infringe the patent and who subsequently fails to demonstrate a 
        reasonable basis for asserting the defense, the court shall 
        find the case exceptional for the purpose of awarding 
        attorney's fees under section 285 of this title.
            ``(9) Invalidity.--A patent shall not be deemed to be 
        invalid under section 102 or 103 of this title solely because a 
        defense is raised or established under this section.''.
    (b) Conforming Amendment.--The table of sections at the beginning 
of chapter 28 of title 35, United States Code, is amended by adding at 
the end the following new item:

``273. Defense to infringement based on earlier inventor.''.

SEC. 303. STUDY AND REPORT ON BUSINESS METHODS PATENTS.

    (a) In General.--No later than 120 days after the date of the 
enactment of this Act, the General Accounting Office, in consultation 
with the Patent and Trademark Office, shall conduct a study and submit 
a report to the Judiciary Committees of the Senate and House of 
Representatives on the effect on innovation, competition (foreign and 
domestic), and American businesses (including electronic commerce) of 
the quality of patents being issued on business methods by the Patent 
and Trademark Office.
    (b) Contents.--The study conducted under this section shall 
include--
            (1) an examination of the number of applications received 
        for patents on methods of doing business, including recent 
        trends and forecasts, and the number of patents granted based 
        on such applications;
            (2) an examination of the nature of the applicants filing 
        for and receiving such business methods patents, including by 
        industry sectors, the extent to which such applicants have 
        filed for patent protection for such business methods in 
        foreign countries, and the nature of the technologies or 
        business models represented in such patents and patent 
        applications;
            (3) an evaluation of the database of patents, publications, 
        and other information used by the Patent and Trademark Office 
        to examine applications for patents on methods of doing 
        business;
            (4) an analysis of the types of skills needed by patent 
        examiners to adequately examine applications for patents on 
        business methods, whether there are a sufficient number of 
        examiners handling these applications with the requisite 
        skills, and what types of training, if any, may be called for 
        to augment these skills;
            (5) an analysis of the economic and competitive impact of 
        patents issued on business methods on American businesses, 
        particularly on businesses involved in electronic commerce, 
        including the effect of such patents on companies' abilities to 
        raise investment capital, compete in their relevant markets, 
        and innovate in emerging markets and technologies; and
            (6) the extent, outcome, and effects on American business, 
        competition, and innovation of litigation surrounding approved 
        business methods patents.

SEC. 304. EFFECTIVE DATE AND APPLICABILITY.

    This title and the amendments made by this title shall take effect 
on the date of the enactment of this Act, but shall not apply to any 
action for infringement that is pending on such date of the enactment 
or with respect to any subject matter for which an adjudication of 
infringement, including a consent judgment, has been made before such 
date of enactment.

                    TITLE IV--PATENT TERM GUARANTEE

SEC. 401. SHORT TITLE.

    This title may be cited as the ``Patent Term Guarantee Act of 
1999''.

SEC. 402. PATENT TERM GUARANTEE AUTHORITY.

