TITLE IV—UNITED STATES PUB-
LICATION OF PATENT APPLI-
CATIONS 
PUBLISHED
ABROAD
SEC. 401. SHORT TITLE.
This title may be referred to as the ‘‘Publication of
Foreign Filed Applications Act’’.
SEC. 402. 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 any such application shall be given
without authority of the applicant or owner unless nec-
essary to carry out the provisions of an Act of Congress
or in such special circumstances as may be determined by
the Director.
‘‘(b) UNITED STATES PUBLICATION
OF APPLICA-
TIONS PUBLISHED ABROAD.—
‘‘(1) IN GENERAL.—(A) Subject to paragraph
(2), each application for patent, except applications
for design patents filed under chapter 16 and provi-
sional applications filed under section 111(b), shall
be published, in accordance with procedures deter-
mined by the Director, promptly upon the expiration
of a period of 18 months after the earliest filing date
for which a benefit is sought under this title. At the
request of the applicant, an application may be 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 Director determines.
‘‘(C) Pursuant to this title and notwithstanding
any other provision of law, a determination by the
Director to release or not to release information con-
cerning a published patent application shall be final
and nonreviewable.
‘‘(2) EXCEPTIONS.—(A) An application that is
no longer pending shall not be published.
‘‘(B) An application that is subject to a secrecy
order under section 181 shall not be published.
‘‘(C)(i) If an applicant, upon filing, makes a re-
quest that an application not be published pursuant
to paragraph (1), and states in such request that the
invention disclosed in the application has not been
the subject of an application filed in another coun-
try, 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after filing, the application shall not be published as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-
rected to the invention disclosed in the application
filed in the Patent and Trademark Office, shall no-
tify the Director of such filing not later than 45
days after the date of the filing of such foreign or
international application. A failure of the applicant
to provide such notice within the prescribed period
shall result in the application being regarded as
abandoned, unless it is shown to the satisfaction of
the Director that the delay in submitting the notice
was unintentional.
‘‘(iv) If a notice is made pursuant to clause
(iii), or the applicant rescinds a request pursuant to
clause (ii), the Director shall publish the application
on or as soon as is practical after the date that is
specified in clause (i).
‘‘(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
description of the invention in the application filed
in the Patent and Trademark Office, the applicant
may submit a redacted copy of the application filed
in the Patent and Trademark Office eliminating any
part or description of the invention in such applica-
tion that is not also contained in any of the cor-
responding applications filed in a foreign country.
The Director may only publish the redacted copy of
the application unless the redacted copy of the appli-
cation is not received within 16 months after the
earliest effective filing date for which a benefit is
sought under this title. The provisions of section
154(d) shall not apply to a claim if the description
of the invention published in the redacted applica-
tion filed under this clause with respect to the claim
does not enable a person skilled in the art to make
and use the subject matter of the claim.
‘‘(c) PROTEST AND PRE-ISSUANCE OPPOSITION.—
The Director shall establish appropriate procedures to en-
sure that no protest or other form of pre-issuance opposi-
tion 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.’’.
(b) STUDY BY GAO.—
(1) IN GENERAL.—The Comptroller General of
the United States shall conduct a study of appli-
cants for patents who file only in the United States
during the 3-year period beginning on the effective
date of this title.
(2) CONTENTS.—The study conducted under
paragraph (1) shall—
(A) consider the number of such applicants
for patent in relation to the number of appli-
cants 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; and
(D) examine the manner of entity seeking
an application and any correlation that may
exist between such manner and publication of
patent applications.
(3) REPORT TO JUDICIARY COMMITTEES.—The
Comptroller General shall submit to the Committees
on the Judiciary of the House of Representatives
and the Senate the results of the study conducted
under this subsection.
SEC. 403. TIME FOR CLAIMING BENEFIT OF EARLIER FIL-
ING 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, identifying the foreign
application by specifying its application number, country,
and the day, month, and year of its filing, is filed in the
Patent and Trademark Office at such time during the
pendency of the application as required by the Director.
‘‘(2) The Director may consider the failure of the ap-
plicant to file a timely claim for priority as a waiver of
any such claim. The Director may establish procedures,
including the payment of a surcharge, to accept an unin-
tentionally delayed claim under this section.
