II

106TH CONGRESS

1ST SESSION S. 1798

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

inventors and innovators, protect patent terms, reduce patent litigation,

and for other purposes.

IN THE SENATE OF THE UNITED STATES

OCTOBER 27, 1999

Mr. HATCH (for himself and Mr. LEAHY) introduced the following bill; which

was read twice and referred to the Committee on the Judiciary

A BILL

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

protection for inventors and innovators, protect patent

terms, reduce patent litigation, and for other purposes.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,

3 SECTION 1. SHORT TITLE.

4 This Act may be cited as the ‘‘American Inventors

5 Protection Act of 1999’’.

6 SEC. 2. TABLE OF CONTENTS.

7 The table of contents is as follows:

Sec. 1. Short title.

Sec. 2. Table of contents.

TITLE I—INVENTORS’ RIGHTS
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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.
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Sec. 704. Electronic filing and publications.

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

patents.

Sec. 706. Prior invention.

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

Sec. 708. Exchange of copies of patents with foreign countries.

Sec. 709. National security.

1 TITLE I—INVENTORS’ RIGHTS

2 SEC. 101. SHORT TITLE.

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

4 of 1999’’.

5 SEC. 102. INTEGRITY IN INVENTION PROMOTION SERVICES.

6 (a) Chapter 29 of title 35, United States Code, is

7 amended by adding at the end the following new section:

8 ‘‘§ 297. Improper and deceptive invention promotion

9 ‘‘(a) IN GENERAL.—An invention promoter shall

10 have a duty to disclose the following information to a cus11 tomer in writing, prior to entering into a contract for in12 vention promotion services:

13 ‘‘(1) the total number of inventions evaluated

14 by the invention promoter for commercial potential

15 in the past 5 years, as well as the number of those

16 inventions that received positive evaluations, and the

17 number of those inventions that received negative

18 evaluations;

19 ‘‘(2) the total number of customers who have

20 contracted with the invention promoter in the past

21 5 years, not including customers who have pur22 chased trade show services, research, advertising, or
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1 other nonmarketing services from the invention pro2 moter, or who have defaulted in their payment to

3 the invention promoter;

4 ‘‘(3) the total number of customers known by

5 the invention promoter to have received a net finan6 cial profit as a direct result of the invention pro7 motion services provided by such invention promoter;

8 ‘‘(4) the total number of customers known by

9 the invention promoter to have received license

10 agreements for their inventions as a direct result of

11 the invention promotion services provided by such

12 invention promoter; and

13 ‘‘(5) the names and addresses of all previous in14 vention promotion companies with which the inven15 tion promoter or its officers have collectively or indi16 vidually been affiliated in the previous 10 years.

17 ‘‘(b) CIVIL ACTION.—(1) Any customer who is found

18 by a court to have been injured by any material false or

19 fraudulent statement or representation, or any omission

20 of material fact, by an invention promoter (or any agent,

21 employee, director, officer, partner, or independent con22 tractor of such invention promoter), or by the failure of

23 an invention promoter to disclose such information as re24 quired under subsection (a), may recover in a civil action

25 against the invention promoter (or the officers, directors,
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1 or partners of such invention promoter), in addition to

2 reasonable costs and attorneys’ fees—

3 ‘‘(A) the amount of actual damages incurred by

4 the plaintiff; or

5 ‘‘(B) at the election of the plaintiff at any time

6 before final judgment is rendered, statutory damages

7 in a sum of not more than $5,000, as the court con8 siders just.

9 ‘‘(2) Notwithstanding paragraph (1), in a case where

10 the plaintiff sustains the burden of proof, and the court

11 finds, that the invention promoter intentionally misrepre12 sented or omitted a material fact to such customer, or will13 fully failed to disclose such information as required under

14 subsection (a), with the purpose of deceiving that cus15 tomer, the court may increase damages to not more than

16 3 times the amount awarded, taking into account past

17 complaints made against the invention promoter that re18 sulted in regulatory sanctions or other corrective actions

19 based on those records compiled by the Commissioner

20 under subsection (d).

21 ‘‘(c) DEFINITIONS.—For purposes of this section—

22 ‘‘(1) a ‘contract for invention promotion serv23 ices’ means a contract by which an invention pro24 moter undertakes invention promotion services for a

25 customer;
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1 ‘‘(2) a ‘customer’ is any person, firm, partner2 ship, corporation or other entity who enters into a

3 contract with an invention promoter for invention

4 promotion services;

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

6 person, firm, partnership, corporation, or other enti7 ty who offers to perform or performs invention pro8 motion services for, or on behalf of, a customer, but

9 does not include—

10 ‘‘(A) any department or agency of the Fed11 eral Government or of a State or local govern12 ment;

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

14 or educational organization, qualified under ap15 plicable State law or described under section

16 170(b)(1)(A) of the Internal Revenue Code of

17 1986;

18 ‘‘(C) any person or entity involved in the

19 evaluation to determine commercial potential of,

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

21 a previously filed nonprovisional utility patent

22 application;

23 ‘‘(D) any party participating in a trans24 action involving the sale of the stock or assets

25 of a business; or
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1 ‘‘(E) any party who directly engages in the

2 business of retail sales of products or the dis3 tribution of products; and

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

5 means any act, where the customer is an individual,

6 done for the purpose of procuring a firm, corpora7 tion, or other entity to develop and market products

8 or services that include the invention.

9 ‘‘(d) RECORDS OF COMPLAINTS.—

10 ‘‘(1) RELEASE OF COMPLAINTS.—The Commis11 sioner shall make all complaints received by the Pat12 ent and Trademark Office involving invention pro13 moters publicly available, together with any response

14 of the invention promoters.

15 ‘‘(2) REQUEST FOR COMPLAINTS.—The Com16 missioner may request complaints relating to inven17 tion promotion services from any Federal or State

18 agency and include such complaints in the records

19 maintained under paragraph (1), together with any

20 response of the invention promoters.’’.

21 (b) CONFORMING AMENDMENT.—The table of sec22 tions at the beginning of chapter 29 of title 35, United

23 States Code, is amended by adding at the end the fol24 lowing new item:

‘‘§ 297. Improper and deceptive invention promotion.’’.
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1 SEC. 103. EFFECTIVE DATE.

2 This title and the amendments made by this title

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

4 of this Act.

5 TITLE II—PATENT AND

6 TRADEMARK FEE FAIRNESS

7 SEC. 201. SHORT TITLE.

8 This title may be cited as the ‘‘Patent and Trade9 mark Fee Fairness Act of 1999’’.

10 SEC. 202. ADJUSTMENT OF PATENT FEES.

11 (a) ORIGINAL FILING FEE.—Section 41(a)(1)(A) of

12 title 35, United States Code, relating to the fee for filing

13 an original patent application, is amended by striking

14 ‘‘$760’’ and inserting ‘‘$690’’.

15 (b) REISSUE FEE.—Section 41(a)(4)(A) of title 35,

16 United States Code, relating to the fee for filing for a re17 issue of a patent, is amended by striking ‘‘$760’’ and in18 serting ‘‘$690’’.

19 (c) NATIONAL FEE FOR CERTAIN INTERNATIONAL

20 APPLICATIONS.—Section 41(a)(10) of title 35, United

21 States Code, relating to the national fee for certain inter22 national applications, is amended by striking ‘‘$760’’ and

23 inserting ‘‘$690’’.

