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‘‘(4) may indemnify the Director, and other of-
ficers, attorneys, agents, and employees (including
members of the Management Advisory Board estab-
lished in section 5) of the Office for liabilities and
expenses incurred within the scope of their employ-
ment;
‘‘(5) may establish regulations, not inconsistent
with law, which—
‘‘(A) shall govern the conduct of proceed-
ings in the Office;
‘‘(B) shall be made after notice and oppor-
tunity for full participation by interested public
and private parties;
‘‘(C) shall facilitate and expedite the proc-
essing of patent applications, particularly those
which can be filed, stored, processed, searched,
and retrieved electronically, subject to the provi-
sions of section 122 relating to the confidential
status of applications;
‘‘(D) may govern the recognition and con-
duct of agents, attorneys, or other persons rep-
resenting applicants or other parties before the
Office, and may require them, before being rec-
ognized
as
representatives
of
applicants
or
other persons, to show that they are of good
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moral character and reputation and are pos-
sessed of the necessary qualifications to render
to applicants or other persons valuable service,
advice, and assistance in the presentation or
prosecution of their applications or other busi-
ness before the Office; and
‘‘(E) shall recognize the public interest in
continuing to safeguard broad access to the
United States patent system through the re-
duced fee structure for small entities under sec-
tion 41(h)(1) of this title;
‘‘(F) provide for the development of a per-
formance-based
process
that
includes
quan-
titative and qualitative measures and standards
for evaluating cost-effectiveness and is consist-
ent with the principles of impartiality and com-
petitiveness;
‘‘(6) may acquire, construct, purchase, lease,
hold, manage, operate, improve, alter, and renovate
any real, personal, or mixed property, or any interest
therein, as it considers necessary to carry out its
functions;
‘‘(7)(A) may make such purchases, contracts
for the construction, maintenance, or management
and operation of facilities, and contracts for supplies
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or services, without regard to the provisions of the
Federal Property and Administrative Services Act of
1949 (40 U.S.C. 471 and following), the Public
Buildings Act (40 U.S.C. 601 and following), and
the Stewart B. McKinney Homeless Assistance Act
(42 U.S.C. 11301 and following); and
‘‘(B) may enter into and perform such pur-
chases and contracts for printing services, including
the process of composition, platemaking, presswork,
silk screen processes, binding, microform, and the
products of such processes, as it considers necessary
to carry out the functions of the Office, without re-
gard to sections 501 through 517 and 1101 through
1123 of title 44;
‘‘(8) may use, with their consent, services,
equipment, personnel, and facilities of other depart-
ments, agencies, and instrumentalities of the Fed-
eral Government, on a reimbursable basis, and co-
operate with such other departments, agencies, and
instrumentalities in the establishment and use of
services, equipment, and facilities of the Office;
‘‘(9) may obtain from the Administrator of
General Services such services as the Administrator
is authorized to provide to other agencies of the
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United States, on the same basis as those services
are provided to other agencies of the United States;
‘‘(10) may, when the Director determines that
it is practicable, efficient, and cost-effective to do so,
use, with the consent of the United States and the
agency, government, or international organization
concerned, the services, records, facilities, or person-
nel of any State or local government agency or in-
strumentality or foreign government or international
organization to perform functions on its behalf;
‘‘(11) may determine the character of and the
necessity for its obligations and expenditures and
the manner in which they shall be incurred, allowed,
and paid, subject to the provisions of this title and
the Act of July 5, 1946 (commonly referred to as
the ‘Trademark Act of 1946’);
‘‘(12) may retain and use all of its revenues
and receipts, including revenues from the sale, lease,
or disposal of any real, personal, or mixed property,
or any interest therein, of the Office, including for
research and development and capital investment,
subject to the provisions of section 10101 of the
Omnibus Budget Reconciliation Act of 1990 (35
U.S.C. 41 note);
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‘‘(13) shall have the priority of the United
States with respect to the payment of debts from
bankrupt, insolvent, and decedents’ estates;
‘‘(14) may execute, in accordance with its by-
laws, rules, and regulations, all instruments nec-
essary and appropriate in the exercise of any of its
powers; and
‘‘(15) may provide for liability insurance and
insurance against any loss in connection with its
property, other assets, or operations either by con-
tract or by self-insurance.
In exercising the Director’s powers under paragraphs (6)
and (7)(A), the Director shall consult with the Adminis-
trator of General Services when the Director determines
that it is practicable, efficient, and cost-effective to do so.
‘‘(c) CONSTRUCTION.—Nothing in this section shall
be construed to nullify, void, cancel, or interrupt any pend-
ing request-for-proposal let or contract issued by the Gen-
eral Services Administration for the specific purpose of re-
locating or leasing space to the United States Patent and
Trademark Office.’’.
SEC. 113. ORGANIZATION AND MANAGEMENT.
Section 3 of title 35, United States Code, is amended
to read as follows:
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‘‘§ 3. Officers and employees
‘‘(a) DIRECTOR.—
‘‘(1) IN
GENERAL.—The management of the
United States Patent and Trademark Office shall be
vested in a Director of the United States Patent and
Trademark Office (in this title referred to as the
‘Director’), who shall be a citizen of the United
States and who shall be appointed by the President,
by and with the advice and consent of the Senate.
The Director shall be a person who, by reason of
professional background and experience in patent or
trademark law, is especially qualified to manage the
Office.
‘‘(2) DUTIES.—
‘‘(A) IN GENERAL.—The Director shall be
responsible for the management and direction
of the Office, including the issuance of patents
and the registration of trademarks, and shall
perform these duties in a fair, impartial, and
equitable manner.
‘‘(B) CONSULTING
WITH
THE
MANAGE-
MENT
ADVISORY
BOARD.—The Director shall
consult with the Management Advisory Board
established in section 5 on a regular basis on
matters relating to the operation of the Office,
and shall consult with the Advisory Board be-
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fore submitting budgetary proposals to the Of-
fice of Management and Budget or changing or
proposing to change patent or trademark user
fees or patent or trademark regulations.
‘‘(C) SECURITY CLEARANCES.—The Direc-
tor, in consultation with the Director of the Of-
fice of Personnel Management, shall maintain a
program for identifying national security posi-
tions and providing for appropriate security
clearances.
‘‘(3) TERM.—The Director shall serve a term of
5 years, and may continue to serve after the expira-
tion of the Director’s term until a successor is ap-
pointed and assumes office. The Director may be re-
appointed to subsequent terms.
‘‘(4) OATH.—The Director shall, before taking
office, take an oath to discharge faithfully the duties
of the Office.
‘‘(5) COMPENSATION.—The Director shall be
paid an annual rate of basic pay not to exceed the
maximum rate of basic pay of the Senior Executive
Service established under section 5382 of title 5, in-
cluding any applicable locality-based comparability
payment that may be authorized under section
5304(h)(2)(C) of title 5. In addition, the Director
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may receive a bonus in an amount up to, but not in
excess of, 50 percent of such annual rate of basic
pay, based upon an evaluation by the Secretary of
Commerce of the Director’s performance as defined
in an annual performance agreement between the
Director and the Secretary. The annual performance
agreement shall incorporate measurable organization
and individual goals in key operational areas as de-
lineated in an annual performance plan agreed to by
the Director and the Secretary. Payment of a bonus
under this paragraph may be made to the Director
only to the extent that such payment does not cause
the Director’s total aggregate compensation in a cal-
endar year to equal or exceed the amount of the sal-
ary of the President under section 102 of title 3.
‘‘(6) REMOVAL.—The Director may be removed
from office by the President. The President shall
provide notification of any such removal to both
Houses of Congress.
‘‘(7) DESIGNEE OF DIRECTOR.—The Director
shall designate an officer of the Office who shall be
vested with the authority to act in the capacity of
the Director in the event of the absence or incapac-
ity of the Director.
‘‘(b) OFFICERS AND EMPLOYEES OF THE OFFICE.—
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‘‘(1) COMMISSIONERS.—The Director shall ap-
point a Commissioner for Patents and a Commis-
sioner for Trademarks for terms that shall expire on
the date on which the Director’s term expires. The
Commissioner for Patents shall be a person with
demonstrated experience in patent law and the Com-
missioner for Trademarks shall be a person with
demonstrated experience in trademark law. The
Commissioner for Patents and the Commissioner for
Trademarks shall be the principal management ad-
visers to the Director on all aspects of the activities
of the Office that affect the administration of patent
and trademark operations, respectively.
‘‘(2) OTHER OFFICERS AND EMPLOYEES.—The
Director shall—
‘‘(A) appoint such officers, employees (in-
cluding attorneys), and agents of the Office as
the Director considers necessary to carry out
the functions of the Office; and
‘‘(B) define the authority and duties of
such officers and employees and delegate to
them such of the powers vested in the Office as
the Director may determine.
The Office shall not be subject to any administra-
tively or statutorily imposed limitation on positions
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or personnel, and no positions or personnel of the
Office shall be taken into account for purposes of
applying any such limitation.
‘‘(3) TRAINING
OF
EXAMINERS.—The Patent
and Trademark Office shall develop an incentive
program to retain as employees patent and trade-
mark examiners of the primary examiner grade or
higher who are eligible for retirement, for the sole
purpose of training patent and trademark examin-
ers.
‘‘(c) CONTINUED APPLICABILITY OF TITLE 5.—Offi-
cers and employees of the Office shall be subject to the
provisions of title 5 relating to Federal employees. Section
2302 of title 5 applies to the Office, notwithstanding sub-
section (a)(2)(C) of such section.
‘‘(d)
ADOPTION
OF
EXISTING
LABOR
AGREE-
MENTS.—The Office shall adopt all labor agreements
which are in effect, as of the day before the effective date
of the Patent and Trademark Office Modernization Act,
with respect to such Office (as then in effect).
‘‘(e) CARRYOVER OF PERSONNEL.—
‘‘(1) FROM PTO.—Effective as of the effective
date of the Patent and Trademark Office Mod-
ernization Act, all officers and employees of the Pat-
ent and Trademark Office on the day before such ef-
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fective date shall become officers and employees of
the Office, without a break in service.
‘‘(2) OTHER PERSONNEL.—Any individual who,
on the day before the effective date of the Patent
and Trademark Office Modernization Act, is an offi-
cer or employee of the Department of Commerce
(other than an officer or employee under paragraph
(1)) shall be transferred to the Office if—
‘‘(A) such individual serves in a position
for which a major function is the performance
of work reimbursed by the Patent and Trade-
mark Office, as determined by the Secretary of
Commerce;
‘‘(B) such individual serves in a position
that performed work in support of the Patent
and Trademark Office during at least half of
the incumbent’s work time, as determined by
the Secretary of Commerce; or
‘‘(C) such transfer would be in the interest
of the Office, as determined by the Secretary of
Commerce in consultation with the Director.
Any transfer under this paragraph shall be effective
as of the same effective date as referred to in para-
graph (1), and shall be made without a break in
service.
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‘‘(3) ACCUMULATED
LEAVE.—The amount of
sick and annual leave and compensatory time accu-
mulated under title 5 before the effective date de-
scribed in paragraph (1), by those becoming officers
or employees of the Office pursuant to this sub-
section, are obligations of the Office.
‘‘(f) TRANSITION PROVISIONS.—
‘‘(1) INTERIM APPOINTMENT OF DIRECTOR.—
On or after the effective date of the Patent and
Trademark Office Modernization Act, the President
shall appoint an individual to serve as the Director
until the date on which a Director qualifies under
subsection (a). The President shall not make more
than one such appointment under this subsection.
‘‘(2) CONTINUATION
IN
OFFICE
OF
CERTAIN
OFFICERS.—(A) The individual serving as the As-
sistant Commissioner for Patents on the day before
the effective date of the Patent and Trademark Of-
fice Modernization Act may serve as the Commis-
sioner for Patents until the date on which a Com-
missioner for Patents is appointed under subsection
(b).
‘‘(B) The individual serving as the Assistant
Commissioner for Trademarks on the day before the
effective date of the Patent and Trademark Office
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Modernization Act may serve as the Commissioner
for Trademarks until the date on which a Commis-
sioner for Trademarks is appointed under subsection
(b).’’.
SEC. 114. MANAGEMENT ADVISORY BOARD.
Chapter 1 of part I of title 35, United States Code,
is amended by inserting after section 4 the following:
‘‘§ 5. Patent and Trademark Office Management Advi-
sory Board
‘‘(a) ESTABLISHMENT OF MANAGEMENT ADVISORY
BOARD.—
‘‘(1) APPOINTMENT.—The United States Pat-
ent and Trademark Office shall have a Management
Advisory Board (hereafter in this title referred to as
the ‘Advisory Board’) of 12 members, 4 of whom
shall be appointed by the President, 4 of whom shall
be appointed by the Speaker of the House of Rep-
resentatives, and 4 of whom shall be appointed by
the majority leader of the Senate. Not more than 3
of the 4 members appointed by each appointing au-
thority shall be members of the same political party.
‘‘(2) TERMS.—Members of the Advisory Board
shall be appointed for a term of 4 years each, except
that of the members first appointed by each appoint-
ing authority, 1 shall be for a term of 1 year, 1 shall
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be for a term of 2 years, and 1 shall be for a term
of 3 years. No member may serve more than 1 term.
‘‘(3) CHAIR.—The President shall designate the
chair of the Advisory Board, whose term as chair
shall be for 3 years.
‘‘(4) TIMING
OF
APPOINTMENTS.—Initial ap-
pointments to the Advisory Board shall be made
within 3 months after the effective date of the Pat-
ent and Trademark Office Modernization Act, and
vacancies shall be filled within 3 months after they
occur.
‘‘(5) VACANCIES.—Vacancies shall be filled in
the manner in which the original appointment was
made under this subsection. Members appointed to
fill a vacancy occurring before the expiration of the
term for which the member’s predecessor was ap-
pointed shall be appointed only for the remainder of
that term. A member may serve after the expiration
of that member’s term until a successor is ap-
pointed.
‘‘(6) COMMITTEES.—The Chair shall designate
members of the Advisory Board to serve on a com-
mittee on patent operations and on a committee on
trademark operations to perform the duties set forth
in subsection (e) as they relate specifically to the Of-
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fice’s patent operations, and the Office’s trademark
operations, respectively.
‘‘(b) BASIS FOR APPOINTMENTS.—Members of the
Advisory Board shall be citizens of the United States who
shall be chosen so as to represent the interests of diverse
users of the United States Patent and Trademark Office,
including inventors, and shall include individuals with sub-
stantial background and achievement in corporate finance
and management.
‘‘(c) APPLICABILITY OF CERTAIN ETHICS LAWS.—
Members of the Advisory Board shall be special Govern-
ment employees within the meaning of section 202 of title
18.
