PUBLIC LAW 98-620-NOV. 8, 1984

Public Law 98-620

98th Congress

An Act

To amend title 2R. United States Code, with respect to the places where court shall be Nov. 8, 1984

held in certain judicial districts. and for other purposes. [H.R. 6163]

Be it enacted by the Senate and House of Representatives of the

United States of America in Congress assembled.

TITLE I Trademark

Clarification Act

SHORT TITLE of 1984.

SEC. 101. This title may be cited as the "Trademark Clarification 15 USC 1051.

Act of 1984". note.

AMENDMENT TO THE TRADEMARK ACT

SEC. 102. Section 14(c) of the Trademark Act of 1946, commonly

known as the Lanham Trademark Act (15 U.S.C. 1064(c)) is amended

by adding before the semicolon at the end of such section a period

and the following: "A registered mark shall not be deemed to be the

common descriptive name of goods or services solely because such

mark is also used as a name of or to identify a unique product or

service. The primary significance of the registered mark to the

relevant public rather than purchaser motivation shall be the test

for determining whether the registered mark has become the

common descriptive name of goods or services in connection with

which it has been used".

DEFINITIONS

SEC. 103. Section 45 of such Act (15 U.S.C. 1127) is amended as

follows:

(1) Strike out "The term 'trade-mark' includes any word,

name, symbol, or device or any combination thereof adopted

and used by a manufacturer or merchant to identify his goods

and distinguish them from those manufactured or sold by

others." and insert in lieu thereof the following: "The term

'trademark' includes any word, name, symbol, or device or any

combination thereof adopted and used by a manufacturer or

merchant to identify and distinguish his goods, including a

unique product, from those manufactured or sold by others and

to indicate the source of the goods, even if that source is

unknown.".

(2) Strike out "The term 'service mark' means a mark used in

the sale or advertising of services to identify the services of one

person and distinguish them from the services of others." and

insert in lieu thereof the following: "The term 'service mark'

means a mark used in the sale or advertising of services to

identify and distinguish the services of one person, including a

unique service, from the services of others and to indicate the

source of the services, even if that source is unknown.".

51-139 o - 85 (674)

98 STAT. 3335
PUBLIC LAW 98-620-NOV. 8, 1984

State Justice

Institute Act of

1984.

(3) Add at the end of subparagraph (b) in the paragraph which

begins "A mark shall be deemed to be 'abandoned"', the following new sentence: "Purchaser motivation shall not be a test for

determining abandonment under this subparagraph.".

JUDGMENTS

SEC. 104. Nothing in this title shall be construed to provide a basis

for reopening of any final judgment entered prior to the date of

enactment of this title.

TITLE II

SHORT TITLE

42 USC 10701 SEC. 201. This title may be cited as the "State Justice Institute Act

note. of 1984".

DEFINITIONS

42 USC 10701.

Corporation.

42 USC 10702.

SEC. 202. As used in this title, the term-

(t) "Board" means the Board of Directors of the Institute;

(2) "Director" means the Executive Director of the Institute;

(3) "Governor" means the Chief Executive Officer of a State;

t(4 "Institute" means the State Justice Institute;

(5) "recipient" means any grantee, contractor, or recipient of

financial assistance under this title;

(6) "State" means any State of the United States, the District

of Columbia, the Commonwealth of Puerto Rico, the Virgin

Islands, Guam, American Samoa, the Northern Mariana

Islands, the Trust Territory of the Pacific Islands, and any other

territory or possession of the United States; and

(7) "Supreme Court" means the highest appellate court

within a State unless, for the purposes of this title, a constitutionally or legislatively established judicial council acts in place

of that court.

ESTABLISHMENT OF INSTITUTE; DUTIES

SEC. 203. (a) There is established a private nonprofit corporation

which shall be known as the State Justice Institute. The purpose of

the Institute shall be to further the development and adoption of

improved judicial administration in State courts in the United

States. The Institute may be incorporated in any State pursuant to

section 204(a)(6) of this title. To the extent consistent with the

provisions of this title, the Institute may exercise the powers conferred upon a nonprofit corporation by the laws of the State in

which it is incorporated.

(b( The Institute shall-

(1) direct a national program of assistance designed to assure

each person ready access to a fair and effective system of justice

by providing funds to-

(A) State courts;

(B) national organizations which support and are supported by State courts; and

(C) any other nonprofit organization that will support and

achieve the purposes of this title;

(2) foster coordination and cooperation with the Federal judiciary in areas of mutual concern;

98 STAT. 3336
PUBLIC LAW 98-620-NOV. 8, 1984 91

(3) promote recognition of the importance of the separation of

powers doctrine to an independent judiciary; and

(4) encourage education for judges and support personnel of

State court systems through national and State organizations,

including universities.

(c) The Institute shall not duplicate functions adequately performed by existing nonprofit organizations and shall promote, on

the part of agencies of State judicial administration, responsibility

for the success and effectiveness of State court improvement programs supported by Federal funding.

(d) The Institute shall maintain its principal offices in the State in

which it is incorporated and shall maintain therein a designated

agent to accept service of process for the Institute. Notice to or

service upon the agent shall be deemed notice to or service upon the

Institute.

(e) The Institute, and any program assisted by the Institute, shall

be eligible to be treated as an organization described in section

170(c)(2)(B) of the Internal Revenue Code of 1954 (26 U.S.C.

170(c)(2)(B)) and as an organization described in section 501(c)(3) of

the Internal Revenue Code of 1954 (26 U.S.C. 501(c)(3)) which is

exempt from taxation under section 501(a) of such Code (26 U.S.C.

501(a)). If such treatments are conferred in accordance with the

provisions of such Code, the Institute, and programs assisted by the

Institute, shall be subject to all provisions of such Code relevant to

the conduct of organizations exempt from taxation.

(f) The Institute shall afford notice and reasonable opportunity for

comment to interested parties prior to issuing rules, regulations,

guidelines, and instructions under this title, and it shall publish in

the Federal Register, at least thirty days prior to their effective

date, all rules, regulations, guidelines, and instructions.

BOARD OF DIRECTORS

SEC. 204. (a)(1) The Institute shall be supervised by a Board of

Directors, consisting of eleven voting members to be appointed by

the President, by and with the advice and consent of the Senate. The

Board shall have both judicial and nonjudicial members, and shall,

to the extent practicable, have a membership representing a variety

of backgrounds and reflecting participation and interest in the

administration of justice.

(2) The Board shall consist of-

(A) six judges, to be appointed in the manner provided in

paragraph (3);

(B) one State court administrator, to be appointed in the

manner provided in paragraph (3); and

(C) four members from the public sector, no more than two of

whom shall be of the same political party, to be appointed in the

manner provided in paragraph (4).

(:3) The President shall appoint six judges and one State court

administrator from a list of candidates submitted to the President

by the Conference of Chief Justices. The Conference of Chief Justices shall submit a list of at least fourteen individuals, including

judges and State court administrators, whom the conference considers best qualified to serve on the Board. Whenever the term of any

of the members of the Board described in subparagraphs (A) and (B)

terminates and that member is not to be reappointed to a new term,

and whenever a vacancy otherwise occurs among those members,

8 STAT. 3337

Federal

Register,

publication.

42 USC 10703.
PUBLIC LAW 98-620-NOV. 8, 1984

the President shall appoint a new member from a list of' three

qualified individuals submitted to the President by the Conference

of Chief Justices. The President may reject any list of' individuals

submitted by the Conference under this paragraph and, if such a list

is so rejected, the President shall request the Conference to submit

to him another list of qualified individuals. Prior to consulting with

or submitting a list to the President, the Conference of Chief' Justices shall obtain and consider the recommendations of' all interested organizations and individuals concerned with the administration of justice and the objectives of' this title.

(4) In addition to those members appointed under paragraph (3),

the President shall appoint four members from the public sector to

serve on the Board.

(5) The President shall make the initial appointments of' menmbers

of the Board under this subsection within ninety days after the

effective date of this title. In the case of' any other appointment of' a

member, the President shall make the appointment not later than

ninety days after the previous term expires or the vacancy occurs, as

the case may be. The Conference of' Chief Justices shall submit lists

of' candidates under paragraph !:3) in a timely manner so that the

appointments can be made within the time periods specified in this

paragraph.

((i) The initial members of' the Board of' Directors shall be the

incorporators of' the Institute and shall determine the State in

which the Institute is to be incorporated. b)(l1) Except as provided in paragraph (2), the term of each voting member of the Board shall be three years. Each member of' the

Board shall continue to serve until the successor to such member

has been appointed and qualified.

(2) Five of' the members first appointed by the President shall

serve for a term of' two years. Any member appointed to serve an

unexpired term which has arisen by virtue of' the death, disability, retirement, or resignation of a member shall be appointed only for

such unexpired term, but shall be eligible for reappointment. (3) The term of initial members shall commence from the date of'

the first meeting of' the Board, and the term of each member other

than an initial member shall commence from the date of' termination of' the preceding term.

Prohibition. (c) No member shall be reappointed to more than two consecutive

terms immediately following such member's initial term.

(d) Members of' the Board shall serve without compensation, but

shall be reimbursed for actual and necessary expenses incurred in

the performance of their official duties.

(e) The members of the Board shall not, by reason of such membership, be considered officers or employees of' the United States.

(f) Each member of' the Board shall be entitled to one vote. A

simple majority of the membership shall constitute a quorum for the

conduct of business. The Board shall act upon the concurrence of' a

simple majority of the membership present and voting. (gi The Board shall select from among the voting members of the

Board a chairman, the first of' whom shall serve for a term of three

years. Thereafter, the Board shall annually elect a chairman from

among its voting members.

(h) A member of the Board may be removed by a vote of' seven

members for malfeasance in of'fice, persistent neglect of. or inability

to discharge duties, or for any offense involving moral turpitude. but

for no other cause.

98 STAT. 3338
PUBLIC LAW 98-620-NOV. 8, 1984

(i) Regular meetings of the Board shall be held quarterly. Special

meetings shall be held from time to time upon the call of the

chairman, acting at his own discretion or pursuant to the petition of

any seven members.

(j) All meetings of the Board, any executive committee of the

Board, and any council established in connection with this title,

shall be open and subject to the requirements and provisions of

section 552b of title 5, United States Code, relating to open meetings.

(k) In its direction and supervision of the activities of the Institute,

the Board shall-

(1) establish policies and develop such programs for the Institute that will further the achievement of its purpose and performance of its functions;

(2) establish policy and funding priorities and issue rules,

regulations, guidelines, and instructions pursuant to such

priorities;

(3) appoint and fix the duties of the Executive Director of the

Institute, who shall serve at the pleasure of the Board and shall

be a nonvoting ex officio member of the Board;

(4) present to other Government departments, agencies, and

instrumentalities whose programs or activities relate to the

administration of justice in the State judiciaries of the United

States, the recommendations of the Institute for the improvement of such programs or activities;

(5) consider and recommend to both public and private agencies aspects of the operation of the State courts of the United

States considered worthy of special study; and

(6) award grants and enter into cooperative agreements or

contracts pursuant to section 206(a).