24 (d) MAINTENANCE FEES.—Section 41(b)(1) of title

25 35, United States Code, relating to certain maintenance
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1 fees, is amended by striking ‘‘$940’’ and inserting

2 ‘‘$830’’.

3 SEC. 203. ADJUSTMENT OF TRADEMARK FEES.

4 Notwithstanding the second sentence of section 31(a)

5 of the Trademark Act of 1946 (15 U.S.C. 111(a)), the

6 Commissioner of Patents and Trademarks is authorized

7 in fiscal year 2000 to adjust trademark fees without re8 gard to fluctuations in the Consumer Price Index during

9 the preceding 12 months.

10 SEC. 204. STUDY ON ALTERNATIVE FEE STRUCTURES.

11 The Commissioner of Patents and Trademarks shall

12 conduct a study of alternative fee structures that could

13 be adopted by the United States Patent and Trademark

14 Office to encourage maximum participation by the inven15 tor community in the United States. The Commissioner

16 shall submit such study to the Committees on the Judici17 ary of the House of Representatives and the Senate not

18 later than 1 year after the date of enactment of this Act.

19 SEC. 205. PATENT AND TRADEMARK OFFICE FUNDING.

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

21 amended in the second sentence—

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

23 ‘‘All fees available’’; and

24 (2) by striking ‘‘may’’ and inserting ‘‘shall’’.
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1 SEC. 206. EFFECTIVE DATE.

2 (a) Except as provided in subsection (b), the amend3 ments made by this title shall take effect on the date of

4 the enactment of this Act.

5 (b) The amendments made by section 202 of this title

6 shall take effect 30 days after the date of the enactment

7 of this Act.

8 TITLE III—FIRST INVENTOR

9 DEFENSE

10 SEC. 301. SHORT TITLE.

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

12 Act of 1999’’.

13 SEC. 302. DEFENSE TO PATENT INFRINGEMENT BASED ON

14 EARLIER INVENTOR.

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

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

17 section:

18 ‘‘§ 273. Defense to infringement based on earlier in19 ventor

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

21 ‘‘(1) the terms ‘commercially used’ and ‘com22 mercial use’ mean use of a method in the United

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

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

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

26 useful end result, whether or not the subject matter
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1 at issue is accessible to or otherwise known to the

2 public, except that the subject matter for which com3 mercial marketing or use is subject to a premar4 keting regulatory review period during which the

5 safety or efficacy of the subject matter is estab6 lished, including any period specified in section

7 156(g), shall be deemed ‘commercially used’ and in

8 ‘commercial use’ during such regulatory review pe9 riod;

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

11 nonprofit research laboratory, or nonprofit entity

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

13 use for which the public is the intended beneficiary

14 shall be considered to be a use described in para15 graph (1), except that the use—

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

17 this section only for continued use by and in

18 the laboratory or nonprofit entity; and

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

20 with respect to any subsequent commercializa21 tion or use outside such laboratory or nonprofit

22 entity;

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

24 doing or conducting business; and
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1 ‘‘(4) the ‘effective filing date’ of a patent is the

2 earlier of the actual filing date of the application for

3 the patent or the filing date of any earlier United

4 States, foreign, or international application to which

5 the subject matter at issue is entitled under section

6 199, 120, or 365 of this title.

7 ‘‘(b) DEFENSE TO INFRINGEMENT.—

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

9 action for infringement under section 271 of this

10 title with respect to any subject matter that would

11 otherwise infringe one or more claims for a method

12 in the patent being asserted against a person, if

13 such person had, acting in good faith, actually re14 duced the subject matter to practice at least one

15 year before the effective filing date of such patent,

16 and commercially used the subject matter before the

17 effective filing date of such patent.

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

19 other disposition of a useful end product produced

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

21 a defense under this section with respect to that use22 ful end result shall exhaust the patent owner’s rights

23 under the patent to the extent such rights would

24 have been exhausted had such sale or other disposi25 tion been made by the patent owner.
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1 ‘‘(3) LIMITATIONS AND QUALIFICATIONS OF DE2 FENSE.—The defense to infringement under this

3 section is subject to the following:

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

5 the defense under this section unless the inven6 tion for which the defense is asserted is for a

7 method.

8 ‘‘(B) DERIVATION.—A person may not as9 sert the defense under this section if the subject

10 matter on which the defense is based was de11 rived from the patentee or persons in privity

12 with the patentee.

13 ‘‘(C) NOT A GENERAL LICENSE.—The de14 fense asserted by a person under this section is

15 not a general license under all claims of the

16 patent at issue, but extends only to the specific

17 subject matter claimed in the patent with re18 spect to which the person can assert a defense

19 under this chapter, except that the defense shall

20 also extend to variations in the quantity or vol21 ume of use of the claimed subject matter, and

22 to improvements in the claimed subject matter

23 that do not infringe additional specifically

24 claimed subject matter of the patent.
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1 ‘‘(4) BURDEN OF PROOF.—A person asserting

2 the defense under this section shall have the burden

3 of establishing the defense by clear and convincing

4 evidence.

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

6 has abandoned commercial use of subject matter

7 may not rely on activities performed before the date

8 of such abandonment in establishing a defense under

9 this section with respect to actions taken after the

10 date of such abandonment.

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

12 this section may be asserted only by the person who

13 performed the acts necessary to establish the defense

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

15 right to assert the defense shall not be licensed or

16 assigned or transferred to another person except as

17 an ancillary and subordinate part of a good faith as18 signment or transfer for other reasons of the entire

19 enterprise or line of business to which the defense

20 relates.

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

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

23 assignment or transfer of an entire enterprise or line

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

25 asserted for uses at sites where the subject matter
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1 that would otherwise infringe one or more of the

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

3 date of the patent or the date of the assignment or

4 transfer of such enterprise or line of business.

5 ‘‘(8) UNSUCCESSFUL ASSERTION OF DE6 FENSE.—If the defense under this section is pleaded

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

8 who subsequently fails to demonstrate a reasonable

9 basis for asserting the defense, the court shall find

10 the case exceptional for the purpose of awarding at11 torney’s fees under section 285 of this title.

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

13 deemed to be invalid under section 102 or 103 of

14 this title solely because a defense is raised or estab15 lished under this section.’’.

16 (b) CONFORMING AMENDMENT.—The table of sec17 tions at the beginning of chapter 28 of title 35, United

18 States Code, is amended by adding at the end the fol19 lowing new item:

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

20 SEC. 303. STUDY AND REPORT ON BUSINESS METHODS PAT21 ENTS.

22 (a) IN GENERAL.—No later than 120 days after the

23 date of the enactment of this Act, the General Accounting

24 Office, in consultation with the Patent and Trademark Of25 fice, shall conduct a study and submit a report to the Ju-
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1 diciary Committees of the Senate and House of Represent2 atives on the effect on innovation, competition (foreign

3 and domestic), and American businesses (including elec4 tronic commerce) of the quality of patents being issued

5 on business methods by the Patent and Trademark Office.

