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of such functions, programs, and activities, subject to the
submission of a plan to the Committees on Appropriations
of the House and Senate in accordance with the proce-
dures set forth in section 605 of the Departments of Com-
merce, Justice, and State, the Judiciary, and Related
Agencies Appropriations Act, 1999, as contained in Public
Law 105–277.
SEC. 649. DEFINITIONS.
For purposes of this title—
(1) the term ‘‘function’’ includes any duty, obli-
gation, power, authority, responsibility, right, privi-
lege, activity, or program; and
(2) the term ‘‘office’’ includes any office, ad-
ministration, agency, bureau, institute, council, unit,
organizational entity, or component thereof.
TITLE VII—MISCELLANEOUS
PATENT PROVISIONS
SEC. 701. PROVISIONAL APPLICATIONS.
(a) ABANDONMENT.—Section 111(b)(5) of title 35,
United States Code, is amended to read as follows:
‘‘(5) ABANDONMENT.—Notwithstanding the ab-
sence of a claim, upon timely request and as pre-
scribed by the Commissioner, a provisional applica-
tion may be treated as an application filed under
subsection (a). Subject to section 119(e)(3) of this
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title, if no such request is made, the provisional ap-
plication shall be regarded as abandoned 12 months
after the filing date of such application and shall not
be subject to revival thereafter.’’.
(b) TECHNICAL AMENDMENT RELATING TO WEEK-
ENDS AND HOLIDAYS.—Section 119(e) of title 35, United
States code, is amended by adding at the end the fol-
lowing:
‘‘(3) If the day that is 12 months after the filing date
of a provisional application falls on a Saturday, Sunday,
or Federal holiday within the District of Columbia, the
period of pendency of the provisional application shall be
extended to the next succeeding secular or business day.’’.
(c)
ELIMINATION
OF
COPENDENCY
REQUIRE-
MENT.—Section 119(e)(2) of title 35, United States Code,
is amended by striking ‘‘and the provisional application
was pending on the filing date of the application for patent
under section 111(a) or section 363 of this title’’.
(d) EFFECTIVE DATE.—The amendments made by
this section shall take effect on the date of the enactment
of this Act and shall apply to any provisional application
filed on or after June 8, 1995, except that the amend-
ments made by subsections (b) and (c) shall have no effect
with respect to any patent which is the subject of litigation
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in an action commenced before such date of the enact-
ment.
SEC. 702. INTERNATIONAL APPLICATIONS.
Section 119 of title 35, United States Code, is
amended—
(1) in subsection (a)—
(A) by inserting ‘‘in a WTO member coun-
try or’’ after ‘‘patent for the same invention’’;
and
(B)
by
inserting
‘‘such
WTO
member
country or’’ after ‘‘first filed in’’;
(2) in subsection (c), by inserting ‘‘WTO mem-
ber country or’’ after ‘‘application in the same’’; and
(3) by adding at the end the following:
‘‘(f) Applications for plant breeder’s rights filed in
a WTO member country (or in a foreign UPOV Con-
tracting Party) shall have the same effect for the purpose
of the right of priority under subsections (a) through (c)
of this section as applications for patent, subject to the
same conditions and requirements of this section as apply
to applications for patents.
‘‘(g) As used in this section—
‘‘(1) the term ‘WTO member country’ has the
meaning given that term in section 2(10) of the
Uruguay Round Agreements Act; and
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‘‘(2) the term ‘UPOV Contracting Party’ means
a member of the International Convention for the
Protection of New Varieties of Plants.’’.
SEC. 703. CERTAIN LIMITATIONS ON DAMAGES FOR PAT-
ENT INFRINGEMENT NOT APPLICABLE.
Section 287(c)(4) of title 35, United States Code, is
amended by striking ‘‘before the date of enactment of this
subsection’’ and inserting ‘‘based on an application the
earliest effective filing date of which is prior to September
30, 1996’’.
SEC. 704. ELECTRONIC FILING AND PUBLICATIONS.
(a) PRINTING OF PAPERS FILED.—Section 22 of title
35, United States Code, is amended by striking ‘‘printed
or typewritten’’ and inserting ‘‘printed, typewritten, or on
an electronic medium’’.
(b) PUBLICATIONS.—Section 11(a) of title 35, United
States Code, is amended by amending the matter pre-
ceding paragraph 1 to read as follows:
‘‘(a) The Director may publish in printed, type-
written, or electronic form, the following:’’.
(c) COPIES OF PATENTS FOR PUBLIC LIBRARIES.—
Section 13 of title 35, United States Code, is amended
by striking ‘‘The Commissioner may supply printed copies
of specifications and drawings of patents’’ and inserting
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‘‘The Director may supply copies of specifications and
drawings of patents in printed or electronic form’’.
(d)
MAINTENANCE
OF
COLLECTIONS.—Section
41(i)(1) of title 35, United States Code, is amended by
striking ‘‘The Commissioner shall maintain, for use by the
public, paper or microform’’ and inserting ‘‘The Director
shall maintain, for use by the public, paper, microform,
or electronic’’.
SEC. 705. STUDY AND REPORT ON BIOLOGICAL DEPOSITS
IN SUPPORT OF BIOTECHNOLOGY PATENTS.
(a) IN GENERAL.—No later than 6 months after the
date of the enactment of this Act, the Comptroller General
of the United States, in consultation with the Director of
the United States Patent and Trademark Office, shall
conduct a study and submit a report to the Congress on
the potential risks to the United States biotechnology in-
dustry relating to biological deposits in support of bio-
technology patents.
(b) CONTENTS.—The study conducted under this sec-
tion shall include—
(1) an examination of the risk of export and the
risk of transfers to third parties of biological depos-
its, and the risks posed by the change to 18-month
publication requirements made by this Act;
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(2) an analysis of comparative legal and regu-
latory regimes; and
(3) any related recommendations.