‘‘(3) The Director may require a certified copy of the
original foreign application, specification, and drawings
upon which it is based, a translation if not in the English
language, and such other information as the Director con-
siders necessary. Any such certification shall be made by
the foreign intellectual property authority in which the for-
eign application was filed and show the date of the appli-
cation and of the filing of the specification and other pa-
pers.’’.
(b) IN THE UNITED STATES.—Section 120 of title
35, United States Code, is amended by adding at the end
the following: ‘‘The Director may determine the time pe-
riod during the pendency of the application within which
an amendment containing the specific reference to the ear-
lier filed application is submitted. The Director may con-
sider the failure to submit such an amendment within that
time period as a waiver of any benefit under this section.
The Director may establish procedures, including the pay-
ment of a surcharge, to accept unintentionally late submis-
sions of amendments under this section.’’.
SEC. 404. PROVISIONAL RIGHTS.
Section 154 of title 35, United States Code, is
amended—
(1) in the section caption by inserting ‘‘; pro-
visional rights’’ after ‘‘patent’’; and
(2) by adding at the end the following new sub-
section:
‘‘(d) PROVISIONAL RIGHTS.—-
incorporating any additional claims into the patent
or issuing a separate patent.’’.
SEC. 405. 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
application published under section 122(b) only if
the international application designating the United
States was published under Article 21(2)(a) of such
treaty in the English language, or
‘‘(B) a patent granted on an application for
patent by another filed in the United States before
the invention by the applicant for patent, except that
a patent shall not be deemed filed in the United
States for the purposes of this subsection based on
the filing of an international application filed under
the treaty defined in section 351(a), or’’.
SEC. 406. COST RECOVERY FOR PUBLICATION.
The Director of the United States Patent and Trade-
mark Office shall recover the cost of early publication re-
quired by the amendment made by section 402 by charg-
ing a separate publication fee after notice of allowance is
given pursuant to section 151 of title 35, United States
Code.
SEC. 407. 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
(B) by inserting ‘‘and published applica-
tions for patents’’ after ‘‘patents’’.
(4) 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’’.
(5) The item relating to section 154 in the table
of sections for chapter 14 is amended by inserting
‘‘; provisional rights’’ after ‘‘patent’’.
(6) 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
(ii) by inserting ‘‘the publication of
the application or’’ after ‘‘withhold’’; and
(D) in the fourth undesignated paragraph
by inserting ‘‘the publication of an application
or’’ after ‘‘and’’ in the first sentence.
(7) Section 252 is amended in the first undesig-
nated paragraph by inserting ‘‘substantially’’ before
‘‘identical’’ each place it appears.
(8) Section 284 is amended by adding at the
end of the second undesignated paragraph the fol-
lowing: ‘‘Increased damages under this paragraph
shall not apply to provisional rights under section
154(d) of this title.’’.
(9) Section 374 is amended to read as follows:
‘‘§ 374. Publication of international application: effect
‘‘The publication under the treaty defined in section
351(a) of this title of an international application desig-
nating the United States shall confer the same rights and
shall have the same effect under this title as an application
for patent published under section 122(b), except as pro-
vided in sections 102(e) and 154(d).’’.
SEC. 408. EFFECTIVE DATE.
This title and the amendments made by this title,
shall take effect on the date that is 1 year after the date
of the enactment of this Act and shall apply to all applica-
tions filed under section 111 of title 35, United States
Code, on or after that date, and all applications complying
with section 371 of title 35, United States Code, that re-
sulted from international applications filed on or after that
date. The amendments made by sections 404 and 405
shall apply to any such application voluntarily published
by the applicant under procedures established under this
title that is pending on the date that is 1 year after the
date of enactment of this Act. The amendment made by
section 404 shall also apply to international applications
designating the United States that are filed on or after
the date that is 1 year after the date of the enactment
of this Act.
TITLE V—PATENT LITIGATION
REDUCTION ACT
SEC. 501. SHORT TITLE.
This title may be cited as the ‘‘Patent Litigation Re-
duction Act’’.
SEC. 502. DEFINITIONS.
Section 100 of title 35, United States Code, is
amended by adding at the end the following new sub-
section:
‘‘(e) The term ‘third-party requester’ means a person
requesting reexamination under section 302 of this title
who is not the patent owner.’’.
SEC. 503. REEXAMINATION PROCEDURES.