6 (b) CONTENTS.—The study conducted under this sec7 tion shall include—

8 (1) an examination of the number of applica9 tions received for patents on methods of doing busi10 ness, including recent trends and forecasts, and the

11 number of patents granted based on such applica12 tions;

13 (2) an examination of the nature of the appli14 cants filing for and receiving such business methods

15 patents, including by industry sectors, the extent to

16 which such applicants have filed for patent protec17 tion for such business methods in foreign countries,

18 and the nature of the technologies or business mod19 els represented in such patents and patent applica20 tions;

21 (3) an evaluation of the database of patents,

22 publications, and other information used by the Pat23 ent and Trademark Office to examine applications

24 for patents on methods of doing business;
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1 (4) an analysis of the types of skills needed by

2 patent examiners to adequately examine applications

3 for patents on business methods, whether there are

4 a sufficient number of examiners handling these ap5 plications with the requisite skills, and what types of

6 training, if any, may be called for to augment these

7 skills;

8 (5) an analysis of the economic and competitive

9 impact of patents issued on business methods on

10 American businesses, particularly on businesses in11 volved in electronic commerce, including the effect of

12 such patents on companies’ abilities to raise invest13 ment capital, compete in their relevant markets, and

14 innovate in emerging markets and technologies; and

15 (6) the extent, outcome, and effects on Amer16 ican business, competition, and innovation of litiga17 tion surrounding approved business methods pat18 ents.

19 SEC. 304. EFFECTIVE DATE AND APPLICABILITY.

20 This title and the amendments made by this title

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

22 but shall not apply to any action for infringement that

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

24 to any subject matter for which an adjudication of in-
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1 fringement, including a consent judgment, has been made

2 before such date of enactment.

3 TITLE IV—PATENT TERM

4 GUARANTEE

5 SEC. 401. SHORT TITLE.

6 This title may be cited as the ‘‘Patent Term Guar7 antee Act of 1999’’.

8 SEC. 402. PATENT TERM GUARANTEE AUTHORITY.

9 (a) ADJUSTMENT OF PATENT TERM.—Section

10 154(b) of title 35, United States Code, is amended to read

11 as follows:

12 ‘‘(b) ADJUSTMENT OF PATENT TERM.—

13 ‘‘(1) PATENT TERM GUARANTEES.—

14 ‘‘(A) GUARANTEE OF PROMPT PATENT

15 AND TRADEMARK OFFICE RESPONSES.—Subject

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

17 issue of an original patent is delayed due to the

18 failure of the Patent and Trademark Office

19 to—

20 ‘‘(i) provide at least 1 of the notifica21 tions under section 132 of this title or a

22 notice of allowance under section 151 of

23 this title not later than 14 months after—
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1 ‘‘(I) the date on which an appli2 cation was filed under section 111(a)

3 of this title; or

4 ‘‘(II) the date on which an inter5 national application fulfilled the re6 quirements of section 371 of this title;

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

8 132, or to an appeal taken under section

9 134, within 4 months after the date on

10 which the reply was filed or the appeal was

11 taken;

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

13 months after the date of a decision by the

14 Board of Patent Appeals and Interferences

15 under section 134 or 135 or a decision by

16 a Federal court under section 141, 145, or

17 146 in a case in which allowable claims re18 main in the application; or

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

20 after the date on which the issue fee was

21 paid under section 151 and all outstanding

22 requirements were satisfied,

23 the term of the patent shall be extended one

24 day for each day after the end of the period

25 specified in clause (i), (ii), (iii), or (iv), as the
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1 case may be, until the action described in such

2 clause is taken.

3 ‘‘(B) GUARANTEE OF NO MORE THAN 3-

4 YEAR APPLICATION PENDENCY.—Subject to the

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

6 an original patent is delayed due to the failure

7 of the Patent and Trademark Office to issue a

8 patent within 3 years after the actual filing

9 date of the application in the United States, not

10 including—

11 ‘‘(i) any time consumed by continued

12 examination of the application requested

13 by the applicant under section 132(b);

14 ‘‘(ii) any time consumed by a pro15 ceeding under section 135(a), any time

16 consumed by the imposition of an order

17 pursuant to section 181, or any time con18 sumed by appellate review by the Board of

19 Patent Appeals and Interferences or by a

20 Federal court; or

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

22 the application by the Patent and Trade23 mark Office requested by the applicant ex24 cept as permitted by paragraph (3)(C),
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1 the term of the patent shall be extended 1 day

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

3 until the patent is issued.

4 ‘‘(C) GUARANTEE OR ADJUSTMENTS FOR

5 DELAYS DUE TO INTERFERENCES, SECRECY OR6 DERS, AND APPEALS.—Subject to the limita7 tions under paragraph (2), if the issue of an

8 original patent is delayed due to—

9 ‘‘(i) a proceeding under section

10 135(a);

11 ‘‘(ii) the imposition of an order pursu12 ant to section 181; or

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

14 Patent Appeals and Interferences or by a

15 Federal court in a case in which the patent

16 was issued pursuant to a decision in the

17 review reversing an adverse determination

18 of patentability,

19 the term of the patent shall be extended one

20 day for each day of the pendency of the pro21 ceeding, order, or review, as the case may be.

22 ‘‘(2) LIMITATIONS.—

23 ‘‘(A) IN GENERAL.—To the extent that pe24 riods of delay attributable to grounds specified

25 in paragraph (1) overlap, the period of any ad-
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1 justment granted under this subsection shall

2 not exceed the actual number of days the

3 issuance of the patent was delayed.

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

5 term of which has been disclaimed beyond a

6 specified date may be adjusted under this sec7 tion beyond the expiration date specified in the

8 disclaimer.

9 ‘‘(C) REDUCTION OF PERIOD OF ADJUST10 MENT.—

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

12 term of a patent under paragraph (1) shall

13 be reduced by a period equal to the period

14 of time during which the applicant failed

15 to engage in reasonable efforts to conclude

16 prosecution of the application.

17 ‘‘(ii) With respect to adjustments to

18 patent term made under the authority of

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

20 deemed to have failed to engage in reason21 able efforts to conclude processing or ex22 amination of an application for the cumu23 lative total of any periods of time in excess

24 of 3 months that are taken to respond to

25 a notice from the Office making any rejec-
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1 tion, objection, argument, or other request,

2 measuring such 3-month period from the

3 date the notice was given or mailed to the

4 applicant.

5 ‘‘(iii) The Commissioner shall pre6 scribe regulations establishing the cir7 cumstances that constitute a failure of an

8 applicant to engage in reasonable efforts to

9 conclude processing or examination of an

10 application.

11 ‘‘(3) PROCEDURES FOR PATENT TERM ADJUST12 MENT DETERMINATION.—

13 ‘‘(A) The Commissioner shall prescribe

14 regulations establishing procedures for the ap15 plication for and determination of patent term

16 adjustments under this subsection.

17 ‘‘(B) Under the procedures established

18 under subparagraph (A), the Commissioner

19 shall—

20 ‘‘(i) make a determination of the pe21 riod of any patent term adjustment under

22 this subsection, and shall transmit a notice

23 of that determination with the written no24 tice of allowance of the application under

25 section 151; and
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1 ‘‘(ii) provide the applicant one oppor2 tunity to request reconsideration of any

3 patent term adjustment determination

4 made by the Commissioner.

5 ‘‘(C) The Commissioner shall reinstate all

6 or part of the cumulative period of time of an

7 adjustment under paragraph (2)(C) if the appli8 cant, prior to the issuance of the patent, makes

9 a showing that, in spite of all due care, the ap10 plicant was unable to respond within the 3-

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

12 additional months for each such response be13 yond the original 3-month period be reinstated.

14 ‘‘(D) The Commissioner shall proceed to

15 grant the patent after completion of the Com16 missioner’s determination of a patent term ad17 justment under the procedures established

18 under this subsection, notwithstanding any ap19 peal taken by the applicant of such determina20 tion.