OFFICERS AND EMPLOYEES

SEC. 205. (a)(1) The Director, subject to general policies established

by the Board, shall supervise the activities of persons employed by

the Institute and may appoint' and remove such employees as he

determines necessary to carry out the purposes of the Institute. The

Director shall be responsible for the executive and administrative

operations of the Institute, and shall perform such duties as are

delegated to such Director by the Board and the Institute.

(2) No political test or political qualification shall be used in

selecting, appointing, promoting, or taking any other personnel

action with respect to any officer, agent, or employee of the Institute, or in selecting or monitoring any grantee, contractor, person,

or entity receiving financial assistance under this title.

(b) Officers and employees of the Institute shall be compensated at

rates determined by the Board, but not in excess of the rate of level

V of the Executive Schedule specified in section 5316 of title 5,

United States Code.

(c)(1) Except as otherwise specifically provided in this title, the

Institute shall not be considered a department, agency, or instrumentality of the Federal Government.

(2) This title does not limit the authority of the Office of Management and Budget to review and submit comments upon the Institute's annual budget request at the time it is transmitted to the

Congress.

42 USC 10704.

98 STAT. 3339
PUBLIC LAW 98-620-NOV. 8, 1984

5 USC 8101, 8301 et seq.,

8701 et seq.,

8901 et seq.

42 USC 10705.

Research and

development.

Public

information.

Education.

Education.

(d)(1) Except as provided in paragraph (21, officers and employees

of' the Institute shall not be considered officers or employees of' the

United States.

(2) Officers and employees of the Institute shall be considered

officers and employees of the United States solely for the purposes of'

the following provisions of' title 5, United States Code: Subchapter I

of' chapter 81 (relating to compensation for work injuries>; chapter

83 (relating to civil service retirement); chapter 87 (relating to life

insurance); and chapter 8) (relating to health insurance). The Institute shall make contributions under the provisions referred to in

this subsection at the same rates applicable to agencies of the

Federal Government.

(e) The Institute and its officers and employees shall be subject to

the provisions of' section 5)2 of' title 5, United States Code, relating

to freedom of information.

GRANTS AND CONTRACTS

SEC. 206. (a) The Institute is authorized to award grants and enter

into cooperative agreements or contracts, in a manner consistent

with subsection (b), in order to-

(1) conduct research, demonstrations, or special projects pertaining to the purposes described in this title, and provide

technical assistance and training in support of tests, demonstrations, and special projects;

(2) serve as a clearinghouse and information center, where

not otherwise adequately provided, for the preparation, publication, and dissemination of information regarding State judicial

systems;

(3) participate in joint projects with other agencies, including

the Federal Judicial Center, with respect to the purposes of this

title;

(4) evaluate, when appropriate, the programs and projects

carried out under this title to determine their impact upon the

quality of criminal, civil, and juvenile justice and the extent to

which they have met or failed to meet the purposes and policies

of this title;

(5) encourage and assist in the furtherance of judicial

education;

(6) encourage, assist, and serve in a consulting capacity to

State and local justice system agencies in the development,

maintenance, and coordination of criminal, civil, and juvenile

justice programs and services; and

(7) be responsible for the certification of national programs

that are intended to aid and improve State judicial systems.

(b) The Institute is empowered to award grants and enter into

cooperative agreements or contracts as follows:

(1) The Institute shall give priority to grants, cooperative

agreements, or contracts with-

(A) State and local courts and their agencies,

(B) national nonprofit organizations controlled by, operating in conjunction with, and serving the judicial branches of

State governments; and

(C) national nonprofit organizations for the education and

training of judges and support personnel of the judicial

branch of State governments.

98 STAT. 3340
PUBLIC LAW 98-620-NOV. 8, 1984

(2) The Institute may, if the objective can better be served

thereby, award grants or enter into cooperative agreements or

contracts with-

(A) other nonprofit organizations with expertise in judicial administration;

(B) institutions of higher education; Education.

(C) individuals, partnerships, firms, or corporations; and

(D) private agencies with expertise in judicial administration.

(3) Upon application by an appropriate Federal, State, or local

agency or institution and if the arrangements to be made by

such agency or institution will provide services which could not

be provided adequately through nongovernmental arrangements, the Institute may award a grant or enter into a cooperative agreement or contract with a unit of Federal, State, or local

government other than a court.

(4) Each application for funding by a State or local court shall

be approved, consistent with State law, by the State's supreme

court, or its designated agency or council, which shall receive,

administer, and be accountable for all funds awarded by the

Institute to such courts.

(c) Funds available pursuant to grants, cooperative agreements, or

contracts awarded under this section may be usedl1) to assist State and local court systems in establishing

appropriate procedures for the selection and removal of judges

and other court personnel and in determining appropriate

levels of compensation;

(2) to support education and training programs for judges and Education.

other court personnel, for the performance of their general

duties and for specialized functions, and to support national and

regional conferences and seminars for the dissemination of

information on new developments and innovative techniques;

(:3) to conduct research on alternative means for using nonju- Research and

dicial personnel in court decisionmaking activities, to imple- development.

ment demonstration programs to test innovative approaches,

and to conduct evaluations of their effectiveness;

(4) to assist State and local courts in meeting requirements of

Federal law applicable to recipients of Federal funds;

(5) to support studies of the appropriateness and efficacy of

court organizations and financing structures in particular

States, and to enable States to implement plans for improved

court organization and finance;

(6) to support State court planning and budgeting staffs and to

provide technical assistance in resource allocation and service

forecasting techniques;

(7) to support studies of the adequacy of court management

systems in State and local courts and to implement and evaluate innovative responses to problems of record management,

data processing, court personnel management, reporting and

transcription of court proceedings, and juror utilization and

management;

IS) to collect and compile statistical data and other information on the work of the courts and on the work of other agencies

which relate to and effect the work of courts;

I!)} to conduct studies of the causes of trial and appellate court

delay in resolving cases, and to establish and evaluate experimental programs for reducing case processing time;

98 STAT. 3341
PUBLIC LAW 98-620-NOV. 8,1984

(10) to develop and test methods for measuring the performance of' judges and courts and to conduct experiments in the use

of such measures to improve the functioning of such judges and

courts;

( 11 to support studies of court rules and procedures, discovery

devices, and evidentiary standards, to identify problems with

the operation of such rules, procedures, devices, and standards,

to devise alternative approaches to better reconcile the requirements of due process with the need for swift and certain justice,

and to test the utility of those alternative approaches;

(12) to support studies of the outcomes of cases in selected

subject matter areas to identify instances in which the substance of justice meted out by the courts diverges from public

expectations of fairness, consistency, or equity, to propose alternative approaches to the resolving of cases in problem areas,

and to test and evaluate those alternatives;

(13) to support programs to increase court responsiveness to

the needs of citizens through citizen education, improvement of

court treatment of witnesses, victims, and jurors, and development of procedures for obtaining and using measures of public

satisfaction with court processes to improve court performance;

(14) to test and evaluate experimental approaches to providing increased citizen access to justice, including processes which

reduce the cost of litigating common grievances and alternative

techniques and mechanisms for resolving disputes between citizens; and

(15) to carry out such other programs, consistent with the

purposes of this title, as may be deemed appropriate by the

Institute.

(d) The Institute shall incorporate in any grant, cooperative agreement, or contract awarded under this section in which a State or

local judicial system is the recipient, the requirement that the

recipient provide a match, from private or public sources, not less

than 50) per centum of the total cost of such grant, cooperative

agreement, or contract, except that such requirement may be

waived in exceptionally rare circumstances upon the approval of the

chief justice of the highest court of' the State and a majority of the

Board of' Directors.

(e) The Institute shall monitor and evaluate, or provide for independent evaluations of, programs supported in whole or in part

under this title to ensure that the provisions of this title, the bylaws

of the Institute, and the applicable rules, regulations, and guidelines

promulgated pursuant to this'title, are carried out.

Study. (f) The Institute shall provide for an independent study of the

financial and technical assistance programs under this title.

LIMITATIONS ON GRANTS AND CONTRACTS

42 USC 10706. SEC. 207. (a) With respect to grants made and contracts or cooperative agreements entered into under this title, the Institute shallt1l ensure that no funds made available to recipients by the

Institute shall be used at any time, directly or indirectly, to

influence the issuance, amendment, or revocation of any Executive order or similar promulgation by any Federal, State. or

local agency. or to undertake to influence the passage or defeat

of' any legislation or constitutional amendment by the Congress

of the United States, or by any State or local legislative body, or

98 STAT. 3342
PUBLIC LAW 98-620-NOV. 8, 1984

any State proposal by initiative petition, or of any referendum,

unless a governmental agency, legislative body, a committee, or

a member thereof-

(A) requests personnel of the recipients to testify, draft, or

review measures or to make representations to such

agency, body, committee, or member; or

(B) is considering a measure directly affecting the activities under this title of the recipient or the Institute;

(2) ensure all personnel engaged in grant, cooperative agreement or contract assistance activities supported in whole or part

by the Institute refrain, while so engaged, from any partisan

political activity; and

(3) ensure that each recipient that files with the Institute a

timely application for refunding is provided interim funding

necessary to maintain its current level of activities until-

(A) the application for refunding has been approved and

funds pursuant thereto received; or

(B) the application for refunding has been finally denied

in accordance with section 9 of this title.

(b) No funds made available by the Institute under this title,

either by grant, cooperative agreement, or contract, may be used to

support or conduct training programs for the purpose of advocating

particular nonjudicial public policies or encouraging nonjudicial

political activities.

(c) The authorization to enter into cooperative agreements, contracts or any other obligation under this title shall be effective only

to the extent, and in such amounts, as are provided in advance in

appropriation Acts.

(d) To ensure that funds made available under this Act are used to

supplement and improve the operation of State courts, rather than

to support basic court services, funds shall not be used-

(1) to supplant State or local funds currently supporting a

program or activity; or

(2) to construct court facilities or structures, except to

remodel existing facilities to demonstrate new architectural or

technological techniques, or to provide temporary facilities for

new personnel or for personnel involved in a demonstration or

experimental program.

RESTRICTIONS ON ACTIVITIES OF THE INSTITUTE

SEC. 208. (a) The Institute shall not- 42 USC 10707.

(1) participate in litigation unless the Institute or a recipient

of the Institute is a party, and shall not participate on behalf of

any client other than itself;

(2) interfere with the independent nature of any State judicial

system or allow financial assistance to be used for the funding

of regular judicial and administrative activities of any State

judicial system other than pursuant to the terms of any grant,

cooperative agreement, or contract with the Institute, consistent with the requirements of this title; or

(3) undertake to influence the passage or defeat of any legislation by the Congress of the United States or by any State or

local legislative body, except that personnel of the Institute may

testify or make other appropriate communication-

(A) when formally requested to do so by a legislative

body, committee, or a member thereof;

51-139 0 - 85 -- 2 (674)

98 STAT. 3343
PUBLIC LAW 98-620-NOV. 8, 1984

(B) in connection with legislation or appropriations

directly affecting the activities of the Institute; or

(C) in connection with legislation or appropriations dealing with improvements in the State judiciary, consistent

with the provisions of this title.