‘‘(d) MEETINGS.—The Advisory Board shall meet at
the call of the chair, not less than every 6 months, to con-
sider an agenda set by the chair.
‘‘(e) DUTIES.—The Advisory Board shall—
‘‘(1) review the policies, goals, performance,
budget, and user fees of the United States Patent
and Trademark Office, and advise the Director on
these matters; and
‘‘(2) within 60 days after the end of each fiscal
year, prepare an annual report on the matters re-
ferred to in paragraph (1), transmit the report to
the President and the Committees on the Judiciary
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of the Senate and the House of Representatives, and
publish the report in the Patent and Trademark Of-
fice Official Gazette.
‘‘(f)
COMPENSATION.—Members
of
the
Advisory
Board shall be compensated for each day (including travel
time) during which they are attending meetings or con-
ferences of the Advisory Board or otherwise engaged in
the business of the Advisory Board, at the rate which is
the daily equivalent of the annual rate of basic pay in ef-
fect for level III of the Executive Schedule under section
5314 of title 5, and while away from their homes or regu-
lar places of business they may be allowed travel expenses,
including per diem in lieu of subsistence, as authorized
by section 5703 of title 5.
‘‘(g) ACCESS TO INFORMATION.—Members of the Ad-
visory Board shall be provided access to records and infor-
mation in the United States Patent and Trademark Of-
fice, except for personnel or other privileged information
and information concerning patent applications required
to be kept in confidence by section 122.’’.
SEC. 115. CONFORMING AMENDMENTS.
(a) DUTIES.—Chapter 1 of title 35, United States
Code, is amended by striking section 6.
(b) REGULATIONS FOR AGENTS AND ATTORNEYS.—
Section 31 of title 35, United States Code, and the item
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relating to such section in the table of sections for chapter
3 of title 35, United States Code, are repealed.
SEC. 116. TRADEMARK TRIAL AND APPEAL BOARD.
Section 17 of the Act of July 5, 1946 (commonly re-
ferred to as the ‘‘Trademark Act of 1946’’) (15 U.S.C.
1067) is amended to read as follows:
‘‘SEC. 17. (a) In every case of interference, opposition
to registration, application to register as a lawful concur-
rent user, or application to cancel the registration of a
mark, the Director shall give notice to all parties and shall
direct a Trademark Trial and Appeal Board to determine
and decide the respective rights of registration.
‘‘(b) The Trademark Trial and Appeal Board shall
include the Director, the Commissioner for Patents, the
Commissioner for Trademarks, and administrative trade-
mark judges who are appointed by the Director.’’.
SEC.
117.
BOARD
OF
PATENT
APPEALS
AND
INTER-
FERENCES.
Chapter 1 of title 35, United States Code, is amended
by striking section 7 and inserting after section 5 the fol-
lowing:
‘‘§ 6. Board of Patent Appeals and Interferences
‘‘(a) ESTABLISHMENT
AND COMPOSITION.—There
shall be in the United States Patent and Trademark Of-
fice a Board of Patent Appeals and Interferences. The Di-
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rector, the Commissioner for Patents, the Commissioner
for Trademarks, and the administrative patent judges
shall constitute the Board. The administrative patent
judges shall be persons of competent legal knowledge and
scientific ability who are appointed by the Director.
‘‘(b) DUTIES.—The Board of Patent Appeals and
Interferences shall, on written appeal of an applicant, re-
view adverse decisions of examiners upon applications for
patents and shall determine priority and patentability of
invention in interferences declared under section 135(a).
Each appeal and interference shall be heard by at least
3 members of the Board, who shall be designated by the
Director. Only the Board of Patent Appeals and Inter-
ferences may grant rehearings.’’.
SEC. 118. SUITS BY AND AGAINST THE OFFICE.
Chapter 1 of part I of title 35, United States Code,
is amended by inserting after section 6 the following new
section:
‘‘§ 7. Suits by and against the Office
‘‘(a) ACTIONS UNDER UNITED STATES LAW.—Any
civil action or proceeding to which the United States Pat-
ent and Trademark Office is a party is deemed to arise
under the laws of the United States. The Federal courts
shall have exclusive jurisdiction over all civil actions by
or against the Office.
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‘‘(b) REPRESENTATION BY THE DEPARTMENT OF
JUSTICE.—The United States Patent and Trademark Of-
fice shall be deemed an agency of the United States for
purposes of section 516 of title 28.
‘‘(c) PROHIBITION ON ATTACHMENT, LIENS, ETC.—
No attachment, garnishment, lien, or similar process, in-
termediate or final, in law or equity, may be issued against
property of the Office.’’.
SEC. 119. ANNUAL REPORT OF DIRECTOR.
Section 14 of title 35, United States Code, is amend-
ed to read as follows:
‘‘§ 14. Annual report to Congress
‘‘The Director shall report to the Congress, not later
than 180 days after the end of each fiscal year, the mon-
eys received and expended by the Office, the purposes for
which the moneys were spent, the quality and quantity of
the work of the Office, and other information relating to
the Office. The report under this section shall also meet
the requirements of section 9106 of title 31, to the extent
that such requirements are not inconsistent with the pre-
ceding sentence. The report required under this section
shall not be deemed to be the report of the United States
Patent and Trademark Office under section 9106 of title
31, and the Director shall file a separate report under
such section.’’.
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SEC. 120. SUSPENSION OR EXCLUSION FROM PRACTICE.
Section 32 of title 35, United States Code, is amend-
ed by inserting before the last sentence the following: ‘‘The
Director shall have the discretion to designate any attor-
ney who is an officer or employee of the United States
Patent and Trademark Office to conduct the hearing re-
quired by this section.’’.
SEC. 121. FUNDING.
Section 42 of title 35, United States Code, is amend-
ed to read as follows:
‘‘§ 42. Patent and Trademark Office funding
‘‘(a) FEES PAYABLE TO THE OFFICE.—All fees for
services performed by or materials furnished by the
United States Patent and Trademark Office shall be pay-
able to the Office.
‘‘(b) USE OF MONEYS.—Moneys from fees shall be
available to the United States Patent and Trademark Of-
fice to carry out, to the extent provided in appropriations
Acts, the functions of the Office. Moneys of the Office not
otherwise used to carry out the functions of the Office
shall be kept in cash on hand or on deposit, or invested
in obligations of the United States or guaranteed by the
United States, or in obligations or other instruments
which are lawful investments for fiduciary, trust, or public
funds. Fees available to the Office under this title shall
be used for the processing of patent applications and for
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other services and materials relating to patents. Fees
available to the Office under section 31 of the Act of July
5, 1946 (commonly referred to as the ‘Trademark Act of
1946’; 15 U.S.C. 1113), shall be used only for the process-
ing of trademark registrations and for other services and
materials relating to trademarks.’’.
SEC. 122. EXTENSION OF SURCHARGES ON PATENT FEES.
(a) IN GENERAL.—Section 10101 of the Omnibus
Budget Reconciliation Act of 1990 (35 U.S.C. 41 note)
is amended to read as follows:
‘‘SEC. 10101. PATENT
AND
TRADEMARK
OFFICE
USER
FEES.
‘‘(a) SURCHARGES.—There shall be a surcharge on
all fees authorized by subsections (a) and (b) of section
41 of title 35, United States Code, in order to ensure that
the amounts specified in subsection (c) are collected.
‘‘(b) USE OF SURCHARGES.—Notwithstanding sec-
tion 3302 of title 31, United States Code, all surcharges
collected by the Patent and Trademark Office—
‘‘(1) shall be credited to a separate account es-
tablished in the Treasury and ascribed to the activi-
ties of the United States Patent and Trademark Of-
fice as offsetting collections,
‘‘(2) shall be collected by and available to the
United States Patent and Trademark Office for all
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authorized activities and operations of the Office, in-
cluding all direct and indirect costs of services pro-
vided by the office, and
‘‘(3) shall remain available until expended.
‘‘(c) ESTABLISHMENT OF SURCHARGES.—The Direc-
tor of the United States Patent and Trademark Office
shall establish surcharges under subsection (a), subject to
the provisions of section 553 of title 5, United States
Code, in order to ensure that $119,000,000, but not more
than $119,000,000, are collected in fiscal year 1999 and
each fiscal year thereafter.
‘‘(d) APPROPRIATIONS ACT REQUIRED.—Notwith-
standing subsections (a) through (c), no fee established
by subsection (a) shall be collected nor shall be available
for spending without prior authorization in appropriations
Acts.’’.
(b) EFFECTIVE DATE.—The amendment made by
subsection (a) shall take effect on October 1, 1998.
SEC. 123. TRANSFERS.
(a) TRANSFER OF FUNCTIONS.—Except to the extent
that such functions, powers, and duties relate to the direc-
tion of patent or trademark policy, there are transferred
to, and vested in, the United States Patent and Trade-
mark Office all functions, powers, and duties vested by
law in the Secretary of Commerce or the Department of
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Commerce or in the officers or components in the Depart-
ment of Commerce with respect to the authority to grant
patents and register trademarks, and in the Patent and
Trademark Office, as in effect on the day before the effec-
tive date of this title, and in the officers and components
of such Office.
(b) TRANSFER
OF FUNDS
AND PROPERTY.—The
Secretary of Commerce shall transfer to the United States
Patent and Trademark Office, on the effective date of this
title, so much of the assets, liabilities, contracts, property,
records, and unexpended and unobligated balances of ap-
propriations, authorizations, allocations, and other funds
employed, held, used, arising from, available to, or to be
made available to the Department of Commerce, including
funds set aside for accounts receivable, which are related
to functions, powers, and duties which are vested in the
Patent and Trademark Office by this title.
SEC. 124. GAO STUDY AND REPORT.
The Comptroller General shall conduct a study of
and, not later than the date that is 2 years after the effec-
tive date of this title, submit to the Committee on the Ju-
diciary of the House of Representatives and the Commit-
tee on the Judiciary of the Senate a report on—
(1) the operations of the Patent and Trademark
Office as a Government corporation; and
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(2) the feasibility and desirability of making the
trademark operations of the Patent and Trademark
Office a separate Government corporation or agency.
Subtitle B—Effective Date;
Technical Amendments
SEC. 131. EFFECTIVE DATE.
This title and the amendments made by this title
shall take effect 4 months after the date of the enactment
of this Act.
SEC. 132. TECHNICAL AND CONFORMING AMENDMENTS.
(a) AMENDMENTS TO TITLE 35.—
(1) The item relating to part I in the table of
parts for chapter 35, United States Code, is amend-
ed to read as follows:
‘‘I. United States Patent and Trademark Office .............
1’’.
(2) The heading for part I of title 35, United
States Code, is amended to read as follows:
‘‘PART I—UNITED STATES PATENT AND
TRADEMARK OFFICE’’.
(3) The table of chapters for part I of title 35,
United States Code, is amended by amending the
item relating to chapter 1 to read as follows:
‘‘1. Establishment, Officers and Employees, Functions ......
1’’.
(4) The table of sections for chapter 1 of title
35, United States Code, is amended to read as
follows:
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‘‘CHAPTER 1—ESTABLISHMENT, OFFICERS
AND EMPLOYEES, FUNCTIONS
‘‘Sec.
‘‘1.
Establishment.
‘‘2.
Powers and duties.
‘‘3.
Officers and employees.
‘‘4.
Restrictions on officers and employees as to interest in patents.
‘‘5.
Patent and Trademark Office Management Advisory Board.
‘‘6.
Board of Patent Appeals and Interferences.
‘‘7.
Suits by and against the Office.
‘‘8.
Library.
‘‘9.
Classification of patents.
‘‘10. Certified copies of records.
‘‘11. Publications.
‘‘12. Exchange of copies of patents with foreign countries.
‘‘13. Copies of patents for public libraries.
‘‘14. Annual report to Congress.’’.
(5) Section 41(h) of title 35, United States Code, is
amended by striking ‘‘Commissioner of Patents and
Trademarks’’ and inserting ‘‘Director’’.
(6) Section 155 of title 35, United States Code,
is amended by striking ‘‘Commissioner of Patents
and Trademarks’’ and inserting ‘‘Director’’.
(7) Section 155A(c) of title 35, United States
Code, is amended by striking ‘‘Commissioner of Pat-
ents and Trademarks’’ and inserting ‘‘Director’’.
(8) Section 302 of title 35, United States Code,
is amended by striking ‘‘Commissioner of Patents’’
and inserting ‘‘Director’’.
(9) Section 303(b) of title 35, United States
Code, is amended by striking ‘‘Commissioner’s’’ and
inserting ‘‘Director’s’’.
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(10)(A) Except as provided in subparagraph
(B), title 35, United States Code, is amended by
striking ‘‘Commissioner’’ each place it appears and
inserting ‘‘Director’’.
(B) Chapter 17 of title 35, United States Code,
is amended by striking ‘‘Commissioner’’ each place
it appears and inserting ‘‘Commissioner of Patents’’.
(11) Section 41(a)(8)(A) of title 35, United
States Code, is amended by striking ‘‘On’’ and in-
serting ‘‘on’’.
(12) Section 157(d) of title 35, United States
Code, is amended by striking ‘‘Secretary of Com-
merce’’ and inserting ‘‘Director’’.
(13) Section 181 of title 35, United States
Code, is amended in the third paragraph by striking
‘‘Secretary of Commerce under rules prescribed by
him’’ and inserting ‘‘Director under rules prescribed
by the Patent and Trademark Office’’.
(14) Section 188 of title 35, United States
Code, is amended by striking ‘‘Secretary of Com-
merce’’ and inserting ‘‘Patent and Trademark Of-
fice’’.
(15) Section 202(a) of title 35, United States
Code, is amended by striking ‘‘iv)’’ and inserting
‘‘(iv)’’.
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(b) OTHER PROVISIONS OF LAW.—
(1)(A) Section 45 of the Act of July 5, 1946
(commonly referred to as the ‘‘Trademark Act of
1946’’; 15 U.S.C. 1127), is amended by striking
‘‘The term ‘Commissioner’ means the Commissioner
of Patents and Trademarks.’’ and inserting ‘‘The
term ‘Director’ means the Director of the United
States Patent and Trademark Office.’’.
(B) The Act of July 5, 1946 (commonly re-
ferred to as the ‘‘Trademark Act of 1946’’; 15
U.S.C. 1051 and following), except for section 17, as
amended by section 116 of this Act, is amended by
striking ‘‘Commissioner’’ each place it appears and
inserting ‘‘Director’’.
(2) Section 9101(3) of title 31, United States
Code, is amended by adding at the end the follow-
ing:
‘‘(R) the United States Patent and Trade-
mark Office.’’.
(3) Section 500(e) of title 5, United States
Code, is amended by striking ‘‘Patent Office’’ and
inserting ‘‘United States Patent and Trademark Of-
fice’’.