(a) CITATION OF PRIOR ART.—Section 301 of title
35, United States Code, is amended to read as follows:
‘‘§ 301. Citation of prior art
‘‘Any person at any time may cite to the Office in
writing prior art consisting of patents or printed publica-
tions which that person believes to have a bearing on the
patentability of any claim of a particular patent. If the
person explains in writing the pertinency and manner of
applying such prior art to at least one claim of the patent,
the citation of such prior art and the explanation thereof
will become a part of the official file of the patent.’’.
(b) REQUEST FOR REEXAMINATION.—Section 302 of
title 35, United States Code, is amended to read as fol-
lows:
‘‘§ 302. Request for reexamination
‘‘(a) IN GENERAL.—Any person at any time may file
a request for reexamination by the Office of a patent on
the basis of any prior art cited under the provisions of
section 301.
‘‘(b) REQUIREMENTS.—The request shall—
‘‘(1) be in writing, include the identity of the
real party in interest, and be accompanied by pay-
ment of a reexamination fee established by the Di-
rector under section 41; and
‘‘(2) set forth the pertinency and manner of ap-
plying cited prior art to every claim for which reex-
amination is requested.
‘‘(c) COPY.—Unless the requesting person is the
owner of the patent, the Director promptly shall send a
copy of the request to the owner of record of the patent.’’.
(c) DETERMINATION OF ISSUE BY DIRECTOR.—Sec-
tion 303 of title 35, United States Code, is amended to
read as follows:
‘‘§ 303. Determination of issue by Director
‘‘(a) REEXAMINATION.—Not later than 3 months
after the filing of a request for reexamination under sec-
tion 302, the Director shall determine whether a substan-
tial new question of patentability affecting any claim of
the patent concerned is raised by the request, with or with-
out consideration of other patents or printed publications.
On the Director’s initiative, and any time, the Director
may determine whether a substantial new question of pat-
entability is raised by patents and publications.
‘‘(b) RECORD.—A record of the Director’s determina-
tion under subsection (a) shall be placed in the official
file of the patent, and a copy shall be promptly given or
mailed to the owner of record of the patent and to the
third-party requester, if any.
‘‘(c) FINAL DECISION.—A determination by the Di-
rector pursuant to subsection (a) shall be final and non-
appealable. Upon a determination that no substantial new
question of patentability has been raised, the Director may
refund a portion of the reexamination fee required under
section 302.’’.
(d) REEXAMINATION ORDER BY DIRECTOR.—Section
304 of title 35, United States Code, is amended to read
as follows:
‘‘§ 304. Reexamination order by Director
‘‘If, in a determination made under section 303(a),
the Director finds that a substantial new question of pat-
entability affecting a claim of a patent is raised, the deter-
mination shall include an order for reexamination of the
patent for resolution of the question. The order may be
accompanied by the initial action of the Patent and Trade-
mark Office on the merits of the reexamination conducted
in accordance with section 305.’’.
(e) CONDUCT OF REEXAMINATION PROCEEDINGS.—
Section 305 of title 35, United States Code, is amended
to read as follows:
‘‘§ 305. Conduct of reexamination proceedings
‘‘(a) IN GENERAL.—Subject to subsection (b), reex-
amination shall be conducted according to the procedures
established for initial examination under the provisions of
sections 132 and 133, except as provided for under this
section. In any reexamination proceeding under this chap-
ter, the patent owner shall be permitted to propose any
amendment to the patent and a new claim or claims, ex-
cept 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 reexamination proceeding in which the order for reex-
amination is based upon a request by a third-party re-
quester.
‘‘(2) With the exception of the reexamination request,
any document filed by either the patent owner or the
third-party requester shall be served on the other party.
In addition, the third-party requester shall receive a copy
of any communication sent by the Office to the patent
owner concerning the patent subject to the reexamination
proceeding.
‘‘(3) Each time that the patent owner files a response
to an action on the merits from the Patent and Trademark
Office, the third-party requester shall have one oppor-
tunity to file written comments addressing issues raised
by the action of the Office or the patent owner’s response
thereto, if those written comments are received by the Of-
fice within 30 days after the date of service of the patent
owner’s response.
