II

106TH CONGRESS

1ST SESSION S. 1948

To amend the provisions of title 17, United States Code, and the Communications Act of 1934, relating to copyright licensing and carriage of broadcast signals by satellite.

IN THE SENATE OF THE UNITED STATES

NOVEMBER 17, 1999

Mr. LOTT introduced the following bill; which was read twice and referred to

the Committee on the Judiciary

A BILL

To amend the provisions of title 17, United States Code,

and the Communications Act of 1934, relating to copyright licensing and carriage of broadcast signals by satellite.

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; TABLE OF CONTENTS.

4 (a) SHORT TITLE.—This Act may be cited as the

5 ‘‘Intellectual Property and Communications Omnibus Re6 form Act of 1999’’.

7 (b) TABLE OF CONTENTS.—The table of contents of

8 this Act is as follows:
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Sec. 1. Short title; table of contents.

TITLE I—SATELLITE HOME VIEWER IMPROVEMENT

Sec. 1001. Short title.

Sec. 1002. Limitations on exclusive rights; secondary transmissions by satellite

carriers within local markets.

Sec. 1003. Extension of effect of amendments to section 119 of title 17, United

States Code.

Sec. 1004. Computation of royalty fees for satellite carriers.

Sec. 1005. Distant signal eligibility for consumers.

Sec. 1006. Public broadcasting service satellite feed.

Sec. 1007. Application of Federal Communications Commission regulations.

Sec. 1008. Rules for satellite carriers retransmitting television broadcast signals.

Sec. 1009. Retransmission consent.

Sec. 1010. Severability.

Sec. 1011. Technical amendments.

Sec. 1012. Effective dates.

TITLE II—RURAL LOCAL TELEVISION SIGNALS

Sec. 2001. Short title.

Sec. 2002. Local television service in unserved and underserved markets.

TITLE III—TRADEMARK CYBERPIRACY PREVENTION

Sec. 3001. Short title; references.

Sec. 3002. Cyberpiracy prevention.

Sec. 3003. Damages and remedies.

Sec. 3004. Limitation on liability.

Sec. 3005. Definitions.

Sec. 3006. Study on abusive domain name registrations involving personal

names.

Sec. 3007. Historic preservation.

Sec. 3008. Savings clause.

Sec. 3009. Technical and conforming amendments.

Sec. 3010. Effective date.

TITLE IV—INVENTOR PROTECTION

Sec. 4001. Short title.

Subtitle A—Inventors’ Rights

Sec. 4101. Short title.

Sec. 4102. Integrity in invention promotion services.

Sec. 4103. Effective date.

Subtitle B—Patent and Trademark Fee Fairness

Sec. 4201. Short title.

Sec. 4202. Adjustment of patent fees.

Sec. 4203. Adjustment of trademark fees.

Sec. 4204. Study on alternative fee structures.

Sec. 4205. Patent and Trademark Office Funding.

Sec. 4206. Effective date.

Subtitle C—First Inventor Defense
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Sec. 4301. Short title.

Sec. 4302. Defense to patent infringement based on earlier inventor.

Sec. 4303. Effective date and applicability.

Subtitle D—Patent Term Guarantee

Sec. 4401. Short title.

Sec. 4402. Patent term guarantee authority.

Sec. 4403. Continued examination of patent applications.

Sec. 4404. Technical clarification.

Sec. 4405. Effective date.

Subtitle E—Domestic Publication of Patent Applications Published Abroad

Sec. 4501. Short title.

Sec. 4502. Publication.

Sec. 4503. Time for claiming benefit of earlier filing date.

Sec. 4504. Provisional rights.

Sec. 4505. Prior art effect of published applications.

Sec. 4506. Cost recovery for publication.

Sec. 4507. Conforming amendments.

Sec. 4508. Effective date.

Subtitle F—Optional Inter Partes Reexamination Procedure

Sec. 4601. Short title.

Sec. 4602. Ex parte reexamination of patents.

Sec. 4603. Definitions.

Sec. 4604. Optional inter partes reexamination procedures.

Sec. 4605. Conforming amendments.

Sec. 4606. Report to Congress.

Sec. 4607. Estoppel effect of reexamination.

Sec. 4608. Effective date.

Subtitle G—Patent and Trademark Office

Sec. 4701. Short title.

CHAPTER 1—UNITED STATES PATENT AND TRADEMARK OFFICE

Sec. 4711. Establishment of Patent and Trademark Office.

Sec. 4712. Powers and duties.

Sec. 4713. Organization and management.

Sec. 4714. Public advisory committees.

Sec. 4715. Conforming amendments.

Sec. 4716. Trademark Trial and Appeal Board.

Sec. 4717. Board of Patent Appeals and Interferences.

Sec. 4718. Annual report of Director.

Sec. 4719. Suspension or exclusion from practice.

Sec. 4720. Pay of Director and Deputy Director.

CHAPTER 2—EFFECTIVE DATE; TECHNICAL AMENDMENTS

Sec. 4731. Effective date.

Sec. 4732. Technical and conforming amendments.

CHAPTER 3—MISCELLANEOUS PROVISIONS
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Sec. 4741. References.

Sec. 4742. Exercise of authorities.

Sec. 4743. Savings provisions.

Sec. 4744. Transfer of assets.

Sec. 4745. Delegation and assignment.

Sec. 4746. Authority of Director of the Office of Management and Budget with

respect to functions transferred.

Sec. 4747. Certain vesting of functions considered transfers.

Sec. 4748. Availability of existing funds.

Sec. 4749. Definitions.

Subtitle H—Miscellaneous Patent Provisions

Sec. 4801. Provisional applications.

Sec. 4802. International applications.

Sec. 4803. Certain limitations on damages for patent infringement not applicable.

Sec. 4804. Electronic filing and publications.

Sec. 4805. Study and report on biological deposits in support of biotechnology

patents.

Sec. 4806. Prior invention.

Sec. 4807. Prior art exclusion for certain commonly assigned patents.

Sec. 4808. Exchange of copies of patents with foreign countries.

TITLE V—MISCELLANEOUS PROVISIONS

Sec. 5001. Commission on online child protection.

Sec. 5002. Privacy protection for donors to public broadcasting entities.

Sec. 5003. Completion of biennial regulatory review.

Sec. 5004. Public broadcasting entities.

Sec. 5005. Technical amendments relating to vessel hull design protection.

Sec. 5006. Informal rulemaking of copyright determination.

Sec. 5007. Service of process for surety corporations.

Sec. 5008. Low-power television.

TITLE VI—SUPERFUND RECYCLING EQUITY

Sec. 6001. Superfund recycling equity.

1 TITLE I—SATELLITE HOME

2 VIEWER IMPROVEMENT

3 SEC. 1001. SHORT TITLE.

4 This title may be cited as the ‘‘Satellite Home Viewer

5 Improvement Act of 1999’’.
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1 SEC. 1002. LIMITATIONS ON EXCLUSIVE RIGHTS; SEC2 ONDARY TRANSMISSIONS BY SATELLITE CAR3 RIERS WITHIN LOCAL MARKETS.

4 (a) IN GENERAL.—Chapter 1 of title 17, United

5 States Code, is amended by adding after section 121 the

6 following new section:

7 ‘‘§ 122. Limitations on exclusive rights; secondary

8 transmissions by satellite carriers within

9 local markets

10 ‘‘(a) SECONDARY TRANSMISSIONS OF TELEVISION

11 BROADCAST STATIONS BY SATELLITE CARRIERS.—A sec12 ondary transmission of a performance or display of a work

13 embodied in a primary transmission of a television broad14 cast station into the station’s local market shall be subject

15 to statutory licensing under this section if—

16 ‘‘(1) the secondary transmission is made by a

17 satellite

18 carrier to the public;

19 ‘‘(2) with regard to secondary transmissions,

20 the satellite carrier is in compliance with the rules,

21 regulations, or authorizations of the Federal Com22 munications Commission governing the carriage of

23 television broadcast station signals; and

24 ‘‘(3) the satellite carrier makes a direct or indi25 rect charge for the secondary transmission to—
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1 ‘‘(A) each subscriber receiving the sec2 ondary transmission; or

3 ‘‘(B) a distributor that has contracted with

4 the satellite carrier for direct or indirect deliv5 ery of the secondary transmission to the public.

6 ‘‘(b) REPORTING REQUIREMENTS.—

7 ‘‘(1) INITIAL LISTS.—A satellite carrier that

8 makes secondary transmissions of a primary trans9 mission made by a network station under subsection

10 (a) shall, within 90 days after commencing such sec11 ondary transmissions, submit to the network that

12 owns or is affiliated with the network station a list

13 identifying (by name in alphabetical order and street

14 address, including county and zip code) all sub15 scribers to which the satellite carrier makes sec16 ondary transmissions of that primary transmission

17 under subsection (a).

18 ‘‘(2) SUBSEQUENT LISTS.—After the list is sub19 mitted under paragraph (1), the satellite carrier

20 shall, on the 15th of each month, submit to the net21 work a list identifying (by name in alphabetical

22 order and street address, including county and zip

23 code) any subscribers who have been added or

24 dropped as subscribers since the last submission

25 under this subsection.
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1 ‘‘(3) USE OF SUBSCRIBER INFORMATION.—Sub2 scriber information submitted by a satellite carrier

3 under this subsection may be used only for the pur4 poses of monitoring compliance by the satellite car5 rier with this section.

6 ‘‘(4) REQUIREMENTS OF NETWORKS.—The sub7 mission requirements of this subsection shall apply

8 to a satellite carrier only if the network to which the

9 submissions are to be made places on file with the

10 Register of Copyrights a document identifying the

11 name and address of the person to whom such sub12 missions are to be made. The Register of Copyrights

13 shall maintain for public inspection a file of all such

14 documents.

15 ‘‘(c) NO ROYALTY FEE REQUIRED.—A satellite car16 rier whose secondary transmissions are subject to statu17 tory licensing under subsection (a) shall have no royalty

18 obligation for such secondary transmissions.

19 ‘‘(d) NONCOMPLIANCE WITH REPORTING AND REGU20 LATORY REQUIREMENTS.—Notwithstanding subsection

21 (a), the willful or repeated secondary transmission to the

22 public by a satellite carrier into the local market of a tele23 vision broadcast station of a primary transmission em24 bodying a performance or display of a work made by that

25 television broadcast station is actionable as an act of in-
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1 fringement under section 501, and is fully subject to the

2 remedies provided under sections 502 through 506 and

3 509, if the satellite carrier has not complied with the re4 porting requirements of subsection (b) or with the rules,

5 regulations, and authorizations of the Federal Commu6 nications Commission concerning the carriage of television

7 broadcast signals.

8 ‘‘(e) WILLFUL ALTERATIONS.—Notwithstanding

9 subsection (a), the secondary transmission to the public

10 by a satellite carrier into the local market of a television

11 broadcast station of a performance or display of a work

12 embodied in a primary transmission made by that tele13 vision broadcast station is actionable as an act of infringe14 ment under section 501, and is fully subject to the rem15 edies provided by sections 502 through 506 and sections

16 509 and 510, if the content of the particular program in

17 which the performance or display is embodied, or any com18 mercial advertising or station announcement transmitted

19 by the primary transmitter during, or immediately before

20 or after, the transmission of such program, is in any way

21 willfully altered by the satellite carrier through changes,

22 deletions, or additions, or is combined with programming

23 from any other broadcast signal.
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1 ‘‘(f ) VIOLATION OF TERRITORIAL RESTRICTIONS ON

2 STATUTORY LICENSE FOR TELEVISION BROADCAST STA3 TIONS.—

4 ‘‘(1) INDIVIDUAL VIOLATIONS.—The willful or

5 repeated

6 secondary transmission to the public by a satellite

7 carrier of a primary transmission embodying a per8 formance or display of a work made by a television

9 broadcast station to a subscriber who does not reside

10 in that station’s local market, and is not subject to

11 statutory licensing under section 119 or a private li12 censing agreement, is actionable as an act of in13 fringement under section 501 and is fully subject to

14 the remedies provided by sections 502 through 506

15 and 509, except that—

16 ‘‘(A) no damages shall be awarded for such

17 act of infringement if the satellite carrier took

18 corrective action by promptly withdrawing serv19 ice from the ineligible subscriber; and

20 ‘‘(B) any statutory damages shall not ex21 ceed $5 for such subscriber for each month dur22 ing which the violation occurred.

23 ‘‘(2) PATTERN OF VIOLATIONS.—If a satellite

24 carrier engages in a willful or repeated pattern or

25 practice of secondarily transmitting to the public a
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1 primary transmission embodying a performance or

2 display of a work made by a television broadcast sta3 tion to subscribers who do not reside in that sta4 tion’s local market, and are not subject to statutory

5 licensing under section 119 or a private licensing

6 agreement, then in addition to the remedies under

7 paragraph (1)—

8 ‘‘(A) if the pattern or practice has been

9 carried out on a substantially nationwide basis,

10 the court—

11 ‘‘(i) shall order a permanent injunc12 tion barring the secondary transmission by

13 the satellite carrier of the primary trans14 missions of that television broadcast sta15 tion (and if such television broadcast sta16 tion is a network station, all other tele17 vision broadcast stations affiliated with

18 such network); and

19 ‘‘(ii) may order statutory damages not

20 exceeding $250,000 for each 6-month pe21 riod during which the pattern or practice

22 was carried out; and

23 ‘‘(B) if the pattern or practice has been

24 carried out on a local or regional basis with re-
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1 spect to more than one television broadcast sta2 tion, the court—

3 ‘‘(i) shall order a permanent injunc4 tion barring the secondary transmission in

5 that locality or region by the satellite car6 rier of the primary transmissions of any

7 television broadcast station; and

8 ‘‘(ii) may order statutory damages not

9 exceeding $250,000 for each 6-month pe10 riod during which the pattern or practice

11 was carried out.

12 ‘‘(g) BURDEN OF PROOF.—In any action brought

13 under subsection (f ), the satellite carrier shall have the

14 burden of proving that its secondary transmission of a pri15 mary transmission by a television broadcast station is

16 made only to subscribers located within that station’s local

17 market or subscribers being served in compliance with sec18 tion 119 or a private licensing agreement.

19 ‘‘(h) GEOGRAPHIC LIMITATIONS ON SECONDARY

20 TRANSMISSIONS.—The statutory license created by this

21 section shall apply to secondary transmissions to locations

22 in the United States.

23 ‘‘(i) EXCLUSIVITY WITH RESPECT TO SECONDARY

24 TRANSMISSIONS OF BROADCAST STATIONS BY SATELLITE

25 TO MEMBERS OF THE PUBLIC.—No provision of section
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1 111 or any other law (other than this section and section

2 119) shall be construed to contain any authorization, ex3 emption, or license through which secondary transmissions

4 by satellite carriers of programming contained in a pri5 mary transmission made by a television broadcast station

6 may be made without obtaining the consent of the copy7 right owner.

8 ‘‘( j) DEFINITIONS.—In this section—

9 ‘‘(1) DISTRIBUTOR.—The term ‘distributor’

10 means an entity which contracts to distribute sec11 ondary transmissions from a satellite carrier and, ei12 ther as a single channel or in a package with other

13 programming, provides the secondary transmission

14 either directly to individual subscribers or indirectly

15 through other program distribution entities.

16 ‘‘(2) LOCAL MARKET.—

17 ‘‘(A) IN GENERAL.—The term ‘local mar18 ket’, in the case of both commercial and non19 commercial television broadcast stations, means

20 the designated market area in which a station

21 is located, and—

22 ‘‘(i) in the case of a commercial tele23 vision broadcast station, all commercial tel24 evision broadcast stations licensed to a

25 community within the same designated
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1 market area are within the same local mar2 ket; and

3 ‘‘(ii) in the case of a noncommercial

4 educational television broadcast station,

5 the market includes any station that is li6 censed to a community within the same

7 designated market area as the noncommer8 cial educational television broadcast sta9 tion.

10 ‘‘(B) COUNTY OF LICENSE.—In addition to

11 the area described in subparagraph (A), a sta12 tion’s local market includes the county in which

13 the station’s community of license is located.

14 ‘‘(C) DESIGNATED MARKET AREA.—For

15 purposes of subparagraph (A), the term ‘des16 ignated market area’ means a designated mar17 ket area, as determined by Nielsen Media Re18 search and published in the 1999–2000 Nielsen

19 Station Index Directory and Nielsen Station

20 Index United States Television Household Esti21 mates or any successor publication.

22 ‘‘(3) NETWORK STATION; SATELLITE CARRIER;

23 SECONDARY TRANSMISSION.—The terms ‘network

24 station’, ‘satellite carrier’, and ‘secondary trans-
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1 mission’ have the meanings given such terms under

2 section 119(d).

3 ‘‘(4) SUBSCRIBER.—The term ‘subscriber’

4 means a person who receives a secondary trans5 mission service from a satellite carrier and pays a

6 fee for the service, directly or indirectly, to the sat7 ellite carrier or to a distributor.

8 ‘‘(5) TELEVISION BROADCAST STATION.—The

9 term ‘television broadcast station’—

10 ‘‘(A) means an over-the-air, commercial or

11 noncommercial television broadcast station li12 censed by the Federal Communications Com13 mission under subpart E of part 73 of title 47,

14 Code of Federal Regulations, except that such

15 term does not include a low-power or translator

16 television station; and

17 ‘‘(B) includes a television broadcast station

18 licensed by an appropriate governmental au19 thority of Canada or Mexico if the station

20 broadcasts primarily in the English language

21 and is a network station as defined in section

22 119(d)(2)(A).’’.

23 (b) INFRINGEMENT OF COPYRIGHT.—Section 501 of

24 title 17, United States Code, is amended by adding at the

25 end the following new subsection:
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1 ‘‘(f )(1) With respect to any secondary transmission

2 that is made by a satellite carrier of a performance or

3 display of a work embodied in a primary transmission and

4 is actionable as an act of infringement under section 122,

5 a television broadcast station holding a copyright or other

6 license to transmit or perform the same version of that

7 work shall, for purposes of subsection (b) of this section,

8 be treated as a legal or beneficial owner if such secondary

9 transmission occurs within the local market of that sta10 tion.

11 ‘‘(2) A television broadcast station may file a civil ac12 tion against any satellite carrier that has refused to carry

13 television broadcast signals, as required under section

14 122(a)(2), to enforce that television broadcast station’s

15 rights under section 338(a) of the Communications Act

16 of 1934.’’.

17 (c) TECHNICAL AND CONFORMING AMENDMENTS.—

18 The table of sections for chapter 1 of title 17, United

19 States Code, is amended by adding after the item relating

20 to section 121 the following:

‘‘122. Limitations on exclusive rights; secondary transmissions by satellite carriers within local market.’’.
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1 SEC. 1003. EXTENSION OF EFFECT OF AMENDMENTS TO

2 SECTION 119 OF TITLE 17, UNITED STATES

3 CODE.

4 Section 4(a) of the Satellite Home Viewer Act of

5 1994 (17 U.S.C. 119 note; Public Law 103–369; 108

6 Stat. 3481) is amended by striking ‘‘December 31, 1999’’

7 and inserting ‘‘December 31, 2004’’.

8 SEC. 1004. COMPUTATION OF ROYALTY FEES FOR SAT9 ELLITE CARRIERS.

10 Section 119(c) of title 17, United States Code, is

11 amended by adding at the end the following new para12 graph:

13 ‘‘(4) REDUCTION.—

14 ‘‘(A) SUPERSTATION.—The rate of the

15 royalty fee in effect on January 1, 1998, pay16 able in each case under subsection (b)(1)(B)(i)

17 shall be reduced by 30 percent.

18 ‘‘(B) NETWORK AND PUBLIC BROAD19 CASTING SATELLITE FEED.—The rate of the

20 royalty fee in effect on January 1, 1998, pay21 able under subsection (b)(1)(B)(ii) shall be re22 duced by 45 percent.

23 ‘‘(5) PUBLIC BROADCASTING SERVICE AS

24 AGENT.—For purposes of section 802, with respect

25 to royalty fees paid by satellite carriers for re26 transmitting the Public Broadcasting Service sat-
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1 ellite feed, the Public Broadcasting Service shall be

2 the agent for all public television copyright claimants

3 and all Public Broadcasting Service member sta4 tions.’’.

5 SEC. 1005. DISTANT SIGNAL ELIGIBILITY FOR CONSUMERS.

6 (a) UNSERVED HOUSEHOLD.—

7 (1) IN GENERAL.—Section 119(d) of title 17,

8 United States Code, is amended by striking para9 graph (10) and inserting the following:

10 ‘‘(10) UNSERVED HOUSEHOLD.—The term

11 ‘unserved household’, with respect to a particular

12 television network, means a household that—

13 ‘‘(A) cannot receive, through the use of a

14 conventional, stationary, outdoor rooftop receiv15 ing antenna, an over-the-air signal of a primary

16 network station affiliated with that network of

17 Grade B intensity as defined by the Federal

18 Communications Commission under section

19 73.683(a) of title 47 of the Code of Federal

20 Regulations, as in effect on January 1, 1999;

21 ‘‘(B) is subject to a waiver granted under

22 regulations established under section 339(c)(2)

23 of the Communications Act of 1934;

24 ‘‘(C) is a subscriber to whom subsection

25 (e) applies;
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1 ‘‘(D) is a subscriber to whom subsection

2 (a)(11) applies; or

3 ‘‘(E) is a subscriber to whom the exemp4 tion under subsection (a)(2)(B)(iii) applies.’’.

5 (2) CONFORMING AMENDMENT.—Section

6 119(a)(2)(B) of title 17, United States Code, is

7 amended to read as follows:

8 ‘‘(B) SECONDARY TRANSMISSIONS TO

9 UNSERVED HOUSEHOLDS.—

10 ‘‘(i) IN GENERAL.—The statutory li11 cense provided for in subparagraph (A)

12 shall be limited to secondary transmissions

13 of the signals of no more than two network

14 stations in a single day for each television

15 network to persons who reside in unserved

16 households.

17 ‘‘(ii) ACCURATE DETERMINATIONS OF

18 ELIGIBILITY.—

19 ‘‘(I) ACCURATE PREDICTIVE

20 MODEL.—In determining presump21 tively whether a person resides in an

22 unserved household under subsection

23 (d)(10)(A), a court shall rely on the

24 Individual Location Longley-Rice

25 model set forth by the Federal Com-
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1 munications Commission in Docket

2 No. 98–201, as that model may be

3 amended by the Commission over time

4 under section 339(c)(3) of the Com5 munications Act of 1934 to increase

6 the accuracy of that model.

7 ‘‘(II) ACCURATE MEASURE8 MENTS.—For purposes of site meas9 urements to determine whether a per10 son resides in an unserved household

11 under subsection (d)(10)(A), a court

12 shall rely on section 339(c)(4) of the

13 Communications Act of 1934.

14 ‘‘(iii) C-BAND EXEMPTION TO

15 UNSERVED HOUSEHOLDS.—

16 ‘‘(I) IN GENERAL.—The limita17 tions of clause (i) shall not apply to

18 any secondary transmissions by C19 band services of network stations that

20 a subscriber to C-band service re21 ceived before any termination of such

22 secondary transmissions before Octo23 ber 31, 1999.

24 ‘‘(II) DEFINITION.—In this

25 clause the term ‘C-band service’
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1 means a service that is licensed by the

2 Federal Communications Commission

3 and operates in the Fixed Satellite

4 Service under part 25 of title 47 of

5 the Code of Federal Regulations.’’.

6 (b) EXCEPTION TO LIMITATION ON SECONDARY

7 TRANSMISSIONS.—Section 119(a)(5) of title 17, United

8 States Code, is amended by adding at the end the fol9 lowing:

10 ‘‘(E) EXCEPTION.—The secondary trans11 mission by a satellite carrier of a performance

12 or display of a work embodied in a primary

13 transmission made by a network station to sub14 scribers who do not reside in unserved house15 holds shall not be an act of infringement if—

16 ‘‘(i) the station on May 1, 1991, was

17 retransmitted by a satellite carrier and was

18 not on that date owned or operated by or

19 affiliated with a television network that of20 fered interconnected program service on a

21 regular basis for 15 or more hours per

22 week to at least 25 affiliated television li23 censees in 10 or more States;

24 ‘‘(ii) as of July 1, 1998, such station

25 was retransmitted by a satellite carrier
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1 under the statutory license of this section;

2 and

3 ‘‘(iii) the station is not owned or oper4 ated by or affiliated with a television net5 work that, as of January 1, 1995, offered

6 interconnected program service on a reg7 ular basis for 15 or more hours per week

8 to at least 25 affiliated television licensees

9 in 10 or more States.’’.

10 (c) MORATORIUM ON COPYRIGHT LIABILITY.—Sec11 tion 119(e) of title 17, United States Code, is amended

12 to read as follows:

13 ‘‘(e) MORATORIUM ON COPYRIGHT LIABILITY.—

14 Until December 31, 2004, a subscriber who does not re15 ceive a signal of Grade A intensity (as defined in the regu16 lations of the Federal Communications Commission under

17 section 73.683(a) of title 47 of the Code of Federal Regu18 lations, as in effect on January 1, 1999, or predicted by

19 the Federal Communications Commission using the Indi20 vidual Location Longley-Rice methodology described by

21 the Federal Communications Commission in Docket No.

22 98–201) of a local network television broadcast station

23 shall remain eligible to receive signals of network stations

24 affiliated with the same network, if that subscriber had

25 satellite service of such network signal terminated after
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1 July 11, 1998, and before October 31, 1999, as required

2 by this section, or received such service on October 31,

3 1999.’’.

4 (d) RECREATIONAL VEHICLE AND COMMERCIAL

5 TRUCK EXEMPTION.—Section 119(a) of title 17, United

6 States Code, is amended by adding at the end the fol7 lowing:

8 ‘‘(11) SERVICE TO RECREATIONAL VEHICLES

9 AND COMMERCIAL TRUCKS.—

10 ‘‘(A) EXEMPTION.—

11 ‘‘(i) IN GENERAL.—For purposes of

12 this subsection, and subject to clauses (ii)

13 and (iii), the term ‘unserved household’

14 shall include—

15 ‘‘(I) recreational vehicles as de16 fined in regulations of the Secretary

17 of Housing and Urban Development

18 under section 3282.8 of title 24 of the

19 Code of Federal Regulations; and

20 ‘‘(II) commercial trucks that

21 qualify as commercial motor vehicles

22 under regulations of the Secretary of

23 Transportation under section 383.5 of

24 title 49 of the Code of Federal Regu25 lations.
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1 ‘‘(ii) LIMITATION.—Clause (i) shall

2 apply only to a recreational vehicle or com3 mercial truck if any satellite carrier that

4 proposes to make a secondary transmission

5 of a network station to the operator of

6 such a recreational vehicle or commercial

7 truck complies with the documentation re8 quirements under subparagraphs (B) and

9 (C).