(c) CONSIDERATION OF REPORT.—In drafting regu-
lations affecting biological deposits (including any modi-
fication of title 37, Code of Federal Regulations, section
1.801 et seq.), the Patent and Trademark Office shall con-
sider the recommendations of the study conducted under
this section.
SEC. 706. PRIOR INVENTION.
Section 102(g) of title 35, United States Code, is
amended to read as follows:
‘‘(g)(1) during the course of an interference con-
ducted under section 135 or section 291, another inventor
involved therein establishes, to the extent permitted in sec-
tion 104, that before such person’s invention thereof the
invention was made by such other inventor and not aban-
doned, suppressed, or concealed, or (2) before such per-
son’s invention thereof, the invention was made in this
country by another inventor who had not abandoned, sup-
pressed, or concealed it. In determining priority of inven-
tion under this subsection, there shall be considered not
only the respective dates of conception and reduction to
practice of the invention, but also the reasonable diligence
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of one who was first to conceive and last to reduce to prac-
tice, from a time prior to conception by the other.’’.
SEC. 707. PRIOR ART EXCLUSION FOR CERTAIN COMMONLY
ASSIGNED PATENTS.
(a) PRIOR ART EXCLUSION.—Section 103(c) of title
35, United States Code, is amended by striking ‘‘sub-
section (f) or (g)’’ and inserting ‘‘one or more of sub-
sections (e), (f), and (g)’’.
(b) EFFECTIVE DATE.—The amendment made by
subsection (a) shall apply to any application for patent
filed on or after the date of the enactment of this Act.
SECTION 1. SHORT TITLE.
This Act may be cited as the ‘‘American Inventors Pro-
tection Act of 1999’’.
SEC. 2. TABLE OF CONTENTS.
The table of contents is as follows:
Sec. 1. Short title.
Sec. 2. Table of contents.
TITLE I—INVENTORS’ RIGHTS
Sec. 101. Short title.
Sec. 102. Integrity in invention promotion services.
Sec. 103. Effective date.
TITLE II—PATENT AND TRADEMARK FEE FAIRNESS
Sec. 201. Short title.
Sec. 202. Adjustment of patent fees.
Sec. 203. Adjustment of trademark fees.
Sec. 204. Study on alternative fee structures.
Sec. 205. Patent and Trademark Office funding.
Sec. 206. Effective date.
TITLE III—FIRST INVENTOR DEFENSE
Sec. 301. Short title.
Sec. 302. Defense to patent infringement based on earlier inventor.
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Sec. 303. Study and report on business methods patents.
Sec. 304. Effective date and applicability.
TITLE IV—PATENT TERM GUARANTEE
Sec. 401. Short title.
Sec. 402. Patent term guarantee authority.
Sec. 403. Continued examination of patent applications.
Sec. 404. Technical clarification.
Sec. 405. Effective date.
TITLE V—DOMESTIC PUBLICATION OF PATENT APPLICATIONS
PUBLISHED ABROAD
Sec. 501. Short title.
Sec. 502. Publication.
Sec. 503. Time for claiming benefit of earlier filing date.
Sec. 504. Provisional rights.
Sec. 505. Prior art effect of published applications.
Sec. 506. Cost recovery for publication.
Sec. 507. Conforming amendments.
Sec. 508. Effective date.
TITLE VI—OPTIONAL INTER PARTES REEXAMINATION PROCEDURE
Sec. 601. Short title.
Sec. 602. Ex parte reexamination of patents.
Sec. 603. Definitions.
Sec. 604. Optional inter partes reexamination procedures.
Sec. 605. Conforming amendments.
Sec. 606. Report to Congress.
Sec. 607. Estoppel effect of reexamination.
Sec. 608. Effective date.
TITLE VII—MISCELLANEOUS PATENT PROVISIONS
Sec. 701. Provisional applications.
Sec. 702. International applications.
Sec. 703. Certain limitations on damages for patent infringement not applicable.
Sec. 704. Electronic filing and publications.
Sec. 705. Study and report on biological deposits in support of biotechnology pat-
ents.
Sec. 706. Prior invention.
Sec. 707. Prior art exclusion for certain commonly assigned patents.
Sec. 708. Exchange of copies of patents with foreign countries.
Sec. 709. National security.
TITLE I—INVENTORS’ RIGHTS
SEC. 101. SHORT TITLE.
This title may be cited as the ‘‘Inventors’ Rights Act
of 1999’’.
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SEC. 102. INTEGRITY IN INVENTION PROMOTION SERVICES.
(a) Chapter 29 of title 35, United States Code, is
amended by adding at the end the following new section:
‘‘§ 297. Improper and deceptive invention promotion
‘‘(a) IN GENERAL.—An invention promoter shall have
a duty to disclose the following information to a customer
in writing, prior to entering into a contract for invention
promotion services:
‘‘(1) the total number of inventions evaluated by
the invention promoter for commercial potential in
the past 5 years, as well as the number of those inven-
tions that received positive evaluations, and the num-
ber of those inventions that received negative evalua-
tions;
‘‘(2) the total number of customers who have con-
tracted with the invention promoter in the past 5
years, not including customers who have purchased
trade show services, research, advertising, or other
nonmarketing services from the invention promoter,
or who have defaulted in their payment to the inven-
tion promoter;
‘‘(3) the total number of customers known by the
invention promoter to have received a net financial
profit as a direct result of the invention promotion
services provided by such invention promoter;
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‘‘(4) the total number of customers known by the
invention promoter to have received license agree-
ments for their inventions as a direct result of the in-
vention promotion services provided by such inven-
tion promoter; and
‘‘(5) the names and addresses of all previous in-
vention promotion companies with which the inven-
tion promoter or its officers have collectively or indi-
vidually been affiliated in the previous 10 years.