21 ‘‘(4) APPEAL OF PATENT TERM ADJUSTMENT

22 DETERMINATION.—

23 ‘‘(A) An applicant dissatisfied with a de24 termination made by the Commissioner under

25 paragraph (3) shall have remedy by a civil ac-
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1 tion against the Commissioner filed in the

2 United States District Court for the District of

3 Columbia within 180 days after the grant of the

4 patent. Chapter 7 of title 5 shall apply to such

5 action. Any final judgment resulting in a

6 change to the period of adjustment of the pat7 ent term shall be served on the Commissioner,

8 and the Commissioner shall thereafter alter the

9 term of the patent to reflect such change.

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

11 adjustment under this subsection shall not be

12 subject to appeal or challenge by a third party

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

14 (b) CONFORMING AMENDMENTS.—

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

16 is amended in the fourth paragraph by striking ‘‘156

17 of this title’’ and inserting ‘‘154(b) or 156 of this

18 title’’.

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

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

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

22 SEC. 403. CONTINUED EXAMINATION OF PATENT APPLICA23 TIONS.

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

25 amended—
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1 (1) in the first sentence by striking ‘‘Whenever’’

2 and inserting ‘‘(a) Whenever’’; and

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

4 ‘‘(b) The Commissioner shall prescribe regulations to

5 provide for the continued examination of applications for

6 patent at the request of the applicant. The Commissioner

7 may establish appropriate fees for such continued exam8 ination and shall provide a 50 percent reduction in such

9 fees for small entities that qualify for reduced fees under

10 section 41(h)(1) of this title.’’.

11 SEC. 404. TECHNICAL CLARIFICATION.

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

13 amended in the matter preceding paragraph (1) by insert14 ing ‘‘, which shall include any patent term adjustment

15 granted under section 154(b),’’ after ‘‘the original expira16 tion date of the patent’’.

17 SEC. 405. EFFECTIVE DATE.

18 (a) AMENDMENTS MADE BY SECTIONS 402 AND

19 404.—The amendments made by sections 402 and 404

20 shall take effect on the date that is 6 months after the

21 date of the enactment of this Act and, except for a design

22 patent application filed under chapter 16 of title 35,

23 United States Code, shall apply to any application filed

24 on or after the date that is 6 months after the date of

25 the enactment of this Act.
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1 (b) AMENDMENTS MADE BY SECTION 403.—The

2 amendments made by section 403—

3 (1) shall take effect on the date that is 6

4 months after the date of the enactment of this Act,

5 and shall apply to all applications filed under section

6 111(a) of title 35, United States Code, on or after

7 June 8, 1995, and all applications complying with

8 section 371 of title 35, United States Code, that re9 sulted from international applications filed on or

10 after June 8, 1995; and

11 (2) do not apply to applications for design pat12 ents under chapter 16 of title 35, United States

13 Code.

14 TITLE V—DOMESTIC PUBLICA15 TION OF PATENT APPLICA16 TIONS PUBLISHED ABROAD

17 SEC. 501. SHORT TITLE.

18 This title may be cited as the ‘‘Domestic Publication

19 of Foreign Filed Patent Applications Act of 1999’’.

20 SEC. 502. PUBLICATION.

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

22 States Code, is amended to read as follows:
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1 ‘‘§ 122. Confidential status of applications; publica2 tion of patent applications

3 ‘‘(a) CONFIDENTIALITY.—Except as provided in sub4 section (b), applications for patents shall be kept in con5 fidence by the Patent and Trademark Office and no infor6 mation concerning the same given without authority of the

7 applicant or owner unless necessary to carry out the provi8 sions of an Act of Congress or in such special cir9 cumstances as may be determined by the Commissioner.

10 ‘‘(b) PUBLICATION.—

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

12 (2), each application for a patent shall be published,

13 in accordance with procedures determined by the

14 Commissioner, promptly after the expiration of a pe15 riod of 18 months from the earliest filing date for

16 which a benefit is sought under this title. At the re17 quest of the applicant, an application may be pub18 lished earlier than the end of such 18-month period.

19 ‘‘(B) No information concerning published pat20 ent applications shall be made available to the public

21 except as the Commissioner determines.

22 ‘‘(C) Notwithstanding any other provision of

23 law, a determination by the Commissioner to release

24 or not to release information concerning a published

25 patent application shall be final and nonreviewable.
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1 ‘‘(2) EXCEPTIONS.—(A) An application shall

2 not be published if that application is—

3 ‘‘(i) no longer pending;

4 ‘‘(ii) subject to a secrecy order pursuant to

5 section 181 of this title;

6 ‘‘(iii) a provisional application filed under

7 section 111(b) of this title; or

8 ‘‘(iv) an application for a design patent

9 filed under chapter 16 of this title.

10 ‘‘(B)(i) Where an applicant makes a request

11 upon filing, certifying that the invention disclosed in

12 the application has not and will not be the subject

13 of an application filed in another country, or under

14 a multilateral international agreement, that requires

15 publication of applications 18 months after filing,

16 the application shall not be published as provided in

17 paragraph (1).

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

19 under clause (i) at any time.

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

21 under clause (i) but who subsequently files, in a for22 eign country or under a multilateral international

23 agreement specified in clause (i), an application di24 rected to the invention disclosed in the application

25 filed in the Patent and Trademark Office, shall no-
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1 tify the Commissioner of such filing not later than

2 45 days after the date of the filing of such foreign

3 or international application. A failure of the appli4 cant to provide such notice within the prescribed pe5 riod shall result in the application being regarded as

6 abandoned, unless it is shown to the satisfaction of

7 the Commissioner that the delay in submitting the

8 notice was unintentional.

9 ‘‘(iv) Where an applicant rescinds a request

10 made under clause (i) or notifies the Commissioner

11 that an application was filed in a foreign country or

12 under a multilateral international agreement speci13 fied in clause (i), the application shall be published

14 in accordance with the provisions of paragraph (1)

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

16 specified in clause (i).

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

18 one or more foreign countries, directly or through a

19 multilateral international agreement, and such for20 eign filed applications corresponding to an applica21 tion filed in the Patent and Trademark Office or the

22 description of the invention in such foreign filed ap23 plications is less extensive than the application or

24 description of the invention in the application filed

25 in the Patent and Trademark Office, the applicant
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1 may submit a redacted copy of the application filed

2 in the Patent and Trademark Office eliminating any

3 part or description of the invention in such applica4 tion that is not also contained in any of the cor5 responding applications filed in a foreign country.

6 The Commissioner may only publish the redacted

7 copy of the application unless the redacted copy of

8 the application is not received within 16 months

9 after the earliest effective filing date for which a

10 benefit is sought under this title. The provisions of

11 section 154(d) shall not apply to a claim if the de12 scription of the invention published in the redacted

13 application filed under this clause with respect to the

14 claim does not enable a person skilled in the art to

15 make and use the subject matter of the claim.

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

17 The Commissioner shall establish appropriate procedures

18 to ensure that no protest or other form of pre-issuance

19 opposition to the grant of a patent on an application may

20 be initiated after publication of the application without the

21 express written consent of the applicant.

22 ‘‘(d) NATIONAL SECURITY.—No application for pat23 ent shall be published under subsection (b)(1) where the

24 publication or disclosure of such invention would be detri25 mental to the national security. The Commissioner shall
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1 establish appropriate procedures to ensure that such appli2 cations are promptly identified and the secrecy of such in3 ventions is maintained in accordance with chapter 17 of

4 this title.’’.