‘‘(c) SPECIAL DISPATCH.—Unless otherwise provided
by the Director for good cause, all reexamination pro-
ceedings under this section, including any appeal to the
Board of Patent Appeals and Interferences, shall be con-
ducted with special dispatch within the Office.’’.
(f) APPEAL.—Section 306 of title 35, United States
Code, is amended to read as follows:
‘‘§ 306. Appeal
‘‘(a) PATENT OWNER.—The patent owner involved in
a reexamination proceeding under this chapter—
‘‘(1) may appeal under the provisions of section
134, and may appeal under the provisions of sec-
tions 141 through 144, with respect to any decision
adverse to the patentability of any original or pro-
posed amended or new claim of the patent; and
‘‘(2) may be a party to any appeal taken by a
third-party requester under subsection (b).
‘‘(b) THIRD-PARTY REQUESTER.—A third-party re-
quester may—
‘‘(1) appeal under the provisions of section 134,
and may appeal under the provisions of sections 141
through 144, with respect to any final decision fa-
vorable to the patentability of any original or pro-
posed amended or new claim of the patent; or
‘‘(2) be a party to any appeal taken by the pat-
ent owner, subject to subsection (c).
‘‘(c) CIVIL ACTION.—A third-party requester whose
request for a reexamination results in an order under sec-
tion 304 is estopped from asserting at a later time, in any
civil action arising in whole or in part under section 1338
of title 28, the invalidity of any claim finally determined
to be valid and patentable on any ground which the third-
party requester raised or could have raised during the re-
examination proceedings. This subsection does not prevent
the assertion of invalidity based on newly discovered prior
art unavailable to the third-party requester and the Patent
and Trademark Office at the time of the reexamination
proceedings.’’.
(g) REEXAMINATION PROHIBITED; STAY OF LITIGA-
TION.—
(1) IN
GENERAL.—Chapter 30 of title 35,
United States Code, is amended by adding at the
end the following new sections:
‘‘§ 308. Reexamination prohibited
‘‘(a) 
ORDER
FOR
REEXAMINATION.—Notwith-
standing any provision of this chapter, once an order for
reexamination of a patent has been issued under section
304, neither the patent owner nor the third-party re-
quester, if any, nor privies of either, may file a subsequent
request for reexamination of the patent until a reexamina-
tion certificate is issued and published under section 307,
unless authorized by the Director.
‘‘(b) FINAL DECISION.—Once a final decision has
been entered against a party in a civil action arising in
whole or in part under section 1338 of title 28 that the
party has not sustained its burden of proving the invalidity
of any patent claim in suit or if a final decision in a reex-
amination proceeding instituted by a third-party requester
is favorable to the patentability of any original or proposed
amended or new claim of the patent then neither that
party nor its privies may thereafter request reexamination
of any such patent claim on the basis of issues which that
party or its privies raised or could have raised in such
civil action or reexamination proceeding, and a reexamina-
tion requested by that party or its privies on the basis
of such issues may not thereafter be maintained by the
Office, notwithstanding any other provision of this chap-
ter. This subsection does not prevent the assertion of inva-
lidity based on newly discovered prior art unavailable to
the third-party requester and the Patent and Trademark
Office at the time of the reexamination proceedings.
‘‘§ 309. Stay of litigation
‘‘Once an order for reexamination of a patent has
been issued under section 304, the patent owner may ob-
tain a stay of any pending litigation which involves an
issue of patentability of any claims of the patent which
are the subject of the reexamination order, unless the
court before which such litigation is pending determines
that a stay would not serve the interests of justice.’’.
(2) TECHNICAL
AND
CONFORMING
AMEND-
MENT.—The table of sections for chapter 30 of title
35, United States Code, is amended to read as fol-
lows:
‘‘CHAPTER 30—PRIOR ART CITATIONS TO
OFFICE AND REEXAMINATION OF PAT-
ENTS
‘‘Sec.
‘‘301. Citation of prior art.
‘‘302. Request for reexamination.
‘‘303. Determination of issue by Director.
‘‘304. Reexamination order by Director.
‘‘305. Conduct of reexamination proceedings.
‘‘306. Appeal.
‘‘307. Certificate of patentability, unpatentability, and claim cancellation.
‘‘308. Reexamination prohibited.
‘‘309. Stay of litigation.’’.
SEC. 504. CONFORMING AMENDMENTS.