10 ‘‘(iii) EXCLUSION.—For purposes of

11 this subparagraph, the terms ‘recreational

12 vehicle’ and ‘commercial truck’ shall not

13 include any fixed dwelling, whether a mo14 bile home or otherwise.

15 ‘‘(B) DOCUMENTATION REQUIREMENTS.—

16 A recreational vehicle or commercial truck shall

17 be deemed to be an unserved household begin18 ning 10 days after the relevant satellite carrier

19 provides to the network that owns or is affili20 ated with the network station that will be sec21 ondarily transmitted to the recreational vehicle

22 or commercial truck the following documents:

23 ‘‘(i) DECLARATION.—A signed dec24 laration by the operator of the recreational

25 vehicle or commercial truck that the sat-
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1 ellite dish is permanently attached to the

2 recreational vehicle or commercial truck,

3 and will not be used to receive satellite

4 programming at any fixed dwelling.

5 ‘‘(ii) REGISTRATION.—In the case of a

6 recreational vehicle, a copy of the current

7 State vehicle registration for the rec8 reational vehicle.

9 ‘‘(iii) REGISTRATION AND LICENSE.—

10 In the case of a commercial truck, a copy

11 of—

12 ‘‘(I) the current State vehicle

13 registration for the truck; and

14 ‘‘(II) a copy of a valid, current

15 commercial driver’s license, as defined

16 in regulations of the Secretary of

17 Transportation under section 383 of

18 title 49 of the Code of Federal Regu19 lations, issued to the operator.

20 ‘‘(C) UPDATED DOCUMENTATION RE21 QUIREMENTS.—If a satellite carrier wishes to

22 continue to make secondary transmissions to a

23 recreational vehicle or commercial truck for

24 more than a 2-year period, that carrier shall

25 provide each network, upon request, with up-
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1 dated documentation in the form described

2 under subparagraph (B) during the 90 days be3 fore expiration of that 2-year period.’’.

4 (e) CONFORMING AMENDMENT.—Section 119(d)(11)

5 of title 17, United States Code, is amended to read as

6 follows:

7 ‘‘(11) LOCAL MARKET.—The term ‘local mar8 ket’ has the meaning given such term under section

9 122( j).’’.

10 SEC. 1006. PUBLIC BROADCASTING SERVICE SATELLITE

11 FEED.

12 (a) SECONDARY TRANSMISSIONS.—Section 119(a)(1)

13 of title 17, United States Code, is amended—

14 (1) by striking the paragraph heading and in15 serting ‘‘(1) SUPERSTATIONS AND PBS SATELLITE

16 FEED.—’’;

17 (2) by inserting ‘‘or by the Public Broadcasting

18 Service satellite feed’’ after ‘‘superstation’’; and

19 (3) by adding at the end the following: ‘‘In the

20 case of the Public Broadcasting Service satellite

21 feed, the statutory license shall be effective until

22 January 1, 2002.’’.

23 (b) ROYALTY FEES.—Section 119(b)(1)(B)(iii) of

24 title 17, United States Code, is amended by inserting ‘‘or
26

•S 1948 IS

1 the Public Broadcasting Service satellite feed’’ after ‘‘net2 work station’’.

3 (c) DEFINITIONS.—Section 119(d) of title 17, United

4 States Code, is amended—

5 (1) by amending paragraph (9) to read as fol6 lows:

7 ‘‘(9) SUPERSTATION.—The term

8 ‘superstation’—

9 ‘‘(A) means a television broadcast station,

10 other than a network station, licensed by the

11 Federal Communications Commission that is

12 secondarily transmitted by a satellite carrier;

13 and

14 ‘‘(B) except for purposes of computing the

15 royalty fee, includes the Public Broadcasting

16 Service satellite feed.’’; and

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

18 ‘‘(12) PUBLIC BROADCASTING SERVICE SAT19 ELLITE FEED.—The term ‘Public Broadcasting

20 Service satellite feed’ means the national satellite

21 feed distributed and designated for purposes of this

22 section by the Public Broadcasting Service con23 sisting of educational and informational program24 ming intended for private home viewing, to which
27

•S 1948 IS

1 the Public Broadcasting Service holds national ter2 restrial broadcast rights.’’.

3 SEC. 1007. APPLICATION OF FEDERAL COMMUNICATIONS

4 COMMISSION REGULATIONS.

5 Section 119(a) of title 17, United States Code, is

6 amended—

7 (1) in paragraph (1), by inserting ‘‘with regard

8 to secondary transmissions the satellite carrier is in

9 compliance with the rules, regulations, or authoriza10 tions of the Federal Communications Commission

11 governing the carriage of television broadcast station

12 signals,’’ after ‘‘satellite carrier to the public for pri13 vate home viewing,’’;

14 (2) in paragraph (2), by inserting ‘‘with regard

15 to secondary transmissions the satellite carrier is in

16 compliance with the rules, regulations, or authoriza17 tions of the Federal Communications Commission

18 governing the carriage of television broadcast station

19 signals,’’ after ‘‘satellite carrier to the public for pri20 vate home viewing,’’; and

21 (3) by adding at the end of such subsection (as

22 amended by section 1005(e) of this Act) the fol23 lowing new paragraph:

24 ‘‘(12) STATUTORY LICENSE CONTINGENT ON

25 COMPLIANCE WITH FCC RULES AND REMEDIAL
28

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1 STEPS.—Notwithstanding any other provision of this

2 section, the willful or repeated secondary trans3 mission to the public by a satellite carrier of a pri4 mary transmission embodying a performance or dis5 play of a work made by a broadcast station licensed

6 by the Federal Communications Commission is ac7 tionable as an act of infringement under section

8 501, and is fully subject to the remedies provided by

9 sections 502 through 506 and 509, if, at the time

10 of such transmission, the satellite carrier is not in

11 compliance with the rules, regulations, and author12 izations of the Federal Communications Commission

13 concerning the carriage of television broadcast sta14 tion signals.’’.

15 SEC. 1008. RULES FOR SATELLITE CARRIERS RETRANSMIT16 TING TELEVISION BROADCAST SIGNALS.

17 (a) AMENDMENTS TO COMMUNICATIONS ACT OF

18 1934.—Title III of the Communications Act of 1934 is

19 amended by inserting after section 337 (47 U.S.C. 337)

20 the following new sections:

21 ‘‘SEC. 338. CARRIAGE OF LOCAL TELEVISION SIGNALS BY

22 SATELLITE CARRIERS.

23 ‘‘(a) CARRIAGE OBLIGATIONS.—

24 ‘‘(1) IN GENERAL.—Subject to the limitations

25 of paragraph (2), each satellite carrier providing,
29

•S 1948 IS

1 under section 122 of title 17, United States Code,

2 secondary transmissions to subscribers located with3 in the local market of a television broadcast station

4 of a primary transmission made by that station shall

5 carry upon request the signals of all television

6 broadcast stations located within that local market,

7 subject to section 325(b).

8 ‘‘(2) REMEDIES FOR FAILURE TO CARRY.—The

9 remedies for any failure to meet the obligations

10 under this subsection shall be available exclusively

11 under section 501(f ) of title 17, United States Code.

12 ‘‘(3) EFFECTIVE DATE.—No satellite carrier

13 shall be required to carry local television broadcast

14 stations under paragraph (1) until January 1, 2002.

15 ‘‘(b) GOOD SIGNAL REQUIRED.—

16 ‘‘(1) COSTS.—A television broadcast station as17 serting its right to carriage under subsection (a)

18 shall be required to bear the costs associated with

19 delivering a good quality signal to the designated

20 local receive facility of the satellite carrier or to an21 other facility that is acceptable to at least one-half

22 the stations asserting the right to carriage in the

23 local market.
30

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1 ‘‘(2) REGULATIONS.—The regulations issued

2 under subsection (g) shall set forth the obligations

3 necessary to carry out this subsection.

4 ‘‘(c) DUPLICATION NOT REQUIRED.—

5 ‘‘(1) COMMERCIAL STATIONS.—Notwithstanding

6 subsection (a), a satellite carrier shall not be re7 quired to carry upon request the signal of any local

8 commercial television broadcast station that substan9 tially duplicates the signal of another local commer10 cial television broadcast station which is secondarily

11 transmitted by the satellite carrier within the same

12 local market, or to carry upon request the signals of

13 more than one local commercial television broadcast

14 station in a single local market that is affiliated with

15 a particular television network unless such stations

16 are licensed to communities in different States.

17 ‘‘(2) NONCOMMERCIAL STATIONS.—The Com18 mission shall prescribe regulations limiting the car19 riage requirements under subsection (a) of satellite

20 carriers with respect to the carriage of multiple local

21 noncommercial television broadcast stations. To the

22 extent possible, such regulations shall provide the

23 same degree of carriage by satellite carriers of such

24 multiple stations as is provided by cable systems

25 under section 615.
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1 ‘‘(d) CHANNEL POSITIONING.—No satellite carrier

2 shall be required to provide the signal of a local television

3 broadcast station to subscribers in that station’s local

4 market on any particular channel number or to provide

5 the signals in any particular order, except that the satellite

6 carrier shall retransmit the signal of the local television

7 broadcast stations to subscribers in the stations’ local

8 market on contiguous channels and provide access to such

9 station’s signals at a nondiscriminatory price and in a

10 nondiscriminatory manner on any navigational device, on11 screen program guide, or menu.

12 ‘‘(e) COMPENSATION FOR CARRIAGE.—A satellite

13 carrier shall not accept or request monetary payment or

14 other valuable consideration in exchange either for car15 riage of local television broadcast stations in fulfillment

16 of the requirements of this section or for channel posi17 tioning rights provided to such stations under this section,

18 except that any such station may be required to bear the

19 costs associated with delivering a good quality signal to

20 the local receive facility of the satellite carrier.

21 ‘‘(f ) REMEDIES.—

22 ‘‘(1) COMPLAINTS BY BROADCAST STATIONS.—

23 Whenever a local television broadcast station believes

24 that a satellite carrier has failed to meet its obliga25 tions under subsections (b) through (e) of this sec-
32

•S 1948 IS

1 tion, such station shall notify the carrier, in writing,

2 of the alleged failure and identify its reasons for be3 lieving that the satellite carrier failed to comply with

4 such obligations. The satellite carrier shall, within

5 30 days after such written notification, respond in

6 writing to such notification and comply with such

7 obligations or state its reasons for believing that it

8 is in compliance with such obligations. A local tele9 vision broadcast station that disputes a response by

10 a satellite carrier that it is in compliance with such

11 obligations may obtain review of such denial or re12 sponse by filing a complaint with the Commission.

13 Such complaint shall allege the manner in which

14 such satellite carrier has failed to meet its obliga15 tions and the basis for such allegations.

16 ‘‘(2) OPPORTUNITY TO RESPOND.—The Com17 mission shall afford the satellite carrier against

18 which a complaint is filed under paragraph (1) an

19 opportunity to present data and arguments to estab20 lish that there has been no failure to meet its obliga21 tions under this section.

22 ‘‘(3) REMEDIAL ACTIONS; DISMISSAL.—Within

23 120 days after the date a complaint is filed under

24 paragraph (1), the Commission shall determine

25 whether the satellite carrier has met its obligations
33

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1 under subsections (b) through (e). If the Commis2 sion determines that the satellite carrier has failed

3 to meet such obligations, the Commission shall order

4 the satellite carrier to take appropriate remedial ac5 tion. If the Commission determines that the satellite

6 carrier has fully met the requirements of such sub7 sections, the Commission shall dismiss the com8 plaint.

9 ‘‘(g) REGULATIONS BY COMMISSION.—Within 1 year

10 after the date of the enactment of this section, the Com11 mission shall issue regulations implementing this section

12 following a rulemaking proceeding. The regulations pre13 scribed under this section shall include requirements on

14 satellite carriers that are comparable to the requirements

15 on cable operators under sections 614(b)(3) and (4) and

16 615(g)(1) and (2).

17 ‘‘(h) DEFINITIONS.—As used in this section:

18 ‘‘(1) DISTRIBUTOR.—The term ‘distributor’

19 means an entity which contracts to distribute sec20 ondary transmissions from a satellite carrier and, ei21 ther as a single channel or in a package with other

22 programming, provides the secondary transmission

23 either directly to individual subscribers or indirectly

24 through other program distribution entities.
34

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1 ‘‘(2) LOCAL RECEIVE FACILITY.—The term

2 ‘local receive facility’ means the reception point in

3 each local market which a satellite carrier designates

4 for delivery of the signal of the station for purposes

5 of retransmission.

6 ‘‘(3) LOCAL MARKET.—The term ‘local market’

7 has the meaning given that term under section

8 122( j) of title 17, United States Code.

9 ‘‘(4) SATELLITE CARRIER.—The term ‘satellite

10 carrier’ has the meaning given such term under sec11 tion 119(d) of title 17, United States Code.

12 ‘‘(5) SECONDARY TRANSMISSION.—The term

13 ‘secondary transmission’ has the meaning given such

14 term in section 119(d) of title 17, United States

15 Code.

16 ‘‘(6) SUBSCRIBER.—The term ‘subscriber’ has

17 the meaning given that term under section 122( j) of

18 title 17, United States Code.

19 ‘‘(7) TELEVISION BROADCAST STATION.—The

20 term ‘television broadcast station’ has the meaning

21 given such term in section 325(b)(7).

22 ‘‘SEC. 339. CARRIAGE OF DISTANT TELEVISION STATIONS

23 BY SATELLITE CARRIERS.

24 ‘‘(a) PROVISIONS RELATING TO CARRIAGE OF DIS25 TANT SIGNALS.—
35

•S 1948 IS

1 ‘‘(1) CARRIAGE PERMITTED.—

2 ‘‘(A) IN GENERAL.—Subject to section 119

3 of title 17, United States Code, any satellite

4 carrier shall be permitted to provide the signals

5 of no more than two network stations in a sin6 gle day for each television network to any

7 household not located within the local markets

8 of those network stations.

9 ‘‘(B) ADDITIONAL SERVICE.—In addition

10 to signals provided under subparagraph (A),

11 any satellite carrier may also provide service

12 under the statutory license of section 122 of

13 title 17, United States Code, to the local mar14 ket within which such household is located. The

15 service provided under section 122 of such title

16 may be in addition to the two signals provided

17 under section 119 of such title.

18 ‘‘(2) PENALTY FOR VIOLATION.—Any satellite

19 carrier that knowingly and willfully provides the sig20 nals of television stations to subscribers in violation

21 of this subsection shall be liable for a forfeiture pen22 alty under section 503 in the amount of $50,000 for

23 each violation or each day of a continuing violation.
36

•S 1948 IS

1 ‘‘(b) EXTENSION OF NETWORK NONDUPLICATION,

2 SYNDICATED EXCLUSIVITY, AND SPORTS BLACKOUT TO

3 SATELLITE RETRANSMISSION.—

4 ‘‘(1) EXTENSION OF PROTECTIONS.—Within 45

5 days after the date of the enactment of the Satellite

6 Home Viewer Improvement Act of 1999, the Com7 mission shall commence a single rulemaking pro8 ceeding to establish regulations that—

9 ‘‘(A) apply network nonduplication protec10 tion (47 CFR 76.92) syndicated exclusivity pro11 tection (47 CFR 76.151), and sports blackout

12 protection (47 CFR 76.67) to the retrans13 mission of the signals of nationally distributed

14 superstations by satellite carriers to subscribers;

15 and

16 ‘‘(B) to the extent technically feasible and

17 not economically prohibitive, apply sports black18 out protection (47 CFR 76.67) to the retrans19 mission of the signals of network stations by

20 satellite carriers to subscribers.

21 ‘‘(2) DEADLINE FOR ACTION.—The Commission

22 shall complete all actions necessary to prescribe reg23 ulations required by this section so that the regula24 tions shall become effective within 1 year after such

25 date of enactment.
37

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1 ‘‘(c) ELIGIBILITY FOR RETRANSMISSION.—

2 ‘‘(1) SIGNAL STANDARD FOR SATELLITE CAR3 RIER PURPOSES.—For the purposes of identifying an

4 unserved household under section 119(d)(10) of title

5 17, United States Code, within 1 year after the date

6 of the enactment of the Satellite Home Viewer Im7 provement Act of 1999, the Commission shall con8 clude an inquiry to evaluate all possible standards

9 and factors for determining eligibility for retrans10 missions of the signals of network stations, and, if

11 appropriate—

12 ‘‘(A) recommend modifications to the

13 Grade B intensity standard for analog signals

14 set forth in section 73.683(a) of its regulations

15 (47 CFR 73.683(a)), or recommend alternative

16 standards or factors for purposes of deter17 mining such eligibility; and

18 ‘‘(B) make a further recommendation re19 lating to an appropriate standard for digital

20 signals.

21 ‘‘(2) WAIVERS.—A subscriber who is denied the

22 retransmission of a signal of a network station

23 under section 119 of title 17, United States Code,

24 may request a waiver from such denial by submit25 ting a request, through such subscriber’s satellite
38

•S 1948 IS

1 carrier, to the network station asserting that the re2 transmission is prohibited. The network station shall

3 accept or reject a subscriber’s request for a waiver

4 within 30 days after receipt of the request. The sub5 scriber shall be permitted to receive such retrans6 mission under section 119(d)(10)(B) of title 17,

7 United States Code, if such station agrees to the

8 waiver request and files with the satellite carrier a

9 written waiver with respect to that subscriber allow10 ing the subscriber to receive such retransmission. If

11 a television network station fails to accept or reject

12 a subscriber’s request for a waiver within the 30-day

13 period after receipt of the request, that station shall

14 be deemed to agree to the waiver request and have

15 filed such written waiver.

16 ‘‘(3) ESTABLISHMENT OF IMPROVED PRE17 DICTIVE MODEL REQUIRED.—Within 180 days after

18 the date of the enactment of the Satellite Home

19 Viewer Improvement Act of 1999, the Commission

20 shall take all actions necessary, including any recon21 sideration, to develop and prescribe by rule a point22 to-point predictive model for reliably and presump23 tively determining the ability of individual locations

24 to receive signals in accordance with the signal in25 tensity standard in effect under section
39

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1 119(d)(10)(A) of title 17, United States Code. In

2 prescribing such model, the Commission shall rely on

3 the Individual Location Longley-Rice model set forth

4 by the Federal Communications Commission in

5 Docket No. 98–201 and ensure that such model

6 takes into account terrain, building structures, and

7 other land cover variations. The Commission shall

8 establish procedures for the continued refinement in

9 the application of the model by the use of additional

10 data as it becomes available.

11 ‘‘(4) OBJECTIVE VERIFICATION.—

12 ‘‘(A) IN GENERAL.—If a subscriber’s re13 quest for a waiver under paragraph (2) is re14 jected and the subscriber submits to the sub15 scriber’s satellite carrier a request for a test

16 verifying the subscriber’s inability to receive a

17 signal that meets the signal intensity standard

18 in effect under section 119(d)(10)(A) of title

19 17, United States Code, the satellite carrier and

20 the network station or stations asserting that

21 the retransmission is prohibited with respect to

22 that subscriber shall select a qualified and inde23 pendent person to conduct a test in accordance

24 with section 73.686(d) of its regulations (47

25 CFR 73.686(d)), or any successor regulation.
40

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1 Such test shall be conducted within 30 days

2 after the date the subscriber submits a request

3 for the test. If the written findings and conclu4 sions of a test conducted in accordance with

5 such section (or any successor regulation) dem6 onstrate that the subscriber does not receive a

7 signal that meets or exceeds the signal intensity

8 standard in effect under section 119(d)(10)(A)

9 of title 17, United States Code, the subscriber

10 shall not be denied the retransmission of a sig11 nal of a network station under section 119 of

12 title 17, United States Code.

13 ‘‘(B) DESIGNATION OF TESTER AND ALLO14 CATION OF COSTS.—If the satellite carrier and

15 the network station or stations asserting that

16 the retransmission is prohibited are unable to

17 agree on such a person to conduct the test, the

18 person shall be designated by an independent

19 and neutral entity designated by the Commis20 sion by rule. Unless the satellite carrier and the

21 network station or stations otherwise agree, the

22 costs of conducting the test under this para23 graph shall be borne by the satellite carrier, if

24 the station’s signal meets or exceeds the signal

25 intensity standard in effect under section
41

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1 119(d)(10)(A) of title 17, United States Code,

2 or by the network station, if its signal fails to

3 meet or exceed such standard.

4 ‘‘(C) AVOIDANCE OF UNDUE BURDEN.—

5 Commission regulations prescribed under this

6 paragraph shall seek to avoid any undue burden

7 on any party.

8 ‘‘(d) DEFINITIONS.—For the purposes of this section:

9 ‘‘(1) LOCAL MARKET.—The term ‘local market’

10 has the meaning given that term under section

11 122( j) of title 17, United States Code.

12 ‘‘(2) NATIONALLY DISTRIBUTED SUPERSTA13 TION.—The term ‘nationally distributed supersta14 tion’ means a television broadcast station, licensed

15 by the Commission, that—

16 ‘‘(A) is not owned or operated by or affili17 ated with a television network that, as of Janu18 ary 1, 1995, offered interconnected program

19 service on a regular basis for 15 or more hours

20 per week to at least 25 affiliated television li21 censees in 10 or more States;

22 ‘‘(B) on May 1, 1991, was retransmitted

23 by a satellite carrier and was not a network sta24 tion at that time; and
42

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1 ‘‘(C) was, as of July 1, 1998, retrans2 mitted by a satellite carrier under the statutory

3 license of section 119 of title 17, United States

4 Code.

5 ‘‘(3) NETWORK STATION.—The term ‘network

6 station’ has the meaning given such term under sec7 tion 119(d) of title 17, United States Code.

8 ‘‘(4) SATELLITE CARRIER.—The term ‘satellite

9 carrier’ has the meaning given such term under sec10 tion 119(d) of title 17, United States Code.

11 ‘‘(5) TELEVISION NETWORK.—The term ‘tele12 vision network’ means a television network in the

13 United States which offers an interconnected pro14 gram service on a regular basis for 15 or more hours

15 per week to at least 25 affiliated broadcast stations

16 in 10 or more States.’’.

17 (b) NETWORK STATION DEFINITION.—Section

18 119(d)(2) of title 17, United States Code, is amended—

19 (1) in subparagraph (B) by striking the period

20 and inserting a semicolon; and

21 (2) by adding after subparagraph (B) the fol22 lowing:

23 ‘‘except that the term does not include the signal of the

24 Alaska Rural Communications Service, or any successor

25 entity to that service.’’.
43

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1 SEC. 1009. RETRANSMISSION CONSENT.

2 (a) IN GENERAL.—Section 325(b) of the Commu3 nications Act of 1934 (47 U.S.C. 325(b)) is amended—

4 (1) by amending paragraphs (1) and (2) to

5 read as follows:

6 ‘‘(b)(1) No cable system or other multichannel video

7 programming distributor shall retransmit the signal of a

8 broadcasting station, or any part thereof, except—

9 ‘‘(A) with the express authority of the origi10 nating station;

11 ‘‘(B) under section 614, in the case of a station

12 electing, in accordance with this subsection, to assert

13 the right to carriage under such section; or

14 ‘‘(C) under section 338, in the case of a station

15 electing, in accordance with this subsection, to assert

16 the right to carriage under such section.

17 ‘‘(2) This subsection shall not apply—

18 ‘‘(A) to retransmission of the signal of a non19 commercial television broadcast station;

20 ‘‘(B) to retransmission of the signal of a tele21 vision broadcast station outside the station’s local

22 market by a satellite carrier directly to its sub23 scribers, if—

24 ‘‘(i) such station was a superstation on

25 May 1, 1991;
44

•S 1948 IS

1 ‘‘(ii) as of July 1, 1998, such station was

2 retransmitted by a satellite carrier under the

3 statutory license of section 119 of title 17,

4 United States Code; and

5 ‘‘(iii) the satellite carrier complies with any

6 network nonduplication, syndicated exclusivity,

7 and sports blackout rules adopted by the Com8 mission under section 339(b) of this Act;

9 ‘‘(C) until December 31, 2004, to retrans10 mission of the signals of network stations directly to

11 a home satellite antenna, if the subscriber receiving

12 the signal—

13 ‘‘(i) is located in an area outside the local

14 market of such stations; and

15 ‘‘(ii) resides in an unserved household;

16 ‘‘(D) to retransmission by a cable operator or

17 other multichannel video provider, other than a sat18 ellite carrier, of the signal of a television broadcast

19 station outside the station’s local market if such sig20 nal was obtained from a satellite carrier and—

21 ‘‘(i) the originating station was a supersta22 tion on May 1, 1991; and

23 ‘‘(ii) as of July 1, 1998, such station was

24 retransmitted by a satellite carrier under the
45

•S 1948 IS

1 statutory license of section 119 of title 17,

2 United States Code; or

3 ‘‘(E) during the 6-month period beginning on

4 the date of the enactment of the Satellite Home

5 Viewer Improvement Act of 1999, to the retrans6 mission of the signal of a television broadcast station

7 within the station’s local market by a satellite car8 rier directly to its subscribers under the statutory li9 cense of section 122 of title 17, United States Code.