(4)
Section
5102(c)(23)
of
title
5,
United
States Code, is amended to read as follows:
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‘‘(23) administrative patent judges and des-
ignated administrative patent judges in the United
States Patent and Trademark Office;’’.
(5) Section 5316 of title 5, United States Code
(5 U.S.C. 5316) is amended by striking ‘‘Commis-
sioner
of
Patents,
Department
of
Commerce.’’,
‘‘Deputy
Commissioner
of
Patents
and
Trade-
marks.’’, ‘‘Assistant Commissioner for Patents.’’,
and ‘‘Assistant Commissioner for Trademarks.’’.
(6) Section 9(p)(1)(B) of the Small Business
Act (15 U.S.C. 638(p)(1)(B)) is amended to read as
follows:
‘‘(B) the Director of the United States
Patent and Trademark Office; and’’.
(7) Section 12 of the Act of February 14, 1903
(15 U.S.C. 1511) is amended by striking ‘‘(d) Pat-
ent and Trademark Office;’’ and redesignating sub-
sections (a) through (g) as paragraphs (1) through
(6), respectively.
(8) Section 19 of the Tennessee Valley Author-
ity Act of 1933 (16 U.S.C. 831r) is amended—
(A) by striking ‘‘Patent Office of the
United States’’ and inserting ‘‘United States
Patent and Trademark Office’’; and
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(B) by striking ‘‘Commissioner of Patents’’
and inserting ‘‘Director of the United States
Patent and Trademark Office’’.
(9) Section 182(b)(2)(A) of the Trade Act of
1974 (19 U.S.C. 2242(b)(2)(A)) is amended by
striking
‘‘Commissioner
of
Patents
and
Trade-
marks’’ and inserting ‘‘Director of the United States
Patent and Trademark Office’’.
(10) Section 302(b)(2)(D) of the Trade Act of
1974 (19 U.S.C. 2412(b)(2)(D)) is amended by
striking
‘‘Commissioner
of
Patents
and
Trade-
marks’’ and inserting ‘‘Director of the United States
Patent and Trademark Office’’.
(11) The Act of April 12, 1892 (27 Stat. 395;
20 U.S.C. 91) is amended by striking ‘‘Patent Of-
fice’’ and inserting ‘‘United States Patent and
Trademark Office’’.
(12) Sections 505(m) and 512(o) of the Federal
Food, Drug, and Cosmetic Act (21 U.S.C. 355(m)
and 360b(o)) are each amended by striking ‘‘Patent
and Trademark Office of the Department of Com-
merce’’ and inserting ‘‘United States Patent and
Trademark Office’’.
(13) Section 702(d) of the Federal Food, Drug,
and Cosmetic Act (21 U.S.C. 372(d)) is amended by
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striking ‘‘Commissioner of Patents’’ and inserting
‘‘Director of the United States Patent and Trade-
mark Office’’.
(14) Section 105(e) of the Federal Alcohol Ad-
ministration Act (27 U.S.C. 205(e)) is amended by
striking ‘‘United States Patent Office’’ and inserting
‘‘United States Patent and Trademark Office’’.
(15) Section 1295(a)(4) of title 28, United
States Code, is amended—
(A)
in
subparagraph
(A)
by
inserting
‘‘United States’’ before ‘‘Patent and Trade-
mark’’; and
(B)
in
subparagraph
(B)
by
striking
‘‘Commissioner of Patents and Trademarks’’
and inserting ‘‘Director of the United States
Patent and Trademark Office’’.
(16) Section 1744 of title 28, United States
Code is amended—
(A) by striking ‘‘Patent Office’’ each place
it appears in the text and section heading and
inserting ‘‘United States Patent and Trade-
mark Office’’;
(B) by striking ‘‘Commissioner of Patents’’
and inserting ‘‘Director of the United States
Patent and Trademark Office’’; and
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(C) by striking ‘‘Commissioner’’ and in-
serting ‘‘Director’’.
(17) Section 1745 of title 28, United States
Code, is amended by striking ‘‘United States Patent
Office’’ and inserting ‘‘United States Patent and
Trademark Office’’.
(18) Section 1928 of title 28, United States
Code, is amended by striking ‘‘Patent Office’’ and
inserting ‘‘United States Patent and Trademark Of-
fice’’.
(19) Section 151 of the Atomic Energy Act of
1954 (42 U.S.C. 2181) is amended in subsections c.
and d. by striking ‘‘Commissioner of Patents’’ and
inserting ‘‘Director of the United States Patent and
Trademark Office’’.
(20) Section 152 of the Atomic Energy Act of
1954 (42 U.S.C. 2182) is amended by striking
‘‘Commissioner of Patents’’ each place it appears
and inserting ‘‘Director of the United States Patent
and Trademark Office’’.
(21) Section 305 of the National Aeronautics
and Space Act of 1958 (42 U.S.C. 2457) is amend-
ed—
(A) in subsection (c) by striking ‘‘Commis-
sioner of Patents’’ and inserting ‘‘Director of
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the United States Patent and Trademark Office
(hereafter in this section referred to as the ‘Di-
rector’)’’; and
(B) by striking ‘‘Commissioner’’ each sub-
sequent place it appears and inserting ‘‘Direc-
tor’’.
(22) Section 12(a) of the Solar Heating and
Cooling Demonstration Act of 1974 (42 U.S.C.
5510(a)) is amended by striking ‘‘Commissioner of
the Patent Office’’ and inserting ‘‘Director of the
United States Patent and Trademark Office’’.
(23) Section 1111 of title 44, United States
Code, is amended by striking ‘‘the Commissioner of
Patents,’’.
(24) Section 1114 of title 44, United States
Code, is amended by striking ‘‘the Commissioner of
Patents,’’.
(25) Section 1123 of title 44, United States
Code, is amended by striking ‘‘the Patent Office,’’.
(26) Sections 1337 and 1338 of title 44, United
States Code, and the items relating to those sections
in the table of contents for chapter 13 of such title,
are repealed.
(27) Section 10(i) of the Trading With the
Enemy Act (50 U.S.C. App. 10(i)) is amended by
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striking ‘‘Commissioner of Patents’’ and inserting
‘‘Director of the United States Patent and Trade-
mark Office’’.
(28) Section 11 of the Inspector General Act of
1978 (5 U.S.C. App.) is amended—
(A) in paragraph (1)—
(i) by striking ‘‘and’’ before ‘‘the chief
executive officer of the Resolution Trust
Corporation;’’;
(ii) by striking ‘‘and’’ before ‘‘the
Chairperson of the Federal Deposit Insur-
ance Corporation;’’;
(iii) by striking ‘‘or’’ before ‘‘the Com-
missioner of Social Security,’’; and
(iv) by inserting ‘‘or the Director of
the United States Patent and Trademark
Office;’’ after ‘‘Social Security Administra-
tion;’’; and
(B) in paragraph (2)—
(i) by striking ‘‘or’’ before ‘‘the Veter-
ans’ Administration,’’; and
(ii) by striking ‘‘or the Social Security
Administration’’ and inserting ‘‘the Social
Security
Administration,
or
the
United
States Patent and Trademark Office’’.
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Subtitle C—Miscellaneous
Provisions
SEC. 141. REFERENCES.
(a) IN GENERAL.—Any reference in any other Fed-
eral law, Executive order, rule, regulation, or delegation
of authority, or any document of or pertaining to a depart-
ment or office from which a function is transferred by this
title—
(1) to the head of such department or office is
deemed to refer to the head of the department or of-
fice to which such function is transferred; or
(2) to such department or office is deemed to
refer to the department or office to which such func-
tion is transferred.
(b) SPECIFIC REFERENCES.—Any reference in any
other Federal law, Executive order, rule, regulation, or
delegation of authority, or any document of or pertaining
to the Patent and Trademark Office—
(1) to the Commissioner of Patents and Trade-
marks is deemed to refer to the Director of the
United States Patent and Trademark Office;
(2) to the Assistant Commissioner for Patents
is deemed to refer to the Commissioner for Patents;
or
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(3) to the Assistant Commissioner for Trade-
marks is deemed to refer to the Commissioner for
Trademarks.
SEC. 142. EXERCISE OF AUTHORITIES.
Except as otherwise provided by law, a Federal offi-
cial to whom a function is transferred by this title may,
for purposes of performing the function, exercise all au-
thorities under any other provision of law that were avail-
able with respect to the performance of that function to
the official responsible for the performance of the function
immediately before the effective date of the transfer of the
function under this title.
SEC. 143. SAVINGS PROVISIONS.
(a) LEGAL DOCUMENTS.—All orders, determinations,
rules, regulations, permits, grants, loans, contracts, agree-
ments, certificates, licenses, and privileges—
(1) that have been issued, made, granted, or al-
lowed to become effective by the President, the Sec-
retary of Commerce, any officer or employee of any
office transferred by this title, or any other Govern-
ment official, or by a court of competent jurisdic-
tion, in the performance of any function that is
transferred by this title, and
(2) that are in effect on the effective date of
such transfer (or become effective after such date
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pursuant to their terms as in effect on such effective
date),
shall continue in effect according to their terms until
modified, terminated, superseded, set aside, or revoked in
accordance with law by the President, any other author-
ized official, a court of competent jurisdiction, or operation
of law.
(b) PROCEEDINGS.—This title shall not affect any
proceedings or any application for any benefits, service,
license, permit, certificate, or financial assistance pending
on the effective date of this title before an office trans-
ferred by this title, but such proceedings and applications
shall be continued. Orders shall be issued in such proceed-
ings, appeals shall be taken therefrom, and payments shall
be made pursuant to such orders, as if this title had not
been enacted, and orders issued in any such proceeding
shall continue in effect until modified, terminated, super-
seded, or revoked by a duly authorized official, by a court
of competent jurisdiction, or by operation of law. Nothing
in this subsection shall be considered to prohibit the dis-
continuance or modification of any such proceeding under
the same terms and conditions and to the same extent that
such proceeding could have been discontinued or modified
if this title had not been enacted.
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(c) SUITS.—This title shall not affect suits com-
menced before the effective date of this title, and in all
such suits, proceedings shall be had, appeals taken, and
judgments rendered in the same manner and with the
same effect as if this title had not been enacted.
(d) NONABATEMENT OF ACTIONS.—No suit, action,
or other proceeding commenced by or against the Depart-
ment of Commerce or the Secretary of Commerce, or by
or against any individual in the official capacity of such
individual as an officer or employee of an office trans-
ferred by this title, shall abate by reason of the enactment
of this title.
(e) CONTINUANCE OF SUITS.—If any Government of-
ficer in the official capacity of such officer is party to a
suit with respect to a function of the officer, and under
this title such function is transferred to any other officer
or office, then such suit shall be continued with the other
officer or the head of such other office, as applicable, sub-
stituted or added as a party.
(f) ADMINISTRATIVE PROCEDURE AND JUDICIAL RE-
VIEW.—Except as otherwise provided by this title, any
statutory requirements relating to notice, hearings, action
upon the record, or administrative or judicial review that
apply to any function transferred by this title shall apply
to the exercise of such function by the head of the Federal
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agency, and other officers of the agency, to which such
function is transferred by this title.
SEC. 144. TRANSFER OF ASSETS.
Except as otherwise provided in this title, so much
of the personnel, property, records, and unexpended bal-
ances of appropriations, allocations, and other funds em-
ployed, used, held, available, or to be made available in
connection with a function transferred to an official or
agency by this title shall be available to the official or the
head of that agency, respectively, at such time or times
as the Director of the Office of Management and Budget
directs for use in connection with the functions trans-
ferred.
SEC. 145. DELEGATION AND ASSIGNMENT.
Except as otherwise expressly prohibited by law or
otherwise provided in this title, an official to whom func-
tions are transferred under this title (including the head
of any office to which functions are transferred under this
title) may delegate any of the functions so transferred to
such officers and employees of the office of the official as
the official may designate, and may authorize successive
redelegations of such functions as may be necessary or ap-
propriate. No delegation of functions under this section
or under any other provision of this title shall relieve the
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official to whom a function is transferred under this title
of responsibility for the administration of the function.
SEC. 146. AUTHORITY OF DIRECTOR OF THE OFFICE OF
MANAGEMENT AND BUDGET WITH RESPECT
TO FUNCTIONS TRANSFERRED.
(a) DETERMINATIONS.—If necessary, the Director of
the Office of Management and Budget shall make any de-
termination of the functions that are transferred under
this title.
(b) INCIDENTAL TRANSFERS.—The Director of the
Office of Management and Budget, at such time or times
as the Director shall provide, may make such determina-
tions as may be necessary with regard to the functions
transferred by this title, and to make such additional inci-
dental dispositions of personnel, assets, liabilities, grants,
contracts, property, records, and unexpended balances of
appropriations,
authorizations,
allocations,
and
other
funds held, used, arising from, available to, or to be made
available in connection with such functions, as may be nec-
essary to carry out the provisions of this title. The Direc-
tor shall provide for the termination of the affairs of all
entities terminated by this title and for such further meas-
ures and dispositions as may be necessary to effectuate
the purposes of this title.
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SEC. 147. CERTAIN VESTING OF FUNCTIONS CONSIDERED
TRANSFERS.
For purposes of this title, the vesting of a function
in a department or office pursuant to reestablishment of
an office shall be considered to be the transfer of the func-
tion.
SEC. 148. AVAILABILITY OF EXISTING FUNDS.
Existing appropriations and funds available for the
performance of functions, programs, and activities termi-
nated pursuant to this title shall remain available, for the
duration of their period of availability, for necessary ex-
penses in connection with the termination and resolution
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 1997.
SEC. 149. 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.
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Subtitle
D—Under
Secretary
of
Commerce for Intellectual Prop-
erty Policy
SEC. 151. UNDER SECRETARY OF COMMERCE FOR INTEL-
LECTUAL PROPERTY POLICY.
(a) APPOINTMENT.—There shall be within the De-
partment of Commerce an Under Secretary of Commerce
for Intellectual Property Policy, who shall be appointed
by the President, by and with the advice and consent of
the Senate. On or after the effective date of this title, the
President may appoint an individual to serve as the Under
Secretary until the date on which an Under Secretary
qualifies under this subsection. The President shall not
make more than 1 appointment under the preceding sen-
tence.
(b) DUTIES.—The Under Secretary of Commerce for
Intellectual Property Policy, under the direction of the
Secretary of Commerce, shall perform the following func-
tions with respect to intellectual property policy:
(1) In coordination with the Under Secretary of
Commerce for International Trade, promote exports
of goods and services of the United States industries
that rely on intellectual property.
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(2) Advise the President, through the Secretary
of Commerce, on national and international intellec-
tual property policy issues.