‘‘(b) CIVIL ACTION.—(1) Any customer who is found
by a court to have been injured by any material false or
fraudulent statement or representation, or any omission of
material fact, by an invention promoter (or any agent, em-
ployee, director, officer, partner, or independent contractor
of such invention promoter), or by the failure of an inven-
tion promoter to disclose such information as required
under subsection (a), may recover in a civil action against
the invention promoter (or the officers, directors, or part-
ners of such invention promoter), in addition to reasonable
costs and attorneys’ fees—
‘‘(A) the amount of actual damages incurred by
the plaintiff; or
‘‘(B) at the election of the plaintiff at any time
before final judgment is rendered, statutory damages
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in a sum of not more than $5,000, as the court con-
siders just.
‘‘(2) Notwithstanding paragraph (1), in a case where
the plaintiff sustains the burden of proof, and the court
finds, that the invention promoter intentionally misrepre-
sented or omitted a material fact to such customer, or will-
fully failed to disclose such information as required under
subsection (a), with the purpose of deceiving that customer,
the court may increase damages to not more than 3 times
the amount awarded, taking into account past complaints
made against the invention promoter that resulted in regu-
latory sanctions or other corrective actions based on those
records compiled by the Commissioner under subsection (d).
‘‘(c) DEFINITIONS.—For purposes of this section—
‘‘(1) a ‘contract for invention promotion services’
means a contract by which an invention promoter
undertakes invention promotion services for a cus-
tomer;
‘‘(2) a ‘customer’ is any person, firm, partner-
ship, corporation or other entity who enters into a
contract with an invention promoter for invention
promotion services;
‘‘(3) the term ‘invention promoter’ means any
person, firm, partnership, corporation, or other entity
who offers to perform or performs invention pro-
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motion services for, or on behalf of, a customer, but
does not include—
‘‘(A) any department or agency of the Fed-
eral Government or of a State or local govern-
ment;
‘‘(B) any nonprofit, charitable, scientific, or
educational organization, qualified under appli-
cable State law or described under section
170(b)(1)(A) of the Internal Revenue Code of
1986;
‘‘(C) any person or entity involved in the
evaluation to determine commercial potential of,
or offering to license or sell, a utility patent or
a previously filed nonprovisional utility patent
application;
‘‘(D) any party participating in a trans-
action involving the sale of the stock or assets of
a business; or
‘‘(E) any party who directly engages in the
business of retail sales of products or the dis-
tribution of products; and
‘‘(4) the term ‘invention promotion services’
means any act, where the customer is an individual,
done for the purpose of procuring a firm, corporation,
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or other entity to develop and market products or
services that include the invention.
‘‘(d) RECORDS OF COMPLAINTS.—
‘‘(1) RELEASE OF COMPLAINTS.—The Commis-
sioner shall make all complaints received by the Pat-
ent and Trademark Office involving invention pro-
moters publicly available, together with any response
of the invention promoters.
‘‘(2) REQUEST FOR COMPLAINTS.—The Commis-
sioner may request complaints relating to invention
promotion services from any Federal or State agency
and include such complaints in the records main-
tained under paragraph (1), together with any re-
sponse of the invention promoters.’’.
(b) CONFORMING AMENDMENT.—The table of sections
at the beginning of chapter 29 of title 35, United States
Code, is amended by adding at the end the following new
item:
‘‘§ 297. Improper and deceptive invention promotion.’’.
SEC. 103. EFFECTIVE DATE.
This title and the amendments made by this title shall
take effect 60 days after the date of the enactment of this
Act.
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TITLE II—PATENT AND
TRADEMARK FEE FAIRNESS
SEC. 201. SHORT TITLE.
This title may be cited as the ‘‘Patent and Trademark
Fee Fairness Act of 1999’’.
SEC. 202. ADJUSTMENT OF PATENT FEES.
(a) ORIGINAL FILING FEE.—Section 41(a)(1)(A) of
title 35, United States Code, relating to the fee for filing
an original patent application, is amended by striking
‘‘$760’’ and inserting ‘‘$690’’.
(b) REISSUE FEE.—Section 41(a)(4)(A) of title 35,
United States Code, relating to the fee for filing for a reissue
of a patent, is amended by striking ‘‘$760’’ and inserting
‘‘$690’’.
(c) NATIONAL FEE FOR CERTAIN INTERNATIONAL AP-
PLICATIONS.—Section 41(a)(10) of title 35, United States
Code, relating to the national fee for certain international
applications, is amended by striking ‘‘$760’’ and inserting
‘‘$690’’.
(d) MAINTENANCE FEES.—Section 41(b)(1) of title 35,
United States Code, relating to certain maintenance fees,
is amended by striking ‘‘$940’’ and inserting ‘‘$830’’.
SEC. 203. ADJUSTMENT OF TRADEMARK FEES.
Notwithstanding the second sentence of section 31(a)
of the Trademark Act of 1946 (15 U.S.C. 111(a)), the Com-
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missioner of Patents and Trademarks is authorized in fiscal
year 2000 to adjust trademark fees without regard to fluc-
tuations in the Consumer Price Index during the preceding
12 months.
SEC. 204. STUDY ON ALTERNATIVE FEE STRUCTURES.
The Commissioner of Patents and Trademarks shall
conduct a study of alternative fee structures that could be
adopted by the United States Patent and Trademark Office
to encourage maximum participation by the inventor com-
munity in the United States. The Commissioner shall sub-
mit such study to the Committees on the Judiciary of the
House of Representatives and the Senate not later than 1
year after the date of enactment of this Act.
SEC. 205. PATENT AND TRADEMARK OFFICE FUNDING.
Section 42(c) of title 35, United States Code, is amend-
ed in the second sentence—
(1) by striking ‘‘Fees available’’ and inserting
‘‘All fees available’’; and
(2) by striking ‘‘may’’ and inserting ‘‘shall’’.
SEC. 206. EFFECTIVE DATE.