    (a) Adjustment of Patent Term.--Section 154(b) of title 35, United 
States Code, is amended to read as follows:
    ``(b) Adjustment of Patent Term.--
            ``(1) Patent term guarantees.--
                    ``(A) Guarantee of prompt patent and trademark 
                office responses.--Subject to the limitations under 
                paragraph (2), if the issue of an original patent is 
                delayed due to the failure of the Patent and Trademark 
                Office to--
                            ``(i) provide at least 1 of the 
                        notifications under section 132 of this title 
                        or a notice of allowance under section 151 of 
                        this title not later than 14 months after--
                                    ``(I) the date on which an 
                                application was filed under section 
                                111(a) of this title; or
                                    ``(II) the date on which an 
                                international application fulfilled the 
                                requirements of section 371 of this 
                                title;
                            ``(ii) respond to a reply under section 
                        132, or to an appeal taken under section 134, 
                        within 4 months after the date on which the 
                        reply was filed or the appeal was taken;
                            ``(iii) act on an application within 4 
                        months after the date of a decision by the 
                        Board of Patent Appeals and Interferences under 
                        section 134 or 135 or a decision by a Federal 
                        court under section 141, 145, or 146 in a case 
                        in which allowable claims remain in the 
                        application; or
                            ``(iv) issue a patent within 4 months after 
                        the date on which the issue fee was paid under 
                        section 151 and all outstanding requirements 
                        were satisfied,
                the term of the patent shall be extended one day for 
                each day after the end of the period specified in 
                clause (i), (ii), (iii), or (iv), as the case may be, 
                until the action described in such clause is taken.
                    ``(B) Guarantee of no more than 3-year application 
                pendency.--Subject to the limitations under paragraph 
                (2), if the issue of an original patent is delayed due 
                to the failure of the Patent and Trademark Office to 
                issue a patent within 3 years after the actual filing 
                date of the application in the United States, not 
                including--
                            ``(i) any time consumed by continued 
                        examination of the application requested by the 
                        applicant under section 132(b);
                            ``(ii) any time consumed by a proceeding 
                        under section 135(a), any time consumed by the 
                        imposition of an order pursuant to section 181, 
                        or any time consumed by appellate review by the 
                        Board of Patent Appeals and Interferences or by 
                        a Federal court; or
                            ``(iii) any delay in the processing of the 
                        application by the Patent and Trademark Office 
                        requested by the applicant except as permitted 
                        by paragraph (3)(C),
                the term of the patent shall be extended 1 day for each 
                day after the end of that 3-year period until the 
                patent is issued.
                    ``(C) Guarantee or adjustments for delays due to 
                interferences, secrecy orders, and appeals.--Subject to 
                the limitations under paragraph (2), if the issue of an 
                original patent is delayed due to--
                            ``(i) a proceeding under section 135(a);
                            ``(ii) the imposition of an order pursuant 
                        to section 181; or
                            ``(iii) appellate review by the Board of 
                        Patent Appeals and Interferences or by a 
                        Federal court in a case in which the patent was 
                        issued pursuant to a decision in the review 
                        reversing an adverse determination of 
                        patentability,
                the term of the patent shall be extended one day for 
                each day of the pendency of the proceeding, order, or 
                review, as the case may be.
            ``(2) Limitations.--
                    ``(A) In general.--To the extent that periods of 
                delay attributable to grounds specified in paragraph 
                (1) overlap, the period of any adjustment granted under 
                this subsection shall not exceed the actual number of 
                days the issuance of the patent was delayed.
                    ``(B) Disclaimed term.--No patent the term of which 
                has been disclaimed beyond a specified date may be 
                adjusted under this section beyond the expiration date 
                specified in the disclaimer.
                    ``(C) Reduction of period of adjustment.--
                            ``(i) The period of adjustment of the term 
                        of a patent under paragraph (1) shall be 
                        reduced by a period equal to the period of time 
                        during which the applicant failed to engage in 
                        reasonable efforts to conclude prosecution of 
                        the application.
                            ``(ii) With respect to adjustments to 
                        patent term made under the authority of 
                        paragraph (1)(B), an applicant shall be deemed 
                        to have failed to engage in reasonable efforts 
                        to conclude processing or examination of an 
                        application for the cumulative total of any 
                        periods of time in excess of 3 months that are 
                        taken to respond to a notice from the Office 
                        making any rejection, objection, argument, or 
                        other request, measuring such 3-month period 
                        from the date the notice was given or mailed to 
                        the applicant.
                            ``(iii) The Commissioner shall prescribe 
                        regulations establishing the circumstances that 
                        constitute a failure of an applicant to engage 
                        in reasonable efforts to conclude processing or 
                        examination of an application.
            ``(3) Procedures for patent term adjustment 
        determination.--
                    ``(A) The Commissioner shall prescribe regulations 
                establishing procedures for the application for and 
                determination of patent term adjustments under this 
                subsection.
                    ``(B) Under the procedures established under 
                subparagraph (A), the Commissioner shall--
                            ``(i) make a determination of the period of 
                        any patent term adjustment under this 
                        subsection, and shall transmit a notice of that 
                        determination with the written notice of 
                        allowance of the application under section 151; 
                        and
                            ``(ii) provide the applicant one 
                        opportunity to request reconsideration of any 
                        patent term adjustment determination made by 
                        the Commissioner.
                    ``(C) The Commissioner shall reinstate all or part 
                of the cumulative period of time of an adjustment under 
                paragraph (2)(C) if the applicant, prior to the 
                issuance of the patent, makes a showing that, in spite 
                of all due care, the applicant was unable to respond 
                within the 3-month period, but in no case shall more 
                than 3 additional months for each such response beyond 
                the original 3-month period be reinstated.
                    ``(D) The Commissioner shall proceed to grant the 
                patent after completion of the Commissioner's 
                determination of a patent term adjustment under the 
                procedures established under this subsection, 
                notwithstanding any appeal taken by the applicant of 
                such determination.
            ``(4) Appeal of patent term adjustment determination.--
                    ``(A) An applicant dissatisfied with a 
                determination made by the Commissioner under paragraph 
                (3) shall have remedy by a civil action against the 
                Commissioner filed in the United States District Court 
                for the District of Columbia within 180 days after the 
                grant of the patent. Chapter 7 of title 5 shall apply 
                to such action. Any final judgment resulting in a 
                change to the period of adjustment of the patent term 
                shall be served on the Commissioner, and the 
                Commissioner shall thereafter alter the term of the 
                patent to reflect such change.
                    ``(B) The determination of a patent term adjustment 
                under this subsection shall not be subject to appeal or 
                challenge by a third party prior to the grant of the 
                patent.''.
    (b) Conforming Amendments.--
            (1) Section 282 of title 35, United States Code, is amended 
        in the fourth paragraph by striking ``156 of this title'' and 
        inserting ``154(b) or 156 of this title''.
            (2) Section 1295(a)(4)(C) of title 28, United States Code, 
        is amended by striking ``145 or 146'' and inserting ``145, 146, 
        or 154(b)''.

SEC. 403. CONTINUED EXAMINATION OF PATENT APPLICATIONS.

    Section 132 of title 35, United States Code, is amended--
            (1) in the first sentence by striking ``Whenever'' and 
        inserting ``(a) Whenever''; and
            (2) by adding at the end the following:
    ``(b) The Commissioner shall prescribe regulations to provide for 
the continued examination of applications for patent at the request of 
the applicant. The Commissioner may establish appropriate fees for such 
continued examination and shall provide a 50 percent reduction in such 
fees for small entities that qualify for reduced fees under section 
41(h)(1) of this title.''.

SEC. 404. TECHNICAL CLARIFICATION.

    Section 156(a) of title 35, United States Code, is amended in the 
matter preceding paragraph (1) by inserting ``, which shall include any 
patent term adjustment granted under section 154(b),'' after ``the 
original expiration date of the patent''.

SEC. 405. EFFECTIVE DATE.

    (a) Amendments Made by Sections 402 and 404.--The amendments made 
by sections 402 and 404 shall take effect on the date that is 6 months 
after the date of the enactment of this Act and, except for a design 
patent application filed under chapter 16 of title 35, United States 
Code, shall apply to any application filed on or after the date that is 
6 months after the date of the enactment of this Act.
    (b) Amendments Made by Section 403.--The amendments made by section 
403--
            (1) shall take effect on the date that is 6 months after 
        the date of the enactment of this Act, and shall apply to all 
        applications filed under section 111(a) of title 35, United 
        States Code, on or after June 8, 1995, and all applications 
        complying with section 371 of title 35, United States Code, 
        that resulted from international applications filed on or after 
        June 8, 1995; and
            (2) do not apply to applications for design patents under 
        chapter 16 of title 35, United States Code.

 TITLE V--DOMESTIC PUBLICATION OF PATENT APPLICATIONS PUBLISHED ABROAD

SEC. 501. SHORT TITLE.