10 For purposes of this paragraph, the terms ‘satellite car11 rier’ and ‘superstation’ have the meanings given those

12 terms, respectively, in section 119(d) of title 17, United

13 States Code, as in effect on the date of the enactment

14 of the Cable Television Consumer Protection and Competi15 tion Act of 1992, the term ‘unserved household’ has the

16 meaning given that term under section 119(d) of such

17 title, and the term ‘local market’ has the meaning given

18 that term in section 122( j) of such title.’’;

19 (2) by adding at the end of paragraph (3) the

20 following new subparagraph:

21 ‘‘(C) Within 45 days after the date of the enactment

22 of the Satellite Home Viewer Improvement Act of 1999,

23 the Commission shall commence a rulemaking proceeding

24 to revise the regulations governing the exercise by tele25 vision broadcast stations of the right to grant retrans-
46

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1 mission consent under this subsection, and such other reg2 ulations as are necessary to administer the limitations

3 contained in paragraph (2). The Commission shall com4 plete all actions necessary to prescribe such regulations

5 within 1 year after such date of enactment. Such regula6 tions shall—

7 ‘‘(i) establish election time periods that cor8 respond with those regulations adopted under sub9 paragraph (B) of this paragraph; and

10 ‘‘(ii) until January 1, 2006, prohibit a television

11 broadcast station that provides retransmission con12 sent from engaging in exclusive contracts for car13 riage or failing to negotiate in good faith, and it

14 shall not be a failure to negotiate in good faith if the

15 television broadcast station enters into retrans16 mission consent agreements containing different

17 terms and conditions, including price terms, with

18 different multichannel video programming distribu19 tors if such different terms and conditions are based

20 on competitive marketplace considerations.’’;

21 (3) in paragraph (4), by adding at the end the

22 following new sentence: ‘‘If an originating television

23 station elects under paragraph (3)(C) to exercise its

24 right to grant retransmission consent under this

25 subsection with respect to a satellite carrier, section
47

•S 1948 IS

1 338 shall not apply to the carriage of the signal of

2 such station by such satellite carrier.’’;

3 (4) in paragraph (5), by striking ‘‘614 or 615’’

4 and inserting ‘‘338, 614, or 615’’; and

5 (5) by adding at the end the following new

6 paragraph:

7 ‘‘(7) For purposes of this subsection, the

8 term—

9 ‘‘(A) ‘network station’ has the meaning

10 given such term under section 119(d) of title

11 17, United States Code; and

12 ‘‘(B) ‘television broadcast station’ means

13 an over-the-air commercial or noncommercial

14 television broadcast station licensed by the

15 Commission under subpart E of part 73 of title

16 47, Code of Federal Regulations, except that

17 such term does not include a low-power or

18 translator television station.’’.

19 (b) ENFORCEMENT PROVISIONS FOR CONSENT FOR

20 RETRANSMISSIONS.—Section 325 of the Communications

21 Act of 1934 (47 U.S.C. 325) is amended by adding at

22 the end the following new subsection:

23 ‘‘(e) ENFORCEMENT PROCEEDINGS AGAINST SAT24 ELLITE CARRIERS CONCERNING RETRANSMISSIONS OF
48

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1 TELEVISION BROADCAST STATIONS IN THE RESPECTIVE

2 LOCAL MARKETS OF SUCH CARRIERS.—

3 ‘‘(1) COMPLAINTS BY TELEVISION BROADCAST

4 STATIONS.—If after the expiration of the 6-month

5 period described under subsection (b)(2)(E) a tele6 vision broadcast station believes that a satellite car7 rier has retransmitted its signal to any person in the

8 local market of such station in violation of sub9 section (b)(1), the station may file with the Commis10 sion a complaint providing—

11 ‘‘(A) the name, address, and call letters of

12 the station;

13 ‘‘(B) the name and address of the satellite

14 carrier;

15 ‘‘(C) the dates on which the alleged re16 transmission occurred;

17 ‘‘(D) the street address of at least one per18 son in the local market of the station to whom

19 the alleged retransmission was made;

20 ‘‘(E) a statement that the retransmission

21 was not expressly authorized by the television

22 broadcast station; and

23 ‘‘(F) the name and address of counsel for

24 the station.
49

•S 1948 IS

1 ‘‘(2) SERVICE OF COMPLAINTS ON SATELLITE

2 CARRIERS.—For purposes of any proceeding under

3 this subsection, any satellite carrier that retransmits

4 the signal of any broadcast station shall be deemed

5 to designate the Secretary of the Commission as its

6 agent for service of process. A television broadcast

7 station may serve a satellite carrier with a complaint

8 concerning an alleged violation of subsection (b)(1)

9 through retransmission of a station within the local

10 market of such station by filing the original and two

11 copies of the complaint with the Secretary of the

12 Commission and serving a copy of the complaint on

13 the satellite carrier by means of two commonly used

14 overnight delivery services, each addressed to the

15 chief executive officer of the satellite carrier at its

16 principal place of business, and each marked ‘UR17 GENT LITIGATION MATTER’ on the outer pack18 aging. Service shall be deemed complete one business

19 day after a copy of the complaint is provided to the

20 delivery services for overnight delivery. On receipt of

21 a complaint filed by a television broadcast station

22 under this subsection, the Secretary of the Commis23 sion shall send the original complaint by United

24 States mail, postage prepaid, receipt requested, ad-
50

•S 1948 IS

1 dressed to the chief executive officer of the satellite

2 carrier at its principal place of business.

3 ‘‘(3) ANSWERS BY SATELLITE CARRIERS.—

4 Within five business days after the date of service,

5 the satellite carrier shall file an answer with the

6 Commission and shall serve the answer by a com7 monly used overnight delivery service and by United

8 States mail, on the counsel designated in the com9 plaint at the address listed for such counsel in the

10 complaint.

11 ‘‘(4) DEFENSES.—

12 ‘‘(A) EXCLUSIVE DEFENSES.—The de13 fenses under this paragraph are the exclusive

14 defenses available to a satellite carrier against

15 which a complaint under this subsection is filed.

16 ‘‘(B) DEFENSES.—The defenses referred

17 to under subparagraph (A) are the defenses

18 that—

19 ‘‘(i) the satellite carrier did not re20 transmit the television broadcast station to

21 any person in the local market of the sta22 tion during the time period specified in the

23 complaint;

24 ‘‘(ii) the television broadcast station

25 had, in a writing signed by an officer of
51

•S 1948 IS

1 the television broadcast station, expressly

2 authorized the retransmission of the sta3 tion by the satellite carrier to each person

4 in the local market of the television broad5 cast station to which the satellite carrier

6 made such retransmissions for the entire

7 time period during which it is alleged that

8 a violation of subsection (b)(1) has oc9 curred;

10 ‘‘(iii) the retransmission was made

11 after January 1, 2002, and the television

12 broadcast station had elected to assert the

13 right to carriage under section 338 as

14 against the satellite carrier for the relevant

15 period; or

16 ‘‘(iv) the station being retransmitted

17 is a noncommercial television broadcast

18 station.

19 ‘‘(5) COUNTING OF VIOLATIONS.—The retrans20 mission without consent of a particular television

21 broadcast station on a particular day to one or more

22 persons in the local market of the station shall be

23 considered a separate violation of subsection (b)(1).

24 ‘‘(6) BURDEN OF PROOF.—With respect to each

25 alleged violation, the burden of proof shall be on a
52

•S 1948 IS

1 television broadcast station to establish that the sat2 ellite carrier retransmitted the station to at least one

3 person in the local market of the station on the day

4 in question. The burden of proof shall be on the sat5 ellite carrier with respect to all defenses other than

6 the defense under paragraph (4)(B)(i).

7 ‘‘(7) PROCEDURES.—

8 ‘‘(A) REGULATIONS.—Within 60 days

9 after the date of the enactment of the Satellite

10 Home Viewer Improvement Act of 1999, the

11 Commission shall issue procedural regulations

12 implementing this subsection which shall super13 sede procedures under section 312.

14 ‘‘(B) DETERMINATIONS.—

15 ‘‘(i) IN GENERAL.—Within 45 days

16 after the filing of a complaint, the Com17 mission shall issue a final determination in

18 any proceeding brought under this sub19 section. The Commission’s final determina20 tion shall specify the number of violations

21 committed by the satellite carrier. The

22 Commission shall hear witnesses only if it

23 clearly appears, based on written filings by

24 the parties, that there is a genuine dispute

25 about material facts. Except as provided in
53

•S 1948 IS

1 the preceding sentence, the Commission

2 may issue a final ruling based on written

3 filings by the parties.

4 ‘‘(ii) DISCOVERY.—The Commission

5 may direct the parties to exchange perti6 nent documents, and if necessary to take

7 prehearing depositions, on such schedule as

8 the Commission may approve, but only if

9 the Commission first determines that such

10 discovery is necessary to resolve a genuine

11 dispute about material facts, consistent

12 with the obligation to make a final deter13 mination within 45 days.

14 ‘‘(8) RELIEF.—If the Commission determines

15 that a satellite carrier has retransmitted the tele16 vision broadcast station to at least one person in the

17 local market of such station and has failed to meet

18 its burden of proving one of the defenses under

19 paragraph (4) with respect to such retransmission,

20 the Commission shall be required to—

21 ‘‘(A) make a finding that the satellite car22 rier violated subsection (b)(1) with respect to

23 that station; and

24 ‘‘(B) issue an order, within 45 days after

25 the filing of the complaint, containing—
54

•S 1948 IS

1 ‘‘(i) a cease-and-desist order directing

2 the satellite carrier immediately to stop

3 making any further retransmissions of the

4 television broadcast station to any person

5 within the local market of such station

6 until such time as the Commission deter7 mines that the satellite carrier is in compli8 ance with subsection (b)(1) with respect to

9 such station;

10 ‘‘(ii) if the satellite carrier is found to

11 have violated subsection (b)(1) with respect

12 to more than two television broadcast sta13 tions, a cease-and-desist order directing

14 the satellite carrier to stop making any

15 further retransmission of any television

16 broadcast station to any person within the

17 local market of such station, until such

18 time as the Commission, after giving notice

19 to the station, that the satellite carrier is

20 in compliance with subsection (b)(1) with

21 respect to such stations; and

22 ‘‘(iii) an award to the complainant of

23 that complainant’s costs and reasonable at24 torney’s fees.
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1 ‘‘(9) COURT PROCEEDINGS ON ENFORCEMENT

2 OF COMMISSION ORDER.—

3 ‘‘(A) IN GENERAL.—On entry by the Com4 mission of a final order granting relief under

5 this subsection—

6 ‘‘(i) a television broadcast station may

7 apply within 30 days after such entry to

8 the United States District Court for the

9 Eastern District of Virginia for a final

10 judgment enforcing all relief granted by

11 the Commission; and

12 ‘‘(ii) the satellite carrier may apply

13 within 30 days after such entry to the

14 United States District Court for the East15 ern District of Virginia for a judgment re16 versing the Commission’s order.

17 ‘‘(B) APPEAL.—The procedure for an ap18 peal under this paragraph by the satellite car19 rier shall supersede any other appeal rights

20 under Federal or State law. A United States

21 district court shall be deemed to have personal

22 jurisdiction over the satellite carrier if the car23 rier, or a company under common control with

24 the satellite carrier, has delivered television pro25 gramming by satellite to more than 30 cus-
56

•S 1948 IS

1 tomers in that district during the preceding 4-

2 year period. If the United States District Court

3 for the Eastern District of Virginia does not

4 have personal jurisdiction over the satellite car5 rier, an enforcement action or appeal shall be

6 brought in the United States District Court for

7 the District of Columbia, which may find per8 sonal jurisdiction based on the satellite carrier’s

9 ownership of licenses issued by the Commission.

10 An application by a television broadcast station

11 for an order enforcing any cease-and-desist re12 lief granted by the Commission shall be resolved

13 on a highly expedited schedule. No discovery

14 may be conducted by the parties in any such

15 proceeding. The district court shall enforce the

16 Commission order unless the Commission

17 record reflects manifest error and an abuse of

18 discretion by the Commission.

19 ‘‘(10) CIVIL ACTION FOR STATUTORY DAM20 AGES.—Within 6 months after issuance of an order

21 by the Commission under this subsection, a tele22 vision broadcast station may file a civil action in any

23 United States district court that has personal juris24 diction over the satellite carrier for an award of stat25 utory damages for any violation that the Commis-
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•S 1948 IS

1 sion has determined to have been committed by a

2 satellite carrier under this subsection. Such action

3 shall not be subject to transfer under section

4 1404(a) of title 28, United States Code. On finding

5 that the satellite carrier has committed one or more

6 violations of subsection (b), the District Court shall

7 be required to award the television broadcast station

8 statutory damages of $25,000 per violation, in ac9 cordance with paragraph (5), and the costs and at10 torney’s fees incurred by the station. Such statutory

11 damages shall be awarded only if the television

12 broadcast station has filed a binding stipulation with

13 the court that such station will donate the full

14 amount in excess of $1,000 of any statutory damage

15 award to the United States Treasury for public pur16 poses. Notwithstanding any other provision of law, a

17 station shall incur no tax liability of any kind with

18 respect to any amounts so donated. Discovery may

19 be conducted by the parties in any proceeding under

20 this paragraph only if and to the extent necessary to

21 resolve a genuinely disputed issue of fact concerning

22 one of the defenses under paragraph (4). In any

23 such action, the defenses under paragraph (4) shall

24 be exclusive, and the burden of proof shall be on the

25 satellite carrier with respect to all defenses other
58

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1 than the defense under paragraph (4)(B)(i). A judg2 ment under this paragraph may be enforced in any

3 manner permissible under Federal or State law.

4 ‘‘(11) APPEALS.—

5 ‘‘(A) IN GENERAL.—The nonprevailing

6 party before a United States district court may

7 appeal a decision under this subsection to the

8 United States Court of Appeals with jurisdic9 tion over that district court. The Court of Ap10 peals shall not issue any stay of the effective11 ness of any decision granting relief against a

12 satellite carrier unless the carrier presents clear

13 and convincing evidence that it is highly likely

14 to prevail on appeal and only after posting a

15 bond for the full amount of any monetary

16 award assessed against it and for such further

17 amount as the Court of Appeals may believe ap18 propriate.

19 ‘‘(B) APPEAL.—If the Commission denies

20 relief in response to a complaint filed by a tele21 vision broadcast station under this subsection,

22 the television broadcast station filing the com23 plaint may file an appeal with the United

24 States Court of Appeals for the District of Co25 lumbia Circuit.
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1 ‘‘(12) SUNSET.—No complaint or civil action

2 may be filed under this subsection after December

3 31, 2001. This subsection shall continue to apply to

4 any complaint or civil action filed on or before such

5 date.’’.

6 SEC. 1010. SEVERABILITY.

7 If any provision of section 325(b) of the Communica8 tions Act of 1934 (47 U.S.C. 325(b)), or the application

9 of that provision to any person or circumstance, is held

10 by a court of competent jurisdiction to violate any provi11 sion of the Constitution of the United States, then the

12 other provisions of that section, and the application of that

13 provision to other persons and circumstances, shall not be

14 affected.

15 SEC. 1011. TECHNICAL AMENDMENTS.

16 (a) TECHNICAL AMENDMENTS RELATING TO CABLE

17 SYSTEMS.—Title 17, United States Code, is amended as

18 follows:

19 (1) Such title is amended by striking ‘‘pro20 graming’’ each place it appears and inserting ‘‘pro21 gramming’’.

22 (2) Section 111 is amended by striking ‘‘com23 pulsory’’ each place it appears and inserting ‘‘statu24 tory’’.
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•S 1948 IS

1 (3) Section 510(b) is amended by striking

2 ‘‘compulsory’’ and inserting ‘‘statutory’’.

3 (b) TECHNICAL AMENDMENTS RELATING TO PER4 FORMANCE OR DISPLAYS OF WORKS.—

5 (1) Section 111 of title 17, United States Code,

6 is amended—

7 (A) in subsection (a), in the matter pre8 ceding paragraph (1), by striking ‘‘primary

9 transmission embodying a performance or dis10 play of a work’’ and inserting ‘‘performance or

11 display of a work embodied in a primary trans12 mission’’;

13 (B) in subsection (b), in the matter pre14 ceding paragraph (1), by striking ‘‘primary

15 transmission embodying a performance or dis16 play of a work’’ and inserting ‘‘performance or

17 display of a work embodied in a primary trans18 mission’’; and

19 (C) in subsection (c)—

20 (i) in paragraph (1)—

21 (I) by inserting ‘‘a performance

22 or display of a work embodied in’’

23 after ‘‘by a cable system of’’; and
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•S 1948 IS

1 (II) by striking ‘‘and embodying

2 a performance or display of a work’’;

3 and

4 (ii) in paragraphs (3) and (4)—

5 (I) by striking ‘‘a primary trans6 mission’’ and inserting ‘‘a perform7 ance or display of a work embodied in

8 a primary transmission’’; and

9 (II) by striking ‘‘and embodying

10 a performance or display of a work’’.

11 (2) Section 119(a) of title 17, United States

12 Code, is amended—

13 (A) in paragraph (1), by striking ‘‘primary

14 transmission made by a superstation and em15 bodying a performance or display of a work’’

16 and inserting ‘‘performance or display of a

17 work embodied in a primary transmission made

18 by a superstation’’;

19 (B) in paragraph (2)(A), by striking ‘‘pro20 gramming’’ and all that follows through ‘‘a

21 work’’ and inserting ‘‘a performance or display

22 of a work embodied in a primary transmission

23 made by a network station’’;

24 (C) in paragraph (4)—
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•S 1948 IS

1 (i) by inserting ‘‘a performance or dis2 play of a work embodied in’’ after ‘‘by a

3 satellite carrier of’’; and

4 (ii) by striking ‘‘and embodying a per5 formance or display of a work’’; and

6 (D) in paragraph (6)—

7 (i) by inserting ‘‘performance or dis8 play of a work embodied in’’ after ‘‘by a

9 satellite carrier of’’; and

10 (ii) by striking ‘‘and embodying a per11 formance or display of a work’’.

12 (3) Section 501(e) of title 17, United States

13 Code, is amended by striking ‘‘primary transmission

14 embodying the performance or display of a work’’

15 and inserting ‘‘performance or display of a work em16 bodied in a primary transmission’’.

17 (c) CONFORMING AMENDMENT.—Section

18 119(a)(2)(C) of title 17, United States Code, is amended

19 in the first sentence by striking ‘‘currently’’.

20 (d) WORK MADE FOR HIRE.—Section 101 of title 17,

21 United States Code, is amended in the definition relating

22 to work for hire in paragraph (2) by inserting ‘‘as a sound

23 recording,’’ after ‘‘audiovisual work’’.
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1 SEC. 1012. EFFECTIVE DATES.

2 Sections 1001, 1003, 1005, 1007, 1008, 1009, 1010,

3 and 1011 (and the amendments made by such sections)

4 shall take effect on the date of the enactment of this Act.

5 The amendments made by sections 1002, 1004, and 1006

6 shall be effective as of July 1, 1999.

7 TITLE II—RURAL LOCAL

8 TELEVISION SIGNALS

9 SEC. 2001. SHORT TITLE.

10 This title may be cited as the ‘‘Rural Local Broadcast

11 Signal Act’’.

12 SEC. 2002. LOCAL TELEVISION SERVICE IN UNSERVED AND

13 UNDERSERVED MARKETS.

14 (a) IN GENERAL.—Not later than 1 year after the

15 date of the enactment of this Act, the Federal Commu16 nications Commission (‘‘the Commission’’) shall take all

17 actions necessary to make a determination regarding li18 censes or other authorizations for facilities that will uti19 lize, for delivering local broadcast television station signals

20 to satellite television subscribers in unserved and under21 served local television markets, spectrum otherwise allo22 cated to commercial use.

23 (b) RULES.—

24 (1) FORM OF BUSINESS.—To the extent not in25 consistent with the Communications Act of 1934

26 and the Commission’s rules, the Commission shall
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1 permit applicants under subsection (a) to engage in

2 partnerships, joint ventures, and similar operating

3 arrangements for the purpose of carrying out sub4 section (a).

5 (2) HARMFUL INTERFERENCE.—The Commis6 sion shall ensure that no facility licensed or author7 ized under subsection (a) causes harmful inter8 ference to the primary users of that spectrum or to

9 public safety spectrum use.

10 (3) LIMITATION ON COMMISSION.—Except as

11 provided in paragraphs (1) and (2), the Commission

12 may not restrict any entity granted a license or

13 other authorization under subsection (a) from using

14 any reasonable compression, reformatting, or other

15 technology.

16 (c) REPORT.—Not later than January 1, 2001, the

17 Commission shall report to the Agriculture, Appropria18 tions, and the Judiciary Committees of the Senate and

19 the House of Representatives, the Senate Committee on

20 Commerce, Science, and Transportation, and the House

21 of Representatives Committee on Commerce, on the extent

22 to which licenses and other authorizations under sub23 section (a) have facilitated the delivery of local signals to

24 satellite television subscribers in unserved and under25 served local television markets. The report shall include—
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1 (1) an analysis of the extent to which local sig2 nals are being provided by direct-to-home satellite

3 television providers and by other multichannel video

4 program distributors;

5 (2) an enumeration of the technical, economic,

6 and other impediments each type of multichannel

7 video programming distributor has encountered; and

8 (3) recommendations for specific measures to

9 facilitate the provision of local signals to subscribers

10 in unserved and underserved markets by direct-to11 home satellite television providers and by other dis12 tributors of multichannel video programming service.

13 TITLE III—TRADEMARK

14 CYBERPIRACY PREVENTION

15 SEC. 3001. SHORT TITLE; REFERENCES.

16 (a) SHORT TITLE.—This title may be cited as the

17 ‘‘Anticybersquatting Consumer Protection Act’’.

18 (b) REFERENCES TO THE TRADEMARK ACT OF

19 1946.—Any reference in this title to the Trademark Act

20 of 1946 shall be a reference to the Act entitled ‘‘An Act

21 to provide for the registration and protection of trade22 marks used in commerce, to carry out the provisions of

23 certain international conventions, and for other purposes’’,

24 approved July 5, 1946 (15 U.S.C. 1051 et seq.).
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1 SEC. 3002. CYBERPIRACY PREVENTION.

2 (a) IN GENERAL.—Section 43 of the Trademark Act

3 of 1946 (15 U.S.C. 1125) is amended by inserting at the

4 end the following:

5 ‘‘(d)(1)(A) A person shall be liable in a civil action

6 by the owner of a mark, including a personal name which

7 is protected as a mark under this section, if, without re8 gard to the goods or services of the parties, that person—

9 ‘‘(i) has a bad faith intent to profit from that

10 mark, including a personal name which is protected

11 as a mark under this section; and

12 ‘‘(ii) registers, traffics in, or uses a domain

13 name that—

14 ‘‘(I) in the case of a mark that is distinc15 tive at the time of registration of the domain

16 name, is identical or confusingly similar to that

17 mark;

18 ‘‘(II) in the case of a famous mark that is

19 famous at the time of registration of the do20 main name, is identical or confusingly similar

21 to or dilutive of that mark; or

22 ‘‘(III) is a trademark, word, or name pro23 tected by reason of section 706 of title 18,

24 United States Code, or section 220506 of title

25 36, United States Code.
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1 ‘‘(B)(i) In determining whether a person has a bad

2 faith intent described under subparagraph (A), a court

3 may consider factors such as, but not limited to—

4 ‘‘(I) the trademark or other intellectual prop5 erty rights of the person, if any, in the domain

6 name;

7 ‘‘(II) the extent to which the domain name con8 sists of the legal name of the person or a name that

9 is otherwise commonly used to identify that person;

10 ‘‘(III) the person’s prior use, if any, of the do11 main name in connection with the bona fide offering

12 of any goods or services;

13 ‘‘(IV) the person’s bona fide noncommercial or

14 fair use of the mark in a site accessible under the

15 domain name;

16 ‘‘(V) the person’s intent to divert consumers

17 from the mark owner’s online location to a site ac18 cessible under the domain name that could harm the

19 goodwill represented by the mark, either for com20 mercial gain or with the intent to tarnish or dispar21 age the mark, by creating a likelihood of confusion

22 as to the source, sponsorship, affiliation, or endorse23 ment of the site;

24 ‘‘(VI) the person’s offer to transfer, sell, or oth25 erwise assign the domain name to the mark owner
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1 or any third party for financial gain without having

2 used, or having an intent to use, the domain name

3 in the bona fide offering of any goods or services, or

4 the person’s prior conduct indicating a pattern of

5 such conduct;

6 ‘‘(VII) the person’s provision of material and

7 misleading false contact information when applying

8 for the registration of the domain name, the per9 son’s intentional failure to maintain accurate contact

10 information, or the person’s prior conduct indicating

11 a pattern of such conduct;

12 ‘‘(VIII) the person’s registration or acquisition

13 of multiple domain names which the person knows

14 are identical or confusingly similar to marks of oth15 ers that are distinctive at the time of registration of

16 such domain names, or dilutive of famous marks of

17 others that are famous at the time of registration of

18 such domain names, without regard to the goods or

19 services of the parties; and

20 ‘‘(IX) the extent to which the mark incor21 porated in the person’s domain name registration is

22 or is not distinctive and famous within the meaning

23 of subsection (c)(1) of section 43.

24 ‘‘(ii) Bad faith intent described under subparagraph

25 (A) shall not be found in any case in which the court de-
69

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1 termines that the person believed and had reasonable

2 grounds to believe that the use of the domain name was

3 a fair use or otherwise lawful.

4 ‘‘(C) In any civil action involving the registration,

5 trafficking, or use of a domain name under this para6 graph, a court may order the forfeiture or cancellation of

7 the domain name or the transfer of the domain name to

8 the owner of the mark.

9 ‘‘(D) A person shall be liable for using a domain

10 name under subparagraph (A) only if that person is the

11 domain name registrant or that registrant’s authorized li12 censee.

13 ‘‘(E) As used in this paragraph, the term ‘traffics in’

14 refers to transactions that include, but are not limited to,

15 sales, purchases, loans, pledges, licenses, exchanges of cur16 rency, and any other transfer for consideration or receipt

17 in exchange for consideration.

18 ‘‘(2)(A) The owner of a mark may file an in rem civil

19 action against a domain name in the judicial district in

20 which the domain name registrar, domain name registry,

21 or other domain name authority that registered or as22 signed the domain name is located if—

23 ‘‘(i) the domain name violates any right of the

24 owner of a mark registered in the Patent and Trade-
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1 mark Office, or protected under subsection (a) or

2 (c); and

3 ‘‘(ii) the court finds that the owner—

4 ‘‘(I) is not able to obtain in personam ju5 risdiction over a person who would have been a

6 defendant in a civil action under paragraph (1);

7 or

8 ‘‘(II) through due diligence was not able to

9 find a person who would have been a defendant

10 in a civil action under paragraph (1) by—

11 ‘‘(aa) sending a notice of the alleged

12 violation and intent to proceed under this

13 paragraph to the registrant of the domain

14 name at the postal and e-mail address pro15 vided by the registrant to the registrar;

16 and

17 ‘‘(bb) publishing notice of the action

18 as the court may direct promptly after fil19 ing the action.

20 ‘‘(B) The actions under subparagraph (A)(ii) shall

21 constitute service of process.