(a) Except as provided in subsection (b), the amend-
ments made by this title shall take effect on the date of the
enactment of this Act.
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(b) The amendments made by section 202 of this title
shall take effect 30 days after the date of the enactment of
this Act.
TITLE III—FIRST INVENTOR
DEFENSE
SEC. 301. SHORT TITLE.
This title may be cited as the ‘‘First Inventor Defense
Act of 1999’’.
SEC. 302. DEFENSE TO PATENT INFRINGEMENT BASED ON
EARLIER INVENTOR.
(a) DEFENSE.—Chapter 28 of title 35, United States
Code, is amended by adding at the end the following new
section:
‘‘§ 273. Defense to infringement based on earlier in-
ventor
‘‘(a) DEFINITIONS.—For purposes of this section—
‘‘(1) the terms ‘commercially used’ and ‘commer-
cial use’ mean use of a method in the United States,
so long as such use is in connection with an internal
commercial use or an actual arm’s-length sale or
other arm’s-length commercial transfer of a useful end
result, whether or not the subject matter at issue is
accessible to or otherwise known to the public, except
that the subject matter for which commercial mar-
keting or use is subject to a premarketing regulatory
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review period during which the safety or efficacy of
the subject matter is established, including any period
specified in section 156(g), shall be deemed ‘commer-
cially used’ and in ‘commercial use’ during such reg-
ulatory review period;
‘‘(2) in the case of activities performed by a non-
profit research laboratory, or nonprofit entity such as
a university, research center, or hospital, a use for
which the public is the intended beneficiary shall be
considered to be a use described in paragraph (1), ex-
cept that the use—
‘‘(A) may be asserted as a defense under
this section only for continued use by and in the
laboratory or nonprofit entity; and
‘‘(B) may not be asserted as a defense with
respect to any subsequent commercialization or
use outside such laboratory or nonprofit entity;
‘‘(3) the term ‘method’ means a method of doing
or conducting business; and
‘‘(4) the ‘effective filing date’ of a patent is the
earlier of the actual filing date of the application for
the patent or the filing date of any earlier United
States, foreign, or international application to which
the subject matter at issue is entitled under section
199, 120, or 365 of this title.
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‘‘(b) DEFENSE TO INFRINGEMENT.—
‘‘(1) IN GENERAL.—It shall be a defense to an
action for infringement under section 271 of this title
with respect to any subject matter that would other-
wise infringe one or more claims for a method in the
patent being asserted against a person, if such person
had, acting in good faith, actually reduced the subject
matter to practice at least one year before the effective
filing date of such patent, and commercially used the
subject matter before the effective filing date of such
patent.
‘‘(2) EXHAUSTION OF RIGHT.—The sale or other
disposition of a useful end product produced by a
patented method, by a person entitled to assert a de-
fense under this section with respect to that useful end
result shall exhaust the patent owner’s rights under
the patent to the extent such rights would have been
exhausted had such sale or other disposition been
made by the patent owner.
‘‘(3) LIMITATIONS AND QUALIFICATIONS OF DE-
FENSE.—The defense to infringement under this sec-
tion is subject to the following:
‘‘(A) PATENT.—A person may not assert the
defense under this section unless the invention
for which the defense is asserted is for a method.
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‘‘(B) DERIVATION.—A person may not as-
sert the defense under this section if the subject
matter on which the defense is based was derived
from the patentee or persons in privity with the
patentee.
‘‘(C) NOT A GENERAL LICENSE.—The de-
fense asserted by a person under this section is
not a general license under all claims of the pat-
ent at issue, but extends only to the specific sub-
ject matter claimed in the patent with respect to
which the person can assert a defense under this
chapter, except that the defense shall also extend
to variations in the quantity or volume of use of
the claimed subject matter, and to improvements
in the claimed subject matter that do not in-
fringe additional specifically claimed subject
matter of the patent.
‘‘(4) BURDEN OF PROOF.—A person asserting the
defense under this section shall have the burden of es-
tablishing the defense by clear and convincing evi-
dence.
‘‘(5) ABANDONMENT OF USE.—A person who has
abandoned commercial use of subject matter may not
rely on activities performed before the date of such
abandonment in establishing a defense under this sec-
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ceptional for the purpose of awarding attorney’s fees
under section 285 of this title.
‘‘(9) INVALIDITY.—A patent shall not be deemed
to be invalid under section 102 or 103 of this title
solely because a defense is raised or established under
this section.’’.
(b) CONFORMING AMENDMENT.—The table of sections
at the beginning of chapter 28 of title 35, United States
Code, is amended by adding at the end the following new
item:
‘‘273. Defense to infringement based on earlier inventor.’’.
SEC. 303. STUDY AND REPORT ON BUSINESS METHODS PAT-
ENTS.
(a) IN GENERAL.—No later than 120 days after the
date of the enactment of this Act, the General Accounting
Office, in consultation with the Patent and Trademark Of-
fice, shall conduct a study and submit a report to the Judi-
ciary Committees of the Senate and House of Representa-
tives on the effect on innovation, competition (foreign and
domestic), and American businesses (including electronic
commerce) of the quality of patents being issued on business
methods by the Patent and Trademark Office.
(b) CONTENTS.—The study conducted under this sec-
tion shall include—
(1) an examination of the number of applica-
tions received for patents on methods of doing busi-
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ness, including recent trends and forecasts, and the
number of patents granted based on such applica-
tions;
(2) an examination of the nature of the appli-
cants filing for and receiving such business methods
patents, including by industry sectors, the extent to
which such applicants have filed for patent protection
for such business methods in foreign countries, and
the nature of the technologies or business models rep-
resented in such patents and patent applications;
(3) an evaluation of the database of patents,
publications, and other information used by the Pat-
ent and Trademark Office to examine applications for
patents on methods of doing business;
(4) an analysis of the types of skills needed by
patent examiners to adequately examine applications
for patents on business methods, whether there are a
sufficient number of examiners handling these appli-
cations with the requisite skills, and what types of
training, if any, may be called for to augment these
skills;
(5) an analysis of the economic and competitive
impact of patents issued on business methods on
American businesses, particularly on businesses in-
volved in electronic commerce, including the effect of
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such patents on companies’ abilities to raise invest-
ment capital, compete in their relevant markets, and
innovate in emerging markets and technologies; and
(6) the extent, outcome, and effects on American
business, competition, and innovation of litigation
surrounding approved business methods patents.