    This title may be cited as the ``Domestic Publication of Foreign 
Filed Patent Applications Act of 1999''.

SEC. 502. PUBLICATION.

    (a) Publication.--Section 122 of title 35, United States Code, is 
amended to read as follows:
``Sec. 122. Confidential status of applications; publication of patent 
              applications
    ``(a) Confidentiality.--Except as provided in subsection (b), 
applications for patents shall be kept in confidence by the Patent and 
Trademark Office and no information concerning the same given without 
authority of the applicant or owner unless necessary to carry out the 
provisions of an Act of Congress or in such special circumstances as 
may be determined by the Commissioner.
    ``(b) Publication.--
            ``(1) In general.--(A) Subject to paragraph (2), each 
        application for a patent shall be published, in accordance with 
        procedures determined by the Commissioner, promptly after the 
        expiration of a period of 18 months from the earliest filing 
        date for which a benefit is sought under this title. At the 
        request of the applicant, an application may be published 
        earlier than the end of such 18-month period.
            ``(B) No information concerning published patent 
        applications shall be made available to the public except as 
        the Commissioner determines.
            ``(C) Notwithstanding any other provision of law, a 
        determination by the Commissioner to release or not to release 
        information concerning a published patent application shall be 
        final and nonreviewable.
            ``(2) Exceptions.--(A) An application shall not be 
        published if that application is--
                    ``(i) no longer pending;
                    ``(ii) subject to a secrecy order pursuant to 
                section 181 of this title;
                    ``(iii) a provisional application filed under 
                section 111(b) of this title; or
                    ``(iv) an application for a design patent filed 
                under chapter 16 of this title.
            ``(B)(i) Where an applicant makes a request upon filing, 
        certifying that the invention disclosed in the application has 
        not and will not be the subject of an application filed in 
        another country, or under a multilateral international 
        agreement, that requires publication of applications 18 months 
        after filing, the application shall not be published as 
        provided in paragraph (1).
            ``(ii) An applicant may rescind a request made under clause 
        (i) at any time.
            ``(iii) An applicant who has made a request under clause 
        (i) but who subsequently files, in a foreign country or under a 
        multilateral international agreement specified in clause (i), 
        an application directed to the invention disclosed in the 
        application filed in the Patent and Trademark Office, shall 
        notify the Commissioner of such filing not later than 45 days 
        after the date of the filing of such foreign or international 
        application. A failure of the applicant to provide such notice 
        within the prescribed period shall result in the application 
        being regarded as abandoned, unless it is shown to the 
        satisfaction of the Commissioner that the delay in submitting 
        the notice was unintentional.
            ``(iv) Where an applicant rescinds a request made under 
        clause (i) or notifies the Commissioner that an application was 
        filed in a foreign country or under a multilateral 
        international agreement specified in clause (i), the 
        application shall be published in accordance with the 
        provisions of paragraph (1) on or as soon as is practical after 
        the date that is specified in clause (i).
            ``(v) If an applicant has filed applications in one or more 
        foreign countries, directly or through a multilateral 
        international agreement, and such foreign filed applications 
        corresponding to an application filed in the Patent and 
        Trademark Office or the description of the invention in such 
        foreign filed applications is less extensive than the 
        application or description of the invention in the application 
        filed in the Patent and Trademark Office, the applicant may 
        submit a redacted copy of the application filed in the Patent 
        and Trademark Office eliminating any part or description of the 
        invention in such application that is not also contained in any 
        of the corresponding applications filed in a foreign country. 
        The Commissioner may only publish the redacted copy of the 
        application unless the redacted copy of the application is not 
        received within 16 months after the earliest effective filing 
        date for which a benefit is sought under this title. The 
        provisions of section 154(d) shall not apply to a claim if the 
        description of the invention published in the redacted 
        application filed under this clause with respect to the claim 
        does not enable a person skilled in the art to make and use the 
        subject matter of the claim.
    ``(c) Protest and Pre-Issuance Opposition.--The Commissioner shall 
establish appropriate procedures to ensure that no protest or other 
form of pre-issuance opposition to the grant of a patent on an 
application may be initiated after publication of the application 
without the express written consent of the applicant.
    ``(d) National Security.--No application for patent shall be 
published under subsection (b)(1) where the publication or disclosure 
of such invention would be detrimental to the national security. The 
Commissioner shall establish appropriate procedures to ensure that such 
applications are promptly identified and the secrecy of such inventions 
is maintained in accordance with chapter 17 of this title.''.
    (b) Study.--
            (1) In general.--The General Accounting Office shall 
        conduct a 3-year study of the applicants who file only in the 
        United States after the effective date of this title and shall 
        provide the results of such study to the Judiciary Committees 
        of the House of Representatives and the Senate.
            (2) Contents.--The study conducted under paragraph (1) 
        shall--
                    (A) consider the number of such applicants in 
                relation to the number of applicants who file in the 
                United States and outside the United States;
                    (B) examine how many domestic-only filers request 
                at the time of filing not to be published;
                    (C) examine how many such filers rescind that 
                request or later choose to file abroad;
                    (D) examine the status of the entity seeking an 
                application and any correlation that may exist between 
                such status and the publication of patent applications; 
                and
                    (E) examine the abandonment/issuance ratios and 
                length of application pendency before patent issuance 
                or abandonment for published versus unpublished 
                applications.

SEC. 503. TIME FOR CLAIMING BENEFIT OF EARLIER FILING DATE.