22 ‘‘(C) In an in rem action under this paragraph, a do23 main name shall be deemed to have its situs in the judicial

24 district in which—
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1 ‘‘(i) the domain name registrar, registry, or

2 other domain name authority that registered or as3 signed the domain name is located; or

4 ‘‘(ii) documents sufficient to establish control

5 and authority regarding the disposition of the reg6 istration and use of the domain name are deposited

7 with the court.

8 ‘‘(D)(i) The remedies in an in rem action under this

9 paragraph shall be limited to a court order for the for10 feiture or cancellation of the domain name or the transfer

11 of the domain name to the owner of the mark. Upon re12 ceipt of written notification of a filed, stamped copy of

13 a complaint filed by the owner of a mark in a United

14 States district court under this paragraph, the domain

15 name registrar, domain name registry, or other domain

16 name authority shall—

17 ‘‘(I) expeditiously deposit with the court docu18 ments sufficient to establish the court’s control and

19 authority regarding the disposition of the registra20 tion and use of the domain name to the court; and

21 ‘‘(II) not transfer, suspend, or otherwise modify

22 the domain name during the pendency of the action,

23 except upon order of the court.

24 ‘‘(ii) The domain name registrar or registry or other

25 domain name authority shall not be liable for injunctive
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1 or monetary relief under this paragraph except in the case

2 of bad faith or reckless disregard, which includes a willful

3 failure to comply with any such court order.

4 ‘‘(3) The civil action established under paragraph (1)

5 and the in rem action established under paragraph (2),

6 and any remedy available under either such action, shall

7 be in addition to any other civil action or remedy otherwise

8 applicable.

9 ‘‘(4) The in rem jurisdiction established under para10 graph (2) shall be in addition to any other jurisdiction

11 that otherwise exists, whether in rem or in personam.’’.

12 (b) CYBERPIRACY PROTECTIONS FOR INDIVID13 UALS.—

14 (1) IN GENERAL.—

15 (A) CIVIL LIABILITY.—Any person who

16 registers a domain name that consists of the

17 name of another living person, or a name sub18 stantially and confusingly similar thereto, with19 out that person’s consent, with the specific in20 tent to profit from such name by selling the do21 main name for financial gain to that person or

22 any third party, shall be liable in a civil action

23 by such person.

24 (B) EXCEPTION.—A person who in good

25 faith registers a domain name consisting of the
73

•S 1948 IS

1 name of another living person, or a name sub2 stantially and confusingly similar thereto, shall

3 not be liable under this paragraph if such name

4 is used in, affiliated with, or related to a work

5 of authorship protected under title 17, United

6 States Code, including a work made for hire as

7 defined in section 101 of title 17, United States

8 Code, and if the person registering the domain

9 name is the copyright owner or licensee of the

10 work, the person intends to sell the domain

11 name in conjunction with the lawful exploitation

12 of the work, and such registration is not prohib13 ited by a contract between the registrant and

14 the named person. The exception under this

15 subparagraph shall apply only to a civil action

16 brought under paragraph (1) and shall in no

17 manner limit the protections afforded under the

18 Trademark Act of 1946 (15 U.S.C. 1051 et

19 seq.) or other provision of Federal or State law.

20 (2) REMEDIES.—In any civil action brought

21 under paragraph (1), a court may award injunctive

22 relief, including the forfeiture or cancellation of the

23 domain name or the transfer of the domain name to

24 the plaintiff. The court may also, in its discretion,
74

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1 award costs and attorneys fees to the prevailing

2 party.

3 (3) DEFINITION.—In this subsection, the term

4 ‘‘domain name’’ has the meaning given that term in

5 section 45 of the Trademark Act of 1946 (15 U.S.C.

6 1127).

7 (4) EFFECTIVE DATE.—This subsection shall

8 apply to domain names registered on or after the

9 date of the enactment of this Act.

10 SEC. 3003. DAMAGES AND REMEDIES.

11 (a) REMEDIES IN CASES OF DOMAIN NAME PI12 RACY.—

13 (1) INJUNCTIONS.—Section 34(a) of the Trade14 mark Act of 1946 (15 U.S.C. 1116(a)) is amended

15 in the first sentence by striking ‘‘(a) or (c)’’ and in16 serting ‘‘(a), (c), or (d)’’.

17 (2) DAMAGES.—Section 35(a) of the Trade18 mark Act of 1946 (15 U.S.C. 1117(a)) is amended

19 in the first sentence by inserting ‘‘, (c), or (d)’’ after

20 ‘‘section 43(a)’’.

21 (b) STATUTORY DAMAGES.—Section 35 of the Trade22 mark Act of 1946 (15 U.S.C. 1117) is amended by adding

23 at the end the following:

24 ‘‘(d) In a case involving a violation of section

25 43(d)(1), the plaintiff may elect, at any time before final
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1 judgment is rendered by the trial court, to recover, instead

2 of actual damages and profits, an award of statutory dam3 ages in the amount of not less than $1,000 and not more

4 than $100,000 per domain name, as the court considers

5 just.

6 SEC. 3004. LIMITATION ON LIABILITY.

7 Section 32(2) of the Trademark Act of 1946 (15

8 U.S.C. 1114) is amended—

9 (1) in the matter preceding subparagraph (A)

10 by striking ‘‘under section 43(a)’’ and inserting

11 ‘‘under section 43(a) or (d)’’; and

12 (2) by redesignating subparagraph (D) as sub13 paragraph (E) and inserting after subparagraph (C)

14 the following:

15 ‘‘(D)(i)(I) A domain name registrar, a domain

16 name registry, or other domain name registration

17 authority that takes any action described under

18 clause (ii) affecting a domain name shall not be lia19 ble for monetary relief or, except as provided in sub20 clause (II), for injunctive relief, to any person for

21 such action, regardless of whether the domain name

22 is finally determined to infringe or dilute the mark.

23 ‘‘(II) A domain name registrar, domain name

24 registry, or other domain name registration author25 ity described in subclause (I) may be subject to in-
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1 junctive relief only if such registrar, registry, or

2 other registration authority has—

3 ‘‘(aa) not expeditiously deposited with a

4 court, in which an action has been filed regard5 ing the disposition of the domain name, docu6 ments sufficient for the court to establish the

7 court’s control and authority regarding the dis8 position of the registration and use of the do9 main name;

10 ‘‘(bb) transferred, suspended, or otherwise

11 modified the domain name during the pendency

12 of the action, except upon order of the court; or

13 ‘‘(cc) willfully failed to comply with any

14 such court order.

15 ‘‘(ii) An action referred to under clause (i)(I) is

16 any action of refusing to register, removing from

17 registration, transferring, temporarily disabling, or

18 permanently canceling a domain name—

19 ‘‘(I) in compliance with a court order

20 under section 43(d); or

21 ‘‘(II) in the implementation of a reasonable

22 policy by such registrar, registry, or authority

23 prohibiting the registration of a domain name

24 that is identical to, confusingly similar to, or di25 lutive of another’s mark.
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1 ‘‘(iii) A domain name registrar, a domain name

2 registry, or other domain name registration author3 ity shall not be liable for damages under this section

4 for the registration or maintenance of a domain

5 name for another absent a showing of bad faith in6 tent to profit from such registration or maintenance

7 of the domain name.

8 ‘‘(iv) If a registrar, registry, or other registra9 tion authority takes an action described under clause

10 (ii) based on a knowing and material misrepresenta11 tion by any other person that a domain name is

12 identical to, confusingly similar to, or dilutive of a

13 mark, the person making the knowing and material

14 misrepresentation shall be liable for any damages,

15 including costs and attorney’s fees, incurred by the

16 domain name registrant as a result of such action.

17 The court may also grant injunctive relief to the do18 main name registrant, including the reactivation of

19 the domain name or the transfer of the domain

20 name to the domain name registrant.

21 ‘‘(v) A domain name registrant whose domain

22 name has been suspended, disabled, or transferred

23 under a policy described under clause (ii)(II) may,

24 upon notice to the mark owner, file a civil action to

25 establish that the registration or use of the domain
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1 name by such registrant is not unlawful under this

2 Act. The court may grant injunctive relief to the do3 main name registrant, including the reactivation of

4 the domain name or transfer of the domain name to

5 the domain name registrant.’’.

6 SEC. 3005. DEFINITIONS.

7 Section 45 of the Trademark Act of 1946 (15 U.S.C.

8 1127) is amended by inserting after the undesignated

9 paragraph defining the term ‘‘counterfeit’’ the following:

10 ‘‘The term ‘domain name’ means any alphanumeric

11 designation which is registered with or assigned by any

12 domain name registrar, domain name registry, or other

13 domain name registration authority as part of an elec14 tronic address on the Internet.

15 ‘‘The term ‘Internet’ has the meaning given that term

16 in section 230(f )(1) of the Communications Act of 1934

17 (47 U.S.C. 230(f )(1)).’’.

18 SEC. 3006. STUDY ON ABUSIVE DOMAIN NAME REGISTRA19 TIONS INVOLVING PERSONAL NAMES.

20 (a) IN GENERAL.—Not later than 180 days after the

21 date of the enactment of this Act, the Secretary of Com22 merce, in consultation with the Patent and Trademark Of23 fice and the Federal Election Commission, shall conduct

24 a study and report to Congress with recommendations on

25 guidelines and procedures for resolving disputes involving
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1 the registration or use by a person of a domain name that

2 includes the personal name of another person, in whole

3 or in part, or a name confusingly similar thereto, including

4 consideration of and recommendations for—

5 (1) protecting personal names from registration

6 by another person as a second level domain name for

7 purposes of selling or otherwise transferring such

8 domain name to such other person or any third

9 party for financial gain;

10 (2) protecting individuals from bad faith uses of

11 their personal names as second level domain names

12 by others with malicious intent to harm the reputa13 tion of the individual or the goodwill associated with

14 that individual’s name;

15 (3) protecting consumers from the registration

16 and use of domain names that include personal

17 names in the second level domain in manners which

18 are intended or are likely to confuse or deceive the

19 public as to the affiliation, connection, or association

20 of the domain name registrant, or a site accessible

21 under the domain name, with such other person, or

22 as to the origin, sponsorship, or approval of the

23 goods, services, or commercial activities of the do24 main name registrant;
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1 (4) protecting the public from registration of

2 domain names that include the personal names of

3 government officials, official candidates, and poten4 tial official candidates for Federal, State, or local

5 political office in the United States, and the use of

6 such domain names in a manner that disrupts the

7 electoral process or the public’s ability to access ac8 curate and reliable information regarding such indi9 viduals;

10 (5) existing remedies, whether under State law

11 or otherwise, and the extent to which such remedies

12 are sufficient to address the considerations described

13 in paragraphs (1) through (4); and

14 (6) the guidelines, procedures, and policies of

15 the Internet Corporation for Assigned Names and

16 Numbers and the extent to which they address the

17 considerations described in paragraphs (1) through

18 (4).

19 (b) GUIDELINES AND PROCEDURES.—The Secretary

20 of Commerce shall, under its Memorandum of Under21 standing with the Internet Corporation for Assigned

22 Names and Numbers, collaborate to develop guidelines

23 and procedures for resolving disputes involving the reg24 istration or use by a person of a domain name that in-
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1 cludes the personal name of another person, in whole or

2 in part, or a name confusingly similar thereto.

3 SEC. 3007. HISTORIC PRESERVATION.

4 Section 101(a)(1)(A) of the National Historic Preser5 vation Act (16 U.S.C. 470a(a)(1)(A)) is amended by add6 ing at the end the following: ‘‘Notwithstanding section

7 43(c) of the Act entitled ‘An Act to provide for the reg8 istration and protection of trademarks used in commerce,

9 to carry out the provisions of certain international conven10 tions, and for other purposes’, approved July 5, 1946

11 (commonly known as the ‘Trademark Act of 1946’ (15

12 U.S.C. 1125(c))), buildings and structures on or eligible

13 for inclusion on the National Register of Historic Places

14 (either individually or as part of a historic district), or

15 designated as an individual landmark or as a contributing

16 building in a historic district by a unit of State or local

17 government, may retain the name historically associated

18 with the building or structure.’’.

19 SEC. 3008. SAVINGS CLAUSE.

20 Nothing in this title shall affect any defense available

21 to a defendant under the Trademark Act of 1946 (includ22 ing any defense under section 43(c)(4) of such Act or re23 lating to fair use) or a person’s right of free speech or

24 expression under the first amendment of the United States

25 Constitution.
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1 SEC. 3009. TECHNICAL AND CONFORMING AMENDMENTS.

2 Chapter 85 of title 28, United States Code, is amend3 ed as follows:

4 (1) Section 1338 of title 28, United States

5 Codes, is amended—

6 (A) in the section heading by striking

7 ‘‘trade-marks’’ and inserting ‘‘trade8 marks’’;

9 (B) in subsection (a) by striking ‘‘trade10 marks’’ and inserting ‘‘trademarks’’; and

11 (C) in subsection (b) by striking ‘‘trade12 mark’’ and inserting ‘‘trademark’’.

13 (2) The item relating to section 1338 in the

14 table of sections for chapter 85 of title 28, United

15 States Code, is amended by striking ‘‘trade-marks’’

16 and inserting ‘‘trademarks’’.

17 SEC. 3010. EFFECTIVE DATE.

18 Sections 3002(a), 3003, 3004, 3005, and 3008 of

19 this title shall apply to all domain names registered before,

20 on, or after the date of the enactment of this Act, except

21 that damages under subsection (a) or (d) of section 35

22 of the Trademark Act of 1946 (15 U.S.C. 1117), as

23 amended by section 3003 of this title, shall not be avail24 able with respect to the registration, trafficking, or use

25 of a domain name that occurs before the date of the enact26 ment of this Act.
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1 TITLE IV—INVENTOR

2 PROTECTION

3 SEC. 4001. SHORT TITLE.

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

5 Protection Act of 1999’’.

6 Subtitle A—Inventors’ Rights

7 SEC. 4101. SHORT TITLE.

8 This subtitle may be cited as the ‘‘Inventors’ Rights

9 Act of 1999’’.

10 SEC. 4102. INTEGRITY IN INVENTION PROMOTION SERV11 ICES.

12 (a) IN GENERAL.—Chapter 29 of title 35, United

13 States Code, is amended by adding at the end the fol14 lowing new section:

15 ‘‘§ 297. Improper and deceptive invention promotion

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

17 have a duty to disclose the following information to a cus18 tomer in writing, prior to entering into a contract for in19 vention promotion services:

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

21 by the invention promoter for commercial potential

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

23 inventions that received positive evaluations, and the

24 number of those inventions that received negative

25 evaluations;
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1 ‘‘(2) the total number of customers who have

2 contracted with the invention promoter in the past

3 5 years, not including customers who have pur4 chased trade show services, research, advertising, or

5 other nonmarketing services from the invention pro6 moter, or who have defaulted in their payment to

7 the invention promoter;

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

9 the invention promoter to have received a net finan10 cial profit as a direct result of the invention pro11 motion services provided by such invention promoter;

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

13 the invention promoter to have received license

14 agreements for their inventions as a direct result of

15 the invention promotion services provided by such

16 invention promoter; and

17 ‘‘(5) the names and addresses of all previous in18 vention promotion companies with which the inven19 tion promoter or its officers have collectively or indi20 vidually been affiliated in the previous 10 years.

21 ‘‘(b) CIVIL ACTION.—(1) Any customer who enters

22 into a contract with an invention promoter and who is

23 found by a court to have been injured by any material

24 false or fraudulent statement or representation, or any

25 omission of material fact, by that invention promoter (or
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1 any agent, employee, director, officer, partner, or inde2 pendent contractor of such invention promoter), or by the

3 failure of that invention promoter to disclose such infor4 mation as required under subsection (a), may recover in

5 a civil action against the invention promoter (or the offi6 cers, directors, or partners of such invention promoter),

7 in addition to reasonable costs and attorneys’ fees—

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

9 the customer; or

10 ‘‘(B) at the election of the customer at any time

11 before final judgment is rendered, statutory damages

12 in a sum of not more than $5,000, as the court con13 siders just.

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

15 the customer sustains the burden of proof, and the court

16 finds, that the invention promoter intentionally misrepre17 sented or omitted a material fact to such customer, or will18 fully failed to disclose such information as required under

19 subsection (a), with the purpose of deceiving that cus20 tomer, the court may increase damages to not more than

21 three times the amount awarded, taking into account past

22 complaints made against the invention promoter that re23 sulted in regulatory sanctions or other corrective actions

24 based on those records compiled by the Commissioner of

25 Patents under subsection (d).
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1 ‘‘(c) DEFINITIONS.—For purposes of this section—

2 ‘‘(1) a ‘contract for invention promotion serv3 ices’ means a contract by which an invention pro4 moter undertakes invention promotion services for a

5 customer;

6 ‘‘(2) a ‘customer’ is any individual who enters

7 into a contract with an invention promoter for inven8 tion promotion services;

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

10 person, firm, partnership, corporation, or other enti11 ty who offers to perform or performs invention pro12 motion services for, or on behalf of, a customer, and

13 who holds itself out through advertising in any mass

14 media as providing such services, but does not

15 include—

16 ‘‘(A) any department or agency of the Fed17 eral Government or of a State or local govern18 ment;

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

20 or educational organization, qualified under ap21 plicable State law or described under section

22 170(b)(1)(A) of the Internal Revenue Code of

23 1986;

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

25 evaluation to determine commercial potential of,
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1 or offering to license or sell, a utility patent or

2 a previously filed nonprovisional utility patent

3 application;

4 ‘‘(D) any party participating in a trans5 action involving the sale of the stock or assets

6 of a business; or

7 ‘‘(E) any party who directly engages in the

8 business of retail sales of products or the dis9 tribution of products; and

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

11 means the procurement or attempted procurement

12 for a customer of a firm, corporation, or other entity

13 to develop and market products or services that in14 clude the invention of the customer.

15 ‘‘(d) RECORDS OF COMPLAINTS.—

16 ‘‘(1) RELEASE OF COMPLAINTS.—The Commis17 sioner of Patents shall make all complaints received

18 by the Patent and Trademark Office involving inven19 tion promoters publicly available, together with any

20 response of the invention promoters. The Commis21 sioner of Patents shall notify the invention promoter

22 of a complaint and provide a reasonable opportunity

23 to reply prior to making such complaint publicly

24 available.
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1 ‘‘(2) REQUEST FOR COMPLAINTS.—The Com2 missioner of Patents may request complaints relat3 ing to invention promotion services from any Federal

4 or State agency and include such complaints in the

5 records maintained under paragraph (1), together

6 with any response of the invention promoters.’’.

7 (b) CONFORMING AMENDMENT.—The table of sec8 tions at the beginning of chapter 29 of title 35, United

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

‘‘297. Improper and deceptive invention promotion.’’.

11 SEC. 4103. EFFECTIVE DATE.

12 This subtitle and the amendments made by this sub13 title shall take effect 60 days after the date of the enact14 ment of this Act.

15 Subtitle B—Patent and Trademark

16 Fee Fairness

17 SEC. 4201. SHORT TITLE.

18 This subtitle may be cited as the ‘‘Patent and Trade19 mark Fee Fairness Act of 1999’’.

20 SEC. 4202. ADJUSTMENT OF PATENT FEES.

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

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

23 an original patent application, is amended by striking

24 ‘‘$760’’ and inserting ‘‘$690’’.
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1 (b) REISSUE FEE.—Section 41(a)(4)(A) of title 35,

2 United States Code, relating to the fee for filing for a re3 issue of a patent, is amended by striking ‘‘$760’’ and in4 serting ‘‘$690’’.

5 (c) NATIONAL FEE FOR CERTAIN INTERNATIONAL

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

7 States Code, relating to the national fee for certain inter8 national applications, is amended by striking ‘‘$760’’ and

9 inserting ‘‘$690’’.

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

11 35, United States Code, relating to certain maintenance

12 fees, is amended by striking ‘‘$940’’ and inserting

13 ‘‘$830’’.

14 SEC. 4203. ADJUSTMENT OF TRADEMARK FEES.

15 Notwithstanding the second sentence of section 31(a)

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

17 Under Secretary of Commerce for Intellectual Property

18 and Director of the United States Patent and Trademark

19 Office is authorized in fiscal year 2000 to adjust trade20 mark fees without regard to fluctuations in the Consumer

21 Price Index during the preceding 12 months.

22 SEC. 4204. STUDY ON ALTERNATIVE FEE STRUCTURES.

23 The Under Secretary of Commerce for Intellectual

24 Property and Director of the United States Patent and

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

4 The Director shall submit such study to the Committees

5 on the Judiciary of the House of Representatives and the

6 Senate not later than 1 year after the date of the enact7 ment of this Act.

8 SEC. 4205. PATENT AND TRADEMARK OFFICE FUNDING.

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

10 amended in the second sentence—

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

12 ‘‘All fees available’’; and

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

14 SEC. 4206. EFFECTIVE DATE.

15 (a) IN GENERAL.—Except as provided in subsection

16 (b), the amendments made by this subtitle shall take effect

17 on the date of the enactment of this Act.

18 (b) SECTION 4202.—The amendments made by sec19 tion 4202 of this subtitle shall take effect 30 days after

20 the date of the enactment of this Act.

21 Subtitle C—First Inventor Defense

22 SEC. 4301. SHORT TITLE.

23 This subtitle may be cited as the ‘‘First Inventor De24 fense Act of 1999’’.
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1 SEC. 4302. DEFENSE TO PATENT INFRINGEMENT BASED ON

2 EARLIER INVENTOR.

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

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

5 section:

6 ‘‘§ 273. Defense to infringement based on earlier in7 ventor

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

9 ‘‘(1) the terms ‘commercially used’ and ‘com10 mercial use’ mean use of a method in the United

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

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

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

14 useful end result, whether or not the subject matter

15 at issue is accessible to or otherwise known to the

16 public, except that the subject matter for which com17 mercial marketing or use is subject to a premar18 keting regulatory review period during which the

19 safety or efficacy of the subject matter is estab20 lished, including any period specified in section

21 156(g), shall be deemed ‘commercially used’ and in

22 ‘commercial use’ during such regulatory review pe23 riod;

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

25 nonprofit research laboratory, or nonprofit entity

26 such as a university, research center, or hospital, a
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1 use for which the public is the intended beneficiary

2 shall be considered to be a use described in para3 graph (1), except that the use—

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

5 this section only for continued use by and in

6 the laboratory or nonprofit entity; and

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

8 with respect to any subsequent commercializa9 tion or use outside such laboratory or nonprofit

10 entity;

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

12 doing or conducting business; and

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

14 earlier of the actual filing date of the application for

15 the patent or the filing date of any earlier United

16 States, foreign, or international application to which

17 the subject matter at issue is entitled under section

18 119, 120, or 365 of this title.

19 ‘‘(b) DEFENSE TO INFRINGEMENT.—

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

21 action for infringement under section 271 of this

22 title with respect to any subject matter that would

23 otherwise infringe one or more claims for a method

24 in the patent being asserted against a person, if

25 such person had, acting in good faith, actually re-
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1 duced the subject matter to practice at least 1 year

2 before the effective filing date of such patent, and

3 commercially used the subject matter before the ef4 fective filing date of such patent.

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

6 other disposition of a useful end product produced

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

8 a defense under this section with respect to that use9 ful end result shall exhaust the patent owner’s rights

10 under the patent to the extent such rights would

11 have been exhausted had such sale or other disposi12 tion been made by the patent owner.

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

15 section is subject to the following:

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

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

19 method.

20 ‘‘(B) DERIVATION.—A person may not as21 sert the defense under this section if the subject

22 matter on which the defense is based was de23 rived from the patentee or persons in privity

24 with the patentee.
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1 ‘‘(C) NOT A GENERAL LICENSE.—The de2 fense asserted by a person under this section is

3 not a general license under all claims of the

4 patent at issue, but extends only to the specific

5 subject matter claimed in the patent with re6 spect to which the person can assert a defense

7 under this chapter, except that the defense shall

8 also extend to variations in the quantity or vol9 ume of use of the claimed subject matter, and

10 to improvements in the claimed subject matter

11 that do not infringe additional specifically

12 claimed subject matter of the patent.

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

14 the defense under this section shall have the burden

15 of establishing the defense by clear and convincing

16 evidence.

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

18 has abandoned commercial use of subject matter

19 may not rely on activities performed before the date

20 of such abandonment in establishing a defense under

21 this section with respect to actions taken after the

22 date of such abandonment.

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

24 this section may be asserted only by the person who

25 performed the acts necessary to establish the defense
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1 and, except for any transfer to the patent owner, the

2 right to assert the defense shall not be licensed or

3 assigned or transferred to another person except as

4 an ancillary and subordinate part of a good faith as5 signment or transfer for other reasons of the entire

6 enterprise or line of business to which the defense

7 relates.

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

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

10 assignment or transfer of an entire enterprise or line

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

12 asserted for uses at sites where the subject matter

13 that would otherwise infringe one or more of the

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

15 date of the patent or the date of the assignment or

16 transfer of such enterprise or line of business.

17 ‘‘(8) UNSUCCESSFUL ASSERTION OF DE18 FENSE.—If the defense under this section is pleaded

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

20 who subsequently fails to demonstrate a reasonable

21 basis for asserting the defense, the court shall find

22 the case exceptional for the purpose of awarding at23 torney fees under section 285 of this title.

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

25 deemed to be invalid under section 102 or 103 of
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1 this title solely because a defense is raised or estab2 lished under this section.’’.

3 (b) CONFORMING AMENDMENT.—The table of sec4 tions at the beginning of chapter 28 of title 35, United

5 States Code, is amended by adding at the end the fol6 lowing new item:

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

7 SEC. 4303. EFFECTIVE DATE AND APPLICABILITY.

8 This subtitle and the amendments made by this sub9 title shall take effect on the date of the enactment of this

10 Act, but shall not apply to any action for infringement

11 that is pending on such date of enactment or with respect

12 to any subject matter for which an adjudication of in13 fringement, including a consent judgment, has been made

14 before such date of enactment.