(3) Advise Federal departments and agencies
on matters of intellectual property protection in
other countries.
(4) Provide guidance, as appropriate, with re-
spect to proposals by agencies to assist foreign gov-
ernments and international intergovernmental orga-
nizations on matters of intellectual property protec-
tion.
(5) Conduct programs and studies related to
the effectiveness of intellectual property protection
throughout the world.
(6) Advise the Secretary of Commerce on pro-
grams and studies relating to intellectual property
policy that are conducted, or authorized to be con-
ducted, cooperatively with foreign patent and trade-
mark offices and international intergovernmental or-
ganizations.
(7) In coordination with the Department of
State, conduct programs and studies cooperatively
with foreign intellectual property offices and inter-
national intergovernmental organizations.
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(c) DEPUTY UNDER SECRETARIES.—To assist the
Under Secretary of Commerce for Intellectual Property
Policy, the Secretary of Commerce shall appoint a Deputy
Under Secretary for Patent Policy and a Deputy Under
Secretary for Trademark Policy as members of the Senior
Executive Service in accordance with the provisions of title
5, United States Code. The Deputy Under Secretaries
shall perform such duties and functions as the Under Sec-
retary for Intellectual Property Policy shall prescribe.
(d) COMPENSATION.—Section 5314 of title 5, United
States Code, is amended by adding at the end the follow-
ing:
‘‘Under Secretary of Commerce for Intellectual
Property Policy.’’.
(e) FUNDING.—Funds available to the United States
Patent and Trademark Office shall be made available for
all expenses of the office of the Under Secretary for Intel-
lectual Property Policy, subject to prior approval in appro-
priations Acts. Amounts made available under this sub-
section shall not exceed 2 percent of the projected annual
revenues of the Patent and Trademark Office from fees
for services and goods of that Office. The Secretary of
Commerce shall determine the budget requirements of the
office of the Under Secretary for Intellectual Property Pol-
icy.
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SEC. 152. RELATIONSHIP WITH EXISTING AUTHORITIES.
Nothing in section 151 shall derogate from the duties
of the United States Trade Representative as set forth in
section 141 of the Trade Act of 1974 (19 U.S.C. 2171).
TITLE
II—EXAMINING
PROCE-
DURE IMPROVEMENTS: PUB-
LICATION WITH PROVISIONAL
ROYALTIES;
TERM
EXTEN-
SIONS;
FURTHER
EXAMINA-
TION
SEC. 201. SHORT TITLE.
This title may be cited as the ‘‘Examining Procedure
Improvements Act’’.
SEC. 202. 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 applications for patents 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.
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‘‘(b) PUBLICATION.—
‘‘(1) IN GENERAL.—(A) Subject to paragraph
(2), each application for patent, except applications
for design patents filed under chapter 16 of this title
and
provisional
applications
filed
under
section
111(b) of this title, shall be published, in accordance
with procedures determined by the Director, prompt-
ly after the expiration of a period of 18 months from
the earliest filing date for which a benefit is sought
under this title. At the request of the applicant, an
application may be published 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) Notwithstanding any other provision of
law, a determination by the Director to release or
not to release information concerning 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 in the process of
being reviewed by the Atomic Energy Commission,
the Department of Defense, or a defense agency
pursuant to section 181 of this title shall not be
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published until the Director has been notified by the
Atomic Energy Commission, the Secretary of De-
fense, or the chief officer of the defense agency, as
the case may be, that in the opinion of the Atomic
Energy Commission, the Secretary of Defense, or
such chief officer, as the case may be, publication or
disclosure of the invention by the granting of a pat-
ent would not be detrimental to the national security
of the United States.
‘‘(C) An application that is subject to a secrecy
order pursuant to section 181 of this title shall not
be published.
‘‘(D) An application filed by a small business
concern
entitled
to
reduced
fees
under
section
41(h)(1) of this title, by an individual who is an
independent inventor entitled to reduced fees under
such section, or by an institution of higher education
(as defined in section 1202 of the Higher Education
Act of 1965) entitled to reduced fees under such sec-
tion 41(h)(1) shall not be published until a patent
is issued thereon, except upon the request of the ap-
plicant, or in any of the following circumstances:
‘‘(i) In the case of an application under
section 111(a) for a patent for an invention for
which the applicant intends to file or has filed
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an application for a patent in a foreign country,
the Commissioner may publish, at the discre-
tion of the Commissioner and by means deter-
mined suitable for the purpose, no more than
that data from such application under section
111(a) which will be made or has been made
public in such foreign country. Such a publica-
tion shall be made only after the date of the
publication in such foreign country and shall be
made only if the data is not available, or cannot
be made readily available, in the English lan-
guage through commercial services.
‘‘(ii) If the Commissioner determines that
a patent application which is filed after the date
of the enactment of this paragraph—
‘‘(I) has been pending more than 5
years from the effective filing date of the
application,
‘‘(II) has not been previously pub-
lished by the Patent and Trademark Of-
fice,
‘‘(III) is not under any appellate re-
view by the Board of Patent Appeals and
Interferences,
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‘‘(IV) is not under interference pro-
ceedings in accordance with section 135(a),
‘‘(V) is not under any secrecy order
pursuant to section 181,
‘‘(VI) is not being diligently pursued
by the applicant in accordance with this
title, and
‘‘(VII) is not in abandonment,
the Commissioner shall notify the applicant of
such determination.
‘‘(iii) An applicant which received notice of
a determination described in clause (ii) may,
within 30 days of receiving such notice, petition
the Commissioner to review the determination
to verify that subclauses (I) through (VII) are
all applicable to the applicant’s application. If
the applicant makes such a petition, the Com-
missioner shall not publish the applicant’s ap-
plication before the Commissioner’s review of
the petition is completed. If the applicant does
not submit a petition, the Commissioner may
publish the applicant’s application no earlier
than 90 days after giving such a notice.
‘‘(iv) If after the date of the enactment of
this paragraph a continuing application has
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been filed more than 6 months after the date of
the initial filing of an application, the Commis-
sioner shall notify the applicant under such ap-
plication. The Commissioner shall establish a
procedure for an applicant which receives such
a notice to demonstrate that the purpose of the
continuing application was for reasons other
than to achieve a delay in the time of publica-
tion of the application. If the Commissioner
agrees with such a demonstration by the appli-
cant, the Commissioner shall not publish the
applicant’s application. If the Commissioner
does not agree with such a demonstration by
the applicant or if the applicant does not make
an attempt at such a demonstration within a
reasonable period of time as determined by the
Commissioner, the Commissioner shall publish
the applicant’s application.
‘‘(E)(i) Upon the request at the time of filing
by an applicant that is a small business concern or
an independent inventor entitled to reduced fees
under section 41(h)(1) of this title, the application
shall not be published in accordance with paragraph
(1) until 3 months after the Director makes a sec-
ond notification to such applicant on the merits of
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the application under section 132 of this title. The
Director may require applicants that no longer have
the status of a small business concern or an inde-
pendent inventor to so notify the Director not later
than 15 months after the earliest filing date for
which a benefit is sought under this title.
‘‘(ii) Applications filed pursuant to section 363
of this title, applications asserting priority under
section 119 or 365(a) of this title, and applications
asserting the benefit of an earlier application under
section 120 or 365(c) of this title shall not be eligi-
ble for a request pursuant to this subparagraph.
‘‘(iii) Applications asserting the benefit of an
earlier application under section 121 shall not be eli-
gible for a request pursuant to this subparagraph
unless filed within 2 months after the date on which
the Director required the earlier application to be re-
stricted to 1 of 2 or more inventions in the earlier
application.
‘‘(iv) In a request under this subparagraph, the
applicant shall certify that the invention disclosed in
the application was not and will not be the subject
of an application filed in a foreign country.
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‘‘(v) The Director may establish appropriate
procedures and nominal fees for making a request
under this subparagraph.
‘‘(F)(i) In a case in which an applicant, after
making a request under subparagraph (E)(i), deter-
mines to file an application in a foreign country, the
applicant shall notify the Director promptly. The ap-
plication shall then be published in accordance with
the provisions of paragraph (1).
‘‘(ii) The Director may establish appropriate
fees to cover the costs of processing notifications
under clause (i), including the costs of any special
handling of applications resulting from the initial re-
quest under subparagraph (E)(i).
‘‘(F) No fee established under this section shall
be collected nor shall be available for spending with-
out prior authorization in appropriations Acts.
‘‘(c) PRE-ISSUANCE OPPOSITION.—The provisions of
this section shall not operate to create any new oppor-
tunity for pre-issuance opposition. The Director may es-
tablish appropriate procedures to ensure that this section
does not create any new opportunity for pre-issuance op-
position.’’.
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SEC. 203. 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 is filed in the Patent
and Trademark Office, at such time during the pendency
of the application as is required by the Director, that iden-
tifies the foreign application by specifying its application
number, the country in or for which the application was
filed, and the date of its filing.
‘‘(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, and may require the payment of a sur-
charge as a condition of accepting an untimely claim dur-
ing the pendency of the application.
‘‘(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 intellectual property authority in the foreign country
in which the foreign application was filed and show the
date of the application and of the filing of the specification
and other papers.’’.
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(b) IN THE UNITED STATES.—Section 120 of title
35, United States Code, is amended by adding at the end
the following: ‘‘No application shall be entitled to the bene-
fit of an earlier filed application under this section unless
an amendment containing the specific reference to the ear-
lier filed application is submitted at such time during the
pendency of the application as is required by the Commis-
sioner. The Director may consider the failure to submit
such an amendment within that time period as a waiver
of any benefit under this section. The Director may estab-
lish procedures, including the payment of a surcharge, to
accept unavoidably late submissions of amendments under
this section.’’.
SEC. 204. 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.—
‘‘(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) of this title, or in the case of an
international application filed under the treaty de-
fined in section 351(a) of this title 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, of-
fers for sale, or sells in the United States or
imports into the United States products made
by that process as claimed in the published pat-
ent application; and
‘‘(B) had actual notice of the published
patent application and, where the right arising
under this paragraph is based upon an inter-
national
application
designating
the
United
States that is published in a language other
than English, 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 REA-
SONABLE 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
obtain a reasonable royalty shall not be affected by
the duration of the period described in paragraph
(1).
‘‘(4) REQUIREMENTS FOR INTERNATIONAL AP-
PLICATIONS.—The right under paragraph (1) to ob-
tain a reasonable royalty based upon the publication
under the treaty defined in section 351(a) of this
title of an international application designating the
United States shall commence from the date that
the Patent and Trademark Office receives a copy of
the publication under such treaty of the inter-
national application, or, if the publication under the
treaty of the international application is in a lan-
guage other than English, from the date that the
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Patent and Trademark Office receives a translation
of the international application in the English lan-
guage. The Director may require the applicant to
provide a copy of the international publication of the
international application and a translation thereof.’’.
SEC. 205. 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) an application for patent, published pursu-
ant to section 122(b) of this title, by another filed
in the United States before the invention by the ap-
plicant for patent, except that an international appli-
cation filed under the treaty defined in section
351(a) of this title shall have the effect under this
subsection of a national application published under
section 122(b) of this title only if the international
application designating the United States was pub-
lished under Article 21(2)(a) of such treaty in the
English language, or
‘‘(2) a patent granted on an application for pat-
ent by another filed in the United States before the
invention by the applicant for patent, or’’.
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SEC. 206. 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 202 by adjust-
ing the filing, issue, and maintenance fees under title 35,
United States Code, by charging a separate publication
fee, or by any combination of these methods.
SEC. 207. CONFORMING CHANGES.
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 items relating to sections 12 and 13 in
the table of sections for chapter 1, as amended by
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section 132(a)(4) of this Act, 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 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 paragraph by inserting
‘‘by the publication of an application or’’ after
‘‘disclosure of an invention’’;
(C) in the third 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
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(D) in the fourth paragraph by inserting
‘‘the publication of an application or’’ after
‘‘and’’ in the first sentence.
(8) Section 252 is amended in the first para-
graph by inserting ‘‘substantially’’ before ‘‘identical’’
each place it appears.
(9) Section 284 is amended by adding at the
end of the second paragraph the following: ‘‘In-
creased damages under this paragraph shall not
apply to provisional rights under section 154(d) of
this title.’’.
(10) Section 374 is amended to read as follows:
‘‘§ 374. Publication of international application: Ef-
fect
‘‘The publication under the treaty defined in section
351(a) of this title of an international application des-
ignating the United States shall confer the same rights
and shall have the same effect under this title as an appli-
cation for patent published under section 122(b), except
as provided in sections 102(e) and 154(d) of this title.’’.
(11) Section 135(b) of title 35, United States
Code, is amended to read as follows:
‘‘(b)(1) A claim which is the same as, or for the same
or substantially the same subject matter as, a claim of
an issued patent may only be made in an application if—
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‘‘(A) such a claim is made prior to 1 year after
the date on which the patent was granted; and
‘‘(B) the applicant files evidence which dem-
onstrates that the applicant is prima facie entitled to
a judgment relative to the patent.
‘‘(2)(A) A claim which is the same as, or for the same
or substantially the same subject matter as, a claim of
a published application may only be made in an applica-
tion filed after the date of publication of the published
application if, except in a case to which subparagraph (B)
applies—
‘‘(i) such a claim is made prior to 1 year after
the date of publication of the published application;
and
‘‘(ii) the applicant of the application filed after
the date of publication of the published application
files evidence that demonstrates that the applicant is
prima facie entitled to a judgment relative to the
published application.
‘‘(B) If the applicant of the application filed after the
date of publication of the published application alleges
that the invention claimed in the published application was
derived from that applicant, such a claim may only be
made if that applicant files evidence which demonstrates
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that the applicant is prima facie entitled to a judgment
relative to the published application.’’.
SEC. 208. PATENT TERM EXTENSION AUTHORITY.
Section 154(b) of title 35, United States Code, is
amended to read as follows:
‘‘(b) TERM EXTENSION.—
‘‘(1) BASIS FOR PATENT TERM EXTENSION.—
‘‘(A) DELAY.—Subject to the limitations
set forth in paragraph (2), if the issue of an
original patent is delayed due to—
‘‘(i) a proceeding under section 135(a)
of this title, including any appeal under
section 141, or any civil action under sec-
tion 146, of this title,
‘‘(ii) the imposition of an order pursu-
ant to section 181 of this title,
‘‘(iii) 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 review
reversing an adverse determination of pat-
entability, or
‘‘(iv) an unusual administrative delay
by the Patent and Trademark Office in
issuing the patent,
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the term of the patent shall be extended for the
period of delay.