(a) PATENT FEES; PATENT SEARCH SYSTEMS.—Sec-
tion 41(a)(7) of title 35, United States Code, is amended
to read as follows:
‘‘(7) On filing each petition for the revival of an
unintentionally abandoned application for a patent,
for the unintentionally delayed payment of the fee
for issuing each patent, or for an unintentionally de-
layed response by the patent owner in a reexamina-
tion proceeding, $1,210, unless the petition is filed
under section 133 or 151 of this title, in which case
the fee shall be $110.’’.
(b) APPEAL TO THE BOARD OF PATENT APPEALS
AND INTERFERENCES.—Section 134 of title 35, United
States Code, is amended to read as follows:
‘‘§ 134. Appeal to the Board of Patent Appeals and
Interferences
‘‘(a) PATENT APPLICANT.—An applicant for a pat-
ent, any of whose claims has been twice rejected, may ap-
peal from the decision of the primary examiner to the
Board of Patent Appeals and Interferences, having once
paid the fee for such appeal.
‘‘(b) PATENT OWNER.—A patent owner in a reexam-
ination proceeding may appeal from the final rejection of
any claim by the primary examiner to the Board of Patent
Appeals and Interferences, having once paid the fee for
such appeal.
‘‘(c) THIRD-PARTY.—A third-party requester may
appeal to the Board of Patent Appeals and Interferences
from the final decision of the primary examiner favorable
to the patentability of any original or proposed amended
or new claim of a patent, having once paid the fee for
such appeal.’’.
(c) APPEAL TO COURT OF APPEALS FOR THE FED-
ERAL CIRCUIT.—Section 141 of title 35, United States
Code, is amended by adding the following after the second
sentence: ‘‘A patent owner or third-party requester in a
reexamination proceeding dissatisfied with the final deci-
sion in an appeal to the Board of Patent Appeals and
Interferences under section 134 may appeal the decision
only to the United States Court of Appeals for the Federal
Circuit.’’.
(d) PROCEEDINGS ON APPEAL.—Section 143 of title
35, United States Code, is amended by amending the third
sentence to read as follows: ‘‘In ex parte and reexamina-
tion cases, the Director shall submit to the court in writing
the grounds for the decision of the Patent and Trademark
Office, addressing all the issues involved in the appeal.’’.
(e) CIVIL ACTION TO OBTAIN PATENT.—Section 145
of title 35, United States Code, is amended in the first
sentence by inserting ‘‘(a)’’ after ‘‘section 134’’.
SEC. 505. REPORT TO CONGRESS.
Not later than 5 years after the effective date of this
title, the Director of the United States Patent and Trade-
mark Office shall submit to the Congress a report evalu-
ating whether the reexamination proceedings established
under the amendments made by this title are inequitable
to any of the parties in interest and, if so, the report shall
contain recommendations for changes to the amendments
made by this title to remove such inequity.
SEC. 506. ESTOPPEL EFFECT OF REEXAMINATION.
Any party who requests a reexamination under sec-
tion 302 of title 35, United States Code, is estopped from
challenging at a later time, in any civil action, any fact
determined during the process of such reexamination, ex-
cept with respect to a fact determination later proved to
be erroneous based on information unavailable at the time
of the reexamination decision. If this section is held to
be unenforceable, the enforceability of the rest of this title
or of this Act shall not be denied as a result.
SEC. 507. EFFECTIVE DATE.
This title and the amendments made by this title
shall take effect on the date that is 1 year after the date
of the enactment of this Act and shall apply to all reexam-
ination requests filed on or after such date.
TITLE VI—MISCELLANEOUS
PATENT PROVISIONS
SEC. 601. 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
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
in an action commenced before such date of enactment.
SEC. 602. 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
‘‘(2) the term ‘UPOV Contracting Party’ means
a member of the International Convention for the
Protection of New Varieties of Plants.’’.
SEC. 603. 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. 604. ELECTRONIC FILING.
Section 22 of title 35, United States Code, is amend-
ed by striking ‘‘printed or typewritten’’ and inserting
‘‘printed, typewritten, or on an electronic medium’’.
SEC. 605. 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;
(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. 606. 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
of one who was first to conceive and last to reduce to prac-
tice, from a time prior to conception by the other.’’.
SEC. 607. 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.
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