(b)(1) The Institute shall have no power to issue any shares of

stock, or to declare or pay any dividends.

(2) No part of the income or assets of the Institute shall enure to

the benefit of any director, officer, or employee, except as reasonable

compensation for services or reimbursement for expenses.

(3) Neither the Institute nor any recipient shall contribute or

make available Institute funds or program personnel or equipment

to any political party or association, or the campaign of any candidate for public or party office.

(4) The Institute shall not contribute or make available Institute

funds or program personnel or equipment for use in advocating or

opposing any ballot measure, initiative, or referendum.

(c) Officers and employees of the Institute or of recipients shall not

at any time intentionally identify the Institute or the recipient with

any partisan or nonpartisan political activity associated with a

political party or association, or the campaign of any candidate for

public or party office.

SPECIAL PROCEDURES

SEC. 209. The Institute shall prescribe procedures to ensure that-

(1) financial assistance under this title shall not be suspended unless the grantee, contractor, person, or entity receiving financial assistance under this title has been given reasonable notice

and opportunity to show cause why such actions should not be

taken; and

(2) financial assistance under this title shall not be terminated, an application for refunding shall not be denied, and a

suspension of financial assistance shall not be continued for

longer than thirty days, unless the recipient has been afforded

reasonable notice and opportunity for a timely, full, and fair

hearing, and, when requested, such hearing shall be conducted

by an independent hearing examiner. Such hearing shall be

held prior to any final decision by the Institute to terminate

financial assistance or suspend or deny funding. Hearing examiners shall be appointed by the Institute in accordance with

procedures established in regulations promulgated by the

Institute.

PRESIDENTIAL COORDINATION

SEC. 210. The President may, to the extent not inconsistent with

any other applicable law, direct that appropriate support functions

of the Federal Government may be made available to the Institute

in carrying out its functions under this title.

RECORDS AND REPORTS

SEC. 211. (a) The Institute is authorized to require such reports as

it deems necessary from any recipient with respect to activities

carried out pursuant to this title.

(b) The Institute is authorized to prescribe the keeping of records

with respect to funds provided by any grant, cooperative agreement,

42 USC 10708.

42 USC 10709.

42 USC 10710.

98 STAT. 3344
PUBLIC LAW 98-620-NOV. 8, 1984

or contract under this title and shall have access to such records at

all reasonable times for the purpose of ensuring compliance with

such grant, cooperative agreement, or contract or the terms and

conditions upon which financial assistance was provided.

(c) Copies of all reports pertinent to the evaluation, inspection, or

monitoring of any recipient shall be submitted on a timely basis to

such recipient, and shall be maintained in the principal office of the

Institute for a period of at least five years after such evaluation,

inspection, or monitoring. Such reports shall be available for public Public

inspection during regular business hours, and copies shall be fur- availability.

nished, upon request, to interested parties upon payment of such

reasonable fees as the Institute may establish.

(d) Non-Federal funds received by the Institute, and funds received for projects funded in part by the Institute or by any recipient

from a source other than the Institute, shall be accounted for and

reported as receipts and disbursements separate and distinct from

Federal funds.

AUDITS

SEC. 212. (a)(1) The accounts of the Institute shall be audited 42 USC 10711.

annually. Such audits shall be conducted in accordance with generally accepted auditing standards by independent certified public

accountants who are certified by a regulatory authority of the

jurisdiction in which the audit is undertaken.

(2) The audits shall be conducted at the place or places where the

accounts of the Institute are normally kept. All books, accounts,

financial records, reports, files, and other papers or property belonging to or in use by the Institute and necessary to facilitate the audits

shall be made available to the person or persons conducting the

audits. The full facilities for verifying transactions with the balances and securities held by depositories, fiscal agents, and custodians shall be afforded to any such person.

(3) The report of the annual audit shall be filed with the General Report.

Accounting Office and shall be available for public inspection during Public

business hours at the principal office of the Institute. availability.

(b)(l) In addition to the annual audit, the financial transactions of

the Institute for any fiscal year during which Federal funds are

available to finance any portion of its operations may be audited by

the General Accounting Office in accordance with such rules and

regulations as may be prescribed by the Comptroller General of the

United States.

(2) Any such audit shall be conducted at the place or places where

accounts of the Institute are normally kept. The representatives of

the General Accounting Office shall have access to all books, accounts, financial records, reports, files, and other papers or property

belonging to or in use by the Institute and necessary to facilitate the

audit. The full facilities for verifying transactions with the balances

and securities held by depositories, fiscal agents, and custodians

shall be afforded to such representatives. All such books, accounts,

financial records, reports, files, and other papers or property of the

Institute shall remain in the possession and custody of the Institute

throughout the period beginning on the date such possession or

custody commences and ending three years after such date, but the

General Accounting Office may require the retention of such books,

accounts, financial records, reports, files, and other papers or property for a longer period under section 3523(c) of title 31, United

States Code.

98 STAT. 3345
PUBLIC LAW 98-620-NOV. 8, 1984

Report. (3) A report of such audit shall be made by the Comptroller

General to the Congress and to the Attorney General, together with

such recommendations with respect thereto as the Comptroller

General deems advisable.

Reports. (c)(1) The Institute shall conduct, or require each recipient to

provide for, an annual fiscal audit. The report of each such audit

shall be maintained for a period of at least five years at the

principal office of the Institute.

(2) The Institute shall submit to the Comptroller General of the

United States copies of such reports, and the Comptroller General

may, in addition, inspect the books, accounts, financial records, files,

and other papers or property belonging to or in use by such grantee,

contractor, person, or entity, which relate to the disposition or use of

Public funds received from the Institute. Such audit reports shall be availavailability, able for public inspection during regular business hours, at the

principal office of the Institute.

REPORT BY ATTORNEY GENERAL

42 USC 10712. SEC. 213. On October 1, 1987, the Attorney General, in consultation with the Federal Judicial Center, shall transmit to the

Committees on the Judiciary of the Senate and the House of Representatives a report on the effectiveness of the Institute in carrying

out the duties specified in section 203(b). Such report shall include

an assessment of the cost effectiveness of the program as a whole

and, to the extent practicable, of individual grants, an assessment of

whether the restrictions and limitations specified in sections 207

and 208 have been respected, and such recommendations as the

Attorney General, in consultation with the Federal Judicial Center,

deems appropriate.

AMENDMENTS TO OTHER LAWS

SEC. 214. Section 620(b) of title 28, United States Code, is amended

by-

(1) striking out "and" at the end of paragraph (3);

(2) striking out the period at the end of paragraph (4) and

inserting in lieu thereof "; and"; and

(3) inserting the following new paragraph (5) at the end

thereof:

"(5) Insofar as may be consistent with the performance of the

other functions set forth in this section, to cooperate with the State

Justice Institute in the establishment and coordination of research

and programs concerning the administration of justice.".

AUTHORIZATIONS

42 USC 10713. SEC. 215. There are authorized to be appropriated to carry out the

purposes of this title, $13,000,000 for fiscal year 1986, $15,000,000 for

fiscal year 1987, and $15,000,000 for fiscal year 1988.

EFFECTIVE DATE

42 USC 10701 SEC. 216. The provisions of this title shall take effect on October 1,

note. 1985.

98 STAT. 3346
PUBLIC LAW 98-620-NOV. 8, 1984

TITLE III Semiconductor

Chip Protection

SHORT TITLE Act of 1984.

SEC. 301. This title may be cited as the "Semiconductor Chip 17 USC 901 note.

Protection Act of 1984".

PROTECTION OF SEMICONDUCTOR CHIP PRODUCTS

SEC. 302. Title 17, United States Code, is amended by adding at the Computers.

end thereof the following new chapter: Copyrights.

"CHAPTER 9-PROTECTION OF SEMICONDUCTOR

CHIP PRODUCTS

"Sec.

"901. Definitions.

"902. Subject matter of protection.

"903. Ownership and transfer.

"904. Duration of protection.

"905. Exclusive rights in mask works.

"906. Limitation on exclusive rights: reverse engineering; first sale.

"907. Limitation on exclusive rights: innocent infringement.

"908. Registration of claims of protection.

"909. Mask work notice.

"910. Enforcement of exclusive rights.

"911. Civil actions.

"912. Relation to other laws.

"913. Transitional provisions.

"914. International transitional provisions.

"§ 901. Definitions 17 USC 901.

"(a) As used in this chapter-

"(1) a 'semiconductor chip product' is the final or intermediate form of any product-

"(A) having two or more layers of metallic, insulating, or

semiconductor material, deposited or otherwise placed on,

or etched away or otherwise removed from, a piece of

semiconductor material in accordance with a predetermined pattern; and

"(B) intended to perform electronic circuitry functions;

"(2) a 'mask work' is a series of related images, however fixed

or encoded-

"(A) having or representing the predetermined, threedimensional pattern of metallic, insulating, or semiconductor material present or removed from the layers of a semiconductor chip product; and

"(B) in which series the relation of the images to one

another is that each image has the pattern of the surface of

one form of the semiconductor chip product;

"(3) a mask work is 'fixed' in a semiconductor chip product

when its embodiment in the product is sufficiently permanent

or stable to permit the mask work to be perceived or reproduced

from the product for a period of more than transitory duration;

"(4) to 'distribute' means to sell, or to lease, bail, or otherwise

transfer, or to offer to sell, lease, bail, or otherwise transfer;

"(5) to 'commercially exploit' a mask work is to distribute to

the public for commercial purposes a semiconductor chip product embodying the mask work; except that such term includes

an offer to sell or transfer a semiconductor chip product only

51-139 0 - 85 -- 3 (674)

98 STAT. 3347
PUBLIC LAW 98-620-NOV. 8, 1984

when the offer is in writing and occurs after the mask work is

fixed in the semiconductor chip product;

"(6) the 'owner' of a mask work is the person who created the

mask work, the legal representative of that person if that

person is deceased or under a legal incapacity, or a party to

whom all the rights under this chapter of such person or

representative are transferred in accordance with section

903(b); except that, in the case of a work made within the scope

of a person's employment, the owner is the employer for whom

the person created the mask work or a party to whom all the

rights under this chapter of the employer are transferred in

accordance with section 903(b);

"(7) an 'innocent purchaser' is a person who purchases a

semiconductor chip product in good faith and without having

notice of protection with respect to the semiconductor chip

product;

"(8) having 'notice of protection' means having actual knowledge that, or reasonable grounds to believe that, a mask work is

protected under this chapter; and

"(9) an 'infringing semiconductor chip product' is a semiconductor chip product which is made, imported, or distributed in

violation of the exclusive rights of the owner of a mask work

under this 'chapter.

"(b) For purposes of this chapter, the distribution or importation

of a product incorporating a semiconductor chip product as a part thereof is a distribution or importation of that semiconductor chip

product.