    (a) In a Foreign Country.--Section 119(b) of title 35, United 
States Code, is amended to read as follows:
    ``(b)(1) No application for patent shall be entitled to this right 
of priority unless a claim is filed in the Patent and Trademark Office, 
identifying the foreign application by specifying the application 
number on that foreign application, the intellectual property authority 
or country in or for which the application was filed, and the date of 
filing the application, at such time during the pendency of the 
application as required by the Commissioner.
    ``(2) The Commissioner may consider the failure of the applicant to 
file a timely claim for priority as a waiver of any such claim. The 
Commissioner may establish procedures, including the payment of a 
surcharge, to accept an unintentionally delayed claim under this 
section.
    ``(3) The Commissioner may require a certified copy of the original 
foreign application, specification, and drawings upon which it is 
based, a translation if not in the English language, and such other 
information as the Commissioner considers necessary. Any such 
certification shall be made by the foreign intellectual property 
authority in which the foreign application was filed and show the date 
of the application and of the filing of the specification and other 
papers.''.
    (b) In the United States.--
            (1) In general.--Section 120 of title 35, United States 
        Code, is amended by adding at the end the following: ``No 
        application shall be entitled to the benefit of an earlier 
        filed application under this section unless an amendment 
        containing the specific reference to the earlier filed 
        application is submitted at such time during the pendency of 
        the application as required by the Commissioner. The 
        Commissioner may consider the failure to submit such an 
        amendment within the time period as a waiver of any benefit 
        under this section. The Commissioner may establish procedures, 
        including the payment of a surcharge, to accept an 
        unintentionally delayed submission of an amendment under this 
        section.''.
            (2) Right of priority.--Section 119(e)(1) of title 35, 
        United States Code, is amended by adding at the end the 
        following: ``No application shall be entitled to the benefit of 
        an earlier filed provisional application under this subsection 
        unless an amendment containing the specific reference to the 
        earlier filed provisional application is submitted at such time 
        during the pendency of the application as required by the 
        Commissioner. The Commissioner may consider the failure to 
        submit such an amendment within that time period as a waiver of 
        any benefit under this subsection. The Commissioner may 
        establish procedures, including the payment of a surcharge, to 
        accept an unintentionally delayed submission of an amendment 
        under this subsection during the pendency of the 
        application.''.

SEC. 504. PROVISIONAL RIGHTS.

    Section 154 of title 35, United States Code, is amended--
            (1) in the section caption by inserting ``; provisional 
        rights'' after ``patent''; and
            (2) by adding at the end the following new section:
    ``(d) Provisional Rights.--
            ``(1) In general.--In addition to other rights provided by 
        this section, a patent shall include the right to obtain a 
        reasonable royalty from any person who, during the period 
        beginning on the date of publication of the application for 
        such patent pursuant to section 122(b), or in the case of an 
        international application filed under the treaty defined in 
        section 351(a) designating the United States under Article 
        21(2)(a) of such treaty, the date of publication of the 
        application, and ending on the date the patent is issued--
                    ``(A)(i) makes, uses, offers for sale, or sells in 
                the United States the invention as claimed in the 
                published patent application or imports such an 
                invention into the United States; or
                    ``(ii) if the invention as claimed in the published 
                patent application is a process, uses, offers for sale, 
                or sells in the United States or imports into the 
                United States products made by that process as claimed 
                in the published patent application; and
                    ``(B) had actual notice of the published patent 
                application and, in a case in which the right arising 
                under this paragraph is based upon an international 
                application designating the United States that is 
                published in a language other than English, had a 
                translation of the international application into the 
                English language.
            ``(2) Right based on substantially identical inventions.--
        The right under paragraph (1) to obtain a reasonable royalty 
        shall not be available under this subsection unless the 
        invention as claimed in the patent is substantially identical 
        to the invention as claimed in the published patent 
        application.
            ``(3) Time limitation on obtaining a reasonable royalty.--
        The right under paragraph (1) to obtain a reasonable royalty 
        shall be available only in an action brought not later than 6 
        years after the patent is issued. The right under paragraph (1) 
        to obtain a reasonable royalty shall not be affected by the 
        duration of the period described in paragraph (1).
            ``(4) Requirements for international applications.--
                    ``(A) Effective date.--The right under paragraph 
                (1) to obtain a reasonable royalty based upon the 
                publication under the treaty defined in section 351(a) 
                of an international application designating the United 
                States shall commence on the date on which the Patent 
                and Trademark Office receives a copy of the publication 
                under the treaty of the international application, or, 
                if the publication under the treaty of the 
                international application is in a language other than 
                English, on the date on which the Patent and Trademark 
                Office receives a translation of the international 
                application in the English language.
                    ``(B) Copies.--The Commissioner may require the 
                applicant to provide a copy of the international 
                application and a translation thereof.''.

SEC. 505. PRIOR ART EFFECT OF PUBLISHED APPLICATIONS.

    Section 102(e) of title 35, United States Code, is amended to read 
as follows:
    ``(e) the invention was described in--
            ``(1)(A) an application for patent, published pursuant to 
        section 122(b), by another filed in the United States before 
        the invention by the applicant for patent, except that an 
        international application filed under the treaty defined in 
        section 351(a) shall have the effect under this subsection of a 
        national application published under section 122(b) only if the 
        international application designating the United States was 
        published under Article 21(2)(a) of such treaty in the English 
        language; or
            ``(B) a patent granted on an application for patent by 
        another filed in the United States before the invention by the 
        applicant for patent, except that a patent shall not be deemed 
        filed in the United States for the purposes of this subsection 
        based on the filing of an international application filed under 
        the treaty defined in section 351(a); or''.

SEC. 506. COST RECOVERY FOR PUBLICATION.

    The Commissioner of Patents and Trademarks shall recover the cost 
of early publication required by the amendment made by section 502 by 
charging a separate publication fee after notice of allowance is given 
pursuant to section 151 of title 35, United States Code.

SEC. 507. CONFORMING AMENDMENTS.