‘‘(B) ADMINISTRATIVE DELAY.—For pur-
poses of subparagraph (A)(iv), an unusual ad-
ministrative delay by the Patent and Trade-
mark Office is the failure to—
‘‘(i) make a notification of the rejec-
tion of any claim for a patent or any objec-
tion or argument under section 132 of this
title or give or mail a written notice of al-
lowance under section 151 of this title not
later than 14 months after the date on
which the application was filed;
‘‘(ii) respond to a reply under section
132 of this title or to an appeal taken
under section 134 of this title not later
than 4 months after the date on which the
reply was filed or the appeal was taken;
‘‘(iii) act on an application not later
than 4 months after the date of a decision
by the Board of Patent Appeals and Inter-
ferences under section 134 or 135 of this
title or a decision by a Federal court under
section 141, 145, or 146 of this title in a
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case in which allowable claims remain in
an application;
‘‘(iv) issue a patent not later than 4
months after the date on which the issue
fee was paid under section 151 of this title
and all outstanding requirements were sat-
isfied; or
‘‘(v) issue a patent within 3 years
after the filing date of the application in
the United States, if the applicant—
‘‘(I) has not obtained further lim-
ited examination of the application
under section 209 of the Examining
Procedure Improvements Act;
‘‘(II) has not benefitted from an
extension of patent term under clause
(i), (ii), or (iii) of paragraph (1)(A);
‘‘(III) has not sought or obtained
appellate review by the Board of Pat-
ent Appeals and Interferences or by a
Federal Court other than in a case in
which the patent was issued pursuant
to a decision in the review reversing
an adverse determination of patent-
ability; and
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‘‘(IV)
has
not
requested
any
delay in the processing of the applica-
tion by the Patent and Trademark Of-
fice.
‘‘(2) LIMITATIONS.—(A) The total duration of
any extensions granted pursuant to either clause (iii)
or (iv) of paragraph (1)(A) or both such clauses
shall not exceed 10 years. To the extent that periods
of delay attributable to grounds specified in para-
graph (1) overlap, the period of any extension grant-
ed under this subsection shall not exceed the actual
number of days the issuance of the patent was de-
layed.
‘‘(B) The period of extension of the term of a
patent under clause (iv) of paragraph (1)(A), which
is based on the failure of the Patent and Trademark
Office to meet the criteria set forth in clause (v) of
paragraph (1)(B), shall be reduced by the cumu-
lative total of any periods of time that an applicant
takes to respond in excess of 3 months after the
date on which the Patent and Trademark Office
makes any rejection, objection, argument, or other
request.
‘‘(C) The period of extension of the term of a
patent under this subsection shall be reduced by a
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period equal to the time in which the applicant failed
to engage in reasonable efforts to conclude prosecu-
tion of the application. The Director shall prescribe
regulations establishing the circumstances that con-
stitute a failure of an applicant to engage in reason-
able efforts to conclude processing or examination of
an application in order to ensure that applicants are
appropriately compensated for any delays by the
Patent and Trademark Office in excess of the time
periods specified in paragraph (1)(B).
‘‘(D) No patent the term of which has been dis-
claimed beyond a specified date may be extended
under this section beyond the expiration date speci-
fied in the disclaimer.
‘‘(3) PROCEDURES.—The Director shall pre-
scribe regulations establishing procedures for the no-
tification of patent term extensions under this sub-
section and procedures for contesting patent term
extensions under this subsection.’’.
SEC. 209. FURTHER 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
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(2) by adding at the end the following:
‘‘(b) The Director shall prescribe regulations to pro-
vide for the further limited examination of applications for
patent at the request of the applicant. The Director may
establish appropriate fees for such further limited exam-
ination and shall be authorized to provide a 50 percent
reduction on such fees for small entities that qualify for
reduced fees under section 41(h)(1) of this title.
SEC. 210. LAST DAY OF PENDENCY OF PROVISIONAL APPLI-
CATION.
Section 119(e) of title 35, United States Code, is
amended by adding at the end the following:
‘‘(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.’’.
SEC. 211. REPORTING REQUIREMENT.
The Director of the United States Patent and Trade-
mark Office shall report to the Congress not later than
April 1, 2001, and not later than April 1 of each year
thereafter, regarding the impact of publication on the pat-
ent applications filed by applicants who are independent
inventors entitled to reduced fees under section 41(h)(1)
of title 35, United States Code. The report shall include
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information concerning the frequency and number of ini-
tial and continuing patent applications, pendency, inter-
ferences, reexaminations, rejection, abandonment rates,
fees, other expenses, and other relevant information relat-
ed to the prosecution of patent applications.
SEC. 212. EFFECTIVE DATE.
(a) SECTIONS 202 THROUGH 207.—Sections 202
through 207, and the amendments made by such sections,
shall take effect on April 1, 1998, and shall apply to all
applications filed under section 111 of title 35, United
States Code, on or after that date, and all international
applications designating the United States that are filed
on or after that date.
(b) SECTIONS 208 THROUGH 210.—The amend-
ments made by sections 208 through 210 shall take effect
on the date of the enactment 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 June 8, 1995.
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TITLE
III—PROTECTION
FOR
PRIOR DOMESTIC USERS OF
PATENTED TECHNOLOGIES
SEC. 301. SHORT TITLE.
This title may be cited as the ‘‘Protection for Prior
Domestic Commercial and Research Users of Patented
Technologies Act’’.
SEC. 302. DEFENSE TO PATENT INFRINGEMENT BASED ON
PRIOR
DOMESTIC
COMMERCIAL
OR
RE-
SEARCH USE.
(a) DEFENSE.—Chapter 28 of title 35, United States
Code, is amended by adding at the end the following new
section:
‘‘§ 273. Prior domestic commercial or research use;
defense to infringement
‘‘(a) DEFINITIONS.—For purposes of this section—
‘‘(1) the terms ‘commercially used’, ‘commer-
cially use’, and ‘commercial use’ mean the use in the
United States in commerce or the use in the design,
testing, or production in the United States of a
product or service which is used in commerce,
whether or not the subject matter at issue is acces-
sible to or otherwise known to the public;
‘‘(2) in the case of activities performed by a
nonprofit research laboratory, or nonprofit entity
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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 para-
graph (1) if the use is limited to activity that oc-
curred within the laboratory or nonprofit entity or
by persons in privity with that laboratory or non-
profit entity before the effective filing date of the ap-
plication for patent at issue, except that the use—
‘‘(A) may be asserted as a defense under
this section only by the laboratory or nonprofit
entity; and
‘‘(B) may not be asserted as a defense
with respect to any subsequent use by any en-
tity other than such laboratory, nonprofit en-
tity, or persons in privity;
‘‘(3) the terms ‘used in commerce’, and ‘use in
commerce’ mean that there has been an actual sale
or other arm’s-length commercial transfer of the
subject matter at issue or that there has been an ac-
tual sale or other arm’s-length commercial transfer
of a product or service resulting from the use of the
subject matter at issue; 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
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States, foreign, or international application to which
the subject matter at issue is entitled under section
119, 120, or 365 of this title.
‘‘(b) DEFENSE TO INFRINGEMENT.—(1) A person
shall not be liable as an infringer under section 271 of
this title with respect to any subject matter that would
otherwise infringe one or more claims in the patent being
asserted against such person, if such person had, acting
in good faith, commercially used the subject matter before
the effective filing date of such patent.
‘‘(2) The sale or other disposition of the subject mat-
ter of a patent by a person entitled to assert a defense
under this section with respect to that subject matter 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.
‘‘(c) LIMITATIONS
AND QUALIFICATIONS
OF DE-
FENSE.—The defense to infringement under this section
is subject to the following:
‘‘(1) DERIVATION.—A person may not assert
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.
‘‘(2) NOT A GENERAL LICENSE.—The defense
asserted by a person under this section is not a gen-
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eral license under all claims of the patent at issue,
but extends only to the subject 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 vol-
ume of use of the claimed subject matter, and to im-
provements in the claimed subject matter that do
not infringe additional specifically claimed subject
matter of the patent.
‘‘(3)
EFFECTIVE
AND
SERIOUS
PREPARA-
TION.—With respect to subject matter that cannot
be commercialized without a significant investment
of time, money, and effort, a person shall be deemed
to have commercially used the subject matter if—
‘‘(A) before the effective filing date of the
patent, the person actually reduced the subject
matter to practice in the United States, com-
pleted a significant portion of the total invest-
ment necessary to commercially use the subject
matter, and made an arm’s-length commercial
transaction in the United States in connection
with the preparation to use the subject matter;
and
‘‘(B) thereafter the person diligently com-
pleted the remainder of the activities and in-
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vestments necessary to commercially use the
subject matter, and promptly began commercial
use of the subject matter, even if such activities
were conducted after the effective filing date of
the patent.
‘‘(4) BURDEN OF PROOF.—A person asserting
the defense under this section shall have the burden
of establishing the defense.
‘‘(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
subsection (b) with respect to actions taken after the
date of such abandonment.
‘‘(6) PERSONAL DEFENSE.—The defense under
this section may only be asserted by the person who
performed the acts necessary to establish the defense
and, except for any transfer to the patent owner, the
right to assert the defense shall not be licensed or
assigned or transferred to another person except in
connection with the good faith assignment or trans-
fer of the entire enterprise or line of business to
which the defense relates.
‘‘(7) ONE-YEAR
LIMITATION.—A person may
not assert a defense under this section unless the
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subject matter on which the defense is based had
been commercially used or actually reduced to prac-
tice more than one year prior to the effective filing
date of the patent by the person asserting the de-
fense or someone in privity with that person.
‘‘(d) UNSUCCESSFUL ASSERTION OF DEFENSE.—If
the defense under this section is pleaded by a person who
is found to infringe the patent and who subsequently fails
to demonstrate a reasonable basis for asserting the de-
fense, the court shall find the case exceptional for the pur-
pose of awarding attorney’s fees under section 285 of this
title.
‘‘(e) INVALIDITY.—A patent shall not be deemed to
be invalid under section 102 or 103 of this title solely be-
cause a defense is established under this section.’’.
(b) CONFORMING AMENDMENT.—The table of sec-
tions at the beginning of chapter 28 of title 35, United
States Code, is amended by adding at the end the follow-
ing new item:
‘‘273. Prior domestic commercial or research use; defense to infringement.’’.
SEC. 303. 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 enactment or with respect to
any subject matter for which an adjudication of infringe-
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ment, including a consent judgment, has been made before
such date of enactment.
TITLE
IV—ENHANCED
PROTEC-
TION OF INVENTORS’ RIGHTS
SEC. 401. SHORT TITLE.
This title may be cited as the ‘‘Enhanced Protection
of Inventors’ Rights Act’’.
SEC. 402. INVENTION PROMOTION SERVICES.
Part I of title 35, United States Code, is amended
by adding after chapter 4 the following new 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
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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 en-
tity 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; or
‘‘(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; and
‘‘(4) the term ‘invention promotion services’
means, with respect to an invention by a customer,
any act involved in—
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‘‘(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, licensing, sell-
ing, or promoting the invention or a product or
service in which the invention is incorporated or
used, except that the display only of an inven-
tion at a trade show or exhibit shall not be con-
sidered 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.
‘‘(2) If a contract is entered into for the benefit of
a third party, such party shall be considered a customer
for purposes of this chapter.
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‘‘(b) REQUIREMENTS OF INVENTION PROMOTER.—
The invention promoter shall—
‘‘(1) state in a written document, at the time
a customer enters into a contract for invention pro-
motion services, whether the usual business practice
of the invention promoter is to—
‘‘(A) seek more than 1 contract in connec-
tion with an invention; or
‘‘(B) seek to perform services in connection
with an invention in 1 or more phases, with the
performance of each phase covered in 1 or more
subsequent contracts; and
‘‘(2) supply to the customer a copy of the writ-
ten document together with a written summary of
the usual business practices of the invention pro-
moter, including—
‘‘(A) the usual business terms of contracts;
and
‘‘(B) the approximate amount of the usual
fees or other consideration that may be required
from the customer for each of the services pro-
vided by the invention promoter.
‘‘(c) RIGHT OF CUSTOMER TO CANCEL CONTRACT.—
(1) Notwithstanding any contractual provision to the con-
trary, a customer shall have the right to terminate a con-
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tract for invention promotion services by sending a written
letter to the invention promoter stating the customer’s in-
tent to cancel the contract. The letter of termination must
be deposited with the United States Postal Service on or
before 5 business days after the date upon which the cus-
tomer or the invention promoter executes the contract,
whichever is later.
‘‘(2) Delivery of a promissory note, check, bill of ex-
change, or negotiable instrument of any kind to the inven-
tion promoter or to a third party for the benefit of the
invention promoter, without regard to the date or dates
appearing in such instrument, shall be deemed payment
received by the invention promoter on the date received
for purposes of this section.
‘‘§ 53. Standard provisions for cover notice
‘‘(a) CONTENTS.—Every contract for invention pro-
motion services shall have a conspicuous and legible cover
sheet attached with the following notice imprinted in bold-
face type of not less than 12-point size:
‘‘ ‘YOU HAVE THE RIGHT TO TERMI-
NATE
THIS
CONTRACT.
TO
TERMINATE
THIS CONTRACT, YOU MUST SEND A WRIT-
TEN LETTER TO THE COMPANY STATING
YOUR INTENT TO CANCEL THIS CONTRACT.
THE LETTER OF TERMINATION MUST BE
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DEPOSITED
WITH
THE
UNITED
STATES
POSTAL SERVICE ON OR BEFORE FIVE (5)
BUSINESS
DAYS
AFTER
THE
DATE
ON
WHICH YOU OR THE COMPANY EXECUTE
THE CONTRACT, WHICHEVER IS LATER.
‘‘ ‘THE TOTAL NUMBER OF INVENTIONS
EVALUATED
BY
THE
INVENTION
PRO-
MOTER FOR COMMERCIAL POTENTIAL IN
THE PAST FIVE (5) YEARS IS lllll. OF
THAT NUMBER, lllll RECEIVED POSI-
TIVE
EVALUATIONS
AND
lllll RE-
CEIVED NEGATIVE EVALUATIONS.
‘‘ ‘IF YOU ASSIGN EVEN A PARTIAL IN-
TEREST IN THE INVENTION TO THE IN-
VENTION PROMOTER, THE INVENTION PRO-
MOTER MAY HAVE THE RIGHT TO SELL OR
DISPOSE
OF
THE
INVENTION
WITHOUT
YOUR CONSENT AND MAY NOT HAVE TO
SHARE THE PROFITS WITH YOU.
‘‘ ‘THE TOTAL NUMBER OF CUSTOMERS
WHO HAVE CONTRACTED WITH THE IN-
VENTION PROMOTER IN THE PAST FIVE (5)
YEARS IS lllll. THE TOTAL NUMBER
OF CUSTOMERS KNOWN BY THIS INVEN-
TION PROMOTER TO HAVE RECEIVED, BY
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VIRTUE OF THIS INVENTION PROMOTER’S
PERFORMANCE, AN AMOUNT OF MONEY IN
EXCESS OF THE AMOUNT PAID BY THE
CUSTOMER TO THIS INVENTION PROMOTER
IS lllllll.