SEC. 304. EFFECTIVE DATE AND APPLICABILITY.
This title and the amendments made by this title shall
take effect on the date of the enactment of this Act, but shall
not apply to any action for infringement that is pending
on such date of the enactment or with respect to any subject
matter for which an adjudication of infringement, includ-
ing a consent judgment, has been made before such date of
enactment.
TITLE IV—PATENT TERM
GUARANTEE
SEC. 401. SHORT TITLE.
This title may be cited as the ‘‘Patent Term Guarantee
Act of 1999’’.
SEC. 402. PATENT TERM GUARANTEE AUTHORITY.
(a) ADJUSTMENT OF PATENT TERM.—Section 154(b)
of title 35, United States Code, is amended to read as fol-
lows:
‘‘(b) ADJUSTMENT OF PATENT TERM.—
‘‘(1) PATENT TERM GUARANTEES.—
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‘‘(A) GUARANTEE OF PROMPT PATENT AND
TRADEMARK OFFICE RESPONSES.—Subject to the
limitations under paragraph (2), if the issue of
an original patent is delayed due to the failure
of the Patent and Trademark Office to—
‘‘(i) provide at least 1 of the notifica-
tions under section 132 of this title or a no-
tice of allowance under section 151 of this
title not later than 14 months after—
‘‘(I) the date on which an appli-
cation was filed under section 111(a)
of this title; or
‘‘(II) the date on which an inter-
national application fulfilled the re-
quirements of section 371 of this title;
‘‘(ii) respond to a reply under section
132, or to an appeal taken under section
134, within 4 months after the date on
which the reply was filed or the appeal was
taken;
‘‘(iii) act on an application within 4
months after the date of a decision by the
Board of Patent Appeals and Interferences
under section 134 or 135 or a decision by
a Federal court under section 141, 145, or
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146 in a case in which allowable claims re-
main in the application; or
‘‘(iv) issue a patent within 4 months
after the date on which the issue fee was
paid under section 151 and all outstanding
requirements were satisfied,
the term of the patent shall be extended one day
for each day after the end of the period specified
in clause (i), (ii), (iii), or (iv), as the case may
be, until the action described in such clause is
taken.
‘‘(B) GUARANTEE
OF
NO
MORE
THAN
3-
YEAR
APPLICATION
PENDENCY.—Subject to the
limitations under paragraph (2), if the issue of
an original patent is delayed due to the failure
of the Patent and Trademark Office to issue a
patent within 3 years after the actual filing date
of the application in the United States, not
including—
‘‘(i) any time consumed by continued
examination of the application requested by
the applicant under section 132(b);
‘‘(ii) any time consumed by a pro-
ceeding under section 135(a), any time con-
sumed by the imposition of an order pursu-
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ant to section 181, or any time consumed
by appellate review by the Board of Patent
Appeals and Interferences or by a Federal
court; or
‘‘(iii) any delay in the processing of
the application by the Patent and Trade-
mark Office requested by the applicant ex-
cept as permitted by paragraph (3)(C),
the term of the patent shall be extended 1 day for
each day after the end of that 3-year period until
the patent is issued.
‘‘(C) GUARANTEE
OR
ADJUSTMENTS
FOR
DELAYS DUE TO INTERFERENCES, SECRECY OR-
DERS, AND APPEALS.—Subject to the limitations
under paragraph (2), if the issue of an original
patent is delayed due to—
‘‘(i) a proceeding under section 135(a);
‘‘(ii) the imposition of an order pursu-
ant to section 181; or
‘‘(iii) appellate review by the Board of
Patent Appeals and Interferences or by a
Federal court in a case in which the patent
was issued pursuant to a decision in the re-
view reversing an adverse determination of
patentability,
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paragraph (1)(B), an applicant shall be
deemed to have failed to engage in reason-
able efforts to conclude processing or exam-
ination of an application for the cumulative
total of any periods of time in excess of 3
months that are taken to respond to a notice
from the Office making any rejection, objec-
tion, argument, or other request, measuring
such 3-month period from the date the no-
tice was given or mailed to the applicant.
‘‘(iii) The Commissioner shall prescribe
regulations establishing the circumstances
that constitute a failure of an applicant to
engage in reasonable efforts to conclude
processing or examination of an applica-
tion.
‘‘(3) PROCEDURES FOR PATENT TERM ADJUST-
MENT DETERMINATION.—
‘‘(A) The Commissioner shall prescribe reg-
ulations establishing procedures for the applica-
tion for and determination of patent term ad-
justments under this subsection.
‘‘(B) Under the procedures established under
subparagraph (A), the Commissioner shall—
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‘‘(i) make a determination of the pe-
riod of any patent term adjustment under
this subsection, and shall transmit a notice
of that determination with the written no-
tice of allowance of the application under
section 151; and
‘‘(ii) provide the applicant one oppor-
tunity to request reconsideration of any
patent term adjustment determination made
by the Commissioner.
‘‘(C) The Commissioner shall reinstate all
or part of the cumulative period of time of an
adjustment under paragraph (2)(C) if the appli-
cant, prior to the issuance of the patent, makes
a showing that, in spite of all due care, the ap-
plicant was unable to respond within the 3-
month period, but in no case shall more than 3
additional months for each such response beyond
the original 3-month period be reinstated.