    The following provisions of title 35, United States Code, are 
amended:
            (1) Section 11 is amended in paragraph (1) of subsection 
        (a) by inserting ``and published applications for patents'' 
        after ``Patents''.
            (2) Section 12 is amended--
                    (A) in the section caption by inserting ``and 
                applications'' after ``patents''; and
                    (B) by inserting ``and published applications for 
                patents'' after ``patents''.
            (3) Section 13 is amended--
                    (A) in the section caption by inserting ``and 
                applications'' after ``patents''; and
                    (B) by inserting ``and published applications for 
                patents'' after ``patents''.
            (4) The items relating to sections 12 and 13 in the table 
        of sections for chapter 1 are each amended by inserting ``and 
        applications'' after ``patents''.
            (5) The item relating to section 122 in the table of 
        sections for chapter 11 is amended by inserting ``; publication 
        of patent applications'' after ``applications''.
            (6) The item relating to section 154 in the table of 
        sections for chapter 14 is amended by inserting ``; provisional 
        rights'' after ``patent''.
            (7) Section 181 is amended--
                    (A) in the first undesignated paragraph--
                            (i) by inserting ``by the publication of an 
                        application or'' after ``disclosure''; and
                            (ii) by inserting ``the publication of the 
                        application or'' after ``withhold'';
                    (B) in the second undesignated paragraph by 
                inserting ``by the publication of an application or'' 
                after ``disclosure of an invention'';
                    (C) in the third undesignated paragraph--
                            (i) by inserting ``by the publication of 
                        the application or'' after ``disclosure of the 
                        invention''; and
                            (ii) by inserting ``the publication of the 
                        application or'' after ``withhold''; and
                    (D) in the fourth undesignated paragraph by 
                inserting ``the publication of an application or'' 
                after ``and'' in the first sentence.
            (8) Section 252 is amended in the first undesignated 
        paragraph by inserting ``substantially'' before ``identical'' 
        each place it appears.
            (9) Section 284 is amended by adding at the end of the 
        second undesignated paragraph the following: ``Increased 
        damages under this paragraph shall not apply to provisional 
        rights under section 154(d) of this title.''.
            (10) Section 374 is amended to read as follows:
``Sec. 374. Publication of international application
    ``The publication under the treaty defined in section 351(a) of 
this title, of an international application designating the United 
States shall confer the same rights and shall have the same effect 
under this title as an application for patent published under section 
122(b), except as provided in sections 102(e) and 154(d) of this 
title.''.
            (11) Section 135(b) is amended--
                    (A) by inserting ``(1)'' after ``(b)''; and
                    (B) by adding at the end the following:
    ``(2) A claim which is the same as, or for the same or 
substantially the same subject matter as, a claim of an application 
published pursuant to section 122(b) of this title may be made in an 
application filed after the application is published only if the claim 
is made before 1 year after the date on which the application is 
published.''.

SEC. 508. EFFECTIVE DATE.

    Sections 502 through 507, and the amendments made by such sections, 
shall take effect on the date that is 1 year after the date of 
enactment of this Act and shall apply to all applications filed under 
section 111 of title 35, United States Code, on or after that date, and 
all applications complying with section 371 of title 35, United States 
Code, that resulted from international applications filed on or after 
that date. The amendments made by sections 504 and 505 shall apply to 
any such application voluntarily published by the applicant under 
procedures established under this title that is pending on the date 
that is 1 year after the date of the enactment of this Act. The 
amendment made by section 504 shall also apply to international 
applications designating the United States that are filed on or after 
the date that is 1 year after the date of the enactment of this Act.

        TITLE VI--OPTIONAL INTER PARTES REEXAMINATION PROCEDURE

SEC. 601. SHORT TITLE.

    This title may be cited as the ``Optional Inter Partes 
Reexamination Procedure Act of 1999''.

SEC. 602. EX PARTE REEXAMINATION OF PATENTS.

    Chapter 30 of title 35, United States Code, is amended in the title 
by inserting ``EX PARTE'' before ``REEXAMINATION OF PATENTS''.

SEC. 603. DEFINITIONS.

    Section 100 of title 35, United States Code, is amended by adding 
at the end the following new subsection:
    ``(e) The term `third-party requester' means a person requesting ex 
parte reexamination under section 302 or inter partes reexamination 
under section 311 who is not the patent owner.''.

SEC. 604. OPTIONAL INTER PARTES REEXAMINATION PROCEDURES.

    (a) In General.--Part 3 of title 35, United States Code, is amended 
by adding after chapter 30 the following new chapter:

      ``CHAPTER 31--OPTIONAL INTER PARTES REEXAMINATION PROCEDURES

``Sec.
``311. Request for inter partes reexamination.
``312. Determination of issue by Commissioner.
``313. Inter partes reexamination order by Commissioner.
``314. Conduct of inter partes reexamination proceedings.
``315. Appeal.
``316. Certificate of patentability, unpatentability, and claim 
                            cancellation.
``317. Inter partes reexamination prohibited.
``318. Stay of litigation.
``Sec. 311. Request for inter partes reexamination
    ``(a) In General.--Any person at any time may file a request for 
inter partes reexamination by the Office of a patent on the basis of 
any prior art cited under the provisions of section 301.
    ``(b) Requirements.--The request shall--
            ``(1) be in writing, include the identity of the real party 
        in interest, and be accompanied by payment of an inter partes 
        reexamination fee established by the Commissioner under section 
        41; and
            ``(2) set forth the pertinency and manner of applying cited 
        prior art to every claim for which reexamination is requested.
            ``(c) Copy.--Unless the requesting person is the owner of 
        the patent, the Commissioner promptly shall send a copy of the 
        request to the owner of record of the patent.
``Sec. 312. Determination of issue by Commissioner
    ``(a) Reexamination.--Not later than 3 months after the filing of a 
request for inter partes reexamination under section 311, the 
Commissioner shall determine whether a substantial new question of 
patentability affecting any claim of the patent concerned is raised by 
the request, with or without consideration of other patents or printed 
publications. On the Commissioner's initiative, and at any time, the 
Commissioner may determine whether a substantial new question of 
patentability is raised by patents and publications.
    ``(b) Record.--A record of the Commissioner's determination under 
subsection (a) shall be placed in the official file of the patent, and 
a copy shall be promptly given or mailed to the owner of record of the 
patent and to the third-party requester, if any.
    ``(c) Final Decision.--A determination by the Commissioner pursuant 
to subsection (a) shall be final and non-appealable. Upon a 
determination that no substantial new question of patentability has 
been raised, the Commissioner may refund a portion of the inter partes 
reexamination fee required under section 311.
``Sec. 313. Inter partes reexamination order by Commissioner
    ``If, in a determination made under section 312(a), the 
Commissioner finds that a substantial new question of patentability 
affecting a claim of a patent is raised, the determination shall 
include an order for inter partes reexamination of the patent for 
resolution of the question. The order may be accompanied by the initial 
action of the Patent and Trademark Office on the merits of the inter 
partes reexamination conducted in accordance with section 314.
``Sec. 314. Conduct of inter partes reexamination proceedings
    ``(a) In General.--Subject to subsection (b), reexamination shall 
be conducted according to the procedures established for initial 
examination under the provisions of sections 132 and 133, except as 
provided for under this section. In any inter partes reexamination 
proceeding under this chapter, the patent owner shall be permitted to 
propose any amendment to the patent and a new claim or claims, except 
that no proposed amended or new claim enlarging the scope of the claims 
of the patent shall be permitted.
    ``(b) Response.--(1) This subsection shall apply to any inter 
partes reexamination proceeding in which the order for inter partes 
reexamination is based upon a request by a third-party requester.
    ``(2) With the exception of the inter partes reexamination request, 
any document filed by either the patent owner or the third-party 
requester shall be served on the other party. In addition, the third-
party requester shall receive a copy of any communication sent by the 
Office to the patent owner concerning the patent subject to the inter 
partes reexamination proceeding.
    ``(3) Each time that the patent owner files a response to an action 
on the merits from the Patent and Trademark Office, the third-party 
requester shall have one opportunity to file written comments 
addressing issues raised by the action of the Office or the patent 
owner's response thereto, if those written comments are received by the 
Office within 30 days after the date of service of the patent owner's 
response.
    ``(c) Special Dispatch.--Unless otherwise provided by the 
Commissioner for good cause, all inter partes reexamination proceedings 
under this section, including any appeal to the Board of Patent Appeals 
and Interferences, shall be conducted with special dispatch within the 
Office.
``Sec. 315. Appeal
    ``(a) Patent Owner.--The patent owner involved in an inter partes 
reexamination proceeding under this chapter--
            ``(1) may appeal under the provisions of section 134 and 
        may appeal under the provisions of sections 141 through 144, 
        with respect to any decision adverse to the patentability of 
        any original or proposed amended or new claim of the patent; 
        and
            ``(2) may be a party to any appeal taken by a third-party 
        requester under subsection (b).
    ``(b) Third-Party Requester.--A third-party requester may--
            ``(1) appeal under the provisions of section 134 with 
        respect to any final decision favorable to the patentability of 
        any original or proposed amended or new claim of the patent; or
            ``(2) be a party to any appeal taken by the patent owner 
        under the provisions of section 134, subject to subsection (c).
    ``(c) Civil Action.--A third-party requester whose request for an 
inter partes reexamination results in an order under section 313 is 
estopped from asserting at a later time, in any civil action arising in 
whole or in part under section 1338 of title 28, the invalidity of any 
claim finally determined to be valid and patentable on any ground which 
the third-party requester raised or could have raised during the inter 
partes reexamination proceedings. This subsection does not prevent the 
assertion of invalidity based on newly discovered prior art unavailable 
to the third-party requester and the Patent and Trademark Office at the 
time of the inter partes reexamination proceedings.
``Sec. 316. Certificate of patentability, unpatentability, and claim 
              cancellation
    ``(a) In General.--In an inter partes reexamination proceeding 
under this chapter, when the time for appeal has expired or any appeal 
proceeding has terminated, the Commissioner shall issue and publish a 
certificate canceling any claim of the patent finally determined to be 
unpatentable, confirming any claim of the patent determined to be 
patentable, and incorporating in the patent any proposed amended or new 
claim determined to be patentable.
    ``(b) Amended or New Claim.--Any proposed amended or new claim 
determined to patentable and incorporated into a patent following an 
inter partes reexamination proceeding shall have the same effect as 
that specified in section 252 of this title for reissued patents on the 
right of any person who made, purchased, or used within the United 
States, or imported into the United States, anything patented by such 
proposed amended or new claim, or who made substantial preparation for 
the same, prior to issuance of a certificate under the provisions of 
subsection (a) of this section.
``Sec. 317. Inter partes reexamination prohibited
    ``(a) Order for Reexamination.--Notwithstanding any provision of 
this chapter, once an order for inter partes reexamination of a patent 
has been issued under section 313, neither the patent owner nor the 
third-party requester, if any, nor privies of either, may file a 
subsequent request for inter partes reexamination of the patent until 
an inter partes reexamination certificate is issued and published under 
section 316, unless authorized by the Commissioner.
    ``(b) Final Decision.--Once a final decision has been entered 
against a party in a civil action arising in whole or in part under 
section 1338 of title 28 that the party has not sustained its burden of 
proving the invalidity of any patent claim in suit or if a final 
decision in an inter partes reexamination proceeding instituted by a 
third-party requester is favorable to the patentability of any original 
or proposed amended or new claim of the patent then neither that party 
nor its privies may thereafter request inter partes reexamination of 
any such patent claim on the basis of issues which that party or its 
privies raised or could have raised in such civil action or inter 
partes reexamination proceeding, and an inter partes reexamination 
requested by that party or its privies on the basis of such issues may 
not thereafter be maintained by the Office, notwithstanding any other 
provision of this chapter. This subsection does not prevent the 
assertion of invalidity based on newly discovered prior art unavailable 
to the third-party requester and the Patent and Trademark Office at the 
time of the inter partes reexamination proceedings.
``Sec. 318. Stay of litigation
    ``Once an order for inter partes reexamination of a patent has been 
issued under section 313, the patent owner may obtain a stay of any 
pending litigation which involves an issue of patentability of any 
claims of the patent which are the subject of the inter partes 
reexamination order, unless the court before which such litigation is 
pending determines that a stay would not serve the interests of 
justice.''.
    (b) Conforming Amendments.--The table of chapters for part III of 
title 25, United States Code, is amended by striking the item relating 
to chapter 30 and inserting the following:

``30. Prior Art Citations to Office and Ex Parte                    301
                            Reexamination of Patents.
``31. Optional Inter Partes Reexamination of Patents........     311''.