17 USC 902. "§ 902. Subject matter of protection

"(aXH1) Subject to the provisions of subsection (b), a mask work

fixed in a semiconductor chip product, by or under the authority of

the owner of the mask work, is eligible for protection under this

chapter if-

"(A) on the date on which the mask work is registered under

section 908, or is first commercially exploited anywhere in the

world, whichever occurs first, the owner of the mask work is (i)

a national or domiciliary of the United States, (ii) a national,

domiciliary, or sovereign authority of a foreign nation that is a

party to a treaty affording protection to mask works to which

the United States is also a party, or (iii) a stateless person,

wherever that person may be domiciled;

"(B) the mask work is first commercially exploited in the

United States; or

"(C) the mask work comes within the scope of a Presidential

proclamation issued under paragraph (2).

President "(2) Whenever the President finds that a foreign nation extends, of U.S. to mask works of owners who are nationals or domiciliaries of the

United States protection (A) on substantially the same basis as that

on which the foreign nation extends protection to mask works of its

own nationals and domiciliaries and mask works first commercially

exploited in that nation, or (B) on substantially the same basis as

provided in this chapter, the President may by proclamation extend

protection under this chapter to mask works (i) of owners who are,

on the date on which the mask works are registered under section

908, or the date on which the mask works are first commercially

exploited anywhere in the world, whichever occurs first, nationals,

98 STAT. 3348
PUBLIC LAW 98-620-NOV. 8, 1984

.domiciliaries, or sovereign authorities of that nation, or (ii) which

are first commercially exploited in that nation.

"(b) Protection under this chapter shall not be available for a

mask work that-

"(1) is not original; or

"(2) consists of designs that are staple, commonplace, or familiar in the semiconductor industry, or variations of such designs,

combined in a way that, considered as a whole, is not original.

"(c) In no case does protection under this chapter for a mask work

extend to any idea, procedure, process, system, method of operation,

concept, principle, or discovery, regardless of the form in which it is

described, explained, illustrated, or embodied in such work.

"§ 903. Ownership, transfer, licensing, and recordation 17 usc 903.

"(a) The exclusive rights in a mask work subject to protection

under this chapter belong to the owner of the mask work.

"(b) The owner of the exclusive rights in a mask work may

transfer all of those rights, or license all or less than all of those

rights, by any written instrument signed by such owner or a duly

authorized agent of the owner. Such rights may be transferred or

licensed by operation of law, may be bequeathed by will, and may

pass as personal property by the applicable laws of intestate

succession.

"(c)(1) Any document pertaining to a mask work may be recorded

in the Copyright Office if the document filed for recordation bears

the actual signature of the person who executed it, or if it is

accompanied by a sworn or official certification that it is a true copy

of the original, signed document. The Register of Copyrights shall,

upon receipt of the document and the fee specified pursuant to

section 908(d), record the document and return it with a certificate

of recordation. The recordation of any transfer or license under this

paragraph gives all persons constructive notice of the facts stated in

the recorded document concerning the transfer or license.

"(2) In any case in which conflicting transfers of the exclusive

rights in a mask work are made, the transfer first executed shall be

void as against a subsequent transfer which is made for a valuable

consideration and without notice of the first transfer, unless the

first transfer is recorded in accordance with paragraph (1) within

three months after the date on which it is executed, but in no case

later than the day before the date of such subsequent transfer.

"(d) Mask works prepared by an officer or employee of the United

States Government as part of that person's official duties are not

protected under this chapter, but the United States Government is

not precluded from receiving and holding exclusive rights in mask

works transferred to the Government under subsection (b).

"§ 904. Duration of protection 17 usc 904.

"(a) The protection provided for a mask work under this chapter shall commence on the date on which the mask work is registered under section 908, or the date on which the mask work is first

commercially exploited anywhere in the world, whichever occurs

first.

"(b) Subject to subsection (c) and the provisions of this chapter, the

protection provided under this chapter to a mask work shall end ten

years after the date on which such protection commences under

subsection (a).

98 STAT. 3349
PUBLIC LAW 98-620-NOV. 8, 1984

"(c) All terms of protection provided in this section shall run to

the end of the calendar year in which they would otherwise expire.

17 USC 905. "§ 905. Exclusive rights in mask works

"The owner of a mask work provided protection under this chapter has the exclusive rights to do and to authorize any of the

following:

"(1) to reproduce the mask work by optical, electronic, or any

other means;

"(2) to import or distribute a semiconductor chip product in

which the mask work is embodied; and

"(3) to induce or knowingly to cause another person to do any

of the acts described in paragraphs (1) and (2).

17 USC 906. "§ 906. Limitation on exclusive rights: reverse engineering; first

sale

"(a) Notwithstanding the provisions of section 905, it is not an

infringement of the exclusive rights of the owner of a mask work

for-

"(1) a person to reproduce the mask work solely for the

purpose of teaching, analyzing, or evaluating the concepts or

techniques embodied in the mask work or the circuitry, logic

flow, or organization of components used in the mask work; or

"(2) a person who performs the analysis or evaluation

described in paragraph (1) to incorporate the results of such

conduct in an original mask work which is made to be

distributed.

"(b) Notwithstanding the provisions of section 905(2), the owner of

a particular semiconductor chip product made by the owner of the

mask work, or by any person authorized by the owner of the mask

work, may import, distribute, or otherwise dispose of or use, but not

reproduce, that particular semiconductor chip product without the

authority of the owner of the mask work.

17 USC 907. "§ 907. Limitation on exclusive rights: innocent infringement

"(a) Notwithstanding any other provision of this chapter, an

innocent purchaser of an infringing semiconductor chip product-

"(1) shall incur no liability under this chapter with respect to

the importation or distribution of units of the infringing semiconductor chip product that occurs before the innocent pur- chaser has notice of protection with respect to the mask work

embodied in the semiconductor chip product; and

"(2) shall be liable only for a reasonable royalty on each unit

of the infringing semiconductor chip product that the innocent

purchaser imports or distributes after having notice of protection with respect to the mask work embodied in the semiconductor chip product.

"(b) The amount of the royalty referred to in subsection (a)(2) shall

be determined by the court in a civil action for infringement unless

the parties resolve the issue by voluntary negotiation, mediation, or

binding arbitration.

"(c) The immunity of an innocent purchaser from liability referred to in subsection (a)(1) and the limitation of remedies with

respect to an innocent purchaser referred to in subsection (a)(2)

shall extend to any person who directly or indirectly purchases an

infringing semiconductor chip product from an innocent purchaser.

98 STAT. 3350
PUBLIC LAW 98-620-NOV. 8, 1984

"(d) The provisions of subsections (a), (b), and (c) apply only with

respect to those units of an infringing semiconductor chip product

that an innocent purchaser purchased before having notice of protection with respect to the mask work embodied in the semiconductor chip product.

"§ 908. Registration of claims of protection 17 usc 908.

"(a) The owner of a mask work may apply to the Register of

Copyrights for registration of a claim of protection in a mask work.

Protection of a mask work under this chapter shall terminate if Termination.

application for registration of a claim of protection in the mask

work is not made as provided in this chapter within two years after

the date on which the mask work is first commercially exploited

anywhere in the world.

"(b) The Register of Copyrights shall be responsible for all administrative functions and duties under this chapter. Except for section

708, the provisions of chapter 7 of this title relating to the general 17 USC 701

responsibilities, organization, regulatory authority, actions, records, et seq.

and publications of the Copyright Office shall apply to this chapter,

except that the Register of Copyrights may make such changes as

may be necessary in applying those provisions to this chapter.

"(c) The application for registration of a mask work shall be made

on a form prescribed by the Register of Copyrights. Such form may

require any information regarded by the Register as bearing upon

the preparation or identification of the mask work, the existence or

duration of protection of the mask work under this chapter, or

ownership of the mask work. The application shall be accompanied

by the fee set pursuant to subsection (d) and the identifying material

specified pursuant to such subsection.

"(d) The Register of Copyrights shall by regulation set reasonable Regulations.

fees for the filing of applications to register claims of protection in

mask works under this chapter, and for other services relating to

the administration of this chapter or the rights under this chapter,

taking into consideration the cost of providing those services, the

benefits of a public record, and statutory fee schedules under this

title. The Register shall also specify the identifying material to be

deposited in connection with the claim for registration.

"(e) If the Register of Copyrights, after examining an application

for registration, determines, in accordance with the provisions of

this chapter, that the application relates to a mask work which is

entitled to protection under this chapter, then the Register shall

register the claim of protection and issue to the applicant a certificate of registration of the claim of protection under the seal of the

Copyright Office. The effective date of registration of a claim of Effective date.

protection shall be the date on which an application, deposit of

identifying material, and fee, which are determined by the Register

of Copyrights or by a court of competent jurisdiction to be acceptable

for registration of the claim, have all been received in the Copyright

Office.

"(f) In any action for infringement under this chapter, the certifi- Prima facie

cate of registration of a mask work shall constitute prima facie evidence.

evidence (1) of the facts stated in the certificate, and (2) that the

applicant issued the certificate has met the requirements of this

chapter, and the regulations issued under this chapter, with respect

to the registration of claims.

"(g) Any applicant for registration under this section who is

dissatisfied with the refusal of the Register of Copyrights to issue a

98 STAT. 3351
PUBLIC LAW 98-620-NOV. 8, 1984

certificate of registration under this section may seek judicial

review of that refusal by bringing an action for such review in an

appropriate United States district court not later than sixty days

5 Usc 701 after the refusal. The provisions of chapter 7 of title 5 shall apply to et seq. such judicial review. The failure of the Register of Copyrights to

issue a certificate of registration within four months after an application for registration is filed shall be deemed to be a refusal to issue

a certificate of registration for purposes of this subsection and

section 910(b)(2), except that, upon a showing of good cause, the

district court may shorten such four-month period.

17 USC 909. "§ 909. Mask work notice

"(a) The owner of a mask work provided protection under this

chapter may affix notice to the mask work, and to masks and

semiconductor chip products embodying the mask work, in such

manner and location as to give reasonable notice of such protection.

Regulations. The Register of Copyrights shall prescribe by regulation, as examples, specific methods of affixation and positions of notice for purposes of this section, but these specifications shall not be considered

Prima facie exhaustive. The affixation of such notice is not a condition of

evidence. protection under this chapter, but shall constitute prima facie evidence of notice of protection.

"(b) The notice referred to in subsection (a) shall consist of-

"(1) the words 'mask force', the sumbol *M*, or the symbol

( (the letter M in a circle); and

"(2) the name of the owner or owners of the mask work or an

abbreviation by which the name is recognized or is generally known.

17 USc 910. "§ 910. Enforcement of exclusive rights

"(a) Except as otherwise provided in this chapter, any person who

violates any of the exclusive rights of the owner of a mask work

under this chapter, by conduct in or affecting commerce, shall be

liable as an infringer of such rights.

"(b)(1) The owner of a mask work protected under this chapter, or

the exclusive licensee of all rights under this chapter with respect to

the mask work, shall, after a certificate of registration of a claim of

protection in that mask work has been issued under section 908, be

entitled to institute a civil action for any infringement with respect

to the mask work which is committed after the commencement of

protection of the mask work under section 904(a).