‘‘(D) The Commissioner shall proceed to
grant the patent after completion of the Commis-
sioner’s determination of a patent term adjust-
ment under the procedures established under this
subsection, notwithstanding any appeal taken by
the applicant of such determination.
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‘‘(4) APPEAL OF PATENT TERM ADJUSTMENT DE-
TERMINATION.—
‘‘(A) An applicant dissatisfied with a deter-
mination made by the Commissioner under
paragraph (3) shall have remedy by a civil ac-
tion against the Commissioner filed in the
United States District Court for the District of
Columbia within 180 days after the grant of the
patent. Chapter 7 of title 5 shall apply to such
action. Any final judgment resulting in a change
to the period of adjustment of the patent term
shall be served on the Commissioner, and the
Commissioner shall thereafter alter the term of
the patent to reflect such change.
‘‘(B) The determination of a patent term
adjustment under this subsection shall not be
subject to appeal or challenge by a third party
prior to the grant of the patent.’’.
(b) CONFORMING AMENDMENTS.—
(1) Section 282 of title 35, United States Code,
is amended in the fourth paragraph by striking ‘‘156
of this title’’ and inserting ‘‘154(b) or 156 of this
title’’.
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(2) Section 1295(a)(4)(C) of title 28, United
States Code, is amended by striking ‘‘145 or 146’’
and inserting ‘‘145, 146, or 154(b)’’.
SEC. 403. CONTINUED EXAMINATION OF PATENT APPLICA-
TIONS.
Section 132 of title 35, United States Code, is
amended—
(1) in the first sentence by striking ‘‘Whenever’’
and inserting ‘‘(a) Whenever’’; and
(2) by adding at the end the following:
‘‘(b) The Commissioner shall prescribe regulations to
provide for the continued examination of applications for
patent at the request of the applicant. The Commissioner
may establish appropriate fees for such continued examina-
tion and shall provide a 50 percent reduction in such fees
for small entities that qualify for reduced fees under section
41(h)(1) of this title.’’.
SEC. 404. TECHNICAL CLARIFICATION.
Section 156(a) of title 35, United States Code, is
amended in the matter preceding paragraph (1) by insert-
ing ‘‘, which shall include any patent term adjustment
granted under section 154(b),’’ after ‘‘the original expira-
tion date of the patent’’.
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SEC. 405. EFFECTIVE DATE.
(a) AMENDMENTS MADE BY SECTIONS 402 AND 404.—
The amendments made by sections 402 and 404 shall take
effect on the date that is 6 months after the date of the enact-
ment of this Act and, except for a design patent application
filed under chapter 16 of title 35, United States Code, shall
apply to any application filed on or after the date that is
6 months after the date of the enactment of this Act.
(b) AMENDMENTS
MADE
BY
SECTION
403.—The
amendments made by section 403—
(1) shall take effect on the date that is 6 months
after the date of the enactment of this Act, and shall
apply to all applications filed under section 111(a) of
title 35, United States Code, on or after June 8, 1995,
and all applications complying with section 371 of
title 35, United States Code, that resulted from inter-
national applications filed on or after June 8, 1995;
and
(2) do not apply to applications for design pat-
ents under chapter 16 of title 35, United States Code.
TITLE 
V—DOMESTIC 
PUBLICA-
TION OF PATENT APPLICA-
TIONS PUBLISHED ABROAD
SEC. 501. SHORT TITLE.
This title may be cited as the ‘‘Domestic Publication
of Foreign Filed Patent Applications Act of 1999’’.
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SEC. 502. PUBLICATION.
(a) PUBLICATION.—Section 122 of title 35, United
States Code, is amended to read as follows:
‘‘§ 122. Confidential status of applications; publica-
tion of patent applications
‘‘(a) CONFIDENTIALITY.—Except as provided in sub-
section (b), applications for patents shall be kept in con-
fidence by the Patent and Trademark Office and no infor-
mation concerning the same given without authority of the
applicant or owner unless necessary to carry out the provi-
sions of an Act of Congress or in such special circumstances
as may be determined by the Commissioner.
‘‘(b) PUBLICATION.—
‘‘(1) IN
GENERAL.—(A) Subject to paragraph
(2), each application for a patent shall be published,
in accordance with procedures determined by the
Commissioner, promptly after the expiration of a pe-
riod of 18 months from the earliest filing date for
which a benefit is sought under this title. At the re-
quest of the applicant, an application may be pub-
lished earlier than the end of such 18-month period.
‘‘(B) No information concerning published pat-
ent applications shall be made available to the public
except as the Commissioner determines.
‘‘(C) Notwithstanding any other provision of
law, a determination by the Commissioner to release
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or not to release information concerning a published
patent application shall be final and nonreviewable.
‘‘(2) EXCEPTIONS.—(A) An application shall not
be published if that application is—
‘‘(i) no longer pending;
‘‘(ii) subject to a secrecy order pursuant to
section 181 of this title;
‘‘(iii) a provisional application filed under
section 111(b) of this title; or
‘‘(iv) an application for a design patent
filed under chapter 16 of this title.
‘‘(B)(i) Where an applicant makes a request
upon filing, certifying that the invention disclosed in
the application has not and will not be the subject of
an application filed in another country, or under a
multilateral international agreement, that requires
publication of applications 18 months after filing, the
application shall not be published as provided in
paragraph (1).
‘‘(ii) An applicant may rescind a request made
under clause (i) at any time.
‘‘(iii) An applicant who has made a request
under clause (i) but who subsequently files, in a for-
eign country or under a multilateral international
agreement specified in clause (i), an application di-
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rected to the invention disclosed in the application
filed in the Patent and Trademark Office, shall notify
the Commissioner of such filing not later than 45
days after the date of the filing of such foreign or
international application. A failure of the applicant
to provide such notice within the prescribed period
shall result in the application being regarded as
abandoned, unless it is shown to the satisfaction of
the Commissioner that the delay in submitting the
notice was unintentional.