15 Subtitle D—Patent Term

16 Guarantee

17 SEC. 4401. SHORT TITLE.

18 This subtitle may be cited as the ‘‘Patent Term Guar19 antee Act of 1999’’.

20 SEC. 4402. PATENT TERM GUARANTEE AUTHORITY.

21 (a) ADJUSTMENT OF PATENT TERM.—Section

22 154(b) of title 35, United States Code, is amended to read

23 as follows:

24 ‘‘(b) ADJUSTMENT OF PATENT TERM.—

25 ‘‘(1) PATENT TERM GUARANTEES.—
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1 ‘‘(A) GUARANTEE OF PROMPT PATENT

2 AND TRADEMARK OFFICE RESPONSES.—Subject

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

4 issue of an original patent is delayed due to the

5 failure of the Patent and Trademark Office

6 to—

7 ‘‘(i) provide at least one of the notifi8 cations under section 132 of this title or a

9 notice of allowance under section 151 of

10 this title not later than 14 months after—

11 ‘‘(I) the date on which an appli12 cation was filed under section 111(a)

13 of this title; or

14 ‘‘(II) the date on which an inter15 national application fulfilled the re16 quirements of section 371 of this title;

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

18 132, or to an appeal taken under section

19 134, within 4 months after the date on

20 which the reply was filed or the appeal was

21 taken;

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

23 months after the date of a decision by the

24 Board of Patent Appeals and Interferences

25 under section 134 or 135 or a decision by
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1 a Federal court under section 141, 145, or

2 146 in a case in which allowable claims re3 main in the application; or

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

5 after the date on which the issue fee was

6 paid under section 151 and all outstanding

7 requirements were satisfied,

8 the term of the patent shall be extended 1 day

9 for each day after the end of the period speci10 fied in clause (i), (ii), (iii), or (iv), as the case

11 may be, until the action described in such

12 clause is taken.

13 ‘‘(B) GUARANTEE OF NO MORE THAN 3-

14 YEAR APPLICATION PENDENCY.—Subject to the

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

16 an original patent is delayed due to the failure

17 of the United States Patent and Trademark Of18 fice to issue a patent within 3 years after the

19 actual filing date of the application in the

20 United States, not including—

21 ‘‘(i) any time consumed by continued

22 examination of the application requested

23 by the applicant under section 132(b);

24 ‘‘(ii) any time consumed by a pro25 ceeding under section 135(a), any time
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1 consumed by the imposition of an order

2 under section 181, or any time consumed

3 by appellate review by the Board of Patent

4 Appeals and Interferences or by a Federal

5 court; or

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

7 the application by the United States Pat8 ent and Trademark Office requested by the

9 applicant except as permitted by paragraph

10 (3)(C),

11 the term of the patent shall be extended 1 day

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

13 until the patent is issued.

14 ‘‘(C) GUARANTEE OR ADJUSTMENTS FOR

15 DELAYS DUE TO INTERFERENCES, SECRECY OR16 DERS, AND APPEALS.—Subject to the limita17 tions under paragraph (2), if the issue of an

18 original patent is delayed due to—

19 ‘‘(i) a proceeding under section

20 135(a);

21 ‘‘(ii) the imposition of an order under

22 section 181; or

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

24 Patent Appeals and Interferences or by a

25 Federal court in a case in which the patent
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1 was issued under a decision in the review

2 reversing an adverse determination of pat3 entability,

4 the term of the patent shall be extended 1 day

5 for each day of the pendency of the proceeding,

6 order, or review, as the case may be.

7 ‘‘(2) LIMITATIONS.—

8 ‘‘(A) IN GENERAL.—To the extent that pe9 riods of delay attributable to grounds specified

10 in paragraph (1) overlap, the period of any ad11 justment granted under this subsection shall

12 not exceed the actual number of days the

13 issuance of the patent was delayed.

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

15 term of which has been disclaimed beyond a

16 specified date may be adjusted under this sec17 tion beyond the expiration date specified in the

18 disclaimer.

19 ‘‘(C) REDUCTION OF PERIOD OF ADJUST20 MENT.—

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

22 term of a patent under paragraph (1) shall

23 be reduced by a period equal to the period

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

2 prosecution of the application.

3 ‘‘(ii) With respect to adjustments to

4 patent term made under the authority of

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

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

10 of 3 months that are taken to respond to

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

13 measuring such 3-month period from the

14 date the notice was given or mailed to the

15 applicant.

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

18 that constitute a failure of an applicant to

19 engage in reasonable efforts to conclude

20 processing or examination of an applica21 tion.

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

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

3 ‘‘(B) Under the procedures established

4 under subparagraph (A), the Director shall—

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

7 this subsection, and shall transmit a notice

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

10 section 151; and

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

13 patent term adjustment determination

14 made by the Director.

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

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

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

21 month period, but in no case shall more than

22 three additional months for each such response

23 beyond the original 3-month period be rein24 stated.
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1 ‘‘(D) The Director shall proceed to grant

2 the patent after completion of the Director’s de3 termination of a patent term adjustment under

4 the procedures established under this sub5 section, notwithstanding any appeal taken by

6 the applicant of such determination.

7 ‘‘(4) APPEAL OF PATENT TERM ADJUSTMENT

8 DETERMINATION.—

9 ‘‘(A) An applicant dissatisfied with a de10 termination made by the Director under para11 graph (3) shall have remedy by a civil action

12 against the Director filed in the United States

13 District Court for the District of Columbia

14 within 180 days after the grant of the patent.

15 Chapter 7 of title 5, United States Code, shall

16 apply to such action. Any final judgment result17 ing in a change to the period of adjustment of

18 the patent term shall be served on the Director,

19 and the Director shall thereafter alter the term

20 of the patent to reflect such change.

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

22 adjustment under this subsection shall not be

23 subject to appeal or challenge by a third party

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

25 (b) CONFORMING AMENDMENTS.—
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1 (1) Section 282 of title 35, United States Code,

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

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

4 title’’.

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

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

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

8 SEC. 4403. CONTINUED EXAMINATION OF PATENT APPLICA9 TIONS.

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

11 amended—

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

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

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

15 ‘‘(b) The Director shall prescribe regulations to pro16 vide for the continued examination of applications for pat17 ent at the request of the applicant. The Director may es18 tablish appropriate fees for such continued examination

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

20 small entities that qualify for reduced fees under section

21 41(h)(1) of this title.’’.

22 SEC. 4404. TECHNICAL CLARIFICATION.

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

24 amended in the matter preceding paragraph (1) by insert25 ing ‘‘, which shall include any patent term adjustment
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1 granted under section 154(b),’’ after ‘‘the original expira2 tion date of the patent’’.

3 SEC. 4405. EFFECTIVE DATE.

4 (a) AMENDMENTS MADE BY SECTIONS 4402 AND

5 4404.—The amendments made by sections 4402 and

6 4404 shall take effect on the date that is 6 months after

7 the date of the enactment of this Act and, except for a

8 design patent application filed under chapter 16 of title

9 35, United States Code, shall apply to any application

10 filed on or after the date that is 6 months after the date

11 of the enactment of this Act.

12 (b) AMENDMENTS MADE BY SECTION 4403.—The

13 amendments made by section 4403—

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

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

16 and shall apply to all applications filed under section

17 111(a) of title 35, United States Code, on or after

18 June 8, 1995, and all applications complying with

19 section 371 of title 35, United States Code, that re20 sulted from international applications filed on or

21 after June 8, 1995; and

22 (2) do not apply to applications for design pat23 ents under chapter 16 of title 35, United States

24 Code.
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1 Subtitle E—Domestic Publication

2 of Patent Applications Pub3 lished Abroad

4 SEC. 4501. SHORT TITLE.

5 This subtitle may be cited as the ‘‘Domestic Publica6 tion of Foreign Filed Patent Applications Act of 1999’’.

7 SEC. 4502. PUBLICATION.

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

9 States Code, is amended to read as follows:

10 ‘‘§ 122. Confidential status of applications; publica11 tion of patent applications

12 ‘‘(a) CONFIDENTIALITY.—Except as provided in sub13 section (b), applications for patents shall be kept in con14 fidence by the Patent and Trademark Office and no infor15 mation concerning the same given without authority of the

16 applicant or owner unless necessary to carry out the provi17 sions of an Act of Congress or in such special cir18 cumstances as may be determined by the Director.

19 ‘‘(b) PUBLICATION.—

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

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

22 in accordance with procedures determined by the Di23 rector, promptly after the expiration of a period of

24 18 months from the earliest filing date for which a

25 benefit is sought under this title. At the request of
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1 the applicant, an application may be published ear2 lier than the end of such 18-month period.

3 ‘‘(B) No information concerning published pat4 ent applications shall be made available to the public

5 except as the Director determines.

6 ‘‘(C) Notwithstanding any other provision of

7 law, a determination by the Director to release or

8 not to release information concerning a published

9 patent application shall be final and nonreviewable.

10 ‘‘(2) EXCEPTIONS.—(A) An application shall

11 not be published if that application is—

12 ‘‘(i) no longer pending;

13 ‘‘(ii) subject to a secrecy order under sec14 tion 181 of this title;

15 ‘‘(iii) a provisional application filed under

16 section 111(b) of this title; or

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

18 filed under chapter 16 of this title.

19 ‘‘(B)(i) If an applicant makes a request upon

20 filing, certifying that the invention disclosed in the

21 application has not and will not be the subject of an

22 application filed in another country, or under a mul23 tilateral international agreement, that requires publi24 cation of applications 18 months after filing, the ap-
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1 plication shall not be published as provided in para2 graph (1).

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

4 under clause (i) at any time.

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

6 under clause (i) but who subsequently files, in a for7 eign country or under a multilateral international

8 agreement specified in clause (i), an application di9 rected to the invention disclosed in the application

10 filed in the Patent and Trademark Office, shall no11 tify the Director of such filing not later than 45

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

13 international application. A failure of the applicant

14 to provide such notice within the prescribed period

15 shall result in the application being regarded as

16 abandoned, unless it is shown to the satisfaction of

17 the Director that the delay in submitting the notice

18 was unintentional.

19 ‘‘(iv) If an applicant rescinds a request made

20 under clause (i) or notifies the Director that an ap21 plication was filed in a foreign country or under a

22 multilateral international agreement specified in

23 clause (i), the application shall be published in ac24 cordance with the provisions of paragraph (1) on or
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1 as soon as is practical after the date that is specified

2 in clause (i).

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

4 one or more foreign countries, directly or through a

5 multilateral international agreement, and such for6 eign filed applications corresponding to an applica7 tion filed in the Patent and Trademark Office or the

8 description of the invention in such foreign filed ap9 plications is less extensive than the application or

10 description of the invention in the application filed

11 in the Patent and Trademark Office, the applicant

12 may submit a redacted copy of the application filed

13 in the Patent and Trademark Office eliminating any

14 part or description of the invention in such applica15 tion that is not also contained in any of the cor16 responding applications filed in a foreign country.

17 The Director may only publish the redacted copy of

18 the application unless the redacted copy of the appli19 cation is not received within 16 months after the

20 earliest effective filing date for which a benefit is

21 sought under this title. The provisions of section

22 154(d) shall not apply to a claim if the description

23 of the invention published in the redacted applica24 tion filed under this clause with respect to the claim
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1 does not enable a person skilled in the art to make

2 and use the subject matter of the claim.

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

4 The Director shall establish appropriate procedures to en5 sure that no protest or other form of pre-issuance opposi6 tion to the grant of a patent on an application may be

7 initiated after publication of the application without the

8 express written consent of the applicant.

9 ‘‘(d) NATIONAL SECURITY.—No application for pat10 ent shall be published under subsection (b)(1) if the publi11 cation or disclosure of such invention would be detrimental

12 to the national security. The Director shall establish ap13 propriate procedures to ensure that such applications are

14 promptly identified and the secrecy of such inventions is

15 maintained in accordance with chapter 17 of this title.’’.

16 (b) STUDY.—

17 (1) IN GENERAL.—The Comptroller General

18 shall conduct a 3-year study of the applicants who

19 file only in the United States on or after the effec20 tive date of this subtitle and shall provide the results

21 of such study to the Judiciary Committees of the

22 House of Representatives and the Senate.

23 (2) CONTENTS.—The study conducted under

24 paragraph (1) shall—
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1 (A) consider the number of such applicants

2 in relation to the number of applicants who file

3 in the United States and outside of the United

4 States;

5 (B) examine how many domestic-only filers

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

7 (C) examine how many such filers rescind

8 that request or later choose to file abroad;

9 (D) examine the status of the entity seek10 ing an application and any correlation that may

11 exist between such status and the publication of

12 patent applications; and

13 (E) examine the abandonment/issuance ra14 tios and length of application pendency before

15 patent issuance or abandonment for published

16 versus unpublished applications.

17 SEC. 4503. TIME FOR CLAIMING BENEFIT OF EARLIER FIL18 ING DATE.

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

20 35, United States Code, is amended to read as follows:

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

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

23 and Trademark Office, identifying the foreign application

24 by specifying the application number on that foreign appli25 cation, the intellectual property authority or country in or
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1 for which the application was filed, and the date of filing

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

3 application as required by the Director.

4 ‘‘(2) The Director may consider the failure of the ap5 plicant to file a timely claim for priority as a waiver of

6 any such claim. The Director may establish procedures,

7 including the payment of a surcharge, to accept an unin8 tentionally delayed claim under this section.

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

10 original foreign application, specification, and drawings

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

12 language, and such other information as the Director con13 siders necessary. Any such certification shall be made by

14 the foreign intellectual property authority in which the for15 eign application was filed and show the date of the appli16 cation and of the filing of the specification and other pa17 pers.’’.

18 (b) IN THE UNITED STATES.—

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

20 United States Code, is amended by adding at the

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

22 to the benefit of an earlier filed application under

23 this section unless an amendment containing the

24 specific reference to the earlier filed application is

25 submitted at such time during the pendency of the
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1 application as required by the Director. The Direc2 tor may consider the failure to submit such an

3 amendment within that time period as a waiver of

4 any benefit under this section. The Director may es5 tablish procedures, including the payment of a sur6 charge, to accept an unintentionally delayed submis7 sion of an amendment under this section.’’.

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

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

10 at the end the following: ‘‘No application shall be en11 titled to the benefit of an earlier filed provisional ap12 plication under this subsection unless an amendment

13 containing the specific reference to the earlier filed

14 provisional application is submitted at such time

15 during the pendency of the application as required

16 by the Director. The Director may consider the fail17 ure to submit such an amendment within that time

18 period as a waiver of any benefit under this sub19 section. The Director may establish procedures, in20 cluding the payment of a surcharge, to accept an un21 intentionally delayed submission of an amendment

22 under this subsection during the pendency of the ap23 plication.’’.
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1 SEC. 4504. PROVISIONAL RIGHTS.

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

3 amended—

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

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

8 ‘‘(d) PROVISIONAL RIGHTS.—

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

10 provided by this section, a patent shall include the

11 right to obtain a reasonable royalty from any person

12 who, during the period beginning on the date of pub13 lication of the application for such patent under sec14 tion 122(b), or in the case of an international appli15 cation filed under the treaty defined in section

16 351(a) designating the United States under Article

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

18 the application, and ending on the date the patent

19 is issued—

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

21 in the United States the invention as claimed in

22 the published patent application or imports

23 such an invention into the United States; or

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

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

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

5 patent application and, in a case in which the

6 right arising under this paragraph is based

7 upon an international application designating

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

10 the international application into the English

11 language.

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

14 to obtain a reasonable royalty shall not be available

15 under this subsection unless the invention as claimed

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

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

20 to obtain a reasonable royalty shall be available only

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

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

23 obtain a reasonable royalty shall not be affected by

24 the duration of the period described in paragraph

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

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

4 paragraph (1) to obtain a reasonable royalty

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

8 commence on the date on which the Patent and

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

12 of the international application is in a language

13 other than English, on the date on which the

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

16 English language.

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

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

20 SEC. 4505. PRIOR ART EFFECT OF PUBLISHED APPLICA21 TIONS.

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

23 amended to read as follows:

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

2 section 122(b), by another filed in the United States

3 before the invention by the applicant for patent, ex4 cept that an international application filed under the

5 treaty defined in section 351(a) shall have the effect

6 under this subsection of a national application pub7 lished under section 122(b) only if the international

8 application designating the United States was pub9 lished under Article 21(2)(a) of such treaty in the

10 English language; or

11 ‘‘(2) a patent granted on an application for pat12 ent by another filed in the United States before the

13 invention by the applicant for patent, except that a

14 patent shall not be deemed filed in the United States

15 for the purposes of this subsection based on the fil16 ing of an international application filed under the

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

18 SEC. 4506. COST RECOVERY FOR PUBLICATION.

19 The Under Secretary of Commerce for Intellectual

20 Property and Director of the United States Patent and

21 Trademark Office shall recover the cost of early publica22 tion required by the amendment made by section 4502 by

23 charging a separate publication fee after notice of allow24 ance is given under section 151 of title 35, United States

25 Code.
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1 SEC. 4507. CONFORMING AMENDMENTS.

2 The following provisions of title 35, United States

3 Code, are amended:

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

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

7 (2) Section 12 is amended—

8 (A) in the section caption by inserting

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

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

12 (3) Section 13 is amended—

13 (A) in the section caption by inserting

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

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

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

18 the table of sections for chapter 1 are each amended

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

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

21 of sections for chapter 11 is amended by inserting

22 ‘‘; publication of patent applications’’ after ‘‘applica23 tions’’.

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

25 of sections for chapter 14 is amended by inserting

26 ‘‘; provisional rights’’ after ‘‘patent’’.
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1 (7) Section 181 is amended—

2 (A) in the first undesignated paragraph—

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

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

5 (ii) by inserting ‘‘the publication of

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

7 (B) in the second undesignated paragraph

8 by inserting ‘‘by the publication of an applica9 tion or’’ after ‘‘disclosure of an invention’’;

10 (C) in the third undesignated paragraph—

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

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

13 invention’’; and

14 (ii) by inserting ‘‘the publication of

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

16 (D) in the fourth undesignated paragraph

17 by inserting ‘‘the publication of an application

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

19 (8) Section 252 is amended in the first undesig20 nated paragraph by inserting ‘‘substantially’’ before

21 ‘‘identical’’ each place it appears.

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

23 end of the second undesignated paragraph the fol24 lowing: ‘‘Increased damages under this paragraph
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1 shall not apply to provisional rights under section

2 154(d) of this title.’’.

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

4 ‘‘§ 374. Publication of international application

5 ‘‘The publication under the treaty defined in section

6 351(a) of this title, of an international application desig7 nating the United States shall confer the same rights and

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

9 for patent published under section 122(b), except as pro10 vided in sections 102(e) and 154(d) of this title.’’.

11 (11) Section 135(b) is amended—

12 (A) by inserting ‘‘(1)’’ after ‘‘(b)’’; and

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

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

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

16 an application published under section 122(b) of this title

17 may be made in an application filed after the application

18 is published only if the claim is made before 1 year after

19 the date on which the application is published.’’.

20 SEC. 4508. EFFECTIVE DATE.

21 Sections 4502 through 4507, and the amendments

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

23 is 1 year after the date of the enactment of this Act and

24 shall apply to all applications filed under section 111 of

25 title 35, United States Code, on or after that date, and
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1 all applications complying with section 371 of title 35,

2 United States Code, that resulted from international ap3 plications filed on or after that date. The amendments

4 made by sections 4504 and 4505 shall apply to any such

5 application voluntarily published by the applicant under

6 procedures established under this subtitle that is pending

7 on the date that is 1 year after the date of the enactment

8 of this Act. The amendment made by section 4504 shall

9 also apply to international applications designating the

10 United States that are filed on or after the date that is

11 1 year after the date of the enactment of this Act.

12 Subtitle F—Optional Inter Partes

13 Reexamination Procedure

14 SEC. 4601. SHORT TITLE.

15 This subtitle may be cited as the ‘‘Optional Inter

16 Partes Reexamination Procedure Act of 1999’’.

17 SEC. 4602. EX PARTE REEXAMINATION OF PATENTS.

18 The chapter heading for chapter 30 of title 35,

19 United States Code, is amended by inserting ‘‘EX

20 PARTE’’ before ‘‘REEXAMINATION OF PAT21 ENTS’’.

22 SEC. 4603. DEFINITIONS.

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

24 amended by adding at the end the following new sub25 section:
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1 ‘‘(e) The term ‘third-party requester’ means a person

2 requesting ex parte reexamination under section 302 or

3 inter partes reexamination under section 311 who is not

4 the patent owner.’’.

5 SEC. 4604. OPTIONAL INTER PARTES REEXAMINATION PRO6 CEDURES.

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

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

9 new chapter:

10 ‘‘CHAPTER 31—OPTIONAL INTER PARTES

11 REEXAMINATION PROCEDURES

‘‘Sec.

‘‘311. Request for inter partes reexamination.

‘‘312. Determination of issue by Director.

‘‘313. Inter partes reexamination order by Director.

‘‘314. Conduct of inter partes reexamination proceedings.

‘‘315. Appeal.

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

‘‘317. Inter partes reexamination prohibited.

‘‘318. Stay of litigation.

12 ‘‘§ 311. Request for inter partes reexamination

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

14 a request for inter partes reexamination by the Office of

15 a patent on the basis of any prior art cited under the pro16 visions of section 301.

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

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

19 real party in interest, and be accompanied by pay-
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1 ment of an inter partes reexamination fee estab2 lished by the Director under section 41; and

3 ‘‘(2) set forth the pertinency and manner of ap4 plying cited prior art to every claim for which reex5 amination is requested.

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

7 the owner of the patent, the Director promptly shall

8 send a copy of the request to the owner of record

9 of the patent.

10 ‘‘§ 312. Determination of issue by Director

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

12 after the filing of a request for inter partes reexamination

13 under section 311, the Director shall determine whether

14 a substantial new question of patentability affecting any

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

16 with or without consideration of other patents or printed

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

18 the Director may determine whether a substantial new

19 question of patentability is raised by patents and publica20 tions.

21 ‘‘(b) RECORD.—A record of the Director’s determina22 tion under subsection (a) shall be placed in the official

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

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

25 third-party requester, if any.
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1 ‘‘(c) FINAL DECISION.—A determination by the Di2 rector under subsection (a) shall be final and non-appeal3 able. Upon a determination that no substantial new ques4 tion of patentability has been raised, the Director may re5 fund a portion of the inter partes reexamination fee re6 quired under section 311.

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

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

9 the Director finds that a substantial new question of pat10 entability affecting a claim of a patent is raised, the deter11 mination shall include an order for inter partes reexamina12 tion of the patent for resolution of the question. The order

13 may be accompanied by the initial action of the Patent

14 and Trademark Office on the merits of the inter partes

15 reexamination conducted in accordance with section 314.

16 ‘‘§ 314. Conduct of inter partes reexamination pro17 ceedings

18 ‘‘(a) IN GENERAL.—Except as otherwise provided in

19 this section, reexamination shall be conducted according

20 to the procedures established for initial examination under

21 the provisions of sections 132 and 133. In any inter partes

22 reexamination proceeding under this chapter, the patent

23 owner shall be permitted to propose any amendment to

24 the patent and a new claim or claims, except that no pro-
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1 posed amended or new claim enlarging the scope of the

2 claims of the patent shall be permitted.

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

4 any inter partes reexamination proceeding in which the

5 order for inter partes reexamination is based upon a re6 quest by a third-party requester.

7 ‘‘(2) With the exception of the inter partes reexam8 ination request, any document filed by either the patent

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

10 other party. In addition, the third-party requester shall

11 receive a copy of any communication sent by the Office

12 to the patent owner concerning the patent subject to the

13 inter partes reexamination proceeding.

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

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

16 Office, the third-party requester shall have one oppor17 tunity to file written comments addressing issues raised

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

19 thereto, if those written comments are received by the Of20 fice within 30 days after the date of service of the patent

21 owner’s response.

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

23 by the Director for good cause, all inter partes reexamina24 tion proceedings under this section, including any appeal
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1 to the Board of Patent Appeals and Interferences, shall

2 be conducted with special dispatch within the Office.

3 ‘‘§ 315. Appeal

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

5 an inter partes reexamination proceeding under this

6 chapter—

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

8 134 and may appeal under the provisions of sections

9 141 through 144, with respect to any decision ad10 verse to the patentability of any original or proposed

11 amended or new claim of the patent; and

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

13 third-party requester under subsection (b).

14 ‘‘(b) THIRD-PARTY REQUESTER.—A third-party re15 quester may—

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

17 with respect to any final decision favorable to the

18 patentability of any original or proposed amended or

19 new claim of the patent; or

20 ‘‘(2) be a party to any appeal taken by the pat21 ent owner under the provisions of section 134, sub22 ject to subsection (c).

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

24 request for an inter partes reexamination results in an

25 order under section 313 is estopped from asserting at a
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1 later time, in any civil action arising in whole or in part

2 under section 1338 of title 28, United States Code, the

3 invalidity of any claim finally determined to be valid and

4 patentable on any ground which the third-party requester

5 raised or could have raised during the inter partes reexam6 ination proceedings. This subsection does not prevent the

7 assertion of invalidity based on newly discovered prior art

8 unavailable to the third-party requester and the Patent

9 and Trademark Office at the time of the inter partes reex10 amination proceedings.

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

12 and claim cancellation

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

14 proceeding under this chapter, when the time for appeal

15 has expired or any appeal proceeding has terminated, the

16 Director shall issue and publish a certificate canceling any

17 claim of the patent finally determined to be unpatentable,

18 confirming any claim of the patent determined to be pat19 entable, and incorporating in the patent any proposed

20 amended or new claim determined to be patentable.

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

22 amended or new claim determined to be patentable and

23 incorporated into a patent following an inter partes reex24 amination proceeding shall have the same effect as that

25 specified in section 252 of this title for reissued patents
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1 on the right of any person who made, purchased, or used

2 within the United States, or imported into the United

3 States, anything patented by such proposed amended or

4 new claim, or who made substantial preparation therefor,

5 prior to issuance of a certificate under the provisions of

6 subsection (a) of this section.

7 ‘‘§ 317. Inter partes reexamination prohibited

8 ‘‘(a) ORDER FOR REEXAMINATION.—Notwith9 standing any provision of this chapter, once an order for

10 inter partes reexamination of a patent has been issued

11 under section 313, neither the patent owner nor the third12 party requester, if any, nor privies of either, may file a

13 subsequent request for inter partes reexamination of the

14 patent until an inter partes reexamination certificate is

15 issued and published under section 316, unless authorized

16 by the Director.