"(2) In any case in which an application for registration of a claim

of protection in a mask work and the required deposit of identifying

material and fee have been received in the Copyright Office in

proper form and registration of the mask work has been refused, the

applicant is entitled to institute a civil action for infringement under this chapter with respect to the mask work if notice of the

action, together with a copy of the complaint, is served on the

Register of Copyrights, in accordance with the Federal Rules of Civil

Procedure. The Register may, at his or her option, become a party to

the action with respect to the issue of whether the claim of protection is eligible for registration by entering an appearance within

sixty days after such service, but the failure of the Register to

become a party to the action shall not deprive the court of jurisdic- tion to determine that issue.

Regulations. "(c)(1) The Secretary of the Treasury and the United States Postal

Service shall separately or jointly issue regulations for the enforce98 STAT. 3352
PUBLIC LAW 98-620-NOV. 8, 1984

ment of the rights set forth in section 905 with respect to importation. These regulations may require, as a condition for the exclusion

of articles from the United States, that the person seeking exclusion

take any one or more of the following actions:

"(A) Obtain a court order enjoining, or an order of the International Trade Commission under section 337 of the Tariff Act

of 1930 excluding, importation of the articles. 19 USc 1337.

"(B) Furnish proof that the mask work involved is protected

under this chapter and that the importation of the articles

would infringe the rights in the mask work under this chapter.

"(C) Post a surety bond for any injury that may result if the

detention or exclusion of the articles proves to be unjustified.

"(2) Articles imported in violation of the rights set forth in section Seizure and

905 are subject to seizure and forfeiture in the same manner as forfeiture.

property imported in violation of the customs laws. Any such forfeited articles shall be destroyed as directed by the Secretary of the

Treasury or the court, as the case may be, except that the articles

may be returned to the country of export whenever it is shown to

the satisfaction of the Secretary of the Treasury that the importer

had no reasonable grounds for believing that his or her acts constituted a violation of the law.

"§ 911. Civil actions 17 USC 911.

"(a) Any court having jurisdiction of a civil action arising under

this chapter may grant temporary restraining orders, preliminary

injunctions, and permanent injunctions on such terms as the court

may deem reasonable to prevent or restrain infringement of the

exclusive rights in a mask work under this chapter.

"(b) Upon finding an infringer liable, to a person entitled under

section 910(b)(1) to institute a civil action, for an infringement of

any exclusive right under this chapter, the court shall award such

person actual damages suffered by the person as a result of the

infringement. The court shall also award such person the infringer's

profits that are attributable to the infringement and are not taken

into account in computing the award of actual damages. In establishing the infringer's profits, such person is required to present

proof only of the infringer's gross revenue, and the infringer is

required to prove his or her deductible expenses and the elements of

profit attributable to factors other than the mask work.

"(c) At any time before final judgment is rendered, a person

entitled to institute a civil action for infringement may elect,

instead of actual damages and profits as provided by subsection (b),

an award of statutory damages for all infringements involved in the

action, with respect to any one mask work for which any one

infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in an amount not more than

$250,000 as the court considers just.

"(d) An action for infringement under this chapter shall be barred

unless the action is commenced within three years after the claim

accrues.

"(e)(1) At any time while an action for infringement of the exclusive rights in a mask work under this chapter is pending, the court

may order the impounding, on such terms as it may deem reasonable, of all semiconductor chip products, and any drawings, tapes,

masks, or other products by means of which such products may be

reproduced, that are claimed to have been made, imported, or used

in violation of those exclusive rights. Insofar as practicable, applica98 STAT. 3353
PUBLIC LAW 98-620-NOV. 8, 1984

tions for orders under this paragraph shall be heard and determined

in the same manner as an application for a temporary restraining

order or preliminary injunction.

"(2) As part of a final judgment or decree, the court may order the

destruction or other disposition of any infringing semiconductor

chip products, and any masks, tapes, or other articles by means of

which such products may be reproduced.

"(f) In any civil action arising under this chapter, the court in its

discretion may allow the recovery of full costs, including reasonable

attorneys' fees, to the prevailing party.

17 USC 912. "§ 912. Relation to other laws

"(a) Nothing in this chapter shall affect any right or remedy held

17 USC 1-801 et by any person under chapters 1 through 8 of this title, or under

seq. title 35.

"(b) Except as provided in section 908(b) of this title, references to

'this title' or 'title 17' in chapters 1 through 8 of this title shall be

deemed not to apply to this chapter.

"(c) The provisions of this chapter shall preempt the laws of any

State to the extent those laws provide any rights or remedies with

respect to a mask work which are equivalent to those rights or

remedies provided by this chapter, except that such preemption

shall be effective only with respect to actions filed on or after

January 1, 1986.

28 USC 1338, "(d) The provisions of sections 1338, 1400(a), and 1498 (b) and (c) of

1400, 1498. title 28 shall apply with respect to exclusive rights in mask works

under this chapter.

"(e) Notwithstanding subsection (c), nothing in this chapter shall

detract from any rights of a mask work owner, whether under

Federal law (exclusive of this chapter) or under the common law or

the statutes of a State, heretofore or hereafter declared or enacted,

with respect to any mask work first commercially exploited before

July 1, 1983.

17 USC 913. "§ 913. Transitional provisions

Prohibition. "(a) No application for registration under section 908 may be filed,

and no civil action under section 910 or other enforcement proceed- ing under this chapter may be instituted, until sixty days after the

date of the enactment of this chapter. Prohibition. "(b) No monetary relief under section 911 may be granted with

respect to any conduct that occurred before the date of the enactment of this chapter, except as provided in subsection (d).

"(c) Subject to subsection (a), the provisions of this chapter apply

to all mask works that are first commercially exploited or are

registered under this chapter, or both, on or after the date of the

enactment of this chapter.

"(d)(1) Subject to subsection (a), protection is available under this

chapter to any mask work that was first commercially exploited on

or after July 1, 1983, and before the date of the enactment of this

chapter, if a claim of protection in the mask work is registered in

the Copyright Office before July 1, 1985, under section 908.

"(2) In the case of any mask work described in paragraph (1) that

is provided protection under this chapter, infringing semiconductor

chip product units manufactured before the date of the enactment of

this chapter may, without liability under sections 910 and 911, be

imported into or distributed in the United States, or both, until two

years after the date of registration of the mask work under section

98 STAT. 3354
PUBLIC LAW 98-620-NOV. 8, 1984

908, but only if the importer or distributor, as the case may be, first

pays or offers to pay the reasonable royalty referred to in section

907(a)(2) to the mask work owner, on all such units imported or

distributed, or both, after the date of the enactment of this chapter.

"(3) In the event.that a person imports or distributes infringing

semiconductor chip product units described in paragraph (2) of this

subsection without first paying or offering to pay the reasonable

royalty specified in such paragraph, or if the person refuses or fails

to make such payment, the mask work owner shall be entitled to the

relief provided in sections 910 and 911.

"§ 914. International transitional provisions 17 USC 914.

"(a) Notwithstanding the conditions set forth in subparagraphs

(A) and (C) of section 902(a)(1) with respect to the availability of

protection under this chapter to nationals, domiciliaries, and sovereign authorities of a foreign nation, the Secretary of Commerce may,

upon the petition of any person, or upon the Secretary's own motion,

issue an order extending protection under this chapter to such

foreign nationals, domiciliaries, and sovereign authorities if the

Secretary finds-

"(1) that the foreign nation is making good faith efforts and

reasonable progress toward-

"(A) entering into a treaty described in section

902(a)(1)(A); or

"(B) enacting legislation that would be in compliance

with subparagraph (A) or (B) of section 902(aX2); and

"(2) that the nationals, domiciliaries, and sovereign authorities of the foreign nation, and persons controlled by them, are

not engaged in the misappropriation, or unauthorized distribution or commercial exploitation, of mask works; and

"(3) that issuing the order would promote the purposes of this

chapter and international comity with respect to the protection

of mask works.

"(b) While an order under subsection (a) is in effect with respect to Prohibition.

a foreign nation, no application for registration of a claim for

protection in a mask work under this chapter may be denied solely

because the owner of the mask work is a national, domiciliary, or

sovereign authority of that foreign nation, or solely because the

mask work was first commercially exploited in that foreign nation.

"(c) Any order issued by the Secretary of Commerce under subsection (a) shall be effective for such period as the Secretary designates

in the order, except that no such order may be effective after the

date on which the authority of the Secretary of Commerce terminates under subsection (e). The effective date of any such order shall

also be designated in the order. In the case of an order issued upon

the petition of a person, such effective date may be no earlier than

the date on which the Secretary receives such petition.

"(d)(1) Any order issued under this section shall terminate if- Termination.

"(A) the Secretary of Commerce finds that any of the conditions set forth in paragraphs (1), (2), and (3) of subsection (a) no

longer exist; or

"(B) mask works of nationals, domiciliaries, and sovereign

authorities of that foreign nation or mask works first commercially exploited in that foreign nation become eligible for protection under subparagraph (A) or (C) of section 902(aXl).

"(2) Upon the termination or expiration of an order issued under

this section, registrations of claims of protection in mask works

98 STAT. 3355
PUBLIC LAW 98-620-NOV. 8, 1984

Federal

Register,

publication.

Report.

17 USC 901 note.

made pursuant to that order shall remain valid for the period

specified in section 904.

"(e) The authority of the Secretary of Commerce under this

section shall commence on the date of the enactment of this chapter,

and shall terminate three years after such date of enactment.

"(f)(1) The Secretary of Commerce shall promptly notify the Register of Copyrights and the Committees on the Judiciary of the Senate

and the House of Representatives of the issuance or termination of

any order under this section, together with a statement of the

reasons for such action. The Secretary shall also publish such

notification and statement of reasons in the Federal Register.

"(2) Two years after the date of the enactment of this chapter, the

Secretary of Commerce, in consultation with the Register of Copyrights, shall transmit to the Committees on the Judiciary of the

Senate and the House of Representatives a report on the actions

taken under this section and on the current status of international

recognition of mask work protection. The report shall include such

recommendations for modifications of the protection accorded under

this chapter to mask works owned by nationals, domiciliaries, or

sovereign authorities of foreign nations as the Secretary, in consultation with the Register of Copyrights, considers would promote the

purposes of this chapter and international comity with respect to

mask work protection.".

TECHNICAL AMENDMENT

SEC. 303. The table of chapters at the beginning of title 17, United

States Code, is amended by adding at the end thereof the following

new item:

"9. Protection of semiconductor chip products ................................... ..... 901".

AUTHORIZATION OF APPROPRIATIONS

SEC. 304. There are authorized to be appropriated such sums as

may be necessary to carry out the purposes of this title and the

amendments made by this title.

TITLE IV-FEDERAL COURTS IMPROVEMENTS

SUBTITLE A-CIVIL PRIORITIES

ESTABLISHMENT OF PRIORITY OF CIVIL ACTIONS

SEC. 401. (a) Chapter 111 of title 28, United States Code, is

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

28 USC 1657. "§ 1657. Priority of civil actions

28 USC 2241 et seq., 1826.

"(a) Notwithstanding any other provision of law, each court of the

United States shall determine the order in which civil actions are

heard and determined, except that the court shall expedite the

consideration of any action brought under chapter 153 or section

1826 of this title, any action for temporary or preliminary injunctive

relief, or any other action if good cause therefor is shown. For

purposes of this subsection, 'good cause' is shown if a right under the

Constitution of the United States or a Federal Statute (including

rights under section 552 of title 5) would be maintained in a factual

context that indicates that a request for expedited consideration has

merit.