‘‘(iv) Where an applicant rescinds a request
made under clause (i) or notifies the Commissioner
that an application was filed in a foreign country or
under a multilateral international agreement speci-
fied in clause (i), the application shall be published
in accordance with the provisions of paragraph (1) on
or as soon as is practical after the date that is speci-
fied in clause (i).
‘‘(v) If an applicant has filed applications in
one or more foreign countries, directly or through a
multilateral international agreement, and such for-
eign filed applications corresponding to an applica-
tion filed in the Patent and Trademark Office or the
description of the invention in such foreign filed ap-
plications is less extensive than the application or de-
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scription of the invention in the application filed in
the Patent and Trademark Office, the applicant may
submit a redacted copy of the application filed in the
Patent and Trademark Office eliminating any part
or description of the invention in such application
that is not also contained in any of the corresponding
applications filed in a foreign country. The Commis-
sioner may only publish the redacted copy of the ap-
plication unless the redacted copy of the application
is not received within 16 months after the earliest ef-
fective filing date for which a benefit is sought under
this title. The provisions of section 154(d) shall not
apply to a claim if the description of the invention
published in the redacted application filed under this
clause with respect to the claim does not enable a per-
son skilled in the art to make and use the subject mat-
ter of the claim.
‘‘(c) PROTEST AND PRE-ISSUANCE OPPOSITION.—The
Commissioner shall establish appropriate procedures to en-
sure that no protest or other form of pre-issuance opposition
to the grant of a patent on an application may be initiated
after publication of the application without the express
written consent of the applicant.
‘‘(d) NATIONAL SECURITY.—No application for patent
shall be published under subsection (b)(1) where the publi-
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cation or disclosure of such invention would be detrimental
to the national security. The Commissioner shall establish
appropriate procedures to ensure that such applications are
promptly identified and the secrecy of such inventions is
maintained in accordance with chapter 17 of this title.’’.
(b) STUDY.—
(1) IN GENERAL.—The General Accounting Of-
fice shall conduct a 3-year study of the applicants
who file only in the United States after the effective
date of this title and shall provide the results of such
study to the Judiciary Committees of the House of
Representatives and the Senate.
(2) CONTENTS.—The study conducted under
paragraph (1) shall—
(A) consider the number of such applicants
in relation to the number of applicants who file
in the United States and outside the United
States;
(B) examine how many domestic-only filers
request at the time of filing not to be published;
(C) examine how many such filers rescind
that request or later choose to file abroad;
(D) examine the status of the entity seeking
an application and any correlation that may
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exist between such status and the publication of
patent applications; and
(E) examine the abandonment/issuance ra-
tios and length of application pendency before
patent issuance or abandonment for published
versus unpublished applications.
SEC. 503. TIME FOR CLAIMING BENEFIT OF EARLIER FILING
DATE.
(a) IN A FOREIGN COUNTRY.—Section 119(b) of title
35, United States Code, is amended to read as follows:
‘‘(b)(1) No application for patent shall be entitled to
this right of priority unless a claim is filed in the Patent
and Trademark Office, identifying the foreign application
by specifying the application number on that foreign appli-
cation, the intellectual property authority or country in or
for which the application was filed, and the date of filing
the application, at such time during the pendency of the
application as required by the Commissioner.
‘‘(2) The Commissioner may consider the failure of the
applicant to file a timely claim for priority as a waiver
of any such claim. The Commissioner may establish proce-
dures, including the payment of a surcharge, to accept an
unintentionally delayed claim under this section.
‘‘(3) The Commissioner may require a certified copy
of the original foreign application, specification, and draw-
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ings upon which it is based, a translation if not in the
English language, and such other information as the Com-
missioner considers necessary. Any such certification shall
be made by the foreign intellectual property authority in
which the foreign application was filed and show the date
of the application and of the filing of the specification and
other papers.’’.
(b) IN THE UNITED STATES.—
(1) IN
GENERAL.—Section 120 of title 35,
United States Code, is amended by adding at the end
the following: ‘‘No application shall be entitled to the
benefit of an earlier filed application under this sec-
tion unless an amendment containing the specific ref-
erence to the earlier filed application is submitted at
such time during the pendency of the application as
required by the Commissioner. The Commissioner
may consider the failure to submit such an amend-
ment within the time period as a waiver of any ben-
efit under this section. The Commissioner may estab-
lish procedures, including the payment of a surcharge,
to accept an unintentionally delayed submission of an
amendment under this section.’’.
(2) RIGHT OF PRIORITY.—Section 119(e)(1) of
title 35, United States Code, is amended by adding
at the end the following: ‘‘No application shall be en-
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titled to the benefit of an earlier filed provisional ap-
plication under this subsection unless an amendment
containing the specific reference to the earlier filed
provisional application is submitted at such time
during the pendency of the application as required by
the Commissioner. The Commissioner may consider
the failure to submit such an amendment within that
time period as a waiver of any benefit under this sub-
section. The Commissioner may establish procedures,
including the payment of a surcharge, to accept an
unintentionally delayed submission of an amendment
under this subsection during the pendency of the ap-
plication.’’.
SEC. 504. PROVISIONAL RIGHTS.
Section 154 of title 35, United States Code, is
amended—
(1) in the section caption by inserting ‘‘; provi-
sional rights’’ after ‘‘patent’’; and
(2) by adding at the end the following new sec-
tion:
‘‘(d) PROVISIONAL RIGHTS.—
‘‘(1) IN GENERAL.—In addition to other rights
provided by this section, a patent shall include the
right to obtain a reasonable royalty from any person
who, during the period beginning on the date of pub-
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lication of the application for such patent pursuant
to section 122(b), or in the case of an international
application filed under the treaty defined in section
351(a) designating the United States under Article
21(2)(a) of such treaty, the date of publication of the
application, and ending on the date the patent is
issued—
‘‘(A)(i) makes, uses, offers for sale, or sells
in the United States the invention as claimed in
the published patent application or imports such
an invention into the United States; or
‘‘(ii) if the invention as claimed in the pub-
lished patent application is a process, uses, offers
for sale, or sells in the United States or imports
into the United States products made by that
process as claimed in the published patent appli-
cation; and
‘‘(B) had actual notice of the published pat-
ent application and, in a case in which the right
arising under this paragraph is based upon an
international application designating the United
States that is published in a language other than
English, had a translation of the international
application into the English language.