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

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

19 whole or in part under section 1338 of title 28, United

20 States Code, that the party has not sustained its burden

21 of proving the invalidity of any patent claim in suit or

22 if a final decision in an inter partes reexamination pro23 ceeding instituted by a third-party requester is favorable

24 to the patentability of any original or proposed amended

25 or new claim of the patent, then neither that party nor
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1 its privies may thereafter request an inter partes reexam2 ination of any such patent claim on the basis of issues

3 which that party or its privies raised or could have raised

4 in such civil action or inter partes reexamination pro5 ceeding, and an inter partes reexamination requested by

6 that party or its privies on the basis of such issues may

7 not thereafter be maintained by the Office, notwith8 standing any other provision of this chapter. This sub9 section does not prevent the assertion of invalidity based

10 on newly discovered prior art unavailable to the third11 party requester and the Patent and Trademark Office at

12 the time of the inter partes reexamination proceedings.

13 ‘‘§ 318. Stay of litigation

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

15 patent has been issued under section 313, the patent

16 owner may obtain a stay of any pending litigation which

17 involves an issue of patentability of any claims of the pat18 ent which are the subject of the inter partes reexamination

19 order, unless the court before which such litigation is

20 pending determines that a stay would not serve the inter21 ests of justice.’’.

22 (b) CONFORMING AMENDMENT.—The table of chap23 ters for part III of title 25, United States Code, is amend24 ed by striking the item relating to chapter 30 and insert25 ing the following:
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‘‘30. Prior Art Citations to Office and Ex Parte Reexamination of Patents .................................................. 301

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

1 SEC. 4605. CONFORMING AMENDMENTS.

2 (a) PATENT FEES; PATENT SEARCH SYSTEMS.—Sec3 tion 41(a)(7) of title 35, United States Code, is amended

4 to read as follows:

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

6 unintentionally abandoned application for a patent,

7 for the unintentionally delayed payment of the fee

8 for issuing each patent, or for an unintentionally de9 layed response by the patent owner in any reexam10 ination proceeding, $1,210, unless the petition is

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

12 case the fee shall be $110.’’.

13 (b) APPEAL TO THE BOARD OF PATENTS APPEALS

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

15 States Code, is amended to read as follows:

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

17 Interferences

18 ‘‘(a) PATENT APPLICANT.—An applicant for a pat19 ent, any of whose claims has been twice rejected, may ap20 peal from the decision of the administrative patent judge

21 to the Board of Patent Appeals and Interferences, having

22 once paid the fee for such appeal.

23 ‘‘(b) PATENT OWNER.—A patent owner in any reex24 amination proceeding may appeal from the final rejection
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1 of any claim by the administrative patent judge to the

2 Board of Patent Appeals and Interferences, having once

3 paid the fee for such appeal.

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

5 inter partes proceeding may appeal to the Board of Patent

6 Appeals and Interferences from the final decision of the

7 administrative patent judge favorable to the patentability

8 of any original or proposed amended or new claim of a

9 patent, having once paid the fee for such appeal. The

10 third-party requester may not appeal the decision of the

11 Board of Patent Appeals and Interferences.’’.

12 (c) APPEAL TO COURT OF APPEALS FOR THE FED13 ERAL CIRCUIT.—Section 141 of title 35, United States

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

15 sentence: ‘‘A patent owner in any reexamination pro16 ceeding dissatisfied with the final decision in an appeal

17 to the Board of Patent Appeals and Interferences under

18 section 134 may appeal the decision only to the United

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

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

21 35, United States Code, is amended by amending the third

22 sentence to read as follows: ‘‘In any reexamination case,

23 the Director shall submit to the court in writing the

24 grounds for the decision of the Patent and Trademark Of25 fice, addressing all the issues involved in the appeal.’’.
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1 (e) CIVIL ACTION TO OBTAIN PATENT.—Section 145

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

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

4 SEC. 4606. REPORT TO CONGRESS.

5 Not later than 5 years after the date of the enact6 ment of this Act, the Under Secretary of Commerce for

7 Intellectual Property and Director of the United States

8 Patent and Trademark Office shall submit to the Congress

9 a report evaluating whether the inter partes reexamination

10 proceedings established under the amendments made by

11 this subtitle are inequitable to any of the parties in inter12 est and, if so, the report shall contain recommendations

13 for changes to the amendments made by this subtitle to

14 remove such inequity.

15 SEC. 4607. ESTOPPEL EFFECT OF REEXAMINATION.

16 Any party who requests an inter partes reexamina17 tion under section 311 of title 35, United States Code,

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

19 action, any fact determined during the process of such re20 examination, except with respect to a fact determination

21 later proved to be erroneous based on information unavail22 able at the time of the inter partes reexamination decision.

23 If this section is held to be unenforceable, the enforce24 ability of the remainder of this subtitle or of this title shall

25 not be denied as a result.
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1 SEC. 4608. EFFECTIVE DATE.

2 (a) IN GENERAL.—Subject to subsection (b), this

3 subtitle and the amendments made by this subtitle shall

4 take effect on the date of the enactment of this Act and

5 shall apply to any patent that issues from an original ap6 plication filed in the United States on or after that date.

7 (b) SECTION 4605(a).—The amendments made by

8 section 4605(a) shall take effect on the date that is 1 year

9 after the date of the enactment of this Act.

10 Subtitle G—Patent and Trademark

11 Office

12 SEC. 4701. SHORT TITLE.

13 This subtitle may be cited as the ‘‘Patent and Trade14 mark Office Efficiency Act’’.

15 CHAPTER 1—UNITED STATES PATENT

16 AND TRADEMARK OFFICE

17 SEC. 4711. ESTABLISHMENT OF PATENT AND TRADEMARK

18 OFFICE.

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

20 to read as follows:

21 ‘‘§ 1. Establishment

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

23 and Trademark Office is established as an agency of the

24 United States, within the Department of Commerce. In

25 carrying out its functions, the United States Patent and

26 Trademark Office shall be subject to the policy direction
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1 of the Secretary of Commerce, but otherwise shall retain

2 responsibility for decisions regarding the management and

3 administration of its operations and shall exercise inde4 pendent control of its budget allocations and expenditures,

5 personnel decisions and processes, procurements, and

6 other administrative and management functions in accord7 ance with this title and applicable provisions of law. Those

8 operations designed to grant and issue patents and those

9 operations which are designed to facilitate the registration

10 of trademarks shall be treated as separate operating units

11 within the Office.

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

13 Trademark Office shall maintain its principal office in the

14 metropolitan Washington, D.C., area, for the service of

15 process and papers and for the purpose of carrying out

16 its functions. The United States Patent and Trademark

17 Office shall be deemed, for purposes of venue in civil ac18 tions, to be a resident of the district in which its principal

19 office is located, except where jurisdiction is otherwise pro20 vided by law. The United States Patent and Trademark

21 Office may establish satellite offices in such other places

22 in the United States as it considers necessary and appro23 priate in the conduct of its business.

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

25 United States Patent and Trademark Office shall also be
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1 referred to as the ‘Office’ and the ‘Patent and Trademark

2 Office’.’’.

3 SEC. 4712. POWERS AND DUTIES.

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

5 to read as follows:

6 ‘‘§ 2. Powers and duties

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

8 Trademark Office, subject to the policy direction of the

9 Secretary of Commerce—

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

11 issuing of patents and the registration of trade12 marks; and

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

14 the public information with respect to patents and

15 trademarks.

16 ‘‘(b) SPECIFIC POWERS.—The Office—

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

18 which shall be judicially noticed and with which let19 ters patent, certificates of trademark registrations,

20 and papers issued by the Office shall be authenti21 cated;

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

23 with law, which—

24 ‘‘(A) shall govern the conduct of pro25 ceedings in the Office;
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1 ‘‘(B) shall be made in accordance with sec2 tion 553 of title 5, United States Code;

3 ‘‘(C) shall facilitate and expedite the proc4 essing of patent applications, particularly those

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

6 and retrieved electronically, subject to the provi7 sions of section 122 relating to the confidential

8 status of applications;

9 ‘‘(D) may govern the recognition and con10 duct of agents, attorneys, or other persons rep11 resenting applicants or other parties before the

12 Office, and may require them, before being rec13 ognized as representatives of applicants or

14 other persons, to show that they are of good

15 moral character and reputation and are pos16 sessed of the necessary qualifications to render

17 to applicants or other persons valuable service,

18 advice, and assistance in the presentation or

19 prosecution of their applications or other busi20 ness before the Office;

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

22 continuing to safeguard broad access to the

23 United States patent system through the re24 duced fee structure for small entities under sec25 tion 41(h)(1) of this title; and
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1 ‘‘(F) provide for the development of a per2 formance-based process that includes quan3 titative and qualitative measures and standards

4 for evaluating cost-effectiveness and is con5 sistent with the principles of impartiality and

6 competitiveness;

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

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

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

10 therein, as it considers necessary to carry out its

11 functions;

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

13 for the construction, maintenance, or management

14 and operation of facilities, and contracts for supplies

15 or services, without regard to the provisions of the

16 Federal Property and Administrative Services Act of

17 1949 (40 U.S.C. 471 et seq.), the Public Buildings

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

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

20 11301 et seq.); and

21 ‘‘(B) may enter into and perform such pur22 chases and contracts for printing services, including

23 the process of composition, platemaking, presswork,

24 silk screen processes, binding, microform, and the

25 products of such processes, as it considers necessary
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1 to carry out the functions of the Office, without re2 gard to sections 501 through 517 and 1101 through

3 1123 of title 44, United States Code;

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

5 equipment, personnel, and facilities of other depart6 ments, agencies, and instrumentalities of the Fed7 eral Government, on a reimbursable basis, and co8 operate with such other departments, agencies, and

9 instrumentalities in the establishment and use of

10 services, equipment, and facilities of the Office;

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

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

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

14 agency, instrumentality, Patent and Trademark Of15 fice, or international organization concerned, the

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

17 or local government agency or instrumentality or

18 foreign patent and trademark office or international

19 organization to perform functions on its behalf;

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

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

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

23 any interest therein, of the Office;
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1 ‘‘(8) shall advise the President, through the

2 Secretary of Commerce, on national and certain

3 international intellectual property policy issues;

4 ‘‘(9) shall advise Federal departments and

5 agencies on matters of intellectual property policy in

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

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

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

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

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

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

24 ‘‘(B) may conduct programs and studies de25 scribed in subparagraph (A); and
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1 ‘‘(13)(A) in coordination with the Department

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

4 and international intergovernmental organizations;

5 and

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

7 State, may authorize the transfer of not to exceed

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

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

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

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

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

16 addition to any other payments or contributions to inter17 national organizations described in subsection (b)(13)(B)

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

19 on the amounts of such other payments or contributions

20 by the United States Government.

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

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

23 of the United States Trade Representative as set forth in

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

2 the duties and functions of the Register of Copyrights or

3 otherwise alter current authorities relating to copyright

4 matters.

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

7 consult with the Administrator of General Services.

8 ‘‘(5) In exercising the Director’s powers and duties

9 under this section, the Director shall consult with the Reg10 ister of Copyrights on all copyright and related matters.

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

12 be construed to nullify, void, cancel, or interrupt any pend13 ing request-for-proposal let or contract issued by the Gen14 eral Services Administration for the specific purpose of re15 locating or leasing space to the United States Patent and

16 Trademark Office.’’.

17 SEC. 4713. ORGANIZATION AND MANAGEMENT.

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

19 to read as follows:

20 ‘‘§ 3. Officers and employees

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

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

23 the United States Patent and Trademark Office

24 shall be vested in an Under Secretary of Commerce

25 for Intellectual Property and Director of the United
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1 States Patent and Trademark Office (in this title re2 ferred to as the ‘Director’), who shall be a citizen of

3 the United States and who shall be appointed by the

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

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

6 professional background and experience in patent or

7 trademark law.

8 ‘‘(2) DUTIES.—

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

10 responsible for providing policy direction and

11 management supervision for the Office and for

12 the issuance of patents and the registration of

13 trademarks. The Director shall perform these

14 duties in a fair, impartial, and equitable man15 ner.

16 ‘‘(B) CONSULTING WITH THE PUBLIC AD17 VISORY COMMITTEES.—The Director shall con18 sult with the Patent Public Advisory Committee

19 established in section 5 on a regular basis on

20 matters relating to the patent operations of the

21 Office, shall consult with the Trademark Public

22 Advisory Committee established in section 5 on

23 a regular basis on matters relating to the trade24 mark operations of the Office, and shall consult

25 with the respective Public Advisory Committee
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•S 1948 IS

1 before submitting budgetary proposals to the

2 Office of Management and Budget or changing

3 or proposing to change patent or trademark

4 user fees or patent or trademark regulations

5 which are subject to the requirement to provide

6 notice and opportunity for public comment

7 under section 553 of title 5, United States

8 Code, as the case may be.

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

10 office, take an oath to discharge faithfully the duties

11 of the Office.

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

13 from office by the President. The President shall

14 provide notification of any such removal to both

15 Houses of Congress.

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

17 ‘‘(1) DEPUTY UNDER SECRETARY AND DEPUTY

18 DIRECTOR.—The Secretary of Commerce, upon nom19 ination by the Director, shall appoint a Deputy

20 Under Secretary of Commerce for Intellectual Prop21 erty and Deputy Director of the United States Pat22 ent and Trademark Office who shall be vested with

23 the authority to act in the capacity of the Director

24 in the event of the absence or incapacity of the Di25 rector. The Deputy Director shall be a citizen of the
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1 United States who has a professional background

2 and experience in patent or trademark law.

3 ‘‘(2) COMMISSIONERS.—

4 ‘‘(A) APPOINTMENT AND DUTIES.—The

5 Secretary of Commerce shall appoint a Commis6 sioner for Patents and a Commissioner for

7 Trademarks, without regard to chapter 33, 51,

8 or 53 of title 5, United States Code. The Com9 missioner for Patents shall be a citizen of the

10 United States with demonstrated management

11 ability and professional background and experi12 ence in patent law and serve for a term of 5

13 years. The Commissioner for Trademarks shall

14 be a citizen of the United States with dem15 onstrated management ability and professional

16 background and experience in trademark law

17 and serve for a term of 5 years. The Commis18 sioner for Patents and the Commissioner for

19 Trademarks shall serve as the chief operating

20 officers for the operations of the Office relating

21 to patents and trademarks, respectively, and

22 shall be responsible for the management and di23 rection of all aspects of the activities of the Of24 fice that affect the administration of patent and

25 trademark operations, respectively. The Sec-
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1 retary may reappoint a Commissioner to subse2 quent terms of 5 years as long as the perform3 ance of the Commissioner as set forth in the

4 performance agreement in subparagraph (B) is

5 satisfactory.

6 ‘‘(B) SALARY AND PERFORMANCE AGREE7 MENT.—The Commissioners shall be paid an

8 annual rate of basic pay not to exceed the max9 imum rate of basic pay for the Senior Executive

10 Service established under section 5382 of title

11 5, United States Code, including any applicable

12 locality-based comparability payment that may

13 be authorized under section 5304(h)(2)(C) of

14 title 5, United States Code. The compensation

15 of the Commissioners shall be considered, for

16 purposes of section 207(c)(2)(A) of title 18,

17 United States Code, to be the equivalent of that

18 described under clause (ii) of section

19 207(c)(2)(A) of title 18, United States Code. In

20 addition, the Commissioners may receive a

21 bonus in an amount of up to, but not in excess

22 of, 50 percent of the Commissioners’ annual

23 rate of basic pay, based upon an evaluation by

24 the Secretary of Commerce, acting through the

25 Director, of the Commissioners’ performance as
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1 defined in an annual performance agreement

2 between the Commissioners and the Secretary.

3 The annual performance agreements shall in4 corporate measurable organization and indi5 vidual goals in key operational areas as delin6 eated in an annual performance plan agreed to

7 by the Commissioners and the Secretary. Pay8 ment of a bonus under this subparagraph may

9 be made to the Commissioners only to the ex10 tent that such payment does not cause the

11 Commissioners’ total aggregate compensation in

12 a calendar year to equal or exceed the amount

13 of the salary of the Vice President under sec14 tion 104 of title 3, United States Code.

15 ‘‘(C) REMOVAL.—The Commissioners may

16 be removed from office by the Secretary for

17 misconduct or nonsatisfactory performance

18 under the performance agreement described in

19 subparagraph (B), without regard to the provi20 sions of title 5, United States Code. The Sec21 retary shall provide notification of any such re22 moval to both Houses of Congress.

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

24 Director shall—
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1 ‘‘(A) appoint such officers, employees (in2 cluding attorneys), and agents of the Office as

3 the Director considers necessary to carry out

4 the functions of the Office; and

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

6 of such officers and employees and delegate to

7 them such of the powers vested in the Office as

8 the Director may determine.

9 The Office shall not be subject to any administra10 tively or statutorily imposed limitation on positions

11 or personnel, and no positions or personnel of the

12 Office shall be taken into account for purposes of

13 applying any such limitation.

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

15 shall submit to the Congress a proposal to provide

16 an incentive program to retain as employees patent

17 and trademark examiners of the primary examiner

18 grade or higher who are eligible for retirement, for

19 the sole purpose of training patent and trademark

20 examiners.

21 ‘‘(5) NATIONAL SECURITY POSITIONS.—The Di22 rector, in consultation with the Director of the Of23 fice of Personnel Management, shall maintain a pro24 gram for identifying national security positions and

25 providing for appropriate security clearances, in
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1 order to maintain the secrecy of certain inventions,

2 as described in section 181, and to prevent disclo3 sure of sensitive and strategic information in the in4 terest of national security.

5 ‘‘(c) CONTINUED APPLICABILITY OF TITLE 5,

6 UNITED STATES CODE.—Officers and employees of the

7 Office shall be subject to the provisions of title 5, United

8 States Code, relating to Federal employees.

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

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

12 of the Patent and Trademark Office Efficiency Act, with

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

14 ‘‘(e) CARRYOVER OF PERSONNEL.—

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

16 date of the Patent and Trademark Office Efficiency

17 Act, all officers and employees of the Patent and

18 Trademark Office on the day before such effective

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

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

22 on the day before the effective date of the Patent

23 and Trademark Office Efficiency Act, is an officer

24 or employee of the Department of Commerce (other

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

2 carry out the purposes of this Act, if—

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

4 for which a major function is the performance

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

7 Commerce;

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

9 that performed work in support of the Patent

10 and Trademark Office during at least half of

11 the incumbent’s work time, as determined by

12 the Secretary of Commerce; or

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

14 of the Office, as determined by the Secretary of

15 Commerce in consultation with the Director.

16 Any transfer under this paragraph shall be effective

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

19 service.

20 ‘‘(f ) TRANSITION PROVISIONS.—

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

22 On or after the effective date of the Patent and

23 Trademark Office Efficiency Act, the President shall

24 appoint an individual to serve as the Director until

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

2 one such appointment under this subsection.

3 ‘‘(2) CONTINUATION IN OFFICE OF CERTAIN

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

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

8 for Patents until the date on which a Commissioner

9 for Patents is appointed under subsection (b).

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

11 Commissioner for Trademarks on the day before the

12 effective date of the Patent and Trademark Office

13 Efficiency Act may serve as the Commissioner for

14 Trademarks until the date on which a Commissioner

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

16 SEC. 4714. PUBLIC ADVISORY COMMITTEES.

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

18 is amended by inserting after section 4 the following:

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

20 Committees

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

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

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

6 years, except that of the members first appointed,

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

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

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

11 competitive advantage in international commerce or

12 other harm to United States companies as a result

13 of such appointments.

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

15 chair of each Advisory Committee, whose term as

16 chair shall be for 3 years.

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

19 made within 3 months after the effective date of the

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

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

23 Advisory Committee—

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

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

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

5 Public Advisory Committee;

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

7 and large entity applicants located in the United

8 States in proportion to the number of applications

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

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

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

16 ‘‘(3) shall include individuals with substantial

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

19 automation.

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

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

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

3 by the chair.

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

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

6 budget, and user fees of the United States Patent

7 and Trademark Office with respect to patents, in the

8 case of the Patent Public Advisory Committee, and

9 with respect to Trademarks, in the case of the

10 Trademark Public Advisory Committee, and advise

11 the Director on these matters;

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

13 year—

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

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

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

19 House of Representatives; and

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

23 ‘‘(e) COMPENSATION.—Each member of each Advi24 sory Committee shall be compensated for each day (includ25 ing travel time) during which such member is attending
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•S 1948 IS

1 meetings or conferences of that Advisory Committee or

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

6 Code. While away from such member’s home or regular

7 place of business such member shall be allowed travel ex8 penses, including per diem in lieu of subsistence, as au9 thorized by section 5703 of title 5, United States Code.

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

11 Advisory Committee shall be provided access to records

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

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

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

19 title 18, United States Code.

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

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

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

25 each Advisory Committee may by majority vote meet in
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•S 1948 IS

1 executive session when considering personnel or other con2 fidential information.’’.

3 SEC. 4715. CONFORMING AMENDMENTS.

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

5 Code, is amended by striking section 6.

6 (b) REGULATIONS FOR AGENTS AND ATTORNEYS.—

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

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

9 3 of title 35, United States Code, are repealed.

10 (c) SUSPENSION OR EXCLUSION FROM PRACTICE.—

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

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

13 SEC. 4716. TRADEMARK TRIAL AND APPEAL BOARD.

14 Section 17 of the Act of July 5, 1946 (commonly re15 ferred to as the ‘‘Trademark Act of 1946’’) (15 U.S.C.

16 1067) is amended to read as follows:

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

18 to registration, application to register as a lawful concur19 rent user, or application to cancel the registration of a

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

21 direct a Trademark Trial and Appeal Board to determine

22 and decide the respective rights of registration.

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

24 include the Director, the Commissioner for Patents, the
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•S 1948 IS

1 Commissioner for Trademarks, and administrative trade2 mark judges who are appointed by the Director.’’.

3 SEC. 4717. BOARD OF PATENT APPEALS AND INTER4 FERENCES.

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

6 amended—

7 (1) by striking section 7 and redesignating sec8 tions 8 through 14 as sections 7 through 13, respec9 tively; and

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

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

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

13 shall be in the United States Patent and Trademark Of14 fice a Board of Patent Appeals and Interferences. The Di15 rector, the Commissioner for Patents, the Commissioner

16 for Trademarks, and the administrative patent judges

17 shall constitute the Board. The administrative patent

18 judges shall be persons of competent legal knowledge and

19 scientific ability who are appointed by the Director.

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

21 Interferences shall, on written appeal of an applicant, re22 view adverse decisions of examiners upon applications for

23 patents and shall determine priority and patentability of

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

25 Each appeal and interference shall be heard by at least
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•S 1948 IS

1 three members of the Board, who shall be designated by

2 the Director. Only the Board of Patent Appeals and Inter3 ferences may grant rehearings.’’.

4 SEC. 4718. ANNUAL REPORT OF DIRECTOR.

5 Section 13 of title 35, United States Code, as redesig6 nated by section 4717 of this subtitle, is amended to read

7 as follows:

8 ‘‘§ 13. Annual report to Congress

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

10 than 180 days after the end of each fiscal year, the mon11 eys received and expended by the Office, the purposes for

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

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

14 examiners, the evaluation of the Commissioner of Patents

15 and the Commissioner of Trademarks by the Secretary of

16 Commerce, the compensation of the Commissioners, and

17 other information relating to the Office.’’.

18 SEC. 4719. SUSPENSION OR EXCLUSION FROM PRACTICE.

19 Section 32 of title 35, United States Code, is amend20 ed by inserting before the last sentence the following: ‘‘The

21 Director shall have the discretion to designate any attor22 ney who is an officer or employee of the United States

23 Patent and Trademark Office to conduct the hearing re24 quired by this section.’’.
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•S 1948 IS

1 SEC. 4720. PAY OF DIRECTOR AND DEPUTY DIRECTOR.

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

3 United States Code, is amended by striking:

4 ‘‘Assistant Secretary of Commerce and Com5 missioner of Patents and Trademarks.’’.

6 and inserting:

7 ‘‘Under Secretary of Commerce for Intellectual

8 Property and Director of the United States Patent

9 and Trademark Office.’’.

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

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

12 end the following:

13 ‘‘Deputy Under Secretary of Commerce for In14 tellectual Property and Deputy Director of the

15 United States Patent and Trademark Office.’’.

16 CHAPTER 2—EFFECTIVE DATE;

17 TECHNICAL AMENDMENTS

18 SEC. 4731. EFFECTIVE DATE.

19 This subtitle and the amendments made by this sub20 title shall take effect 4 months after the date of the enact21 ment of this Act.

22 SEC. 4732. TECHNICAL AND CONFORMING AMENDMENTS.

23 (a) AMENDMENTS TO TITLE 35, UNITED STATES

24 CODE.—
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•S 1948 IS

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

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

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

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

5 States Code, is amended to read as follows:

6 ‘‘PART I—UNITED STATES PATENT AND

7 TRADEMARK OFFICE’’.

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

9 United States Code, is amended by amending the

10 item relating to chapter 1 to read as follows:

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

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

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

14 ‘‘CHAPTER 1—ESTABLISHMENT, OFFICERS

15 AND EMPLOYEES, FUNCTIONS

‘‘Sec.

‘‘ 1. Establishment.

‘‘ 2. Powers and duties.

‘‘ 3. Officers and employees.

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

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

‘‘ 6. Board of Patent Appeals and Interferences.

‘‘ 7. Library.

‘‘ 8. Classification of patents.

‘‘ 9. Certified copies of records.

‘‘10. Publications.

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

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

‘‘13. Annual report to Congress.’’.
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•S 1948 IS

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

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

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

5 is amended by striking ‘‘Commissioner of Patents

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

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

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

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

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

12 and inserting ‘‘Director’’.

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

14 Code, is amended—

15 (i) in the section heading by striking

16 ‘‘Commissioner’’ and inserting ‘‘Direc17 tor’’; and

18 (ii) by striking ‘‘Commissioner’s’’ and in19 serting ‘‘Director’s’’.

20 (B) The item relating to section 303 in the

21 table of sections for chapter 30 of title 35, United

22 States Code, is amended by striking ‘‘Commis23 sioner’’ and inserting ‘‘Director’’.

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

25 (B), title 35, United States Code, is amended by
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•S 1948 IS

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

2 inserting ‘‘Director’’.

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

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

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

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

7 Code, is amended by striking ‘‘Secretary of Com8 merce’’ and inserting ‘‘Director’’.

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

10 Code, is amended—

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

12 and

13 (B) by striking the second period after

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

15 sentence.