‘‘ ‘THE OFFICERS OF THIS INVENTION
PROMOTER HAVE COLLECTIVELY OR INDI-
VIDUALLY BEEN AFFILIATED IN THE LAST
TEN (10) YEARS WITH THE FOLLOWING IN-
VENTION
PROMOTION
COMPANIES:
(LIST
THE NAMES AND ADDRESSES OF ALL PRE-
VIOUS INVENTION PROMOTION COMPANIES
WITH WHICH THE PRINCIPAL OFFICERS
HAVE
BEEN
AFFILIATED
AS
OWNERS,
AGENTS, OR EMPLOYEES). YOU ARE EN-
COURAGED TO CHECK WITH THE UNITED
STATES PATENT AND TRADEMARK OFFICE,
THE FEDERAL TRADE COMMISSION, YOUR
STATE ATTORNEY GENERAL’S OFFICE, AND
THE BETTER BUSINESS BUREAU FOR ANY
COMPLAINTS
FILED
AGAINST
ANY
OF
THESE COMPANIES.
‘‘ ‘YOU ARE ENCOURAGED TO CONSULT
WITH AN ATTORNEY OF YOUR OWN CHOOS-
ING BEFORE SIGNING THIS CONTRACT. BY
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PROCEEDING WITHOUT THE ADVICE OF AN
ATTORNEY REGISTERED TO PRACTICE BE-
FORE THE UNITED STATES PATENT AND
TRADEMARK
OFFICE,
YOU
COULD
LOSE
ANY RIGHTS YOU MIGHT HAVE IN YOUR
IDEA OR INVENTION.’.
‘‘(b) OTHER REQUIREMENTS FOR COVER NOTICE.—
The cover notice shall contain the items required under
subsection (a) and the name, primary office address, and
local office address of the invention promoter, and may
contain no other matter.
‘‘(c) DISCLOSURE OF CERTAIN CUSTOMERS NOT RE-
QUIRED.—The requirement in the notice set forth in sub-
section (a) to include the ‘TOTAL NUMBER OF CUS-
TOMERS WHO HAVE CONTRACTED WITH THE
INVENTION PROMOTER IN THE PAST FIVE (5)
YEARS’ need not include information with respect to cus-
tomers who have purchased trade show services, research,
advertising, or other nonmarketing services from the in-
vention promoter, nor with respect to customers who have
defaulted in their payments 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
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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—
‘‘(1) the terms and conditions of payment and
contract termination rights required under section
52;
‘‘(2) a statement that the customer may avoid
entering into the contract by not making a payment
to the invention promoter;
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‘‘(3) a full, clear, and concise description of the
specific acts or services that the invention promoter
undertakes to perform for the customer;
‘‘(4) a statement as to whether the invention
promoter undertakes to construct, sell, or distribute
one or more prototypes, models, or devices embody-
ing the invention of the customer;
‘‘(5) the full name and principal place of busi-
ness of the invention promoter and the name and
principal place of business of any parent, subsidiary,
agent, independent contractor, and any affiliated
company or person who it is known will perform any
of the services or acts that the invention promoter
undertakes to perform for the customer;
‘‘(6) if any oral or written representation of es-
timated or projected customer earnings is given by
the invention promoter (or any agent, employee, offi-
cer, director, partner, or independent contractor of
such invention promoter), a statement of that esti-
mation or projection and a description of the data
upon which such representation is based;
‘‘(7) the name and address of the custodian of
all records and correspondence relating to the con-
tracted for invention promotion services, and a state-
ment that the invention promoter is required to
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maintain all records and correspondence relating to
performance of the invention promotion services for
such customer for a period of not less than 2 years
after expiration of the term of such contract; and
‘‘(8) a statement setting forth a time schedule
for performance of the invention promotion services,
including an estimated date in which such perform-
ance is expected to be completed.
‘‘(b) INVENTION PROMOTER AS FIDUCIARY.—To the
extent that the description of the specific acts or services
affords discretion to the invention promoter with respect
to what specific acts or services shall be performed, the
invention promoter shall be deemed a fiduciary.
‘‘(c) AVAILABILITY OF INFORMATION.—Records and
correspondence described under subsection (a)(7) shall be
made available after 7 days written notice to the customer
or the representative of the customer to review and copy
at a reasonable cost on the invention promoter’s premises
during normal business hours.
‘‘§ 56. Remedies
‘‘(a) IN GENERAL.—(1) Any contract for invention
promotion services that does not comply with the applica-
ble provisions of this chapter shall be voidable at the op-
tion of the customer.
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‘‘(2) Any contract for invention promotion services
entered into in reliance upon any material false, fraudu-
lent, or misleading information, representation, notice, or
advertisement of the invention promoter (or any agent,
employee, officer, director, partner, or independent con-
tractor of such invention promoter) shall be voidable at
the option of the customer.
‘‘(3) Any waiver by the customer of any provision of
this chapter shall be deemed contrary to public policy and
shall be void and unenforceable.
‘‘(4) Any contract for invention promotion services
which provides for filing for and obtaining utility, design,
or plant patent protection shall be voidable at the option
of the customer unless the invention promoter offers to
perform or performs such act through a person duly reg-
istered to practice before, and in good standing with, the
Patent and Trademark Office.
‘‘(b) CIVIL ACTION.—(1) Any customer who is in-
jured by a violation of this chapter by an invention pro-
moter or by any material false or fraudulent statement
or representation, or any omission of material fact, by an
invention promoter (or any agent, employee, director, offi-
cer, partner, or independent contractor of such invention
promoter) or by failure of an invention promoter to make
all the disclosures required under this chapter, may re-
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cover in a civil action against the invention promoter (or
the officers, directors, or partners of such invention pro-
moter) in addition to reasonable costs and attorneys’ fees,
the greater of—
‘‘(A) $5,000; or
‘‘(B) the amount of actual damages sustained
by the customer.
‘‘(2) Notwithstanding paragraph (1), the court may
increase damages to not more than 3 times the amount
awarded.
‘‘(c) REBUTTABLE PRESUMPTION OF INJURY.—For
purposes of this section, substantial violation of any provi-
sion of this chapter by an invention promoter or execution
by the customer of a contract for invention promotion
services in reliance on any material false or fraudulent
statements or representations or omissions of material
fact shall establish a rebuttable presumption of injury.
‘‘§ 57. Records of complaints
‘‘(a) RELEASE OF COMPLAINTS.—The Director shall
make all complaints received by the United States Patent
and Trademark Office involving invention promoters pub-
licly available, together with any response of the invention
promoters.
‘‘(b) REQUEST
FOR COMPLAINTS.—The Director
may request complaints relating to invention promotion
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services from any Federal or State agency and include
such complaints in the records maintained under sub-
section (a), together with any response of the invention
promoters.
‘‘§ 58. Fraudulent representation by an invention pro-
moter
‘‘Whoever, in providing invention promotion services,
knowingly provides any false or misleading statement, rep-
resentation, or omission of material fact to a customer or
fails to make all the disclosures required under this chap-
ter, shall be guilty of a misdemeanor and fined not more
than $10,000 for each offense.
‘‘§ 59. Rule of construction
‘‘Except as expressly provided in this chapter, no pro-
vision of this chapter shall be construed to affect any obli-
gation, right, or remedy provided under any other Federal
or State law.’’.
SEC. 403. TECHNICAL AND CONFORMING AMENDMENT.
The table of chapters for part I of title 35, United
States Code, is amended by adding after the item relating
to chapter 4 the following:
‘‘5. Invention Promotion Services ...............................................
51’’.
SEC. 404. 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 V—MISCELLANEOUS
IMPROVEMENTS
SEC. 501. 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 Director, a provisional application
may be treated as an application filed under sub-
section (a). Subject to section 119(e)(3) of this title,
if no such request is made, the provisional applica-
tion shall be regarded as abandoned 12 months after
the filing date of such application and shall not be
subject to revival thereafter.’’.
(b) EFFECTIVE DATE.—The amendment made by
subsection (a) applies to any provisional application filed
on or after June 8, 1995.
SEC. 502. INTERNATIONAL APPLICATIONS.
Section 119 of title 35, United States Code, is
amended—
(1) in subsection (a), by inserting ‘‘or in a
WTO member country,’’ after ‘‘or to citizens of the
United States,’’; and
(2) by adding at the end the following new sub-
sections:
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‘‘(f)
APPLICATIONS
FOR
PLANT
BREEDER’S
RIGHTS.—Applications for plant breeder’s rights filed in
a WTO member country (or in a UPOV Contracting
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 patents, subject to the same
conditions and requirements of this section as apply to ap-
plications for patents.
‘‘(g) DEFINITIONS.—As used in this section—
‘‘(1) the term ‘WTO member country’ has the
same meaning as the term is defined in section
104(b)(2) of this title; and
‘‘(2) the term ‘UPOV Contracting Party’ means
a member of the International Convention for the
Protection of New Varieties of Plants.’’.
SEC. 503. PLANT PATENTS.
(a) TUBER PROPAGATED PLANTS.—Section 161 of
title 35, United States Code, is amended by striking ‘‘a
tuber propagated plant or’’.
(b) RIGHTS IN PLANT PATENTS.—The text of section
163 of title 35, United States Code, is amended to read
as follows: ‘‘In the case of a plant patent, the grant shall
include the right to exclude others from asexually repro-
ducing the plant, and from using, offering for sale, or sell-
ing the plant so reproduced, or any of its parts, through-
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out the United States, or from importing the plant so re-
produced, or any parts thereof, into the United States.’’.
(c) EFFECTIVE DATE.—The amendment made by
subsection (a) shall apply on the date of the enactment
of this Act. The amendment made by subsection (b) shall
apply to any plant patent issued on or after the date of
the enactment of this Act.
SEC. 504. 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. 505. DIVISIONAL APPLICATIONS.
(a) IN GENERAL.—Section 121 of title 35, United
States Code, is amended—
(1) in the first sentence by striking ‘‘If’’ and in-
serting ‘‘(a) If’’; and
(2) by adding at the end the following new sub-
sections:
‘‘(b) In a case in which restriction is required on the
ground that two or more independent and distinct inven-
tions are claimed in an application, the applicant shall be
entitled to submit an examination fee and request exam-
ination for each independent and distinct invention in ex-
cess of one. The examination fee shall be equal to the filing
fee, including excess claims fees, that would have applied
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had the claims corresponding to the asserted independent
and distinct inventions been presented in a separate appli-
cation for patent. For each of the independent and distinct
inventions in excess of one for which the applicant pays
an examination fee within two months after the require-
ment for restriction, the Director shall cause an examina-
tion to be made and a notification of rejection or written
notice of allowance provided to the applicant within the
time period specified in section 154(b)(1)(B)(i) of this title
for the original application. Failure to meet this or any
other time limit set forth in section 154(b)(1)(B) of this
title shall be treated as an unusual administrative delay
under section 154(b)(1)(A)(iv) of this title.
‘‘(c) An applicant who requests reconsideration of a
requirement for restriction under this section and submits
examination fees pursuant to such requirement shall, if
the requirement is determined to be improper, be entitled
to a refund of any examination fees determined to have
been paid pursuant to the requirement.’’.
(b) EFFECTIVE DATE.—The amendments made by
subsection (a) shall take effect on the date that is 2 years
after the date of the enactment of this Act and shall apply
to applications for patent filed on or after such effective
date.
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SEC. 506. PUBLICATIONS.
Section 11 of title 35, United States Code, is amend-
ed by adding at the end the following:
‘‘(c) The Patent and Trademark Office shall make
available for public inspection during regular business
hours all solicitations issued by the Office for contracts
for goods or services, and all contracts entered into by the
Office for goods or services.’’.
SECTION 1. SHORT TITLE.
This Act may be cited as the ‘‘Omnibus Patent Act
of 1997’’.
SEC. 2. TABLE OF CONTENTS.
Sec. 1. Short title.
Sec. 2. Table of contents.
TITLE I—UNITED STATES PATENT AND TRADEMARK
ORGANIZATION
Sec. 101. Short title.
Subtitle A—Establishment of the United States Patent and Trademark
Organization
Sec. 111. Establishment of the United States Patent and Trademark Organiza-
tion as a Government corporation.
Sec. 112. Powers and duties.
Sec. 113. Organization and management.
Sec. 114. United States Patent Office.
Sec. 115. United States Trademark Office.
Sec. 116. Suits by and against the Organization.
Sec. 117. Funding.
Sec. 118. Transfers.
Sec. 119. Use of Organization name.
Subtitle B—Effective Date; Technical Amendments
Sec. 131. Effective date.
Sec. 132. Technical and conforming amendments.
Subtitle C—Miscellaneous Provisions
Sec. 141. References.
Sec. 142. Exercise of authorities.
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Sec. 143. Savings provisions.
Sec. 144. Transfer of assets.
Sec. 145. Delegation and assignment.
Sec. 146. Authority of Director of the Office of Management and Budget with re-
spect to functions transferred.
Sec. 147. Certain vesting of functions considered transfers.
Sec. 148. Availability of existing funds.
Sec. 149. Definitions.
TITLE II—EARLY PUBLICATION OF PATENT APPLICATIONS
Sec. 201. Short title.
Sec. 202. Early publication.
Sec. 203. Time for claiming benefit of earlier filing date.
Sec. 204. Provisional rights.
Sec. 205. Prior art effect of published applications.
Sec. 206. Cost recovery for publication.
Sec. 207. Conforming changes.
Sec. 208. Last day of pendency of provisional application.
Sec. 209. Effective date.
TITLE III—PATENT TERM RESTORATION
Sec. 301. Patent term restoration authority.
Sec. 302. Further examination of patent applications.
Sec. 303. Technical clarification.
Sec. 304. Effective date.
TITLE IV—PRIOR DOMESTIC COMMERCIAL USE
Sec. 401. Short title.
Sec. 402. Defense to patent infringement based on prior domestic commercial use.
Sec. 403. Effective date and applicability.
TITLE V—PATENT REEXAMINATION REFORM
Sec. 501. Short title.
Sec. 502. Definitions.
Sec. 503. Reexamination procedures.
Sec. 504. Conforming amendments.
Sec. 505. Report to Congress.
Sec. 506. Effective date.
TITLE VI—MISCELLANEOUS PATENT PROVISIONS
Sec. 601. Provisional applications.
Sec. 602. International applications.
Sec. 603. Access to electronic patent information.
Sec. 604. Certain limitations on damages for patent infringement not applicable.
Sec. 605. Plant patents.