5 (b) STUDY.—

6 (1) IN GENERAL.—The General Accounting Of7 fice shall conduct a 3-year study of the applicants

8 who file only in the United States after the effective

9 date of this title and shall provide the results of such

10 study to the Judiciary Committees of the House of

11 Representatives and the Senate.

12 (2) CONTENTS.—The study conducted under

13 paragraph (1) shall—

14 (A) consider the number of such applicants

15 in relation to the number of applicants who file

16 in the United States and outside the United

17 States;

18 (B) examine how many domestic-only filers

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

20 (C) examine how many such filers rescind

21 that request or later choose to file abroad;

22 (D) examine the status of the entity seek23 ing an application and any correlation that may

24 exist between such status and the publication of

25 patent applications; and
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1 (E) examine the abandonment/issuance ra2 tios and length of application pendency before

3 patent issuance or abandonment for published

4 versus unpublished applications.

5 SEC. 503. TIME FOR CLAIMING BENEFIT OF EARLIER FIL6 ING DATE.

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

8 35, United States Code, is amended to read as follows:

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

10 this right of priority unless a claim is filed in the Patent

11 and Trademark Office, identifying the foreign application

12 by specifying the application number on that foreign appli13 cation, the intellectual property authority or country in or

14 for which the application was filed, and the date of filing

15 the application, at such time during the pendency of the

16 application as required by the Commissioner.

17 ‘‘(2) The Commissioner may consider the failure of

18 the applicant to file a timely claim for priority as a waiver

19 of any such claim. The Commissioner may establish proce20 dures, including the payment of a surcharge, to accept an

21 unintentionally delayed claim under this section.

22 ‘‘(3) The Commissioner may require a certified copy

23 of the original foreign application, specification, and draw24 ings upon which it is based, a translation if not in the

25 English language, and such other information as the Com-
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1 missioner considers necessary. Any such certification shall

2 be made by the foreign intellectual property authority in

3 which the foreign application was filed and show the date

4 of the application and of the filing of the specification and

5 other papers.’’.

6 (b) IN THE UNITED STATES.—

7 (1) IN GENERAL.—Section 120 of title 35,

8 United States Code, is amended by adding at the

9 end the following: ‘‘No application shall be entitled

10 to the benefit of an earlier filed application under

11 this section unless an amendment containing the

12 specific reference to the earlier filed application is

13 submitted at such time during the pendency of the

14 application as required by the Commissioner. The

15 Commissioner may consider the failure to submit

16 such an amendment within the time period as a

17 waiver of any benefit under this section. The Com18 missioner may establish procedures, including the

19 payment of a surcharge, to accept an unintentionally

20 delayed submission of an amendment under this sec21 tion.’’.

22 (2) RIGHT OF PRIORITY.—Section 119(e)(1) of

23 title 35, United States Code, is amended by adding

24 at the end the following: ‘‘No application shall be en25 titled to the benefit of an earlier filed provisional ap-
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1 plication under this subsection unless an amendment

2 containing the specific reference to the earlier filed

3 provisional application is submitted at such time

4 during the pendency of the application as required

5 by the Commissioner. The Commissioner may con6 sider the failure to submit such an amendment with7 in that time period as a waiver of any benefit under

8 this subsection. The Commissioner may establish

9 procedures, including the payment of a surcharge, to

10 accept an unintentionally delayed submission of an

11 amendment under this subsection during the pend12 ency of the application.’’.

13 SEC. 504. PROVISIONAL RIGHTS.

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

15 amended—

16 (1) in the section caption by inserting ‘‘; pro17 visional rights’’ after ‘‘patent’’; and

18 (2) by adding at the end the following new sec19 tion:

20 ‘‘(d) PROVISIONAL RIGHTS.—

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

22 provided by this section, a patent shall include the

23 right to obtain a reasonable royalty from any person

24 who, during the period beginning on the date of pub25 lication of the application for such patent pursuant
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1 to section 122(b), or in the case of an international

2 application filed under the treaty defined in section

3 351(a) designating the United States under Article

4 21(2)(a) of such treaty, the date of publication of

5 the application, and ending on the date the patent

6 is issued—

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

8 in the United States the invention as claimed in

9 the published patent application or imports

10 such an invention into the United States; or

11 ‘‘(ii) if the invention as claimed in the pub12 lished patent application is a process, uses, of13 fers for sale, or sells in the United States or

14 imports into the United States products made

15 by that process as claimed in the published pat16 ent application; and

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

18 patent application and, in a case in which the

19 right arising under this paragraph is based

20 upon an international application designating

21 the United States that is published in a lan22 guage other than English, had a translation of

23 the international application into the English

24 language.
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1 ‘‘(2) RIGHT BASED ON SUBSTANTIALLY IDEN2 TICAL INVENTIONS.—The right under paragraph (1)

3 to obtain a reasonable royalty shall not be available

4 under this subsection unless the invention as claimed

5 in the patent is substantially identical to the inven6 tion as claimed in the published patent application.

7 ‘‘(3) TIME LIMITATION ON OBTAINING A REA8 SONABLE ROYALTY.—The right under paragraph (1)

9 to obtain a reasonable royalty shall be available only

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

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

12 obtain a reasonable royalty shall not be affected by

13 the duration of the period described in paragraph

14 (1).

15 ‘‘(4) REQUIREMENTS FOR INTERNATIONAL AP16 PLICATIONS.—

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

18 paragraph (1) to obtain a reasonable royalty

19 based upon the publication under the treaty de20 fined in section 351(a) of an international ap21 plication designating the United States shall

22 commence on the date on which the Patent and

23 Trademark Office receives a copy of the publi24 cation under the treaty of the international ap25 plication, or, if the publication under the treaty
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1 of the international application is in a language

2 other than English, on the date on which the

3 Patent and Trademark Office receives a trans4 lation of the international application in the

5 English language.

6 ‘‘(B) COPIES.—The Commissioner may re7 quire the applicant to provide a copy of the

8 international application and a translation

9 thereof.’’.

10 SEC. 505. PRIOR ART EFFECT OF PUBLISHED APPLICA11 TIONS.

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

13 amended to read as follows:

14 ‘‘(e) the invention was described in—

15 ‘‘(1)(A) an application for patent, published

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

17 United States before the invention by the applicant

18 for patent, except that an international application

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

20 have the effect under this subsection of a national

21 application published under section 122(b) only if

22 the international application designating the United

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

24 treaty in the English language; or
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1 ‘‘(B) a patent granted on an application for

2 patent by another filed in the United States before

3 the invention by the applicant for patent, except that

4 a patent shall not be deemed filed in the United

5 States for the purposes of this subsection based on

6 the filing of an international application filed under

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

8 SEC. 506. COST RECOVERY FOR PUBLICATION.

9 The Commissioner of Patents and Trademarks shall

10 recover the cost of early publication required by the

11 amendment made by section 502 by charging a separate

12 publication fee after notice of allowance is given pursuant

13 to section 151 of title 35, United States Code.

14 SEC. 507. CONFORMING AMENDMENTS.

15 The following provisions of title 35, United States

16 Code, are amended:

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

18 subsection (a) by inserting ‘‘and published applica19 tions for patents’’ after ‘‘Patents’’.

20 (2) Section 12 is amended—

21 (A) in the section caption by inserting

22 ‘‘and applications’’ after ‘‘patents’’; and

23 (B) by inserting ‘‘and published applica24 tions for patents’’ after ‘‘patents’’.

