I
106TH CONGRESS
1ST SESSION
H. R. 2654
To amend title 35, United States Code, to provide enhanced protection for
inventors and innovators, protect patent terms, reduce patent litigation,
and for other purposes.
IN THE HOUSE OF REPRESENTATIVES
JULY 30, 1999
Mr. COBLE introduced the following bill; which was referred to the Committee
on the Judiciary
A BILL
To amend title 35, United States Code, to provide enhanced
protection for inventors and innovators, protect patent
terms, reduce patent litigation, and for other purposes.
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ‘‘American Inventors
Protection 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. Invention promotion services.
Sec. 103. Effective date.
TITLE II—FIRST INVENTOR DEFENSE
Sec. 201. Short title.
Sec. 202. Defense to patent infringement based on earlier inventor.
Sec. 203. Effective date and applicability.
TITLE III—PATENT TERM GUARANTEE
Sec. 301. Short title.
Sec. 302. Patent term guarantee authority.
Sec. 303. Continued examination of patent applications.
Sec. 304. Technical clarification.
Sec. 305. Effective date.
TITLE IV—UNITED STATES PUBLICATION OF PATENT
APPLICATIONS PUBLISHED ABROAD
Sec. 401. Short title.
Sec. 402. Publication.
Sec. 403. Time for claiming benefit of earlier filing date.
Sec. 404. Provisional rights.
Sec. 405. Prior art effect of published applications.
Sec. 406. Cost recovery for publication.
Sec. 407. Conforming amendments.
Sec. 408. Effective date.
TITLE V—PATENT LITIGATION REDUCTION ACT
Sec. 501. Short title.
Sec. 502. Definitions.
Sec. 503. Reexamination procedures.
Sec. 504. Conforming amendments.
Sec. 505. Report to Congress.
Sec. 506. Estoppel effect of reexamination.
Sec. 507. Effective date.
TITLE VI—MISCELLANEOUS PATENT PROVISIONS
Sec. 601. Provisional applications.
Sec. 602. International applications.
Sec. 603. Certain limitations on damages for patent infringement not applica-
ble.
Sec. 604. Electronic filing.
Sec. 605. Study and report on biological deposits in support of biotechnology
patents.
Sec. 606. Prior invention.
Sec. 607. Prior art exclusion for certain commonly assigned patents.
TITLE I—INVENTORS’ RIGHTS
SEC. 101. SHORT TITLE.
This title may be cited as the ‘‘Inventors’ Rights
Act’’.
SEC. 102. INVENTION PROMOTION SERVICES.
Part I of title 35, United States Code, is amended
by adding after chapter 4 the following chapter:
‘‘CHAPTER 5—INVENTION PROMOTION
SERVICES
‘‘Sec.
‘‘51. Definitions.
‘‘52. Contracting requirements.
‘‘53. Standard provisions for cover notice.
‘‘54. Reports to customer required.
‘‘55. Mandatory contract terms.
‘‘56. Remedies.
‘‘57. Records of complaints.
‘‘58. Fraudulent representation by an invention promoter.
‘‘59. Rule of construction.
‘‘§ 51. Definitions
‘‘For purposes of this chapter—
‘‘(1) the term ‘contract for invention promotion
services’ means a contract by which an invention
promoter undertakes invention promotion services
for a customer;
‘‘(2) the term ‘customer’ means any person,
firm, partnership, corporation, or other entity who
enters into a financial relationship or a contract with
an invention promoter for invention promotion serv-
ices;
‘‘(3) the term ‘invention promoter’ means any
person, firm, partnership, corporation, or other enti-
ty who offers to perform or performs for, or on be-
half of, a customer any act described under para-
graph (4), 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 ap-
plicable State law or described under section
170(b)(1)(A) of the Internal Revenue Code of
1986;
‘‘(C) any person duly registered with, and
in good standing before, the United States Pat-
ent and Trademark Office acting within the
scope of that person’s registration to practice
before the Patent and Trademark Office, except
when that person performs any act described in
subparagraph (B) or (C) of paragraph (4); or
‘‘(D) any person or entity involved in the
evaluation to determine commercial potential,
or offering to license or sell a utility patent or
a previously filed nonprovisional utility patent
application; and
‘‘(4) the term ‘invention promotion services’
means, with respect to an invention by a customer,
any act involved in—
‘‘(A) evaluating the invention to determine
its protectability as some form of intellectual
property, other than evaluation by a person li-
censed by a State to practice law who is acting
solely within the scope of that person’s profes-
sional license;
‘‘(B) evaluating the invention to determine
its commercial potential by any person for pur-
poses other than providing venture capital; or
‘‘(C) marketing, brokering, offering to li-
cense or sell, or promoting the invention or a
product or service in which the invention is in-
corporated or used, except that the display only
of an invention at a trade show or exhibit shall
not be considered to be invention promotion
services.
‘‘§ 52. Contracting requirements
‘‘(a) IN GENERAL.—(1) Every contract for invention
promotion services shall be in writing and shall be subject
to the provisions of this chapter. A copy of the signed writ-
ten contract shall be given to the customer at the time
the customer enters into the contract.
vention promoter, nor with respect to customers who have
defaulted in their payment to the invention promoter.
‘‘§ 54. Reports to customer required
‘‘With respect to every contract for invention pro-
motion services, the invention promoter shall deliver to the
customer at the address specified in the contract, at least
once every 3 months throughout the term of the contract,
a written report that identifies the contract and includes—
‘‘(1) a full, clear, and concise description of the
services performed to the date of the report and of
the services yet to be performed and names of all
persons who it is known will perform the services;
and
‘‘(2) the name and address of each person,
firm, corporation, or other entity to whom the sub-
ject matter of the contract has been disclosed, the
reason for each such disclosure, the nature of the
disclosure, and complete and accurate summaries of
all responses received as a result of those disclo-
sures.
‘‘§ 55. Mandatory contract terms
‘‘(a) MANDATORY TERMS.—Each contract for inven-
tion promotion services shall include in boldface type of
not less than 12-point size—