16 (b) OTHER PROVISIONS OF LAW.—

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

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

19 1946’’; 15 U.S.C. 1127), is amended by striking

20 ‘‘The term ‘Commissioner’ means the Commissioner

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

22 term ‘Director’ means the Under Secretary of Com23 merce for Intellectual Property and Director of the

24 United States Patent and Trademark Office.’’.
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•S 1948 IS

1 (B) The Act of July 5, 1946 (commonly re2 ferred to as the ‘‘Trademark Act of 1946’’; 15

3 U.S.C. 1051 et seq.), except for section 17, as

4 amended by 4716 of this subtitle, is amended by

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

6 inserting ‘‘Director’’.

7 (C) Sections 8(e) and 9(b) of the Trademark

8 Act of 1946 are each amended by striking ‘‘Commis9 sioner’’ and inserting ‘‘Director’’.

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

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

12 inserting ‘‘United States Patent and Trademark Of13 fice’’.

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

15 States Code, is amended to read as follows:

16 ‘‘(23) administrative patent judges and des17 ignated administrative patent judges in the United

18 States Patent and Trademark Office;’’.

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

20 (5 U.S.C. 5316) is amended by striking ‘‘Commis21 sioner of Patents, Department of Commerce.’’,

22 ‘‘Deputy Commissioner of Patents and Trade23 marks.’’, ‘‘Assistant Commissioner for Patents.’’,

24 and ‘‘Assistant Commissioner for Trademarks.’’.
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•S 1948 IS

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

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

3 follows:

4 ‘‘(B) the Under Secretary of Commerce for

5 Intellectual Property and Director of the United

6 States Patent and Trademark Office; and’’.

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

8 (15 U.S.C. 1511) is amended—

9 (A) by striking ‘‘(d) Patent and Trade10 mark Office;’’ and inserting:

11 ‘‘(4) United States Patent and Trademark Of12 fice’’; and

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

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

15 (5), (6), and (7), respectively and indenting the

16 paragraphs as so redesignated 2 ems to the

17 right.

18 (7) Section 19 of the Tennessee Valley Author19 ity Act of 1933 (16 U.S.C. 831r) is amended—

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

21 United States’’ and inserting ‘‘United States

22 Patent and Trademark Office’’; and

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

24 and inserting ‘‘Under Secretary of Commerce
164

•S 1948 IS

1 for Intellectual Property and Director of the

2 United States Patent and Trademark Office’’.

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

4 1974 (19 U.S.C. 2242(b)(2)(A)) is amended by

5 striking ‘‘Commissioner of Patents and Trade6 marks’’ and inserting ‘‘Under Secretary of Com7 merce for Intellectual Property and Director of the

8 United States Patent and Trademark Office’’.

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

10 1974 (19 U.S.C. 2412(b)(2)(D)) is amended by

11 striking ‘‘Commissioner of Patents and Trade12 marks’’ and inserting ‘‘Under Secretary of Com13 merce for Intellectual Property and Director of the

14 United States Patent and Trademark Office’’.

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

16 20 U.S.C. 91) is amended by striking ‘‘Patent Of17 fice’’ and inserting ‘‘United States Patent and

18 Trademark Office’’.

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

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

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

22 and Trademark Office of the Department of Com23 merce’’ and inserting ‘‘United States Patent and

24 Trademark Office’’.
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•S 1948 IS

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

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

3 striking ‘‘Commissioner of Patents’’ and inserting

4 ‘‘Under Secretary of Commerce for Intellectual

5 Property and Director of the United States Patent

6 and Trademark Office’’ and by striking ‘‘Commis7 sioner’’ and inserting ‘‘Director’’.

8 (13) Section 105(e) of the Federal Alcohol Ad9 ministration Act (27 U.S.C. 205(e)) is amended by

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

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

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

13 States Code, is amended—

14 (A) in subparagraph (A) by inserting

15 ‘‘United States’’ before ‘‘Patent and Trade16 mark’’; and

17 (B) in subparagraph (B) by striking

18 ‘‘Commissioner of Patents and Trademarks’’

19 and inserting ‘‘Under Secretary of Commerce

20 for Intellectual Property and Director of the

21 United States Patent and Trademark Office’’.

22 (15) Chapter 115 of title 28, United States

23 Code, is amended—

24 (A) in the item relating to section 1744 in

25 the table of sections by striking ‘‘Patent Office’’
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•S 1948 IS

1 and inserting ‘‘United States Patent and

2 Trademark Office’’;

3 (B) in section 1744—

4 (i) by striking ‘‘Patent Office’’ each

5 place it appears in the text and section

6 heading and inserting ‘‘United States Pat7 ent and Trademark Office’’; and

8 (ii) by striking ‘‘Commissioner of Pat9 ents’’ and inserting ‘‘Under Secretary of

10 Commerce for Intellectual Property and

11 Director of the United States Patent and

12 Trademark Office’’; and

13 (C) by striking ‘‘Commissioner’’ and in14 serting ‘‘Director’’.

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

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

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

18 Trademark Office’’.

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

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

21 inserting ‘‘United States Patent and Trademark Of22 fice’’.

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

24 1954 (42 U.S.C. 2181) is amended in subsections c.

25 and d. by striking ‘‘Commissioner of Patents’’ and
167

•S 1948 IS

1 inserting ‘‘Under Secretary of Commerce for Intel2 lectual Property and Director of the United States

3 Patent and Trademark Office’’.

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

5 1954 (42 U.S.C. 2182) is amended by striking

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

7 and inserting ‘‘Under Secretary of Commerce for In8 tellectual Property and Director of the United States

9 Patent and Trademark Office’’.

10 (20) Section 305 of the National Aeronautics

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

12 amended—

13 (A) in subsection (c) by striking ‘‘Commis14 sioner of Patents’’ and inserting ‘‘Under Sec15 retary of Commerce for Intellectual Property

16 and Director of the United States Patent and

17 Trademark Office (hereafter in this section re18 ferred to as the ‘Director’)’’; and

19 (B) by striking ‘‘Commissioner’’ each sub20 sequent place it appears and inserting ‘‘Direc21 tor’’.

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

23 Cooling Demonstration Act of 1974 (42 U.S.C.

24 5510(a)) is amended by striking ‘‘Commissioner of

25 the Patent Office’’ and inserting ‘‘Under Secretary
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•S 1948 IS

1 of Commerce for Intellectual Property and Director

2 of the United States Patent and Trademark Office’’.

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

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

5 Patents,’’.

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

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

8 Patents,’’.

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

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

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

12 States Code, and the items relating to those sections

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

14 are repealed.

15 (26) Section 10(i) of the Trading with the

16 enemy Act (50 U.S.C. App. 10(i)) is amended by

17 striking ‘‘Commissioner of Patents’’ and inserting

18 ‘‘Under Secretary of Commerce for Intellectual

19 Property and Director of the United States Patent

20 and Trademark Office’’.

21 CHAPTER 3—MISCELLANEOUS

22 PROVISIONS

23 SEC. 4741. REFERENCES.

24 (a) IN GENERAL.—Any reference in any other Fed25 eral law, Executive order, rule, regulation, or delegation
169

•S 1948 IS

1 of authority, or any document of or pertaining to a depart2 ment or office from which a function is transferred by this

3 subtitle—

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

5 deemed to refer to the head of the department or of6 fice to which such function is transferred; or

7 (2) to such department or office is deemed to

8 refer to the department or office to which such func9 tion is transferred.

10 (b) SPECIFIC REFERENCES.—Any reference in any

11 other Federal law, Executive order, rule, regulation, or

12 delegation of authority, or any document of or pertaining

13 to the Patent and Trademark Office—

14 (1) to the Commissioner of Patents and Trade15 marks is deemed to refer to the Under Secretary of

16 Commerce for Intellectual Property and Director of

17 the United States Patent and Trademark Office;

18 (2) to the Assistant Commissioner for Patents

19 is deemed to refer to the Commissioner for Patents;

20 or

21 (3) to the Assistant Commissioner for Trade22 marks is deemed to refer to the Commissioner for

23 Trademarks.
170

•S 1948 IS

1 SEC. 4742. EXERCISE OF AUTHORITIES.

2 Except as otherwise provided by law, a Federal offi3 cial to whom a function is transferred by this subtitle may,

4 for purposes of performing the function, exercise all au5 thorities under any other provision of law that were avail6 able with respect to the performance of that function to

7 the official responsible for the performance of the function

8 immediately before the effective date of the transfer of the

9 function under this subtitle.

10 SEC. 4743. SAVINGS PROVISIONS.

11 (a) LEGAL DOCUMENTS.—All orders, determinations,

12 rules, regulations, permits, grants, loans, contracts, agree13 ments, certificates, licenses, and privileges—

14 (1) that have been issued, made, granted, or al15 lowed to become effective by the President, the Sec16 retary of Commerce, any officer or employee of any

17 office transferred by this subtitle, or any other Gov18 ernment official, or by a court of competent jurisdic19 tion, in the performance of any function that is

20 transferred by this subtitle; and

21 (2) that are in effect on the effective date of

22 such transfer (or become effective after such date

23 pursuant to their terms as in effect on such effective

24 date), shall continue in effect according to their

25 terms until modified, terminated, superseded, set

26 aside, or revoked in accordance with law by the
171

•S 1948 IS

1 President, any other authorized official, a court of

2 competent jurisdiction, or operation of law.

3 (b) PROCEEDINGS.—This subtitle shall not affect any

4 proceedings or any application for any benefits, service,

5 license, permit, certificate, or financial assistance pending

6 on the effective date of this subtitle before an office trans7 ferred by this subtitle, but such proceedings and applica8 tions shall be continued. Orders shall be issued in such

9 proceedings, appeals shall be taken therefrom, and pay10 ments shall be made pursuant to such orders, as if this

11 subtitle had not been enacted, and orders issued in any

12 such proceeding shall continue in effect until modified, ter13 minated, superseded, or revoked by a duly authorized offi14 cial, by a court of competent jurisdiction, or by operation

15 of law. Nothing in this subsection shall be considered to

16 prohibit the discontinuance or modification of any such

17 proceeding under the same terms and conditions and to

18 the same extent that such proceeding could have been dis19 continued or modified if this subtitle had not been enacted.

20 (c) SUITS.—This subtitle shall not affect suits com21 menced before the effective date of this subtitle, and in

22 all such suits, proceedings shall be had, appeals taken, and

23 judgments rendered in the same manner and with the

24 same effect as if this subtitle had not been enacted.
172

•S 1948 IS

1 (d) NONABATEMENT OF ACTIONS.—No suit, action,

2 or other proceeding commenced by or against the Depart3 ment of Commerce or the Secretary of Commerce, or by

4 or against any individual in the official capacity of such

5 individual as an officer or employee of an office trans6 ferred by this subtitle, shall abate by reason of the enact7 ment of this subtitle.

8 (e) CONTINUANCE OF SUITS.—If any Government of9 ficer in the official capacity of such officer is party to a

10 suit with respect to a function of the officer, and under

11 this subtitle such function is transferred to any other offi12 cer or office, then such suit shall be continued with the

13 other officer or the head of such other office, as applicable,

14 substituted or added as a party.

15 (f ) ADMINISTRATIVE PROCEDURE AND JUDICIAL

16 REVIEW.—Except as otherwise provided by this subtitle,

17 any statutory requirements relating to notice, hearings,

18 action upon the record, or administrative or judicial review

19 that apply to any function transferred by this subtitle shall

20 apply to the exercise of such function by the head of the

21 Federal agency, and other officers of the agency, to which

22 such function is transferred by this subtitle.

23 SEC. 4744. TRANSFER OF ASSETS.

24 Except as otherwise provided in this subtitle, so much

25 of the personnel, property, records, and unexpended bal-
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•S 1948 IS

1 ances of appropriations, allocations, and other funds em2 ployed, used, held, available, or to be made available in

3 connection with a function transferred to an official or

4 agency by this subtitle shall be available to the official or

5 the head of that agency, respectively, at such time or times

6 as the Director of the Office of Management and Budget

7 directs for use in connection with the functions trans8 ferred.

9 SEC. 4745. DELEGATION AND ASSIGNMENT.

10 Except as otherwise expressly prohibited by law or

11 otherwise provided in this subtitle, an official to whom

12 functions are transferred under this subtitle (including the

13 head of any office to which functions are transferred under

14 this subtitle) may delegate any of the functions so trans15 ferred to such officers and employees of the office of the

16 official as the official may designate, and may authorize

17 successive redelegations of such functions as may be nec18 essary or appropriate. No delegation of functions under

19 this section or under any other provision of this subtitle

20 shall relieve the official to whom a function is transferred

21 under this subtitle of responsibility for the administration

22 of the function.
174

•S 1948 IS

1 SEC. 4746. AUTHORITY OF DIRECTOR OF THE OFFICE OF

2 MANAGEMENT AND BUDGET WITH RESPECT

3 TO FUNCTIONS TRANSFERRED.

4 (a) DETERMINATIONS.—If necessary, the Director of

5 the Office of Management and Budget shall make any de6 termination of the functions that are transferred under

7 this subtitle.

8 (b) INCIDENTAL TRANSFERS.—The Director of the

9 Office of Management and Budget, at such time or times

10 as the Director shall provide, may make such determina11 tions as may be necessary with regard to the functions

12 transferred by this subtitle, and to make such additional

13 incidental dispositions of personnel, assets, liabilities,

14 grants, contracts, property, records, and unexpended bal15 ances of appropriations, authorizations, allocations, and

16 other funds held, used, arising from, available to, or to

17 be made available in connection with such functions, as

18 may be necessary to carry out the provisions of this sub19 title. The Director shall provide for the termination of the

20 affairs of all entities terminated by this subtitle and for

21 such further measures and dispositions as may be nec22 essary to effectuate the purposes of this subtitle.

23 SEC. 4747. CERTAIN VESTING OF FUNCTIONS CONSIDERED

24 TRANSFERS.

25 For purposes of this subtitle, the vesting of a function

26 in a department or office pursuant to reestablishment of
175

•S 1948 IS

1 an office shall be considered to be the transfer of the func2 tion.

3 SEC. 4748. AVAILABILITY OF EXISTING FUNDS.

4 Existing appropriations and funds available for the

5 performance of functions, programs, and activities termi6 nated pursuant to this subtitle shall remain available, for

7 the duration of their period of availability, for necessary

8 expenses in connection with the termination and resolution

9 of such functions, programs, and activities, subject to the

10 submission of a plan to the Committees on Appropriations

11 of the House and Senate in accordance with the proce12 dures set forth in section 605 of the Departments of Com13 merce, Justice, and State, the Judiciary, and Related

14 Agencies Appropriations Act, 1999, as contained in Public

15 Law 105–277.

16 SEC. 4749. DEFINITIONS.

17 For purposes of this subtitle—

18 (1) the term ‘‘function’’ includes any duty, obli19 gation, power, authority, responsibility, right, privi20 lege, activity, or program; and

21 (2) the term ‘‘office’’ includes any office, ad22 ministration, agency, bureau, institute, council, unit,

23 organizational entity, or component thereof.
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1 Subtitle H—Miscellaneous Patent

2 Provisions

3 SEC. 4801. 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 Director, a provisional application

9 may be treated as an application filed under sub10 section (a). Subject to section 119(e)(3) of this title,

11 if no such request is made, the provisional applica12 tion shall be regarded as abandoned 12 months after

13 the filing date of such application and shall not be

14 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 enactment.

13 SEC. 4802. INTERNATIONAL APPLICATIONS.

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

15 amended as follows:

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

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

18 States,’’.

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

20 new subsections:

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

22 a WTO member country (or in a foreign UPOV Con23 tracting Party) shall have the same effect for the purpose

24 of the right of priority under subsections (a) through (c)

25 of this section as applications for patents, subject to the
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1 same conditions and requirements of this section as apply

2 to applications for patents.

3 ‘‘(g) As used in this section—

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

5 same meaning as the term is defined in section

6 104(b)(2) of this title; and

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

8 a member of the International Convention for the

9 Protection of New Varieties of Plants.’’.

10 SEC. 4803. CERTAIN LIMITATIONS ON DAMAGES FOR PAT11 ENT INFRINGEMENT NOT APPLICABLE.

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

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

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

15 earliest effective filing date of which is prior to September

16 30, 1996’’.

17 SEC. 4804. ELECTRONIC FILING AND PUBLICATIONS.

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

19 35, United States Code, is amended by striking ‘‘printed

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

21 an electronic medium’’.

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

23 States Code, is amended by amending the matter pre24 ceding paragraph 1 to read as follows:
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1 ‘‘(a) The Director 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 ‘‘printed copies of specifications and drawings

6 of patents’’ and inserting ‘‘copies of specifications and

7 drawings of patents in printed or electronic form’’.

8 (d) MAINTENANCE OF COLLECTIONS.—

9 (1) ELECTRONIC COLLECTIONS.—Section

10 41(i)(1) of title 35, United States Code, is amended

11 by striking ‘‘paper or microform’’ and inserting

12 ‘‘paper, microform, or electronic’’.

13 (2) CONTINUATION OF MAINTENANCE.—The

14 Under Secretary of Commerce for Intellectual Prop15 erty and Director of the United States Patent and

16 Trademark Office shall not, pursuant to the amend17 ment made by paragraph (1), cease to maintain, for

18 use by the public, paper or microform collections of

19 United States patents, foreign patent documents,

20 and United States trademark registrations, except

21 pursuant to notice and opportunity for public com22 ment and except that the Director shall first submit

23 a report to the Committees on the Judiciary of the

24 Senate and the House of Representatives detailing

25 such plan, including a description of the mechanisms
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1 in place to ensure the integrity of such collections

2 and the data contained therein, as well as to ensure

3 prompt public access to the most current available

4 information, and certifying that the implementation

5 of such plan will not negatively impact the public.

6 SEC. 4805. STUDY AND REPORT ON BIOLOGICAL DEPOSITS

7 IN SUPPORT OF BIOTECHNOLOGY PATENTS.

8 (a) IN GENERAL.—Not later than 6 months after the

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

10 of the United States, in consultation with the Under Sec11 retary of Commerce for Intellectual Property and Director

12 of the United States Patent and Trademark Office, shall

13 conduct a study and submit a report to Congress on the

14 potential risks to the United States biotechnology industry

15 relating to biological deposits in support of biotechnology

16 patents.

17 (b) CONTENTS.—The study conducted under this sec18 tion shall include—

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

20 risk of transfers to third parties of biological depos21 its, and the risks posed by the change to 18-month

22 publication requirements made by this subtitle;

23 (2) an analysis of comparative legal and regu24 latory regimes; and

25 (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 United States Patent and Trademark

5 Office shall consider the recommendations of the study

6 conducted under this section.

7 SEC. 4806. 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. 4807. PRIOR ART EXCLUSION FOR CERTAIN COM2 MONLY 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. 4808. 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 Director shall

14 not enter into an agreement to provide such copies of spec15 ifications and drawings of United States patents and ap16 plications to a foreign country, other than a NAFTA coun17 try or a WTO member country, without the express au18 thorization of the Secretary of Commerce. For purposes

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

20 member country’ have the meanings given those terms in

21 section 104(b).’’.

22 TITLE V—MISCELLANEOUS

23 PROVISIONS

24 SEC. 5001. COMMISSION ON ONLINE CHILD PROTECTION.

25 (a) REFERENCES.—Wherever in this section an

26 amendment is expressed in terms of an amendment to any
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1 provision, the reference shall be considered to be made to

2 such provision of section 1405 of the Child Online Protec3 tion Act (47 U.S.C. 231 note).

4 (b) MEMBERSHIP.—Subsection (b) is amended—

5 (1) by striking paragraph (1) and inserting the

6 following new paragraph:

7 ‘‘(1) INDUSTRY MEMBERS.—The Commission

8 shall include 16 members who shall consist of rep9 resentatives of—

10 ‘‘(A) providers of Internet filtering or

11 blocking services or software;

12 ‘‘(B) Internet access services;

13 ‘‘(C) labeling or ratings services;

14 ‘‘(D) Internet portal or search services;

15 ‘‘(E) domain name registration services;

16 ‘‘(F) academic experts; and

17 ‘‘(G) providers that make content available

18 over the Internet.

19 Of the members of the Commission by reason of this

20 paragraph, an equal number shall be appointed by

21 the Speaker of the House of Representatives and by

22 the Majority Leader of the Senate. Members of the

23 Commission appointed on or before October 31,

24 1999, shall remain members.’’; and
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1 (2) by adding at the end the following new

2 paragraph:

3 ‘‘(3) PROHIBITION OF PAY.—Members of the

4 Commission shall not receive any pay by reason of

5 their membership on the Commission.’’.

6 (c) EXTENSION OF REPORTING DEADLINE.—The

7 matter in subsection (d) that precedes paragraph (1) is

8 amended by striking ‘‘1 year’’ and inserting ‘‘2 years’’.

9 (d) TERMINATION.—Subsection (f ) is amended by in10 serting before the period at the end the following: ‘‘or No11 vember 30, 2000, whichever occurs earlier’’.

12 (e) FIRST MEETING AND CHAIRPERSON.—Section

13 1405 is amended—

14 (1) by striking subsection (e);

15 (2) by redesignating subsections (f ) (as amend16 ed by the preceding provisions of this section) and

17 (g) as subsections (l) and (m), respectively;

18 (3) by redesignating subsections (c) and (d) (as

19 amended by the preceding provisions of this section)

20 as subsections (e) and (f ), respectively; and

21 (4) by inserting after subsection (b) the fol22 lowing new subsections:

23 ‘‘(c) FIRST MEETING.—The Commission shall hold

24 its first meeting not later than March 31, 2000.
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1 ‘‘(d) CHAIRPERSON.—The chairperson of the Com2 mission shall be elected by a vote of a majority of the

3 members, which shall take place not later than 30 days

4 after the first meeting of the Commission.’’.

5 (f ) RULES OF THE COMMISSION.—Section 1405 is

6 amended by inserting after subsection (f ) (as so redesig7 nated by subsection (e)(3) of this section) the following

8 new subsection:

9 ‘‘(g) RULES OF THE COMMISSION.—

10 ‘‘(1) QUORUM.—Nine members of the Commis11 sion shall constitute a quorum for conducting the

12 business of the Commission.

13 ‘‘(2) MEETINGS.—Any meetings held by the

14 Commission shall be duly noticed at least 14 days in

15 advance and shall be open to the public.

16 ‘‘(3) OPPORTUNITIES TO TESTIFY.—The Com17 mission shall provide opportunities for representa18 tives of the general public to testify.

19 ‘‘(4) ADDITIONAL RULES.—The Commission

20 may adopt other rules as necessary to carry out this

21 section.’’.
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1 SEC. 5002. PRIVACY PROTECTION FOR DONORS TO PUBLIC

2 BROADCASTING ENTITIES.

3 (a) AMENDMENT.—Section 396(k) of the Commu4 nications Act of 1934 (47 U.S.C. 396(k)) is amended by

5 adding at the end the following new paragraph:

6 ‘‘(12) Funds may not be distributed under this sub7 section to any public broadcasting entity that directly or

8 indirectly—

9 ‘‘(A) rents contributor or donor names (or other

10 personally identifiable information) to or from, or

11 exchanges such names or information with, any Fed12 eral, State, or local candidate, political party, or po13 litical committee; or

14 ‘‘(B) discloses contributor or donor names, or

15 other personally identifiable information, to any non16 affiliated third party unless—

17 ‘‘(i) such entity clearly and conspicuously

18 discloses to the contributor or donor that such

19 information may be disclosed to such third

20 party;

21 ‘‘(ii) the contributor or donor is given the

22 opportunity, before the time that such informa23 tion is initially disclosed, to direct that such in24 formation not be disclosed to such third party;

25 and
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1 ‘‘(iii) the contributor or donor is given an

2 explanation of how the contributor or donor

3 may exercise that nondisclosure option.’’.

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

5 subsection (a) shall apply with respect to funds distributed

6 on or after 6 months after the date of the enactment of

7 this Act.

8 SEC. 5003. COMPLETION OF BIENNIAL REGULATORY RE9 VIEW.

10 Within 180 days after the date of the enactment of

11 this Act, the Federal Communications Commission shall

12 complete the first biennial review required by section

13 202(h) of the Telecommunications Act of 1996 (Public

14 Law 104–104; 110 Stat. 111).

15 SEC. 5004. PUBLIC BROADCASTING ENTITIES.

16 (a) CIVIL REMITTANCE OF DAMAGES.—Section

17 1203(c)(5)(B) of title 17, United States Code, is amended

18 to read as follows:

19 ‘‘(B) NONPROFIT LIBRARY, ARCHIVES,

20 EDUCATIONAL INSTITUTIONS, OR PUBLIC

21 BROADCASTING ENTITIES.—

22 ‘‘(i) DEFINITION.—In this subpara23 graph, the term ‘public broadcasting enti24 ty’ has the meaning given such term under

25 section 118(g).
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1 ‘‘(ii) IN GENERAL.—In the case of a

2 nonprofit library, archives, educational in3 stitution, or public broadcasting entity, the

4 court shall remit damages in any case in

5 which the library, archives, educational in6 stitution, or public broadcasting entity sus7 tains the burden of proving, and the court

8 finds, that the library, archives, edu9 cational institution, or public broadcasting

10 entity was not aware and had no reason to

11 believe that its acts constituted a viola12 tion.’’.

13 (b) CRIMINAL OFFENSES AND PENALTIES.—Section

14 1204(b) of title 17, United States Code, is amended to

15 read as follows:

16 ‘‘(b) LIMITATION FOR NONPROFIT LIBRARY, AR17 CHIVES, EDUCATIONAL INSTITUTION, OR PUBLIC BROAD18 CASTING ENTITY.—

19 Subsection (a) shall not apply to a nonprofit library, ar20 chives, educational institution, or public broadcasting enti21 ty (as defined under section 118(g).’’.

22 SEC. 5005. TECHNICAL AMENDMENTS RELATING TO VESSEL

23 HULL DESIGN PROTECTION.

24 (a) IN GENERAL.—
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1 (1) Section 504(a) of the Digital Millennium

2 Copyright Act (Public Law 105–304) is amended to

3 read as follows:

4 ‘‘(a) IN GENERAL.—Not later than November 1,

5 2003, the Register of Copyrights and the Commissioner

6 of Patents and Trademarks shall submit to the Commit7 tees on the Judiciary of the Senate and the House of Rep8 resentatives a joint report evaluating the effect of the

9 amendments made by this title.’’.

10 (2) Section 505 of the Digital Millennium Copy11 right Act is amended by striking ‘‘and shall remain

12 in effect’’ and all that follows through the end of the

13 section and inserting a period.