25 (3) Section 13 is amended—
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1 (A) in the section caption by inserting

2 ‘‘and applications’’ after ‘‘patents’’; and

3 (B) by inserting ‘‘and published applica4 tions for patents’’ after ‘‘patents’’.

5 (4) The items relating to sections 12 and 13 in

6 the table of sections for chapter 1 are each amended

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

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

9 of sections for chapter 11 is amended by inserting

10 ‘‘; publication of patent applications’’ after ‘‘applica11 tions’’.

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

13 of sections for chapter 14 is amended by inserting

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

15 (7) Section 181 is amended—

16 (A) in the first undesignated paragraph—

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

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

19 (ii) by inserting ‘‘the publication of

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

21 (B) in the second undesignated paragraph

22 by inserting ‘‘by the publication of an applica23 tion or’’ after ‘‘disclosure of an invention’’;

24 (C) in the third undesignated paragraph—
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1 (i) by inserting ‘‘by the publication of

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

3 invention’’; and

4 (ii) by inserting ‘‘the publication of

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

6 (D) in the fourth undesignated paragraph

7 by inserting ‘‘the publication of an application

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

9 (8) Section 252 is amended in the first undesig10 nated paragraph by inserting ‘‘substantially’’ before

11 ‘‘identical’’ each place it appears.

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

13 end of the second undesignated paragraph the fol14 lowing: ‘‘Increased damages under this paragraph

15 shall not apply to provisional rights under section

16 154(d) of this title.’’.

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

18 ‘‘§ 374. Publication of international application

19 ‘‘The publication under the treaty defined in section

20 351(a) of this title, of an international application desig21 nating the United States shall confer the same rights and

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

23 for patent published under section 122(b), except as pro24 vided in sections 102(e) and 154(d) of this title.’’.

25 (11) Section 135(b) is amended—
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1 (A) by inserting ‘‘(1)’’ after ‘‘(b)’’; and

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

3 ‘‘(2) A claim which is the same as, or for the same

4 or substantially the same subject matter as, a claim of

5 an application published pursuant to section 122(b) of this

6 title may be made in an application filed after the applica7 tion is published only if the claim is made before 1 year

8 after the date on which the application is published.’’.

9 SEC. 508. EFFECTIVE DATE.

10 Sections 502 through 507, and the amendments

11 made by such sections, shall take effect on the date that

12 is 1 year after the date of enactment of this Act and shall

13 apply to all applications filed under section 111 of title

14 35, United States Code, on or after that date, and all ap15 plications complying with section 371 of title 35, United

16 States Code, that resulted from international applications

17 filed on or after that date. The amendments made by sec18 tions 504 and 505 shall apply to any such application vol19 untarily published by the applicant under procedures es20 tablished under this title that is pending on the date that

21 is 1 year after the date of the enactment of this Act. The

22 amendment made by section 504 shall also apply to inter23 national applications designating the United States that

24 are filed on or after the date that is 1 year after the date

25 of the enactment of this Act.
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1 TITLE VI—OPTIONAL INTER

2 PARTES REEXAMINATION

3 PROCEDURE

4 SEC. 601. SHORT TITLE.

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

6 Reexamination Procedure Act of 1999’’.

7 SEC. 602. EX PARTE REEXAMINATION OF PATENTS.

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

11 SEC. 603. DEFINITIONS.

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

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

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

16 requesting ex parte reexamination under section 302 or

17 inter partes reexamination under section 311 who is not

18 the patent owner.’’.

19 SEC. 604. OPTIONAL INTER PARTES REEXAMINATION PRO20 CEDURES.

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

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

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

2 REEXAMINATION PROCEDURES

‘‘Sec.

‘‘311. Request for inter partes reexamination.

‘‘312. Determination of issue by 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.

3 ‘‘§ 311. Request for inter partes reexamination

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

5 a request for inter partes reexamination by the Office of

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

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

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

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

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

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

17 the owner of the patent, the Commissioner promptly

18 shall send a copy of the request to the owner of

19 record of the patent.
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1 ‘‘§ 312. Determination of issue by Commissioner

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

3 after the filing of a request for inter partes reexamination

4 under section 311, the Commissioner shall determine

5 whether a substantial new question of patentability affect6 ing any claim of the patent concerned is raised by the re7 quest, with or without consideration of other patents or

8 printed publications. On the Commissioner’s initiative,

9 and at any time, the Commissioner may determine wheth10 er a substantial new question of patentability is raised by

11 patents and publications.

12 ‘‘(b) RECORD.—A record of the Commissioner’s de13 termination under subsection (a) shall be placed in the of14 ficial file of the patent, and a copy shall be promptly given

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

16 third-party requester, if any.

17 ‘‘(c) FINAL DECISION.—A determination by the

18 Commissioner pursuant to subsection (a) shall be final

19 and non-appealable. Upon a determination that no sub20 stantial new question of patentability has been raised, the

21 Commissioner may refund a portion of the inter partes

22 reexamination fee required under section 311.

23 ‘‘§ 313. Inter partes reexamination order by Commis24 sioner

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

26 the Commissioner finds that a substantial new question
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1 of patentability affecting a claim of a patent is raised, the

2 determination shall include an order for inter partes reex3 amination of the patent for resolution of the question. The

4 order may be accompanied by the initial action of the Pat5 ent and Trademark Office on the merits of the inter partes

6 reexamination conducted in accordance with section 314.

7 ‘‘§ 314. Conduct of inter partes reexamination pro8 ceedings

9 ‘‘(a) IN GENERAL.—Subject to subsection (b), reex10 amination shall be conducted according to the procedures

11 established for initial examination under the provisions of

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

13 section. In any inter partes reexamination proceeding

14 under this chapter, the patent owner shall be permitted

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

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

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

18 permitted.

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

20 any inter partes reexamination proceeding in which the

21 order for inter partes reexamination is based upon a re22 quest by a third-party requester.

23 ‘‘(2) With the exception of the inter partes reexam24 ination request, any document filed by either the patent

25 owner or the third-party requester shall be served on the
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1 other party. In addition, the third-party requester shall

2 receive a copy of any communication sent by the Office

3 to the patent owner concerning the patent subject to the

4 inter partes reexamination proceeding.

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

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

7 Office, the third-party requester shall have one oppor8 tunity to file written comments addressing issues raised

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

10 thereto, if those written comments are received by the Of11 fice within 30 days after the date of service of the patent

12 owner’s response.

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

14 by the Commissioner for good cause, all inter partes reex15 amination proceedings under this section, including any

16 appeal to the Board of Patent Appeals and Interferences,

17 shall be conducted with special dispatch within the Office.

18 ‘‘§ 315. Appeal

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

20 an inter partes reexamination proceeding under this

21 chapter—

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

23 134 and may appeal under the provisions of sections

24 141 through 144, with respect to any decision ad-
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1 verse to the patentability of any original or proposed

2 amended or new claim of the patent; and

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

4 third-party requester under subsection (b).

5 ‘‘(b) THIRD-PARTY REQUESTER.—A third-party re6 quester may—

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

8 with respect to any final decision favorable to the

9 patentability of any original or proposed amended or

10 new claim of the patent; or

11 ‘‘(2) be a party to any appeal taken by the pat12 ent owner under the provisions of section 134, sub13 ject to subsection (c).