98 STAT. 3356
PUBLIC LAW 98-620-NOV. 8, 1984

"(b) The Judicial Conference of the United States may modify the

rules adopted by the courts to determine the order in which civil

actions are heard and determined, in order to establish consistency

among the judicial circuits.".

(b) The section analysis of chapter 111 of title 28, United States

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

item:

"1657. Priority of civil actions.".

AMENDMENTS TO OTHER LAWS

SEC. 402. The following provisions of law are amended-

(1)(A) Section 309(a)(10) of the Federal Election Campaign Act

of 1971 (2 U.S.C. 437g(a)(10) is repealed.

(B) Section 310(c) of the Federal Election Campaign Act of

1971 (2 U.S.C. 437h(c)) is repealed.

(2) Section 552(a)(4)(D) of title 5, United States Code, is

repealed.

(3) Section 6(a) of the Commodity Exchange Act (7 U.S.C. 8(a)) is amended by striking out "The proceedings in such cases in

the court of appeals shall be made a preferred cause and shall

be expedited in every way.".

(4)(A) Section 6(c)(4) of the Federal Insecticide, Fungicide, and

Rodenticide Act (7 U.S.C. 136d(c)(4)) is amended by striking out

the second sentence.

(B) Section 10(d)(3) of the Federal Insecticide, Fungicide, and

Rodenticide Act (7 U.S.C. 136h(d)(3)) is amended by striking out

"The court shall give expedited consideration to any such

action.".

(C) Section 16(b) of the Federal Insecticide, Fungicide, and

Rodenticide Act (7 U.S.C. 136n(b)) is amended by striking out

the last sentence.

(D) Section 25(a)(4)(E)(iii) of the Federal Insecticide, Fungicide, and Rodenticide Act (7 U.S.C. 136w(a)(4)(E)(iii)) is repealed. (5) Section 204(d) of the Packers and Stockyards Act, 1921 (7 U.S.C. 194(d)), is amended by striking out the second sentence.

(6) Section 366 of the Agricultural Adjustment Act of 1938 (7 U.S.C. 1366) is amended in the fourth sentence by striking out

"At the earliest convenient time, the court, in term time or

vacation," and inserting in lieu thereof "The court".

(7)(A) Section 410 of the Federal Seed Act (7 U.S.C. 1600) is

amended by striking out "The proceedings in such cases in the

court of appeals shall be made a preferred cause and shall be

expedited in every way.".

(B) Section 411 of the Federal Seed Act (7 U.S.C. 1601) is

amended by striking out "The proceedings in such cases shall be

made a preferred cause and shall be expedited in every way.". (8) Section 816(c)(4) of the Act of October 7, 1975, commonly known as the Department of Defense Appropriation Authorization Act of 1976 (10 U.S.C. 2304 note) is amended by striking out

the last sentence.

(9) Section 5(d)(6)(A) of the Home Owners' Loan Act of 1933

(12 U.S.C. 1464(d)(6)(A)) is amended by striking out "Such pro- ceedings shall be given precedence over other cases pending in

such courts, and shall be in every way expedited.".

98 STAT. 3357
PUBLIC LAW 98-620-NOV. 8, 1984

(10)(A) Section 7A(f)(2) of the Clayton Act (15 U.S.C. 18a(f)(2))

is amended to read as follows: "(2) certifies the United States

district court for the judicial district within which the respondent resides or carries on business, or in which the action is

brought, that it or he believes that the public interest requires

relief pendente lite pursuant to this subsection, then upon the

filing of such motion and certification, the chief judge of such

district court shall immediately notify the chief judge of the

United States court of appeals for the circuit in which such

district court is located, who shall designate a United States

district judge to whom such action shall be assigned for all

purposes.".

(B) Section 11(e) of the Clayton Act (15 U.S.C. 21(e)) is

amended by striking out the first sentence.

(11) Section 1 of the Act of February 11, 1903, commonly

known as the Expediting Act (15 U.S.C. 28) is repealed.

(12) Section 5(e) of the Federal Trade Commission Act (15

U.S.C. 45(e)) is amended by striking out the first sentence.

(13) Section 21(f)(3) of the Federal Trade Commission

Improvements Act of 1980 (15 U.S.C. 57a-1(f)(3)) is repealed.

(14) Section 11A(c)(4) of the Securities Exchange Act of 1934

(15 U.S.C. 78k-1(c)(4)) is amended-

(A) by striking out "(A)" after "(4)"; and

(B) by striking out subparagraph (B).

(15)(A) Section 309(e) of the Small Business Investment Act of

1958 (15 U.S.C. 687a(e)) is amended by striking out the sixth

sentence.

(B) Section 309(f of the Small Business Investment Act of

1958 (15 U.S.C. 687a(f)) is amended by striking out the last

sentence.

(C) Section 311(a) of the Small Business Investment Act of

1958 (15 U.S.C. 687c(a)) is amended by striking out the last

sentence.

(16) Section 10(c)(2) of the Alaska Natural Gas Transportation

Act (15 U.S.C. 719h(c)(2)) is repealed.

(17) Section 155(a) of the National Traffic and Motor Vehicle

Safety Act of 1966 (15 U.S.C. 1415(a)) is amended by striking out

"(1)" and by striking out paragraph (2).

(18) Section 503(b)(3XE) of the Motor Vehicle Information and

Cost Savings Act (15 U.S.C. 2003(b)(3)(E)) is amended by striking

out clause (ii) and redesignating clauses (iii) and (iv) as clauses

(ii) and (iii), respectively.

(19) Section 23(d) of the Toxic Substances Control Act (15

U.S.C. 2622(d)) is amended by striking out the last sentence.

(20) Section 12(eX3) of the Coastal Zone Management Improvement Act of 1980 (16 U.S.C. 1463a(e)(3)) is repealed.

(21) Section 11 of the Act of September 28, 1976 (16 U.S.C.

1910), is amended by striking out the last sentence.

(22) (A) Section 807(b) of the Alaska National Interest Lands

Conservation Act (16 U.S.C. 3117(b)) is repealed.

(B) Section 1108 of the Alaska National Interest Lands Conservation Act (16 U.S.C. 3168) is amended to read as follows:

'"INJUNCTIVE RELIEF

"SEC. 1108. No court shall have jurisdiction to grant any injunc- tive relief lasting longer than ninety days against any action pursu98 STAT. 3358
PUBLIC LAW 98-620-NOV. 8, 1984

ant to this title except in conjunction with a final judgment entered

in a case involving an action pursuant to this title.".

(23XA) Section 10(b)(3) of the Central Idaho Wilderness Act of

1980 (Public Law 96-312; 94 Stat. 948) is repealed.

(B) Section 10(c) of the Central Idaho Wilderness Act of 1980 is

amended to read as follows:

"(c) Any review of any decision of the United States District Court

for the District of Idaho shall be made by the Ninth Circuit Court of

Appeals of the United States.".

(24)(A) Section 1964(b) of title 18, United States Code, is

amended by striking out the second sentence.

(B) Section 1966 of title 18, United States Code, is amended by

striking out the last sentence.

(25)(A) Section 408(iX5) of the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 346a(i)(5)) is amended by striking out the

last sentence.

(B) Section 409(g)(2) of the Federal Food, Drug, and Cosmetic

Act (21 U.S.C. 348(g)(2)) is amended by striking out the last

sentence.

(26) Section 8(f) of the Foreign Agents Registration Act of 1938

(22 U.S.C. 618(f)) is amended by striking out the last sentence.

(27) Section 4 of the Act of December 22, 1974 (25 U.S.C.

640d-3), is amended by striking out "(a)" and by striking out

subsection (b).

(28)(A) Section 3310(e) of the Internal Revenue Code of 1954

(26 U.S.C. 3310(e)) is repealed.

(B) Section 6110(f)(5) of the Internal Revenue Code of 1954 (26

U.S.C. 6110(f)(5)) is amended by striking out "and the Court of

Appeals shall expedite any review of such decision in every way

possible".

(C) Section 6363(dX4) of the Internal Revenue Code of 1954 (26

U.S.C. 6363(dX4)) is repealed.

(D) Section 7609(h)(3) of the Internal Revenue Code of 1954 (26

U.S.C. 7609(hX3)) is repealed.

(E) Section 9010(c) of the Internal Revenue Code of 1954 (26

U.S.C. 9010(c)) is amended by striking out the last sentence.

(F) Section 9011(b)(2) of the Internal Revenue Code of 1954 (26

U.S.C. 9011(b)2)) is amended by striking out the last sentence.

(29XA) Section 596(aX3) of title 28, United States Code, is

amended by striking out the last sentence.

(B) Section 636(cX4) of title 28, United States Code, is amended

in the second sentence by striking out "expeditious and".

(C) Section 1296 of title 28, United States Code, and the item

relating to that section in the section analysis of chapter 83 of

that title, are repealed.

(D) Subsection (c) of section 1364 of title 28, United States

Code, the section heading of which reads "Senate actions", is

repealed.

(E) Section 2284(bX2) of title 28, United States Code, is

amended by striking out the last sentence.

(F) Section 2349(b) of title 28, United States Code, is amended

by striking out the last two sentences.

(G) Section 2647 of title 28, United States Code, and the item

relating to that section in the section analysis of chapter 169 of

that title, are repealed.

(30) Section 10 of the Act of March 23, 1932, commonly known

as the Norris-LaGuardia Act (29 U.S.C. 110), is amended by

98 STAT. 3359
PUBLIC LAW 98-620-NOV. 8, 1984

striking out "with the greatest possible expedition" and all that

follows through the end of the sentence and inserting in lieu

thereof "expeditiously".

(31) Section 10(i) of the National Labor Relations Act (29

U.S.C. 160(i)) is repealed.

(32) Section 11(a) of the Occupational Safety and Health Act

of 1970 (29 U.S.C. 660(a)) is amended by striking out the last

sentence.

(33) Section 4003(e)(4) of the Employee Retirement Income

Security Act of 1974 (29 U.S.C. 1303(e)(4)) is repealed.

(34) Section 106(a)(1) of the Federal Coal Mine Health and

Safety Act of 1969 (30 U.S.C. 816(a)(1)) is amended by striking

out the last sentence.

(35) Section 1016 of the Impoundment Control Act of 1974 (31

2 USc 687. U.S.C. 1406) is amended by striking out the second sentence.

(36) Section 2022 of title 38, United States Code, is amended

by striking out "The court shall order speedy hearing in any

such case and shall advance it on the calendar.".

(37) Section 3628 of title 39, United States Code, is amended

by striking out the fourth sentence.

(38) Section 1450(i)(4) of the Public Health Service Act (42

U.S.C. 300j-9(i)(4)) is amended by striking out the last sentence.

(39) Section 304(e) of the Social Security Act (42 U.S.C. 504(e))

is repealed.

(40) Section 814 of the Act of April 11, 1968 (42 U.S.C. 3614), is

repealed.