14 (3) Section 1301(b)(3) of title 17, United

15 States Code, is amended to read as follows:

16 ‘‘(3) A ‘vessel’ is a craft—

17 ‘‘(A) that is designed and capable of inde18 pendently steering a course on or through water

19 through its own means of propulsion; and

20 ‘‘(B) that is designed and capable of car21 rying and transporting one or more pas22 sengers.’’.

23 (4) Section 1313(c) of title 17, United States

24 Code, is amended by adding at the end the fol25 lowing: ‘‘Costs of the cancellation procedure under
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1 this subsection shall be borne by the nonprevailing

2 party or parties, and the Administrator shall have

3 the authority to assess and collect such costs.’’.

4 (b) TARIFF ACT OF 1930.—Section 337 of the Tariff

5 Act of 1930 (19 U.S.C. 1337) is amended—

6 (1) in subsection (a)—

7 (A) in paragraph (1)—

8 (i) in subparagraph (A), by striking

9 ‘‘and (D)’’ and inserting ‘‘(D), and (E)’’;

10 and

11 (ii) by adding at the end the fol12 lowing:

13 ‘‘(E) The importation into the United

14 States, the sale for importation, or the sale

15 within the United States after importation by

16 the owner, importer, or consigner, of an article

17 that constitutes infringement of the exclusive

18 rights in a design protected under chapter 13 of

19 title 17, United States Code.’’; and

20 (B) in paragraphs (2) and (3), by striking

21 ‘‘or mask work’’ and inserting ‘‘mask work, or

22 design’’; and

23 (2) in subsection (l), by striking ‘‘or mask

24 work’’ each place it appears and inserting ‘‘mask

25 work, or design’’.
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1 SEC. 5006. INFORMAL RULEMAKING OF COPYRIGHT DETER2 MINATION.

3 Section 1201(a)(1)(C) of title 17, United States

4 Code, is amended in the first sentence by striking ‘‘on the

5 record’’.

6 SEC. 5007. SERVICE OF PROCESS FOR SURETY CORPORA7 TIONS.

8 Section 9306 of title 31, United States Code, is

9 amended—

10 (1) in subsection (a) by striking all beginning

11 with ‘‘designates a person by written power of attor12 ney’’ through the end of such subsection and insert13 ing the following: ‘‘has a resident agent for service

14 of process for that district. The resident agent—

15 ‘‘(1) may be an official of the State, the Dis16 trict of Columbia, the territory or possession in

17 which the court sits who is authorized or appointed

18 under the law of the State, District, territory or pos19 session to receive service of process on the corpora20 tion; or

21 ‘‘(2) may be an individual who resides in the ju22 risdiction of the district court for the district in

23 which a surety bond is to be provided and who is ap24 pointed by the corporation as provided in subsection

25 (b)’’; and
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1 (2) in subsection (b) by striking ‘‘The’’ and in2 serting ‘‘If the surety corporation meets the require3 ment of subsection (a) by appointing an individual

4 under subsection (a)(2), the’’.

5 SEC. 5008. LOW-POWER TELEVISION.

6 (a) SHORT TITLE.—This section may be cited as the

7 ‘‘Community Broadcasters Protection Act of 1999’’.

8 (b) FINDINGS.—Congress finds the following:

9 (1) Since the creation of low-power television li10 censes by the Federal Communications Commission,

11 a small number of license holders have operated

12 their stations in a manner beneficial to the public

13 good providing broadcasting to their communities

14 that would not otherwise be available.

15 (2) These low-power broadcasters have operated

16 their stations in a manner consistent with the pro17 gramming objectives and hours of operation of full18 power broadcasters providing worthwhile services to

19 their respective communities while under severe li20 cense limitations compared to their full-power coun21 terparts.

22 (3) License limitations, particularly the tem23 porary nature of the license, have blocked many low24 power broadcasters from having access to capital,

25 and have severely hampered their ability to continue
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1 to provide quality broadcasting, programming, or

2 improvements.

3 (4) The passage of the Telecommunications Act

4 of 1996 has added to the uncertainty of the future

5 status of these stations by the lack of specific provi6 sions regarding the permanency of their licenses, or

7 their treatment during the transition to high defini8 tion, digital television.

9 (5) It is in the public interest to promote diver10 sity in television programming such as that currently

11 provided by low-power television stations to foreign12 language communities.

13 (c) PRESERVATION OF LOW-POWER COMMUNITY

14 TELEVISION BROADCASTING.—Section 336 of the Com15 munications Act of 1934 (47 U.S.C. 336) is amended—

16 (1) by redesignating subsections (f ) and (g) as

17 subsections (g) and (h), respectively; and

18 (2) by inserting after subsection (e) the fol19 lowing new subsection:

20 ‘‘(f ) PRESERVATION OF LOW-POWER COMMUNITY

21 TELEVISION BROADCASTING.—

22 ‘‘(1) CREATION OF CLASS A LICENSES.—

23 ‘‘(A) RULEMAKING REQUIRED.—Within

24 120 days after the date of the enactment of the

25 Community Broadcasters Protection Act of
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1 1999, the Commission shall prescribe regula2 tions to establish a class A television license to

3 be available to licensees of qualifying low-power

4 television stations. Such regulations shall pro5 vide that—

6 ‘‘(i) the license shall be subject to the

7 same license terms and renewal standards

8 as the licenses for full-power television sta9 tions except as provided in this subsection;

10 and

11 ‘‘(ii) each such class A licensee shall

12 be accorded primary status as a television

13 broadcaster as long as the station con14 tinues to meet the requirements for a

15 qualifying low-power station in paragraph

16 (2).

17 ‘‘(B) NOTICE TO AND CERTIFICATION BY

18 LICENSEES.—Within 30 days after the date of

19 the enactment of the Community Broadcasters

20 Protection Act of 1999, the Commission shall

21 send a notice to the licensees of all low-power

22 televisions licenses that describes the require23 ments for class A designation. Within 60 days

24 after such date of enactment, licensees intend25 ing to seek class A designation shall submit to
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1 the Commission a certification of eligibility

2 based on the qualification requirements of this

3 subsection. Absent a material deficiency, the

4 Commission shall grant certification of eligi5 bility to apply for class A status.

6 ‘‘(C) APPLICATION FOR AND AWARD OF LI7 CENSES.—Consistent with the requirements set

8 forth in paragraph (2)(A) of this subsection, a

9 licensee may submit an application for class A

10 designation under this paragraph within 30

11 days after final regulations are adopted under

12 subparagraph (A) of this paragraph. Except as

13 provided in paragraphs (6) and (7), the Com14 mission shall, within 30 days after receipt of an

15 application of a licensee of a qualifying low16 power television station that is acceptable for

17 filing, award such a class A television station li18 cense to such licensee.

19 ‘‘(D) RESOLUTION OF TECHNICAL PROB20 LEMS.—The Commission shall act to preserve

21 the service areas of low-power television licens22 ees pending the final resolution of a class A ap23 plication. If, after granting certification of eligi24 bility for a class A license, technical problems

25 arise requiring an engineering solution to a full-
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1 power station’s allotted parameters or channel

2 assignment in the digital television Table of Al3 lotments, the Commission shall make such

4 modifications as necessary—

5 ‘‘(i) to ensure replication of the full6 power digital television applicant’s service

7 area, as provided for in sections 73.622

8 and 73.623 of the Commission’s regula9 tions (47 CFR 73.622, 73.623); and

10 ‘‘(ii) to permit maximization of a full11 power digital television applicant’s service

12 area consistent with such sections 73.622

13 and 73.623,

14 if such applicant has filed an application for

15 maximization or a notice of its intent to seek

16 such maximization by December 31, 1999, and

17 filed a bona fide application for maximization

18 by May 1, 2000. Any such applicant shall com19 ply with all applicable Commission rules regard20 ing the construction of digital television facili21 ties.

22 ‘‘(E) CHANGE APPLICATIONS.—If a station

23 that is awarded a construction permit to maxi24 mize or significantly enhance its digital tele25 vision service area, later files a change applica-
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1 tion to reduce its digital television service area,

2 the protected contour of that station shall be

3 reduced in accordance with such change modi4 fication.

5 ‘‘(2) QUALIFYING LOW-POWER TELEVISION STA6 TIONS.—For purposes of this subsection, a station is

7 a qualifying low-power television station if—

8 ‘‘(A)(i) during the 90 days preceding the

9 date of the enactment of the Community

10 Broadcasters Protection Act of 1999—

11 ‘‘(I) such station broadcast a min12 imum of 18 hours per day;

13 ‘‘(II) such station broadcast an aver14 age of at least 3 hours per week of pro15 gramming that was produced within the

16 market area served by such station, or the

17 market area served by a group of com18 monly controlled low-power stations that

19 carry common local programming produced

20 within the market area served by such

21 group; and

22 ‘‘(III) such station was in compliance

23 with the Commission’s requirements appli24 cable to low-power television stations; and
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1 ‘‘(ii) from and after the date of its applica2 tion for a class A license, the station is in com3 pliance with the Commission’s operating rules

4 for full-power television stations; or

5 ‘‘(B) the Commission determines that the

6 public interest, convenience, and necessity

7 would be served by treating the station as a

8 qualifying low-power television station for pur9 poses of this section, or for other reasons deter10 mined by the Commission.

11 ‘‘(3) COMMON OWNERSHIP.—No low-power tele12 vision station authorized as of the date of the enact13 ment of the Community Broadcasters Protection Act

14 of 1999 shall be disqualified for a class A license

15 based on common ownership with any other medium

16 of mass communication.

17 ‘‘(4) ISSUANCE OF LICENSES FOR ADVANCED

18 TELEVISION SERVICES TO TELEVISION TRANSLATOR

19 STATIONS AND QUALIFYING LOW-POWER TELEVISION

20 STATIONS.—The Commission is not required to issue

21 any additional license for advanced television serv22 ices to the licensee of a class A television station

23 under this subsection, or to any licensee of any tele24 vision translator station, but shall accept a license

25 application for such services proposing facilities that
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1 will not cause interference to the service area of any

2 other broadcast facility applied for, protected, per3 mitted, or authorized on the date of filing of the ad4 vanced television application. Such new license or

5 the original license of the applicant shall be forfeited

6 after the end of the digital television service transi7 tion period, as determined by the Commission. A li8 censee of a low-power television station or television

9 translator station may, at the option of licensee,

10 elect to convert to the provision of advanced tele11 vision services on its analog channel, but shall not

12 be required to convert to digital operation until the

13 end of such transition period.

14 ‘‘(5) NO PREEMPTION OF SECTION 337.—Noth15 ing in this subsection preempts or otherwise affects

16 section 337 of this Act.

17 ‘‘(6) INTERIM QUALIFICATION.—

18 ‘‘(A) STATIONS OPERATING WITHIN CER19 TAIN BANDWIDTH.—The Commission may not

20 grant a class A license to a low-power television

21 station for operation between 698 and 806

22 megahertz, but the Commission shall provide to

23 low-power television stations assigned to and

24 temporarily operating in that bandwidth the op25 portunity to meet the qualification requirements
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1 for a class A license. If such a qualified appli2 cant for a class A license is assigned a channel

3 within the core spectrum (as such term is de4 fined in MM Docket No. 87–286, February 17,

5 1998), the Commission shall issue a class A li6 cense simultaneously with the assignment of

7 such channel.

8 ‘‘(B) CERTAIN CHANNELS OFF-LIMITS.—

9 The Commission may not grant under this sub10 section a class A license to a low-power tele11 vision station operating on a channel within the

12 core spectrum that includes any of the 175 ad13 ditional channels referenced in paragraph 45 of

14 its February 23, 1998, Memorandum Opinion

15 and Order on Reconsideration of the Sixth Re16 port and Order (MM Docket No. 87–268).

17 Within 18 months after the date of the enact18 ment of the Community Broadcasters Protec19 tion Act of 1999, the Commission shall identify

20 by channel, location, and applicable technical

21 parameters those 175 channels.

22 ‘‘(7) NO INTERFERENCE REQUIREMENT.—The

23 Commission may not grant a class A license, nor ap24 prove a modification of a class A license, unless the

25 applicant or licensee shows that the class A station
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1 for which the license or modification is sought will

2 not cause—

3 ‘‘(A) interference within—

4 ‘‘(i) the predicted Grade B contour

5 (as of the date of the enactment of the

6 Community Broadcasters Protection Act of

7 1999, or November 1, 1999, whichever is

8 later, or as proposed in a change applica9 tion filed on or before such date) of any

10 television station transmitting in analog

11 format; or

12 ‘‘(ii)(I) the digital television service

13 areas provided in the DTV Table of Allot14 ments; (II) the areas protected in the

15 Commission’s digital television regulations

16 (47 CFR 73.622(e) and (f )); (III) the dig17 ital television service areas of stations sub18 sequently granted by the Commission prior

19 to the filing of a class A application; and

20 (IV) stations seeking to maximize power

21 under the Commission’s rules, if such sta22 tion has complied with the notification re23 quirements in paragraph (1)(D);
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1 ‘‘(B) interference within the protected con2 tour of any low-power television station or low3 power television translator station that—

4 ‘‘(i) was licensed prior to the date on

5 which the application for a class A license,

6 or for the modification of such a license,

7 was filed;

8 ‘‘(ii) was authorized by construction

9 permit prior to such date; or

10 ‘‘(iii) had a pending application that

11 was submitted prior to such date; or

12 ‘‘(C) interference within the protected con13 tour of 80 miles from the geographic center of

14 the areas listed in section 22.625(b)(1) or

15 90.303 of the Commission’s regulations (47

16 CFR 22.625(b)(1) and 90.303) for frequencies

17 in—

18 ‘‘(i) the 470–512 megahertz band

19 identified in

20 section 22.621 or 90.303 of such regula21 tions; or

22 ‘‘(ii) the 482–488 megahertz band in

23 New York.

24 ‘‘(8) PRIORITY FOR DISPLACED LOW-POWER

25 STATIONS.—Low-power stations that are displaced
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1 by an application filed under this section shall have

2 priority over other low-power stations in the assign3 ment of available channels.’’.

4 TITLE VI—SUPERFUND

5 RECYCLING EQUITY

6 SEC. 6001. SUPERFUND RECYCLING EQUITY.

7 (a) PURPOSES.—The purposes of this section are—

8 (1) to promote the reuse and recycling of scrap

9 material in furtherance of the goals of waste mini10 mization and natural resource conservation while

11 protecting human health and the environment;

12 (2) to create greater equity in the statutory

13 treatment of recycled versus virgin materials; and

14 (3) to remove the disincentives and impedi15 ments to recycling created as an unintended con16 sequence of the 1980 Superfund liability provisions.

17 (b) CLARIFICATION OF LIABILITY UNDER CERCLA

18 FOR RECYCLING TRANSACTIONS.—

19 (1) CLARIFICATION.—Title I of the Comprehen20 sive Environmental Response, Compensation, and

21 Liability Act of 1980 (42 U.S.C. 9601 et seq.) is

22 amended by adding at the end the following new sec23 tion:

24 ‘‘SEC. 127. RECYCLING TRANSACTIONS.

25 ‘‘(a) LIABILITY CLARIFICATION.—
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1 ‘‘(1) As provided in subsections (b), (c), (d),

2 and (e), a person who arranged for recycling of recy3 clable material shall not be liable under sections

4 107(a)(3) and 107(a)(4) with respect to such mate5 rial.

6 ‘‘(2) A determination whether or not any per7 son shall be liable under section 107(a)(3) or section

8 107(a)(4) for any material that is not a recyclable

9 material as that term is used in subsections (b) and

10 (c), (d), or (e) of this section shall be made, without

11 regard to subsections (b), (c), (d), or (e) of this sec12 tion.

13 ‘‘(b) RECYCLABLE MATERIAL DEFINED.—For pur14 poses of this section, the term ‘recyclable material’ means

15 scrap paper, scrap plastic, scrap glass, scrap textiles,

16 scrap rubber (other than whole tires), scrap metal, or

17 spent lead-acid, spent nickel-cadmium, and other spent

18 batteries, as well as minor amounts of material incident

19 to or adhering to the scrap material as a result of its nor20 mal and customary use prior to becoming scrap; except

21 that such term shall not include—

22 ‘‘(1) shipping containers of a capacity from 30

23 liters to 3,000 liters, whether intact or not, having

24 any hazardous substance (but not metal bits and

25 pieces or hazardous substance that form an integral
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1 part of the container) contained in or adhering

2 thereto; or

3 ‘‘(2) any item of material that contained poly4 chlorinated biphenyls at a concentration in excess of

5 50 parts per million or any new standard promul6 gated pursuant to applicable Federal laws.

7 ‘‘(c) TRANSACTIONS INVOLVING SCRAP PAPER,

8 PLASTIC, GLASS, TEXTILES, OR RUBBER.—Transactions

9 involving scrap paper, scrap plastic, scrap glass, scrap tex10 tiles, or scrap rubber (other than whole tires) shall be

11 deemed to be arranging for recycling if the person who

12 arranged for the transaction (by selling recyclable material

13 or otherwise arranging for the recycling of recyclable ma14 terial) can demonstrate by a preponderance of the evi15 dence that all of the following criteria were met at the

16 time of the transaction:

17 ‘‘(1) The recyclable material met a commercial

18 specification grade.

19 ‘‘(2) A market existed for the recyclable mate20 rial.

21 ‘‘(3) A substantial portion of the recyclable ma22 terial was made available for use as feedstock for the

23 manufacture of a new saleable product.

24 ‘‘(4) The recyclable material could have been a

25 replacement or substitute for a virgin raw material,
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1 or the product to be made from the recyclable mate2 rial could have been a replacement or substitute for

3 a product made, in whole or in part, from a virgin

4 raw material.

5 ‘‘(5) For transactions occurring 90 days or

6 more after the date of enactment of this section, the

7 person exercised reasonable care to determine that

8 the facility where the recyclable material was han9 dled, processed, reclaimed, or otherwise managed by

10 another person (hereinafter in this section referred

11 to as a ‘consuming facility’) was in compliance with

12 substantive (not procedural or administrative) provi13 sions of any Federal, State, or local environmental

14 law or regulation, or compliance order or decree

15 issued pursuant thereto, applicable to the handling,

16 processing, reclamation, storage, or other manage17 ment activities associated with recyclable material.

18 ‘‘(6) For purposes of this subsection, ‘reason19 able care’ shall be determined using criteria that in20 clude (but are not limited to)—

21 ‘‘(A) the price paid in the recycling trans22 action;

23 ‘‘(B) the ability of the person to detect the

24 nature of the consuming facility’s operations

25 concerning its handling, processing, reclama-
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1 tion, or other management activities associated

2 with recyclable material; and

3 ‘‘(C) the result of inquiries made to the ap4 propriate Federal, State, or local environmental

5 agency (or agencies) regarding the consuming

6 facility’s past and current compliance with sub7 stantive (not procedural or administrative) pro8 visions of any Federal, State, or local environ9 mental law or regulation, or compliance order

10 or decree issued pursuant thereto, applicable to

11 the handling, processing, reclamation, storage,

12 or other management activities associated with

13 the recyclable material. For the purposes of this

14 paragraph, a requirement to obtain a permit

15 applicable to the handling, processing, reclama16 tion, or other management activity associated

17 with the recyclable materials shall be deemed to

18 be a substantive provision.

19 ‘‘(d) TRANSACTIONS INVOLVING SCRAP METAL.—

20 ‘‘(1) Transactions involving scrap metal shall be

21 deemed to be arranging for recycling if the person

22 who arranged for the transaction (by selling recycla23 ble material or otherwise arranging for the recycling

24 of recyclable material) can demonstrate by a prepon-
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1 derance of the evidence that at the time of the

2 transaction—

3 ‘‘(A) the person met the criteria set forth

4 in subsection (c) with respect to the scrap

5 metal;

6 ‘‘(B) the person was in compliance with

7 any applicable regulations or standards regard8 ing the storage, transport, management, or

9 other activities associated with the recycling of

10 scrap metal that the Administrator promulgates

11 under the Solid Waste Disposal Act subsequent

12 to the enactment of this section and with re13 gard to transactions occurring after the effec14 tive date of such regulations or standards; and

15 ‘‘(C) the person did not melt the scrap

16 metal prior to the transaction.

17 ‘‘(2) For purposes of paragraph (1)(C), melting

18 of scrap metal does not include the thermal separa19 tion of 2 or more materials due to differences in

20 their melting points (referred to as ‘sweating’).

21 ‘‘(3) For purposes of this subsection, the term

22 ‘scrap metal’ means bits and pieces of metal parts

23 (e.g., bars, turnings, rods, sheets, wire) or metal

24 pieces that may be combined together with bolts or

25 soldering (e.g., radiators, scrap automobiles, railroad
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1 box cars), which when worn or superfluous can be

2 recycled, except for scrap metals that the Adminis3 trator excludes from this definition by regulation.

4 ‘‘(e) TRANSACTIONS INVOLVING BATTERIES.—

5 Transactions involving spent lead-acid batteries, spent

6 nickel-cadmium batteries, or other spent batteries shall be

7 deemed to be arranging for recycling if the person who

8 arranged for the transaction (by selling recyclable material

9 or otherwise arranging for the recycling of recyclable ma10 terial) can demonstrate by a preponderance of the evi11 dence that at the time of the transaction—

12 ‘‘(1) the person met the criteria set forth in

13 subsection (c) with respect to the spent lead-acid

14 batteries, spent nickel-cadmium batteries, or other

15 spent batteries, but the person did not recover the

16 valuable components of such batteries; and

17 ‘‘(2)(A) with respect to transactions involving

18 lead-acid batteries, the person was in compliance

19 with applicable Federal environmental regulations or

20 standards, and any amendments thereto, regarding

21 the storage, transport, management, or other activi22 ties associated with the recycling of spent lead-acid

23 batteries;

24 ‘‘(B) with respect to transactions involving

25 nickel-cadmium batteries, Federal environmental
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1 regulations or standards are in effect regarding the

2 storage, transport, management, or other activities

3 associated with the recycling of spent nickel-cad4 mium batteries, and the person was in compliance

5 with applicable regulations or standards or any

6 amendments thereto; or

7 ‘‘(C) with respect to transactions involving

8 other spent batteries, Federal environmental regula9 tions or standards are in effect regarding the stor10 age, transport, management, or other activities asso11 ciated with the recycling of such batteries, and the

12 person was in compliance with applicable regulations

13 or standards or any amendments thereto.

14 ‘‘(f) EXCLUSIONS.—

15 ‘‘(1) The exemptions set forth in subsections

16 (c), (d), and (e) shall not apply if—

17 ‘‘(A) the person had an objectively reason18 able basis to believe at the time of the recycling

19 transaction—

20 ‘‘(i) that the recyclable material would

21 not be recycled;

22 ‘‘(ii) that the recyclable material

23 would be burned as fuel, or for energy re24 covery or incineration; or
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1 ‘‘(iii) for transactions occurring before

2 90 days after the date of the enactment of

3 this section, that the consuming facility

4 was not in compliance with a substantive

5 (not procedural or administrative) provi6 sion of any Federal, State, or local envi7 ronmental law or regulation, or compliance

8 order or decree issued pursuant thereto,

9 applicable to the handling, processing, rec10 lamation, or other management activities

11 associated with the recyclable material;

12 ‘‘(B) the person had reason to believe that

13 hazardous substances had been added to the re14 cyclable material for purposes other than proc15 essing for recycling; or

16 ‘‘(C) the person failed to exercise reason17 able care with respect to the management and

18 handling of the recyclable material (including

19 adhering to customary industry practices cur20 rent at the time of the recycling transaction de21 signed to minimize, through source control, con22 tamination of the recyclable material by haz23 ardous substances).

24 ‘‘(2) For purposes of this subsection, an objec25 tively reasonable basis for belief shall be determined
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1 using criteria that include (but are not limited to)

2 the size of the person’s business, customary industry

3 practices (including customary industry practices

4 current at the time of the recycling transaction de5 signed to minimize, through source control, contami6 nation of the recyclable material by hazardous sub7 stances), the price paid in the recycling transaction,

8 and the ability of the person to detect the nature of

9 the consuming facility’s operations concerning its

10 handling, processing, reclamation, or other manage11 ment activities associated with the recyclable mate12 rial.

13 ‘‘(3) For purposes of this subsection, a require14 ment to obtain a permit applicable to the handling,

15 processing, reclamation, or other management activi16 ties associated with recyclable material shall be

17 deemed to be a substantive provision.

18 ‘‘(g) EFFECT ON OTHER LIABILITY.—Nothing in

19 this section shall be deemed to affect the liability of a per20 son under paragraph (1) or (2) of section 107(a).

21 ‘‘(h) REGULATIONS.—The Administrator has the au22 thority, under section 115, to promulgate additional regu23 lations concerning this section.

24 ‘‘(i) EFFECT ON PENDING OR CONCLUDED AC25 TIONS.—The exemptions provided in this section shall not
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1 affect any concluded judicial or administrative action or

2 any pending judicial action initiated by the United States

3 prior to enactment of this section.

4 ‘‘(j) LIABILITY FOR ATTORNEY’S FEES FOR CERTAIN

5 ACTIONS.—Any person who commences an action in con6 tribution against a person who is not liable by operation

7 of this section shall be liable to that person for all reason8 able costs of defending that action, including all reason9 able attorney’s and expert witness fees.

10 ‘‘(k) RELATIONSHIP TO LIABILITY UNDER OTHER

11 LAWS.—Nothing in this section shall affect—

12 ‘‘(1) liability under any other Federal, State, or

13 local statute or regulation promulgated pursuant to

14 any such statute, including any requirements pro15 mulgated by the Administrator under the Solid

16 Waste Disposal Act; or

17 ‘‘(2) the ability of the Administrator to promul18 gate regulations under any other statute, including

19 the Solid Waste Disposal Act.

20 ‘‘(l) LIMITATION ON STATUTORY CONSTRUCTION.—

21 Nothing in this section shall be construed to—

22 ‘‘(1) affect any defenses or liabilities of any per23 son to whom subsection (a)(1) does not apply; or
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1 ‘‘(2) create any presumption of liability against

2 any person to whom subsection (a)(1) does not

3 apply.’’

4 (2) TECHNICAL AMENDMENT.—The table of

5 contents for title I of such Act is amended by adding

6 at the end the following item:

‘‘SEC. 127. Recycling transactions.’’.

Æ