Sec. 606. Electronic filing.
Sec. 607. Study and report on biological deposits in support of biotechnology pat-
ents.
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TITLE I—UNITED STATES PAT-
ENT AND TRADEMARK ORGA-
NIZATION
SEC. 101. SHORT TITLE.
This title may be cited as the ‘‘United States Patent
and Trademark Organization Act of 1997’’.
Subtitle A—Establishment of the
United States Patent and Trade-
mark Organization
SEC. 111. ESTABLISHMENT OF THE UNITED STATES PATENT
AND TRADEMARK ORGANIZATION AS A GOV-
ERNMENT CORPORATION.
(a) ESTABLISHMENT.—The United States Patent and
Trademark Organization is established as a wholly owned
Government corporation subject to chapter 91 of title 31,
separate from any department, and shall be an agency of
the United States under the policy direction of the Sec-
retary of Commerce.
(b) OFFICES.—The United States Patent and Trade-
mark Organization shall maintain its principal office in
the District of Columbia, or the metropolitan area thereof,
for the service of process and papers and for the purpose
of carrying out its powers, duties, and obligations under
this title. The United States Patent and Trademark Orga-
nization shall be deemed, for purposes of venue in civil ac-
101
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tions, to be a resident of the district in which its principal
office is located except where jurisdiction is otherwise pro-
vided by law. The United States Patent and Trademark
Organization may establish satellite offices in such places
within the United States as it considers necessary and ap-
propriate in the conduct of its business.
(c) REFERENCE.—For purposes of this title, a ref-
erence to the ‘‘Organization’’ shall be a reference to the
United States Patent and Trademark Organization, unless
the context provides otherwise.
SEC. 112. POWERS AND DUTIES.
(a) IN GENERAL.—The United States Patent and
Trademark Organization, under the policy direction of the
Secretary of Commerce, shall be responsible for—
(1) the granting and issuing of patents and the
registration of trademarks;
(2) conducting studies, programs, or exchanges of
items or services regarding domestic and inter-
national patent and trademark law, the administra-
tion of the Organization, or any other function vested
in the Organization by law, including programs to
recognize, identify, assess, and forecast the technology
of patented inventions and their utility to industry;
(3)(A) authorizing or conducting studies and
programs cooperatively with foreign patent and
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trademark offices and international organizations, in
connection with the granting and issuing of patents
and the registration of trademarks; and
(B) with the concurrence of the Secretary of
State, authorizing the transfer of not to exceed
$100,000 in any year to the Department of State for
the purpose of making special payments to inter-
national intergovernmental organizations for studies
and programs for advancing international coopera-
tion concerning patents, trademarks, and related mat-
ters; and
(4) disseminating to the public information with
respect to patents and trademarks.
(b) SPECIAL PAYMENTS.—The special payments under
subsection (a)(3)(B) may be in addition to any other pay-
ments or contributions to international organizations and
shall not be subject to any limitations imposed by law on
the amounts of such other payments or contributions by the
United States Government.
(c) SPECIFIC POWERS.—The Organization—
(1) shall have perpetual succession;
(2) shall adopt and use a corporate seal, which
shall be judicially noticed and with which letters pat-
ent, certificates of trademark registrations, and pa-
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pers issued by the Organization shall be authenti-
cated;
(3) may sue and be sued in its corporate name
and be represented by its own attorneys in all judi-
cial and administrative proceedings, subject to the
provisions of section 116;
(4) may indemnify the Director of the United
States Patent and Trademark Organization, the Com-
missioner of Patents, the Commissioner of Trade-
marks, and other officers, attorneys, agents, and em-
ployees (including members of the Management Advi-
sory Boards of the Patent Office and the Trademark
Office) of the Organization for liabilities and expenses
incurred within the scope of their employment;
(5) may adopt, amend, and repeal bylaws, rules,
regulations, and determinations, which—
(A) shall govern the manner in which its
business will be conducted and the powers grant-
ed to it by law will be exercised; and
(B) shall be made after notice and oppor-
tunity for full participation by interested public
and private parties;
(6)(A) may acquire, construct, purchase, lease,
hold, manage, operate, improve, alter, and renovate
any real, personal, or mixed property, or any interest
104
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therein, as it considers necessary to carry out its
functions; and
(B) sell, lease, grant, and dispose of such prop-
erty as it considers necessary to effectuate the pur-
poses of this Act;
(7)(A) may make such purchases, contracts for
the construction, maintenance, or management and
operation of facilities, and contracts for supplies or
services, without regard to the provisions of the Fed-
eral Property and Administrative Services Act of
1949 (40 U.S.C. 471 et seq.), the Public Buildings Act
(40 U.S.C. 601 et seq.), and the Stewart B. McKinney
Homeless Assistance Act (42 U.S.C. 11301 et seq.);
and
(B) may enter into and perform such purchases
and contracts for printing services, including the
process of composition, platemaking, presswork, silk
screen processes, binding, microform, and the products
of such processes, as it considers necessary to carry
out the functions of the Organization, without regard
to sections 501 through 517 and 1101 through 1123
of title 44, United States Code;
(8) may use, with their consent, services, equip-
ment, personnel, and facilities of other departments,
agencies, and instrumentalities of the Federal Govern-
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ment, on a reimbursable basis, and cooperate with
such other departments, agencies, and instrumental-
ities in the establishment and use of services, equip-
ment, and facilities of the Organization;
(9) may obtain from the Administrator of Gen-
eral Services such services as the Administrator is au-
thorized to provide to other agencies of the United
States, on the same basis as those services are pro-
vided to other agencies of the United States;
(10) may use, with the consent of the United
States and the agency, government, or international
organization concerned, the services, records, facilities,
or personnel of any State or local government agency
or instrumentality or foreign government or inter-
national organization to perform functions on its be-
half;
(11) may determine the character of, and the ne-
cessity for, its obligations and expenditures and the
manner in which they shall be incurred, allowed, and
paid, subject to the provisions of title 35, United
States Code and the Act of July 5, 1946 (commonly
referred to as the Trademark Act of 1946);
(12) may retain and use all of its revenues and
receipts, including revenues from the sale, lease, or
disposal of any real, personal, or mixed property, or
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any interest therein, of the Organization, including
for research and development and capital investment,
subject to the provisions of section 10101 of the Omni-
bus Budget Reconciliation Act of 1990 (35 U.S.C. 41
note);
(13) shall have the priority of the United States
with respect to the payment of debts from bankrupt,
insolvent, and decedents’ estates;
(14) may accept monetary gifts or donations of
services, or of real, personal, intellectual, or mixed
property, in order to enhance libraries and museums
operated by the Organization, support the educational
programs of the Organization, or otherwise carry out
the functions of the Organization;
(15) may execute, in accordance with its bylaws,
rules, and regulations, all instruments necessary and
appropriate in the exercise of any of its powers; and
(16) may provide for liability insurance and in-
surance against any loss in connection with its prop-
erty, other assets, or operations either by contract or
by self-insurance.
(d) RESTRICTIONS ON GIFTS.—Any acceptance of a
gift or donation under subsection (c)(14) shall be subject
to section 201 of title 18, United States Code. The Director
shall establish regulations for the acceptance of such gifts
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and donations including regulations prohibiting gifts or do-
nations to the Organization by foreign countries.
(e) RULE OF CONSTRUCTION.—Nothing in this section
shall be construed to nullify, void, cancel, or interrupt any
pending request-for-proposal let or contract issued by the
General Services Administration for the specific purpose of
relocating or leasing space to the United States Patent and
Trademark Organization.
SEC. 113. ORGANIZATION AND MANAGEMENT.
(a) OFFICES.—The United States Patent and Trade-
mark Organization shall consist of—
(1) the Office of the Director;
(2) the United States Patent Office; and
(3) the United States Trademark Office.
(b) DIRECTOR.—
(1) IN
GENERAL.—The management of the
United States Patent and Trademark Organization
shall be vested in a Director of the United States Pat-
ent and Trademark Organization (hereafter in this
title referred to as the ‘‘Director’’, unless the context
provides otherwise), who shall be a citizen of the
United States and who shall be appointed by the
President, by and with the advice and consent of the
Senate. The Director shall be a person who, by reason
of professional background and experience in patent
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or trademark law, is especially qualified to manage
the Organization.
(2) DUTIES.—(A) The Director shall—
(i) be responsible for the Management and
direction of the Organization and shall perform
this duty in a fair, impartial, and equitable
manner; and
(ii) strive to meet the goals set forth in the
performance agreement described under para-
graph (4).
(B) The Director shall advise the President,
through and under the policy direction of the Sec-
retary of Commerce, of all activities of the Organiza-
tion undertaken in response to obligations of the
United States under treaties and executive agree-
ments, or which relate to cooperative programs with
those authorities of foreign governments that are re-
sponsible for granting patents or registering trade-
marks. The Director shall also recommend to the
President, through and under the policy direction of
the Secretary of Commerce, changes in law or policy
which may improve the ability of United States citi-
zens to secure and enforce patent and trademark
rights in the United States or in foreign countries.
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(C)(i) At the direction of the President, the Di-
rector may represent the United States in inter-
national negotiations on matters of patents or trade-
marks, or may designate an officer or officers of the
Organization to participate in such negotiations.
(ii) Nothing in this subparagraph shall be con-
strued to alter any statutory responsibility of the Sec-
retary of State or the United States Trade Represent-
ative.
(D) The Director, in consultation with the Direc-
tor of the Office of Personnel Management, shall
maintain a program for identifying national security
positions and providing for appropriate security
clearances.
(E) The Director may perform such personnel,
procurement, and other functions, with respect to the
United States Patent Office and the United States
Trademark Office, where a centralized administration
of such functions would improve the efficiency of the
Offices, by continuous unanimous agreement of the
Director, the Commissioner of Patents, and the Com-
missioner of Trademarks. The agreement shall be in
writing and shall indicate the allocation of costs
among the Office of the Director, the United States
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Patent Office, and the United States Trademark Of-
fice.
(F) Except as otherwise provided in this title,
the Director shall ensure that—
(i) the United States Patent Office and the
United States Trademark Office, respectively,
shall—
(I) prepare all appropriation requests
under section 1108 of title 31, United States
Code, for each office for submission by the
Director;
(II) adjust fees to provide sufficient
revenues to cover the expenses of such office;
and
(III) expend funds derived from such
fees for only the functions of such office; and
(ii) each such office is not involved in the
management of any other office.
(G) The Director shall submit to Congress annu-
ally such information as is required under chapter 91
of title 31, United States Code, including—
(i) the total monies received and expended
by the Organization;
(ii) the purpose for which the monies were
spent;
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(iii) the amount of any surplus revenues re-
tained by the Organization;
(iv) the quality and quantity of the work of
the Organization; and
(v) other information relating to the Orga-
nization.
(3) OATH.—The Director shall, before taking of-
fice, take an oath to discharge faithfully the duties of
the Organization.
(4) COMPENSATION.—The Director shall receive
compensation at the rate of pay in effect for level III
of the Executive Schedule under section 5314 of title
5, United States Code and, in addition, may receive
as a bonus, an amount which would raise total com-
pensation to the equivalent of the level of the rate of
pay in effect for level II of the Executive Schedule
under section 5313 of title 5, based upon an evalua-
tion by the Secretary of Commerce of the Director’s
performance as defined in an annual performance
agreement between the Director and the Secretary.
The annual performance agreement shall incorporate
measurable goals as delineated in an annual perform-
ance plan agreed to by the Director and the Sec-
retary.
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(5) REMOVAL.—The Director shall serve at the
pleasure of the President.
(6) DESIGNEE OF DIRECTOR.—The Director shall
designate an officer of the Organization who shall be
vested with the authority to act in the capacity of the
Director in the event of the absence or incapacity of
the Director.
(7) RELATIONSHIP
WITH
EXISTING
AUTHORI-
TIES.—Nothing in this section shall derogate from the
duties or functions of the Register of Copyrights.
(c) OFFICERS AND EMPLOYEES OF THE ORGANIZA-
TION.—
(1) COMMISSIONERS OF PATENTS AND TRADE-
MARKS.—The Director shall appoint a Commissioner
of Patents and a Commissioner of Trademarks under
section 3 of title 35, United States Code and section
53 of the Act of July 5, 1946 (commonly referred to
as the Trademark Act of 1946), respectively, as
amended by this Act.
(2) OTHER
OFFICERS
AND
EMPLOYEES.—The
Director shall—
(A) appoint officers, employees (including
attorneys), and agents of the Organization, who
shall be citizens of the United States, as the Di-
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rector considers necessary to carry out its func-
tions;
(B) fix the compensation of such officers
and employees, except as provided in subsection
(e); and
(C) define the authority and duties of such
officers and employees and delegate to them such
of the powers vested in the Organization as the
Director may determine.
(3) PERSONNEL
LIMITATIONS.—The Organiza-
tion shall not be subject to any administratively or
statutorily imposed limitation on positions or person-
nel, and no positions or personnel of the Organization
shall be taken into account for purposes of applying
any such limitation.
(d) LIMITS ON COMPENSATION.—Except as otherwise
provided by law, the annual rate of basic pay of an officer
or employee of the Organization may not be fixed at a rate
that exceeds, and total compensation payable to any such
officer or employee for any year may not exceed, the annual
rate of basic pay in effect for level II of the Executive Sched-
ule under section 5313 of title 5, United States Code. The
Director shall prescribe such regulations as may be nec-
essary to carry out this subsection.
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(e) INAPPLICABILITY OF TITLE 5, UNITED STATES
CODE, GENERALLY.—Except as otherwise provided in this
section, officers and employees of the Organization shall not
be subject to the provisions of title 5, United States Code,
relating to Federal employees.
(f) CONTINUED APPLICABILITY OF CERTAIN PROVI-
SIONS OF TITLE 5, UNITED STATES CODE.—
(1) IN GENERAL.—The following provisions of
title 5, United States Code, shall apply to the Organi-
zation and its officers and employees:
(A) Section 3110 (relating to employment of
relatives; restrictions).
(B) Subchapter II of chapter 55 (relating to
withholding pay).
(C) Subchapters II and III of chapter 73
(relating to employment limitations and politi-
cal activities, respectively).
(D) Chapter 71 (relating to labor-manage-
ment relations), subject to paragraph (2) and
subsection (g).
(E) Section 3303 (relating to political rec-
ommendations).
(F) Subchapter II of chapter 61 (relating to
flexible and compressed work schedules).
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(G) Section 2302(b)(8) (relating to whistle-
blower protection) and whistleblower related pro-
visions of chapter 12 (covering the role of the Of-
fice of Special Counsel).