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

15 request for an inter partes reexamination results in an

16 order under section 313 is estopped from asserting at a

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

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

19 finally determined to be valid and patentable on any

20 ground which the third-party requester raised or could

21 have raised during the inter partes reexamination pro22 ceedings. This subsection does not prevent the assertion

23 of invalidity based on newly discovered prior art unavail24 able to the third-party requester and the Patent and
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1 Trademark Office at the time of the inter partes reexam2 ination proceedings.

3 ‘‘§ 316. Certificate of patentability, unpatentability,

4 and claim cancellation

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

6 proceeding under this chapter, when the time for appeal

7 has expired or any appeal proceeding has terminated, the

8 Commissioner shall issue and publish a certificate can9 celing any claim of the patent finally determined to be

10 unpatentable, confirming any claim of the patent deter11 mined to be patentable, and incorporating in the patent

12 any proposed amended or new claim determined to be pat13 entable.

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

15 amended or new claim determined to patentable and incor16 porated into a patent following an inter partes reexamina17 tion proceeding shall have the same effect as that specified

18 in section 252 of this title for reissued patents on the right

19 of any person who made, purchased, or used within the

20 United States, or imported into the United States, any21 thing patented by such proposed amended or new claim,

22 or who made substantial preparation for the same, prior

23 to issuance of a certificate under the provisions of sub24 section (a) of this section.
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1 ‘‘§ 317. Inter partes reexamination prohibited

2 ‘‘(a) ORDER FOR REEXAMINATION.—Notwith3 standing any provision of this chapter, once an order for

4 inter partes reexamination of a patent has been issued

5 under section 313, neither the patent owner nor the third6 party requester, if any, nor privies of either, may file a

7 subsequent request for inter partes reexamination of the

8 patent until an inter partes reexamination certificate is

9 issued and published under section 316, unless authorized

10 by the Commissioner.

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

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

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

14 party has not sustained its burden of proving the invalidity

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

16 inter partes reexamination proceeding instituted by a

17 third-party requester is favorable to the patentability of

18 any original or proposed amended or new claim of the pat19 ent then neither that party nor its privies may thereafter

20 request inter partes reexamination of any such patent

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

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

23 partes reexamination proceeding, and an inter partes reex24 amination requested by that party or its privies on the

25 basis of such issues may not thereafter be maintained by

26 the Office, notwithstanding any other provision of this
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1 chapter. This subsection does not prevent the assertion of

2 invalidity based on newly discovered prior art unavailable

3 to the third-party requester and the Patent and Trade4 mark Office at the time of the inter partes reexamination

5 proceedings.

6 ‘‘§ 318. Stay of litigation

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

8 patent has been issued under section 313, the patent

9 owner may obtain a stay of any pending litigation which

10 involves an issue of patentability of any claims of the pat11 ent which are the subject of the inter partes reexamination

12 order, unless the court before which such litigation is

13 pending determines that a stay would not serve the inter14 ests of justice.’’.

15 (b) CONFORMING AMENDMENTS.—The table of chap16 ters for part III of title 25, United States Code, is amend17 ed by striking the item relating to chapter 30 and insert18 ing the following:

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

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

19 SEC. 605. CONFORMING AMENDMENTS.

20 (a) PATENT FEES; PATENT SEARCH SYSTEMS.—Sec21 tion 41(a)(7) of title 35, United States Code, is amended

22 to read as follows:

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

24 unintentionally abandoned application for a patent,
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1 for the unintentionally delayed payment of the fee

2 for issuing each patent, or for an unintentionally de3 layed response by the patent owner in any reexam4 ination proceeding, $1,210, unless the petition is

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

6 case the fee shall be $110.’’.

7 (b) APPEAL TO THE BOARD OF PATENTS APPEALS

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

9 States Code, is amended to read as follows:

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

11 Interferences

12 ‘‘(a) PATENT APPLICANT.—An applicant for a pat13 ent, any of whose claims has been twice rejected, may ap14 peal from the decision of the primary examiner to the

15 Board of Patent Appeals and Interferences, having once

16 paid the fee for such appeal.

17 ‘‘(b) PATENT OWNER.—A patent owner in any reex18 amination proceeding may appeal from the final rejection

19 of any claim by the primary examiner to the Board of Pat20 ent Appeals and Interferences, having once paid the fee

21 for such appeal.

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

23 inter partes proceeding may appeal to the Board of Patent

24 Appeals and Interferences from the final decision of the

25 primary examiner favorable to the patentability of any
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1 original or proposed amended or new claim of a patent,

2 having once paid the fee for such appeal. The third-party

3 requester may not appeal the decision of the Board of Pat4 ent Appeals and Interferences.’’.

5 (c) APPEAL TO COURT OF APPEALS FOR THE FED6 ERAL CIRCUIT.—Section 141 of title 35, United States

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

8 sentence: ‘‘A patent owner in any reexamination pro9 ceeding dissatisfied with the final decision in an appeal

10 to the Board of Patent Appeals and Interferences under

11 section 134 may appeal the decision only to the United

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

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

14 35, United States Code, is amended by amending the third

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

16 the Commissioner shall submit to the court in writing the

17 grounds for the decision of the Patent and Trademark Of18 fice, addressing all the issues involved in the appeal.’’.

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

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

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

22 SEC. 606. REPORT TO CONGRESS.

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

24 title, the Commissioner of Patents and Trademarks shall

25 submit to the Congress a report evaluating whether the
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1 inter partes reexamination proceedings established under

2 the amendments made by this title are inequitable to any

3 of the parties in interest and, if so, the report shall contain

4 recommendations for changes to the amendments made by

5 this title to remove such inequity.

6 SEC. 607. ESTOPPEL EFFECT OF REEXAMINATION.

7 Any party who requests an inter partes reexamina8 tion under section 311 of title 35, United States Code,

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

10 action, any fact determined during the process of such re11 examination, except with respect to a fact determination

12 later proved to be erroneous based on information unavail13 able at the time of the inter partes reexamination decision.

14 If this section is held to be unenforceable, the enforce15 ability of the rest of this title or of this Act shall not be

16 denied as a result.

17 SEC. 608. EFFECTIVE DATE.

18 This title and the amendments made by this title

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

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

21 reexamination requests filed on or after such date.
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1 TITLE VII—MISCELLANEOUS

2 PATENT PROVISIONS

3 SEC. 701. PROVISIONAL APPLICATIONS.

4 (a) ABANDONMENT.—Section 111(b)(5) of title 35,

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

6 ‘‘(5) ABANDONMENT.—Notwithstanding the ab7 sence of a claim, upon timely request and as pre8 scribed by the Commissioner, a provisional applica9 tion may be treated as an application filed under

10 subsection (a). Subject to section 119(e)(3) of this

11 title, if no such request is made, the provisional ap12 plication shall be regarded as abandoned 12 months

13 after the filing date of such application and shall not

14 be subject to revival after such 12-month period.’’.

15 (b) TECHNICAL AMENDMENT RELATING TO WEEK16 ENDS AND HOLIDAYS.—Section 119(e) of title 35, United

17 States Code, is amended by adding at the end the fol18 lowing:

19 ‘‘(3) If the day that is 12 months after the fil20 ing date of a provisional application falls on a Satur21 day, Sunday, or Federal holiday within the District

22 of Columbia, the period of pendency of the provi23 sional application shall be extended to the next suc24 ceeding secular or business day.’’.
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1 (c) ELIMINATION OF COPENDENCY REQUIRE2 MENT.—Section 119(e)(2) of title 35, United States Code,

3 is amended by striking ‘‘and the provisional application

4 was pending on the filing date of the application for patent

5 under section 111(a) or section 363 of this title’’.