(41) The matter under the subheading "Exploration of

National Petroleum Reserve in Alaska" under the headings

"ENERGY AND MINERALS" and "GEOLOGICAL SURVEY" in title I of

the Act of December 12, 1980 (94 Stat. 2964; 42 U.S.C. 6508), is

amended in the third paragraph by striking out the last

sentence.

(42) Section 214(b) of the Emergency Energy Conservation Act

of 1979 (42 U.S.C. 8514(b)) is repealed.

(43) Section 2 of the Act of February 25, 1885 (43 U.S.C. 1062),

is amended by striking out "; and any suit brought under the

provisions of this section shall have precedence for hearing and

trial over other cases on the civil docket of the court, and shall

be tried and determined at the earliest practicable day".

(44) Section 23(d) of the Outer Continental Shelf Lands Act (43

U.S.C. 1349(d)) is repealed.

(45) Section 511(c) of the Public Utilities Regulatory Policies

Act of 1978 (43 U.S.C. 2011(c)) is amended by striking out "Any

such proceeding shall be assigned for hearing at the earliest

possible date and shall be expedited by such court.".

(46) Section 203(d) of the Trans-Alaska Pipeline Authorization

Act (43 U.S.C. 1652(d)) is amended by striking out the fourth

sentence.

(47) Section 5(f) of the Railroad Unemployment Insurance Act

(45 U.S.C. 355(f)) is amended by striking out ", and shall be

given precedence in the adjudication thereof over all other civil

cases not otherwise entitled by law to precedence".

(48) Section 305(dX2) of the Regional Rail Reorganization Act

of 1973 (45 U.S.C. 745(dX2)) is amended-

(A) in the first sentence by striking out "Within 180 days

after" and inserting in lieu thereof "After"; and

98 STAT. 3360
PUBLIC LAW 98-620-NOV. 8, 1984

(B) in the last sentence by striking out "Within 90 days after" and inserting in lieu thereof "After".

(49) Section 124(b) of the Rock Island Transition and Employee Assistance Act (45 U.S.C. 1018(b)) is amended by striking

out ", and shall render a final decision no later than 60 days

after the date the last such appeal is filed".

(50) Section 402(g) of the Communications Act of 1934 (47

U.S.C. 402(g)) is amended-

(A) by striking out "At the earliest convenient time the"

and inserting in lieu thereof "The"; and

(B) by striking out "10(e) of the Administrative Procedure

Act" and inserting in lieu thereof "706 of title 5, United

States Code".

(51) Section 4 05(e) of the Surface Transportation Assistance

Act of 1982 (Public Law 97-424; 49 U.S.C. 2305(e)) is amended by

striking out the last sentence.

(52) Section 606(c)(1) of the Rail Safety and Service Improvement Act of 1982 (Public Law 97-468; 49 U.S.C. 1205(c)(1)) is

amended by striking out the second sentence.

(53) Section 13A(a) of the Subversive Activities Control Act of

1950 (50 U.S.C. 792a note) is amended in the third sentence by

striking out "or any court".

(54) Section 12(a) of the Military Selective Service Act of 1967

(50 U.S.C. App. 462

(a)) is amended by striking out the last

sentence.

(55) Section 4(b) of the Act of July 2, 1948 (50 U.S.C. App. 1984(b)), is amended by striking out the last sentence.

EFFECTIVE DATE

SEC. 403. The amendments made by this subtitle shall not apply to

cases pending on the date of the enactment of this subtitle.

SUBTITLE B-DISTRICT COURT ORGANIZATION

SEC. 404. This subtitle may be cited as the "Federal District Court

Organization Act of 1984".

SEC. 405. The second sentence of subsection (c) of section 112 of

title 28, United States Code, is amended to read as follows:

"Court for the Eastern District shall be held at Brooklyn, Hauppauge, and Hempstead (including the village of Uniondale).".

SEC. 406. (a) Subsection (a) of section 93 of title 28, United States

Code, is amended-

(1) in paragraph (1) by striking out "De Kalb," and

"McHenry,"; and

(2) in paragraph (2)-

.(A) by inserting "De Kalb," immediately after "Carroll,";

and

(B) by inserting "McHenry," immediately after "Lee,".

(b) The amendments made by subsection (a) of this section shall

apply to any action commenced in the United States District Court

for the Northern District of Illinois on or after the effective date of

this subtitle, and shall not affect any action pending in such court

on such effective date.

(c) The second sentence of subsection (b) of section 93 of title 28,

United States Code, is amended by inserting "Champaign/Urbana," before "Danville".

Federal District

Court

Organization

Act of 1984.

28 USC 1 note.

28 USC 93 note.

49 USC app.

2305.

45 USC 1205.

28 USC 1657

note.

98 STAT. 3361
PUBLIC LAW 98-620-NOV. 8, 1984

SEC. 407. (a) Subsection (b) of section 124 of title 26, United States

28 USC 124. Code, is amended-

(1) by striking out "six divisions" and inserting in lieu thereof

"seven divisions";

(2) in paragraph (4) by striking out ", Hidalgo, Starr,"; and

(3) by adding at the end thereof the following: "(7) The McAllen.Division comprises the counties of Hidalgo

and Starr.

"Court for the McAllen Division shall be held at McAllen.".

28 USC 124 note. (b) The amendments made by subsection (a) of this section shall

apply to any action commenced in the United States District Court

for the Southern District of Texas on or after the effective date of

this subtitle, and shall not affect any action pending in such court

on such effective date.

SEC. 408. (a) Paragraph (1) of section 90(a) of title 28, United States

Code, is amended-

(1) by inserting "Fannin," after "Dawson,";

(2) by inserting "Gilmer," after "Forsyth,"; and

(3) by inserting "Pickens," after "Lumpkin,".

(b) Paragraph (2) of section 90(a) of title 28, United States Code, is

amended by striking out "Fannin,", "Gilmer,", and "Pickens,".

(c) Paragraph (6) of section 90(c) of title 28, United States Code, is

amended by striking out "Swainsboro" each place it appears and

inserting in lieu thereof "Statesboro".

28 USC 90 note. (d) The amendments made by this section shall apply to any action commenced in the United States District Court for the Northern District of Georgia on or after the effective date of this subtitle,

.and shall not affect any action pending in such court on such

effective date.

SEC. 409. Section 85 of title 28, United States Code, is amended by inserting "Boulder," before "Denver".

SEC. 410. The second sentence of section 126 of title 28, United

States Code, is amended by inserting "Bennington," before "Brattleboro".

Effective date. SEC. 411. (a) The amendments made by this subtitle shall take

28 USC 85 note. effect on January 1, 1985.

(b) The amendments made by this subtitle shall not affect the

composition, or preclude the service, of any grand or petit jury summoned, impaneled, or actually serving on the effective date of

this subtitle.

Technical

Amendments

to the Federal

Courts

Improvement

Act of 1982.

28 USC 1 note.

SUBTITLE C-AMENDMENTS TO THE FEDERAL COURTS IMPROVEMENTS

ACT OF 1982

This subtitle may be cited as the "Technical Amendments to the

Federal Courts Improvement Act of 1982".

SEC. 412. (a) Section 1292(b) of title 28, United States Code, is

amended by inserting "which would have jurisdiction of an appeal of

such action" after "The Court of Appeals". (b) Section 1292(c)(1) of title 28, United States Code, is amended by inserting "or (b)" after "(a)".

SEC. 413. Section 337(c) of the Tariff Act of 1930 (19 U.S.C. 1337(c)) is amended in the fourth sentence by inserting ", within 60 days after the determination becomes final," after "appeal such

determination".

SEC. 414. (a) Sections 142, 143, and 144 of title 35, United States

Code, are amended to read as follows:

98 STAT. 3362
PUBLIC LAW 98-620-NOV. 8, 1984

"§ 142. Notice of appeal 35 USC 142.

"When an appeal is taken to the United States Court of Appeals

for the Federal Circuit, the appellant shall file in the Patent and

Trademark Office a written notice of appeal directed to the Commissioner, within such time after the date of the decision from which

the appeal is taken as the Commissioner prescribes, but in no case

less than 60 days after that date.

"§ 143. Proceedings on appeal 35 USC 143.

"With respect to an appeal described in section 142 of this title,

the Commissioner shall transmit to the United States Court of

Appeals for the Federal Circuit a certified list of the documents

comprising the record in the Patent and Trademark Office. The

court may request that the Commissioner forward the original or

certified copies of such documents during pendency of the appeal. In

an ex parte case, the Commissioner shall submit to the court in

writing the grounds for the decision of the Patent and Trademark

Office, addressing all the issues involved in the appeal. The court

shall, before hearing an appeal, give notice of the time and place of

the hearing to the Commissioner and the parties in the appeal.

"§ 144. Decision on appeal 35 USC 144.

"The United States Court of Appeals for the Federal Circuit shall

review the decision from which an appeal is taken on the record

before the Patent and Trademark Office. Upon its determination the

court shall issue to the Commissioner its mandate and opinion,

which shall be entered of record in the Patent and Trademark Office

and shall govern the further proceedings in the case.".

(b) Paragraphs (2), (3), and (4) of subsection (a) of section 21 of the

Act entitled "An Act to provide for the registration and protection

of trademarks used in commerce, to carry out the provisions of

certain international conventions, and for other purposes",

approved July 5, 1946 (15 U.S.C. 1071(a) (2), (3), and (4)), are amended

to read as follows:

"(2) When an appeal is taken to the United States Court of

Appeals for the Federal Circuit, the appellant shall file in the

Patent and Trademark Office a written notice of appeal directed to

the Commissioner, within such time after the date of the decision

from which the appeal is taken as the Commissioner prescribes, but

in no case less than 60 days after that date.

"(3) The Commissioner shall transmit to the United States Court

of Appeals for the Federal Circuit a certified list of the documents

comprising the record in the Patent and Trademark Office. The

court may request that the Commissioner forward the original or

certified copies of such documents during pendency of the appeal. In

an ex parte case, the Commissioner shall submit to that court a brief

explaining the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal. The

court shall, before hearing an appeal, give notice of the time and

place of the hearing to the Commissioner and the parties in the

appeal.

"(4) The United States Court of Appeals for the Federal Circuit

shall review the decision from which the appeal is taken on the

record before the Patent and Trademark Office. Upon its determination the court shall issue its mandate and opinion to the Commis98 STAT. 3363
PUBLIC LAW 98-620-NOV. 8, 1984

35 USC 142 note.

28 USC 713 note.

sioner, which shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings in the case.".

(c) The amendments made by this section shall apply to proceedings pending in the Patent and Trademark Office on the date of the

enactment of this Act and to appeals pending in the United States

Court of Appeals for the Federal Circuit on such date.

SEC. 415. Any individual who, on the date of the enactment of the

Federal Courts Improvement Act of 1982, was serving as marshal for

the Court of Appeals for the District of Columbia under section

713(c) of title 28, United States Code, may, after the date of the

enactment of this Act, so serve under that section as in effect on the

date of the enactment of the Federal Courts Improvement Act of

1982. While such individual so serves, the provisions of section 714(a)

of title 28, United States Code, shall not apply to the Court of

Appeals for the District of Columbia.