SEC. 605. CONFORMING AMENDMENTS.

    (a) Patent Fees; Patent Search Systems.--Section 41(a)(7) of title 
35, United States Code, is amended to read as follows:
            ``(7) On filing each petition for the revival of an 
        unintentionally abandoned application for a patent, for the 
        unintentionally delayed payment of the fee for issuing each 
        patent, or for an unintentionally delayed response by the 
        patent owner in any reexamination proceeding, $1,210, unless 
        the petition is filed under section 133 or 151 of this title, 
        in which case the fee shall be $110.''.
    (b) Appeal to the Board of Patents Appeals and Interferences.--
Section 134 of title 35, United States Code, is amended to read as 
follows:
``Sec. 134. Appeal to the Board of Patent Appeals and Interferences
    ``(a) Patent Applicant.--An applicant for a patent, any of whose 
claims has been twice rejected, may appeal from the decision of the 
primary examiner to the Board of Patent Appeals and Interferences, 
having once paid the fee for such appeal.
    ``(b) Patent Owner.--A patent owner in any reexamination proceeding 
may appeal from the final rejection of any claim by the primary 
examiner to the Board of Patent Appeals and Interferences, having once 
paid the fee for such appeal.
    ``(c) Third-Party.--A third-party requester in an inter partes 
proceeding may appeal to the Board of Patent Appeals and Interferences 
from the final decision of the primary examiner favorable to the 
patentability of any original or proposed amended or new claim of a 
patent, having once paid the fee for such appeal. The third-party 
requester may not appeal the decision of the Board of Patent Appeals 
and Interferences.''.
    (c) Appeal to Court of Appeals for the Federal Circuit.--Section 
141 of title 35, United States Code, is amended by adding the following 
after the second sentence: ``A patent owner in any reexamination 
proceeding dissatisfied with the final decision in an appeal to the 
Board of Patent Appeals and Interferences under section 134 may appeal 
the decision only to the United States Court of Appeals for the Federal 
Circuit.''.
    (d) Proceedings on Appeal.--Section 143 of title 35, United States 
Code, is amended by amending the third sentence to read as follows: 
``In any reexamination cases, the Commissioner shall submit to the 
court in writing the grounds for the decision of the Patent and 
Trademark Office, addressing all the issues involved in the appeal.''.
    (e) Civil Action To Obtain Patent.--Section 145 of title 35, United 
States Code, is amended in the first sentence by inserting ``(a)'' 
after ``section 134''.

SEC. 606. REPORT TO CONGRESS.

    Not later than 5 years after the effective date of this title, the 
Commissioner of Patents and Trademarks shall submit to the Congress a 
report evaluating whether the inter partes reexamination proceedings 
established under the amendments made by this title are inequitable to 
any of the parties in interest and, if so, the report shall contain 
recommendations for changes to the amendments made by this title to 
remove such inequity.

SEC. 607. ESTOPPEL EFFECT OF REEXAMINATION.

    Any party who requests an inter partes reexamination under section 
311 of title 35, United States Code, is estopped from challenging at a 
later time, in any civil action, any fact determined during the process 
of such reexamination, except with respect to a fact determination 
later proved to be erroneous based on information unavailable at the 
time of the inter partes reexamination decision. If this section is 
held to be unenforceable, the enforceability of the rest of this title 
or of this Act shall not be denied as a result.

SEC. 608. EFFECTIVE DATE.

    This title and the amendments made by this title shall take effect 
on the date that is 1 year after the date of the enactment of this Act 
and shall apply to inter partes reexamination requests filed on or 
after such date.

               TITLE VII--MISCELLANEOUS PATENT PROVISIONS

SEC. 701. PROVISIONAL APPLICATIONS.

    (a) Abandonment.--Section 111(b)(5) of title 35, United States 
Code, is amended to read as follows:
            ``(5) Abandonment.--Notwithstanding the absence of a claim, 
        upon timely request and as prescribed by the Commissioner, a 
        provisional application may be treated as an application filed 
        under subsection (a). Subject to section 119(e)(3) of this 
        title, if no such request is made, the provisional application 
        shall be regarded as abandoned 12 months after the filing date 
        of such application and shall not be subject to revival after 
        such 12-month period.''.
    (b) Technical Amendment Relating to Weekends and Holidays.--Section 
119(e) of title 35, United States Code, is amended by adding at the end 
the following:
            ``(3) If the day that is 12 months after the filing date of 
        a provisional application falls on a Saturday, Sunday, or 
        Federal holiday within the District of Columbia, the period of 
        pendency of the provisional application shall be extended to 
        the next succeeding secular or business day.''.
    (c) Elimination of Copendency Requirement.--Section 119(e)(2) of 
title 35, United States Code, is amended by striking ``and the 
provisional application was pending on the filing date of the 
application for patent under section 111(a) or section 363 of this 
title''.
    (d) Effective Date.--The amendments made by this section shall take 
effect on the date of the enactment of this Act and shall apply to any 
provisional application filed on or after June 8, 1995, except that the 
amendments made by subsections (b) and (c) shall have no effect with 
respect to any patent which is the subject of litigation in an action 
commenced before such date of the enactment.

SEC. 702. INTERNATIONAL APPLICATIONS.