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

7 this section shall take effect on the date of the enactment

8 of this Act and shall apply to any provisional application

9 filed on or after June 8, 1995, except that the amend10 ments made by subsections (b) and (c) shall have no effect

11 with respect to any patent which is the subject of litigation

12 in an action commenced before such date of the enact13 ment.

14 SEC. 702. INTERNATIONAL APPLICATIONS.

15 Section 119 of title 35, United States Code, is

16 amended as follows—

17 (1) In subsection (a), insert ‘‘or in a WTO

18 member country,’’ after ‘‘or citizens of the United

19 States,’’.

20 (2) At the end of section 119 add the following

21 new subsections:

22 ‘‘(f) Applications for plant breeder’s rights filed in

23 a WTO member country (or in a foreign UPOV Con24 tracting Party) shall have the same effect for the purpose

25 of the right of priority under subsections (a) through (c)
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1 of this section as applications for patents, subject to the

2 same conditions and requirements of this section as apply

3 to applications for patents.

4 ‘‘(g) As used in this section—

5 ‘‘(1) the term ‘WTO member country’ has the

6 same meaning as the term is defined in section

7 104(b)(2) of this title; and

8 ‘‘(2) the term ‘UPOV Contracting Party’ means

9 a member of the International Convention for the

10 Protection of New Varieties of Plants.’’.

11 SEC. 703. CERTAIN LIMITATIONS ON DAMAGES FOR PAT12 ENT INFRINGEMENT NOT APPLICABLE.

13 Section 287(c)(4) of title 35, United States Code, is

14 amended by striking ‘‘before the date of enactment of this

15 subsection’’ and inserting ‘‘based on an application the

16 earliest effective filing date of which is prior to September

17 30, 1996’’.

18 SEC. 704. ELECTRONIC FILING AND PUBLICATIONS.

19 (a) PRINTING OF PAPERS FILED.—Section 22 of title

20 35, United States Code, is amended by striking ‘‘printed

21 or typewritten’’ and inserting ‘‘printed, typewritten, or on

22 an electronic medium’’.

23 (b) PUBLICATIONS.—Section 11(a) of title 35, United

24 States Code, is amended by amending the matter pre25 ceding paragraph 1 to read as follows:
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1 ‘‘(a) The Commissioner may publish in printed, type2 written, or electronic form, the following:’’.

3 (c) COPIES OF PATENTS FOR PUBLIC LIBRARIES.—

4 Section 13 of title 35, United States Code, is amended

5 by striking ‘‘The Commissioner may supply printed copies

6 of specifications and drawings of patents’’ and inserting

7 ‘‘The Commissioner may supply copies of specifications

8 and drawings of patents in printed or electronic form’’.

9 (d) MAINTENANCE OF COLLECTIONS.—

10 (1) Section 41(i)(1) of title 35, United States

11 Code, is amended by striking ‘‘The Commissioner

12 shall maintain, for use by the public, paper or

13 microform’’ and inserting ‘‘The Commissioner shall

14 maintain, for use by the public, paper, microform, or

15 electronic’’.

16 (2) The Commissioner shall not, pursuant to

17 the amendment made by paragraph (1), cease to

18 maintain, for use by the public, paper or microform

19 collections of United States patents, foreign patent

20 documents, and United States trademark registra21 tions, except pursuant to notice and opportunity for

22 public comment and except the Commissioner shall

23 first submit a report to the Committees on the Judi24 ciary of the Senate and the House of Representa25 tives detailing such plan, including a description of
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1 the mechanisms in place to ensure the integrity of

2 such collections and the data contained therein, as

3 well as to ensure prompt public access to the most

4 current available information, and certifying that the

5 implementation of such plan will not negatively im6 pact the public.

7 SEC. 705. STUDY AND REPORT ON BIOLOGICAL DEPOSITS

8 IN SUPPORT OF BIOTECHNOLOGY PATENTS.

9 (a) IN GENERAL.—No later than 6 months after the

10 date of the enactment of this Act, the Comptroller General

11 of the United States, in consultation with the Commis12 sioner of Patents and Trademarks, shall conduct a study

13 and submit a report to Congress on the potential risks

14 to the United States biotechnology industry relating to bi15 ological deposits in support of biotechnology patents.

16 (b) CONTENTS.—The study conducted under this sec17 tion shall include—

18 (1) an examination of the risk of export and the

19 risk of transfers to third parties of biological depos20 its, and the risks posed by the change to 18-month

21 publication requirements made by this Act;

22 (2) an analysis of comparative legal and regu23 latory regimes; and

24 (3) any related recommendations.
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1 (c) CONSIDERATION OF REPORT.—In drafting regu2 lations affecting biological deposits (including any modi3 fication of title 37, Code of Federal Regulations, section

4 1.801 et seq.), the Patent and Trademark Office shall con5 sider the recommendations of the study conducted under

6 this section.

7 SEC. 706. PRIOR INVENTION.

8 Section 102(g) of title 35, United States Code, is

9 amended to read as follows:

10 ‘‘(g)(1) during the course of an interference con11 ducted under section 135 or section 291, another inventor

12 involved therein establishes, to the extent permitted in sec13 tion 104, that before such person’s invention thereof the

14 invention was made by such other inventor and not aban15 doned, suppressed, or concealed, or (2) before such per16 son’s invention thereof, the invention was made in this

17 country by another inventor who had not abandoned, sup18 pressed, or concealed it. In determining priority of inven19 tion under this subsection, there shall be considered not

20 only the respective dates of conception and reduction to

21 practice of the invention, but also the reasonable diligence

22 of one who was first to conceive and last to reduce to prac23 tice, from a time prior to conception by the other.’’.
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1 SEC. 707. PRIOR ART EXCLUSION FOR CERTAIN COMMONLY

2 ASSIGNED PATENTS.

3 (a) PRIOR ART EXCLUSION.—Section 103(c) of title

4 35, United States Code, is amended by striking ‘‘sub5 section (f) or (g)’’ and inserting ‘‘one or more of sub6 sections (e), (f), and (g)’’.

7 (b) EFFECTIVE DATE.—The amendment made by

8 this section shall apply to any application for patent filed

9 on or after the date of the enactment of this Act.

10 SEC. 708. EXCHANGE OF COPIES OF PATENTS WITH FOR11 EIGN COUNTRIES.

12 Section 12 of title 35, United States Code, is amend13 ed by adding at the end the following: ‘‘The Commissioner

14 shall not enter into an agreement to provide such copies

15 of specifications and drawings of United States patents

16 and applications to a foreign country, other than a

17 NAFTA country or a WTO member country, without the

18 express authorization of the Secretary of Commerce. For

19 purposes of this section, the terms ‘NAFTA country’ and

20 ‘WTO member country’ have the meanings given those

21 terms in section 104(b).’’.

22 SEC. 709. NATIONAL SECURITY.

23 Section 6 of title 35, United States Code, is amended

24 by adding at the end the following new subsection:

25 ‘‘(d) The Commissioner, in consultation with the Di26 rector of the Office of Personnel Management, shall main-
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1 tain a program for identifying national security positions

2 and providing for appropriate security clearances, in order

3 to maintain the secrecy of certain inventions, as described

4 in section 181, and to prevent disclosure of sensitive and

5 strategic information in the interest of national security.’’.

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