SEC. 416. Title 28, United States Code, is amended in the following

respects:

(a) There shall be inserted, after section 797 thereof, in chapter 51

thereof, the following new section 798, which shall read as follows:

28 USC 798. "§ 798. Places of holding court; appointment of special masters

"(a) The United States Claims Court is hereby authorized to

utilize facilities and hold court in Washington, District of Columbia,

.and in four locations outside of the Washington, District of Columbia metropolitan area, for the purpose of conducting trials and such

other proceedings as may be appropriate to executing the court's

functions. The Director of the Administrative Office of the United

States Courts shall designate such locations and provide for such

facilities.

"(b) The chief judge of the Claims Court may appoint special

masters to assist the court in carrying out its functions. Any special

masters so. appointed shall carry out their responsibilities and be

compensated in accordance with procedures set forth in the rules of

the court.".

(b) The caption of chapter 51, title 28, shall be amended to include

the following item:

"798. Places of holding court; appointment of special masters.".

TITLE V-GOVERNMENT.RESEARCH AND DEVELOPMENT

PATENT POLICY

35 USC 201.

Contracts with

U.S.

Grants.

35 USC 202.

SEC. 501. Chapter 18 of title 35, United States Code, is amended-

(1) by adding "or any novel variety of plant which is or may

be protectable under the Plant Variety Protection Act (7 U.S.C.

2321 et seq.)" immediately after "title' in section 201(d);

(2) by adding ": Provided, That in the case of a variety of

plant, the date of determination (as defined in section 41(d) of

the Plant Variety Protection Act (7 U.S.C. 2401(d))) must also

occur during the period of contract performance" immediately

after "agreement" in section 201(e); , (3) in section 202(a), by..amending clause (i) to read as follows:

"(i) when the contractor is not located in the United States or

does not have a place of business located in the United States or

is subject to the control of a foreign government,"; by striking

the word "or" before "ii", and by adding after the words

"security of such activities" in the first sentence of such para98 STAT. 3364
PUBLIC LAW 98-620-NOV. 8, 1984

graph, the following: "or, iv) when the funding agreement

includes the operation of a Government-owned, contractor-operated facility of the Department of Energy primarily dedicated to

that Department's naval nuclear propulsion or weapons related

programs and all funding agreement limitations under this

subparagraph on the contractor's right to elect title to a subject

invention are limited to inventions occurring under the above

two programs of the Department of Energy."

(4) by amending paragraphs (1) and (2) of section 202(b) to read

as follows:

"(b)(1) The rights of the Government under subsection (a) shall not

be exercised by a Federal agency unless it first determines that at

least one of the conditions identified in clauses (i) through (iv) of

subsection (a) exists. Except in the case of subsection (a)(iii), the

agency shall file with the Secretary of Commerce, within thirty days

after the award of the applicable funding agreement, a copy of such

determination. In the case of a determination under subsection

(a)(ii), the statement shall include an analysis justifying the determination. In the case of determinations applicable to funding agreements with small business firms, copies shall also be sent to the

Chief Counsel for Advocacy of the Small Business Administration. If

the Secretary of Commerce believes that any individual determination or pattern of determinations is contrary to the policies and

objectives of this chapter or otherwise not in conformance with this

chapter, the Secretary shall so advise the head of the agency

concerned and the Administrator of the Office of Federal Procurement Policy, and recommend corrective actions.

"(2) Whenever the Administrator of the Office of Federal Procurement Policy has determined that one or more Federal agencies are

utilizing the authority of clause (i) or (ii) of subsection (a) of this

section in a manner that is contrary to the policies and objectives of

this chapter, the Administrator is authorized to issue regulations

describing classes of situations in which agencies may not exercise

the authorities of those clauses.";

(4A) By adding at the end of section 202(b) the following new

paragraph:

"(4) If the contractor believes that a determination is contrary to

the policies and objectives of this chapter or constitutes an abuse of

discretion by the agency, the determination shall be subject to the

last paragraph of section 203(2).".

(5) by amending paragraphs (1), (2), (3), and (4) of section 202(c)

to read as follows:

"(1) That the contractor disclose each subject invention to the

Federal agency within a reasonable time after it becomes

known to contractor personnel responsible for the administration of patent matters, and that the Federal Government may

receive title to any subject invention not disclosed to it within

such time.

"(2) That the contractor make a written election within two

years after disclosure to the Federal agency (or such additional

time as may be approved by the Federal agency) whether the

contractor will retain title to a subject invention: Provided, That

in any case where publication, on sale, or public use, has

initiated the one year statutory period in which valid patent

protection can still be obtained in the United States, the period

for election may be shortened by the Federal agency to a date

that is not more than sixty days prior to the end of the statutory

35 USC 202.

Small business.

Regulations.

Contracts with

U.S.

Grants.

Contracts with

U.S.

Grants.

98 STAT. 3365
PUBLIC LAW 98-620-NOV. 8, 1984

International

agreements.

Defense and

national

security.

35 USC 202.

Contracts with

U.S.

Grants.

Small business.

period: And provided further, That the Federal Government

may receive title to any subject invention in which the contractor does not elect to retain rights or fails to elect rights within

such times.

"(3) That a contractor electing rights in a subject invention

agrees to file a patent application prior to any statutory bar

date that may occur under this title due to publication, on sale,

or public use, and shall thereafter file corresponding patent

applications in other countries in which it wishes to retain title

within reasonable times, and that the Federal Government may

receive title to any subject inventions in the United States or

other countries in which the contractor has not filed patent

applications on the subject invention within such times.

"(4) With respect to any invention in which the contractor

elects rights, the Federal agency shall have a nonexclusive,

nontransferrable, irrevocable, paid-up license to practice or

have practiced for or on behalf of the United States any subject

invention throughout the world: Provided, That the funding

agreement may provide for such additional rights; including the

right to assign or have assigned foreign patent rights in the

subject invention, as are determined by the agency as necessary

for meeting the obligations of the United States under any

treaty, international agreement, arrangement of cooperation,

memorandum of understanding, or similar arrangement,

including military agreement relating to weapons development

and production.". (6) by striking out "may" in section 202(c)(5) and inserting in

lieu thereof "as well as any information on utilization or efforts

at obtaining utilization obtained as part of a proceeding under

section 203 of this chapter shall";

(7) by striking out "and which is not, itself, engaged in or does

not hold a substantial interest in other organizations engaged in

the manufacture or sales of products or the use of processes that

might utilize the invention or be in competition with embodiments of the invention" in clause (A) of section 202(c)(7);

(8) by amending clauses (B)-(D) of section 202(c)(7) to read as

follows: "(B) a requirement that the contractor share royalties

with the inventor; (C) except with respect to a funding agreement for the operation of a Government-owned-contractor-operated facility, a requirement that the balance of any royalties or

income earned by the contractor with respect to subject inventions, after payment of expenses (including payments to inventors) incidental to the administration of subject inventions, be

utilized for the support of scientific research or education; (D) a

requirement that, except where it proves infeasible after a

reasonable inquiry, in the licensing of subject inventions shall be

given to small business firms; and (E) with respect to a funding

agreement for the operation of a Government-owned-contractoroperated facility, requirements (i) that after payment of patenting costs, licensing costs, payments to inventors, and other

expenses incidental to the administration of subject inventions,

100 percent of the balance of any royalties or income earned

and retained by the contractor during any fiscal year up to an

amount equal to 5 percent of the annual budget of the facility,

shall be used by the contractor for scientific research, development, and education consistent with the research and development mission and objectives of the facility, including activities

98 STAT. 3366
PUBLIC LAW 98-620-NOV. 8, 1984 98 STAT. 3367

that increase the licensing potential of other inventions of the

facility; provided that if said balance exceeds 5 percent of the

annual budget of the facility, that 75 percent of such excess

shall be paid to the Treasury of the United States and the

remaining 25 percent shall be used for the same purposes as

described above in this clause (D); and (ii) that, to the extent it

provides the most effective technology transfer, the licensing of

subject inventions shall be administered by contractor employees on location at the facility."

(9) by adding "(1. before the word "With" in the first line of

section 203, and by adding at the end of section 203 the 35 usc 203.

following:

"(2) A determination pursuant to this section or section 202(b)(4)

shall not be subject to the Contract Disputes Act (41 U.S.C. § 601 et

seq.). An administrative appeals procedure shall be established by Regulations.

regulations promulgated in accordance with section 206. Additionally, any contractor, inventor, assignee, or exclusive licensee

adversely affected by a determination under this section may, at any

time within sixty days after the determination is issued, file a

petition in the United States Claims Court, which shall have jurisdiction to determine the appeal on the record and to affirm, reverse,

remand or modify, ", as appropriate, the determination of the

Federal agency. In cases described in paragraphs (a) and (c), the

agency's determination shall be held in abeyance pending the

exhaustion of appeals or petitions filed under the preceding

sentence.";

(10) by amending section 206 to read as follows: 35 USC 206.

"§ 206. Uniform clauses and regulations

"The Secretary of Commerce may issue regulations which may be

made applicable to Federal agencies implementing the provisions of

sections 202 through 204 of this chapter and shall establish standard

funding agreement provisions required under this chapter. The

regulations and the standard funding agreement shall be subject to

public comment before their issuance.";

(11) in section 207 by inserting "(a)" before "Each Federal"

and by adding the following new subsection at the end thereof:

"(b) For the purpose of assuring the effective management of

Government-owned inventions, the Secretary of Commerce is

authorized to-

"(1) assist Federal agency efforts to promote the licensing and

utilization of Government-owned inventions;

"(2) assist Federal agencies in seeking protection and maintaining inventions in foreign countries, including the payment

of fees and costs connected therewith; and

"(3) consult with and advise Federal agencies as to areas of

science and technology research and development with potential for commercial utilization."; and

(12) in section 208 by striking out "Administrator of General

Services" and inserting in lieu thereof "Secretary of

Commerce".

(13) by deleting from the first sentence of section 210(c),

"August 23, 1971 (36 Fed. Reg. 16887)" and inserting in lieu

thereof "February 18, 1983", and by inserting the following

before the period at the end of the first sentence of section 210(c)

"except that all funding agreements, including those with other Contracts with

than small business firms and nonprofit organizations, shall U.S. Grants.
PUBLIC LAW 98-620-NOV. 8, 1984

include the requirements established in paragraph 202(cX4) and

section 203 of this title."

(14) by adding at the end thereof the following new section:

"§ 212. Disposition of rights in educational awards

"No scholarship, fellowship, training grant, or other funding

agreement made by a Federal agency primarily to an awardee for

educational purposes will contain any provision giving the Federal

agency any rights to inventions made by the awardee."; and

(15) by adding at the end of the table of sections for the

chapter the following new item:

"212. Disposition of rights in educational awards.".

Approved November 8, 1984.

LEGISLATIVE HISTORY-H.R. 6163:

HOUSE REPORT No. 98-1062 (Comm. on the Judiciary). CONGRESSIONAL RECORD, Vol. 130 (1984):

Sept. 24, considered and passed House.

Oct. 3, considered and passed Senate, amended.

Oct. 9, House concurred in Senate amendments.

0

Prohibition.

35 USC 212.

98 STAT. 3368