    Section 119 of title 35, United States Code, is amended as 
follows--
            (1) In subsection (a), insert ``or in a WTO member 
        country,'' after ``or citizens of the United States,''.
            (2) At the end of section 119 add the following new 
        subsections:
    ``(f) Applications for plant breeder's rights filed in a WTO member 
country (or in a foreign UPOV Contracting Party) shall have the same 
effect for the purpose of the right of priority under subsections (a) 
through (c) of this section as applications for patents, subject to the 
same conditions and requirements of this section as apply to 
applications for patents.
    ``(g) As used in this section--
            ``(1) the term `WTO member country' has the same meaning as 
        the term is defined in section 104(b)(2) of this title; and
            ``(2) the term `UPOV Contracting Party' means a member of 
        the International Convention for the Protection of New 
        Varieties of Plants.''.

SEC. 703. CERTAIN LIMITATIONS ON DAMAGES FOR PATENT INFRINGEMENT NOT 
              APPLICABLE.

    Section 287(c)(4) of title 35, United States Code, is amended by 
striking ``before the date of enactment of this subsection'' and 
inserting ``based on an application the earliest effective filing date 
of which is prior to September 30, 1996''.

SEC. 704. ELECTRONIC FILING AND PUBLICATIONS.

    (a) Printing of Papers Filed.--Section 22 of title 35, United 
States Code, is amended by striking ``printed or typewritten'' and 
inserting ``printed, typewritten, or on an electronic medium''.
    (b) Publications.--Section 11(a) of title 35, United States Code, 
is amended by amending the matter preceding paragraph 1 to read as 
follows:
    ``(a) The Commissioner may publish in printed, typewritten, or 
electronic form, the following:''.
    (c) Copies of Patents for Public Libraries.--Section 13 of title 
35, United States Code, is amended by striking ``The Commissioner may 
supply printed copies of specifications and drawings of patents'' and 
inserting ``The Commissioner may supply copies of specifications and 
drawings of patents in printed or electronic form''.
    (d) Maintenance of Collections.--
            (1) Section 41(i)(1) of title 35, United States Code, is 
        amended by striking ``The Commissioner shall maintain, for use 
        by the public, paper or microform'' and inserting ``The 
        Commissioner shall maintain, for use by the public, paper, 
        microform, or electronic''.
            (2) The Commissioner shall not, pursuant to the amendment 
        made by paragraph (1), cease to maintain, for use by the 
        public, paper or microform collections of United States 
        patents, foreign patent documents, and United States trademark 
        registrations, except pursuant to notice and opportunity for 
        public comment and except the Commissioner shall first submit a 
        report to the Committees on the Judiciary of the Senate and the 
        House of Representatives detailing such plan, including a 
        description of the mechanisms in place to ensure the integrity 
        of such collections and the data contained therein, as well as 
        to ensure prompt public access to the most current available 
        information, and certifying that the implementation of such 
        plan will not negatively impact the public.

SEC. 705. STUDY AND REPORT ON BIOLOGICAL DEPOSITS IN SUPPORT OF 
              BIOTECHNOLOGY PATENTS.

    (a) In General.--No later than 6 months after the date of the 
enactment of this Act, the Comptroller General of the United States, in 
consultation with the Commissioner of Patents and Trademarks, shall 
conduct a study and submit a report to Congress on the potential risks 
to the United States biotechnology industry relating to biological 
deposits in support of biotechnology patents.
    (b) Contents.--The study conducted under this section shall 
include--
            (1) an examination of the risk of export and the risk of 
        transfers to third parties of biological deposits, and the 
        risks posed by the change to 18-month publication requirements 
        made by this Act;
            (2) an analysis of comparative legal and regulatory 
        regimes; and
            (3) any related recommendations.
    (c) Consideration of Report.--In drafting regulations affecting 
biological deposits (including any modification of title 37, Code of 
Federal Regulations, section 1.801 et seq.), the Patent and Trademark 
Office shall consider the recommendations of the study conducted under 
this section.

SEC. 706. PRIOR INVENTION.

    Section 102(g) of title 35, United States Code, is amended to read 
as follows:
    ``(g)(1) during the course of an interference conducted under 
section 135 or section 291, another inventor involved therein 
establishes, to the extent permitted in section 104, that before such 
person's invention thereof the invention was made by such other 
inventor and not abandoned, suppressed, or concealed, or (2) before 
such person's invention thereof, the invention was made in this country 
by another inventor who had not abandoned, suppressed, or concealed it. 
In determining priority of invention under this subsection, there shall 
be considered not only the respective dates of conception and reduction 
to practice of the invention, but also the reasonable diligence of one 
who was first to conceive and last to reduce to practice, from a time 
prior to conception by the other.''.

SEC. 707. PRIOR ART EXCLUSION FOR CERTAIN COMMONLY ASSIGNED PATENTS.

    (a) Prior Art Exclusion.--Section 103(c) of title 35, United States 
Code, is amended by striking ``subsection (f) or (g)'' and inserting 
``one or more of subsections (e), (f), and (g)''.
    (b) Effective Date.--The amendment made by this section shall apply 
to any application for patent filed on or after the date of the 
enactment of this Act.

SEC. 708. EXCHANGE OF COPIES OF PATENTS WITH FOREIGN COUNTRIES.

    Section 12 of title 35, United States Code, is amended by adding at 
the end the following: ``The Commissioner shall not enter into an 
agreement to provide such copies of specifications and drawings of 
United States patents and applications to a foreign country, other than 
a NAFTA country or a WTO member country, without the express 
authorization of the Secretary of Commerce. For purposes of this 
section, the terms `NAFTA country' and `WTO member country' have the 
meanings given those terms in section 104(b).''.

SEC. 709. NATIONAL SECURITY.

    Section 6 of title 35, United States Code, is amended by adding at 
the end the following new subsection:
    ``(d) The Commissioner, in consultation with the Director of the 
Office of Personnel Management, shall maintain a program for 
identifying national security positions and providing for appropriate 
security clearances, in order to maintain the secrecy of certain 
inventions, as described in section 181, and to prevent disclosure of 
sensitive and strategic information in the interest of national 
security.''.
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