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‘‘(2) RIGHT
BASED
ON
SUBSTANTIALLY
IDEN-
TICAL INVENTIONS.—The right under paragraph (1)
to obtain a reasonable royalty shall not be available
under this subsection unless the invention as claimed
in the patent is substantially identical to the inven-
tion as claimed in the published patent application.
‘‘(3) TIME LIMITATION ON OBTAINING A REASON-
ABLE ROYALTY.—The right under paragraph (1) to
obtain a reasonable royalty shall be available only in
an action brought not later than 6 years after the
patent is issued. The right under paragraph (1) to ob-
tain a reasonable royalty shall not be affected by the
duration of the period described in paragraph (1).
‘‘(4) REQUIREMENTS FOR INTERNATIONAL APPLI-
CATIONS.—
‘‘(A) EFFECTIVE
DATE.—The right under
paragraph (1) to obtain a reasonable royalty
based upon the publication under the treaty de-
fined in section 351(a) of an international ap-
plication designating the United States shall
commence on the date on which the Patent and
Trademark Office receives a copy of the publica-
tion under the treaty of the international appli-
cation, or, if the publication under the treaty of
the international application is in a language
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other than English, on the date on which the
Patent and Trademark Office receives a trans-
lation of the international application in the
English language.
‘‘(B) COPIES.—The Commissioner may re-
quire the applicant to provide a copy of the
international application and a translation
thereof.’’.
SEC. 505. PRIOR ART EFFECT OF PUBLISHED APPLICA-
TIONS.
Section 102(e) of title 35, United States Code, is
amended to read as follows:
‘‘(e) the invention was described in—
‘‘(1)(A) an application for patent, published
pursuant to section 122(b), by another filed in the
United States before the invention by the applicant
for patent, except that an international application
filed under the treaty defined in section 351(a) shall
have the effect under this subsection of a national ap-
plication published under section 122(b) only if the
international application designating the United
States was published under Article 21(2)(a) of such
treaty in the English language; or
‘‘(B) a patent granted on an application for pat-
ent by another filed in the United States before the
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invention by the applicant for patent, except that a
patent shall not be deemed filed in the United States
for the purposes of this subsection based on the filing
of an international application filed under the treaty
defined in section 351(a); or’’.
SEC. 506. COST RECOVERY FOR PUBLICATION.
The Commissioner of Patents and Trademarks shall
recover the cost of early publication required by the amend-
ment made by section 502 by charging a separate publica-
tion fee after notice of allowance is given pursuant to sec-
tion 151 of title 35, United States Code.
SEC. 507. CONFORMING AMENDMENTS.
The following provisions of title 35, United States
Code, are amended:
(1) Section 11 is amended in paragraph (1) of
subsection (a) by inserting ‘‘and published applica-
tions for patents’’ after ‘‘Patents’’.
(2) Section 12 is amended—
(A) in the section caption by inserting
‘‘and applications’’ after ‘‘patents’’; and
(B) by inserting ‘‘and published applica-
tions for patents’’ after ‘‘patents’’.
(3) Section 13 is amended—
(A) in the section caption by inserting
‘‘and applications’’ after ‘‘patents’’; and
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(B) by inserting ‘‘and published applica-
tions for patents’’ after ‘‘patents’’.
(4) The items relating to sections 12 and 13 in
the table of sections for chapter 1 are each amended
by inserting ‘‘and applications’’ after ‘‘patents’’.
(5) The item relating to section 122 in the table
of sections for chapter 11 is amended by inserting ‘‘;
publication of patent applications’’ after ‘‘applica-
tions’’.
(6) The item relating to section 154 in the table
of sections for chapter 14 is amended by inserting ‘‘;
provisional rights’’ after ‘‘patent’’.
(7) Section 181 is amended—
(A) in the first undesignated paragraph—
(i) by inserting ‘‘by the publication of
an application or’’ after ‘‘disclosure’’; and
(ii) by inserting ‘‘the publication of the
application or’’ after ‘‘withhold’’;
(B) in the second undesignated paragraph
by inserting ‘‘by the publication of an applica-
tion or’’ after ‘‘disclosure of an invention’’;
(C) in the third undesignated paragraph—
(i) by inserting ‘‘by the publication of
the application or’’ after ‘‘disclosure of the
invention’’; and
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Trademark Office on the merits of the inter partes reexam-
ination conducted in accordance with section 314.
‘‘§ 314. Conduct of inter partes reexamination pro-
ceedings
‘‘(a) IN GENERAL.—Subject to subsection (b), reexam-
ination shall be conducted according to the procedures es-
tablished for initial examination under the provisions of
sections 132 and 133, except as provided for under this sec-
tion. In any inter partes reexamination proceeding under
this chapter, the patent owner shall be permitted to propose
any amendment to the patent and a new claim or claims,
except that no proposed amended or new claim enlarging
the scope of the claims of the patent shall be permitted.
‘‘(b) RESPONSE.—(1) This subsection shall apply to
any inter partes reexamination proceeding in which the
order for inter partes reexamination is based upon a request
by a third-party requester.
‘‘(2) With the exception of the inter partes reexamina-
tion request, any document filed by either the patent owner
or the third-party requester shall be served on the other
party. In addition, the third-party requester shall receive
a copy of any communication sent by the Office to the pat-
ent owner concerning the patent subject to the inter partes
reexamination proceeding.