(2) COMPENSATION
SUBJECT
TO
COLLECTIVE
BARGAINING.—
(A) IN
GENERAL.—Notwithstanding any
other provision of law, for purposes of applying
chapter 71 of title 5, United States Code, pursu-
ant to paragraph (1)(D), basic pay and other
forms of compensation shall be considered to be
among the matters as to which the duty to bar-
gain in good faith extends under such chapter.
(B) EXCEPTIONS.—The duty to bargain in
good faith shall not, by reason of subparagraph
(A), be considered to extend to any benefit under
title 5, United States Code, which is afforded by
paragraph (1), (2), (3), or (4) of subsection (g).
(C) LIMITATIONS APPLY.—Nothing in this
subsection shall be considered to allow any limi-
tation under subsection (d) to be exceeded.
(g) PROVISIONS OF TITLE 5, UNITED STATES CODE,
THAT CONTINUE TO APPLY, SUBJECT TO CERTAIN RE-
QUIREMENTS.—
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(1) RETIREMENT.—(A) The provisions of sub-
chapter III of chapter 83 and chapter 84 of title 5,
United States Code, shall apply to the Organization
and its officers and employees, subject to subpara-
graph (B).
(B)(i) The amount required of the Organization
under the second sentence of section 8334(a)(1) of title
5, United States Code, with respect to any particular
individual shall, instead of the amount which would
otherwise apply, be equal to the normal-cost percent-
age (determined with respect to officers and employees
of the Organization using dynamic assumptions, as
defined by section 8401(9) of such title) of the indi-
vidual’s basic pay, minus the amount required to be
withheld 
from 
such 
pay 
under 
such 
section
8334(a)(1).
(ii) The amount required of the Organization
under section 8334(k)(1)(B) of title 5, United States
Code, with respect to any particular individual shall
be equal to an amount computed in a manner similar
to that specified in clause (i), as determined in ac-
cordance with clause (iii).
(iii) Any regulations necessary to carry out this
subparagraph shall be prescribed by the Office of Per-
sonnel Management.
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(C) The United States Patent and Trademark
Organization may supplement the benefits provided
under the preceding provisions of this paragraph.
(2) HEALTH BENEFITS.—(A) The provisions of
chapter 89 of title 5, United States Code, shall apply
to the Organization and its officers and employees,
subject to subparagraph (B).
(B)(i) With respect to any individual who be-
comes an officer or employee of the Organization pur-
suant to subsection (i), the eligibility of such individ-
ual to participate in such program as an annuitant
(or of any other person to participate in such pro-
gram as an annuitant based on the death of such in-
dividual) shall be determined disregarding the re-
quirements of section 8905(b) of title 5, United States
Code. The preceding sentence shall not apply if the
individual ceases to be an officer or employee of the
Organization for any period of time after becoming
an officer or employee of the Organization pursuant
to subsection (i) and before separation.
(ii) The Government contributions authorized by
section 8906 of title 5, United States Code, for health
benefits for anyone participating in the health bene-
fits program pursuant to this subparagraph shall be
made by the Organization in the same manner as
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provided under section 8906(g)(2) of such title with
respect to the United States Postal Service for indi-
viduals associated therewith.
(iii) For purposes of this subparagraph, the term
‘‘annuitant’’ has the meaning given such term by sec-
tion 8901(3) of title 5, United States Code.
(C) The Organization may supplement the bene-
fits provided under the preceding provisions of this
paragraph.
(3) LIFE
INSURANCE.—(A) The provisions of
chapter 87 of title 5, United States Code, shall apply
to the Organization and its officers and employees,
subject to subparagraph (B).
(B)(i) Eligibility for life insurance coverage after
retirement or while in receipt of compensation under
subchapter I of chapter 81 of title 5, United States
Code, shall be determined, in the case of any individ-
ual who becomes an officer or employee of the Organi-
zation pursuant to subsection (i), without regard to
the requirements of section 8706(b) (1) or (2) of such
title, but subject to the condition specified in the last
sentence of paragraph (2)(B)(i) of this subsection.
(ii) Government contributions under section
8708(d) of such title on behalf of any such individual
shall be made by the Organization in the same man-
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ner as provided under paragraph (3) thereof with re-
spect to the United States Postal Service for individ-
uals associated therewith.
(C) The Organization may supplement the bene-
fits provided under the preceding provisions of this
paragraph.
(4) EMPLOYEES’ COMPENSATION FUND.—(A) Of-
ficers and employees of the Organization shall not be-
come ineligible to participate in the program under
chapter 81 of title 5, United States Code, relating to
compensation for work injuries, by reason of sub-
section (e).
(B) The Organization shall remain responsible
for reimbursing the Employees’ Compensation Fund,
pursuant to section 8147 of title 5, United States
Code, for compensation paid or payable after the ef-
fective date of this title in accordance with chapter 81
of title 5, United States Code, with regard to any in-
jury, disability, or death due to events arising before
such date, whether or not a claim has been filed or
is final on such date.
(h) LABOR-MANAGEMENT RELATIONS.—
(1) LABOR
RELATIONS
AND
EMPLOYEE
RELA-
TIONS
PROGRAMS.—The Organization shall develop
hiring practices, labor relations and employee rela-
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tions programs with the objective of improving pro-
ductivity and efficiency, incorporating the following
principles:
(A) Such programs shall be consistent with
the merit principles in section 2301(b) of title 5,
United States Code.
(B) Such programs shall provide veterans
preference protections equivalent to those estab-
lished by sections 2108, 3308 through 3318,
3320, 3502, and 3504 of title 5, United States
Code.
(C)(i) The right to work shall not be subject
to undue restraint or coercion. The right to work
shall not be infringed or restricted in any way
based on membership in, affiliation with, or fi-
nancial support of a labor organization.
(ii) No person shall be required, as a condi-
tion of employment or continuation of employ-
ment—
(I) to resign or refrain from voluntary
membership in, voluntary affiliation with,
or voluntary financial support of a labor
organization;
(II) to become or remain a member of
a labor organization;
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(III) to pay any dues, fees, assess-
ments, or other charges of any kind or
amount to a labor organization;
(IV) to pay to any charity or other
third party, in lieu of such payments, any
amount equivalent to or a pro rata portion
of dues, fees, assessments, or other charges
regularly required of members of a labor or-
ganization; or
(V) to be recommended, approved, re-
ferred, or cleared by or through a labor or-
ganization.
(iii) This subparagraph shall not apply to
a person described in section 7103(a)(2)(v) of
title 5, United States Code, or a ‘‘supervisor’’,
‘‘management official’’, or ‘‘confidential em-
ployee’’ as those terms are defined in 7103(a)
(10), (11), and (13) of such title.
(iv) Any labor organization recognized by
the Organization as the exclusive representative
of a unit of employees of the Organization shall
represent the interests of all employees in that
unit without discrimination and without regard
to labor organization membership.
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(2) ADOPTION
OF
EXISTING
LABOR
AGREE-
MENTS.—The Organization shall adopt all labor
agreements which are in effect, as of the day before
the effective date of this title, with respect to such Or-
ganization (as then in effect).
(i) CARRYOVER OF PERSONNEL.—
(1) FROM PTO.—Effective as of the effective date
of this title, all officers and employees of the Patent
and Trademark Office on the day before such effective
date shall become officers and employees of the Orga-
nization, without a break in service.
(2) OTHER
PERSONNEL.—(A) Any individual
who, on the day before the effective date of this title,
is an officer or employee of the Department of Com-
merce (other than an officer or employee under para-
graph (1)) shall be transferred to the Organization
if—
(i) such individual serves in a position for
which a major function is the performance of
work reimbursed by the Patent and Trademark
Office, as determined by the Secretary of Com-
merce;
(ii) such individual serves in a position
that performed work in support of the Patent
and Trademark Office during at least half of the
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incumbent’s work time, as determined by the
Secretary of Commerce; or
(iii) such transfer would be in the interest
of the Organization, as determined by the Sec-
retary of Commerce in consultation with the Di-
rector.
(B) Any transfer under this paragraph shall be
effective as of the same effective date as referred to in
paragraph (1), and shall be made without a break in
service.
(3) ACCUMULATED LEAVE.—The amount of sick
and annual leave and compensatory time accumu-
lated under title 5, United States Code, before the ef-
fective date described in paragraph (1), by any indi-
vidual who becomes an officer or employee of the Or-
ganization under this subsection, are obligations of
the Organization.
(4) TERMINATION
RIGHTS.—Any employee re-
ferred to in paragraph (1) or (2) of this subsection
whose employment with the Organization is termi-
nated during the 1-year period beginning on the effec-
tive date of this title shall be entitled to rights and
benefits, to be afforded by the Organization, similar
to those such employee would have had under Federal
law if termination had occurred immediately before
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such date. An employee who would have been entitled
to appeal any such termination to the Merit Systems
Protection Board, if such termination had occurred
immediately before such effective date, may appeal
any such termination occurring within such 1-year
period to the Board under such procedures as it may
prescribe.
(5) TRANSITION PROVISIONS.—(A)(i) On or after
the effective date of this title, the President shall ap-
point a Director of the United States Patent and
Trademark Organization who shall serve until the
earlier of—
(I) the date on which a Director qualifies
under subsection (b); or
(II) the date occurring 1 year after the ef-
fective date of this title.
(ii) The President shall not make more than 1
appointment under this subparagraph.
(B) The individual serving as the Assistant
Commissioner of Patents on the day before the effec-
tive date of this title shall serve as the Commissioner
of Patents until the date on which a Commissioner of
Patents is appointed under section 3 of title 35,
United States Code, as amended by this Act.
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(C) The individual serving as the Assistant Com-
missioner of Trademarks on the day before the effec-
tive date of this title shall serve as the Commissioner
of Trademarks until the date on which a Commis-
sioner of Trademarks is appointed under section 53
of the Act of July 5, 1946 (commonly referred to as
the Trademark Act of 1946), as amended by this Act.
(j) COMPETITIVE STATUS.—For purposes of appoint-
ment to a position in the competitive service for which an
officer or employee of the Organization is qualified, such
officer or employee shall not forfeit any competitive status,
acquired by such officer or employee before the effective date
of this title, by reason of becoming an officer or employee
of the Organization under subsection (i).
(k) SAVINGS PROVISIONS.—Compensation, benefits,
and other terms and conditions of employment in effect im-
mediately before the effective date of this title, whether pro-
vided by statute or by rules and regulations of the former
Patent and Trademark Office or the executive branch of the
Government of the United States, shall continue to apply
to officers and employees of the Organization, until changed
in accordance with this section (whether by action of the
Director or otherwise).
(l) REMOVAL OF QUASI-JUDICIAL EXAMINERS.—The
Organization may remove a patent examiner or examiner-
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in-chief, or a trademark examiner or member of a Trade-
mark Trial and Appeal Board only for such cause as will
promote the efficiency of the Organization.
SEC. 114. UNITED STATES PATENT OFFICE.
(a) ESTABLISHMENT OF THE PATENT OFFICE AS A
SEPARATE ADMINISTRATIVE UNIT.—Section 1 of title 35,
United States Code, is amended to read as follows:
‘‘§ 1. Establishment
‘‘(a) ESTABLISHMENT.—The United States Patent Of-
fice is established as a separate administrative unit of the
United States Patent and Trademark Organization, where
records, books, drawings, specifications, and other papers
and things pertaining to patents shall be kept and pre-
served, except as otherwise provided by law.
‘‘(b) REFERENCE.—For purposes of this title, the
United States Patent Office shall also be referred to as the
‘Office’ and the ‘Patent Office’.’’.
(b) POWERS
AND DUTIES.—Section 2 of title 35,
United States Code, is amended to read as follows:
‘‘§ 2. Powers and duties
‘‘The United States Patent Office, under the policy di-
rection of the Secretary of Commerce through the Director
of the United States Patent and Trademark Organization,
shall be responsible for—
‘‘(1) granting and issuing patents;
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‘‘(2) conducting studies, programs, or exchanges
of items or services regarding domestic and inter-
national patent law, the administration of the Orga-
nization, or any other function vested in the Organi-
zation by law, including programs to recognize, iden-
tify, assess, and forecast the technology of patented in-
ventions and their utility to industry;
‘‘(3) authorizing or conducting studies and pro-
grams cooperatively with foreign patent offices and
international organizations, in connection with the
granting and issuing of patents; and
‘‘(4) disseminating to the public information
with respect to patents.’’.
(c) ORGANIZATION AND MANAGEMENT.—Section 3 of
title 35, United States Code, is amended to read as follows:
‘‘§ 3. Officers and employees
‘‘(a) COMMISSIONER.—
‘‘(1) IN
GENERAL.—The management of the
United States Patent Office shall be vested in a Com-
missioner of Patents, who shall be a citizen of the
United States and who shall be appointed by the Di-
rector of the United States Patent and Trademark
Organization and shall serve at the pleasure of the
Director of the United States Patent and Trademark
Organization. The Commissioner of Patents shall be
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a person who, by reason of professional background
and experience in patent law, is especially qualified
to manage the Office.
‘‘(2) DUTIES.—
‘‘(A) IN GENERAL.—The Commissioner shall
be responsible for all aspects of the management,
administration, and operation of the Office, in-
cluding the granting and issuing of patents, and
shall perform these duties in a fair, impartial,
and equitable manner.
‘‘(B) ADVISING
THE
DIRECTOR
OF
THE
UNITED STATES PATENT AND TRADEMARK ORGA-
NIZATION.—The Commissioner of Patents shall
advise the Director of the United States Patent
and Trademark Organization of all activities of
the Office undertaken in response to obligations
of the United States under treaties and executive
agreements, or which relate to cooperative pro-
grams with those authorities of foreign govern-
ments that are responsible for granting patents.
The Commissioner of Patents shall advise the Di-
rector of the United States Patent and Trade-
mark Organization on matters of patent law and
shall recommend to the Director of the United
States Patent and Trademark Organization
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mine whether such fees or regulations are con-
sistent with the policy direction of the Secretary
of Commerce.
‘‘(3) OATH.—The Commissioner shall, before tak-
ing office, take an oath to discharge faithfully the du-
ties of the Office.
‘‘(4) COMPENSATION.—
‘‘(A) IN GENERAL.—The Commissioner shall
receive compensation at the rate of pay in effect
for level IV of the Executive Schedule under sec-
tion 5315 of title 5.
‘‘(B) BONUS.—In addition to compensation
under subparagraph (A), the Commissioner may,
at the discretion of the Director of the United
States Patent and Trademark Organization, re-
ceive as a bonus, an amount which would raise
total compensation to the equivalent of the rate
of pay in effect for level III of the Executive
Schedule under section 5314 of title 5.
‘‘(b) OFFICERS AND EMPLOYEES.—
‘‘(1) DEPUTY COMMISSIONER OF PATENTS.—The
Commissioner shall appoint a Deputy Commissioner
of Patents who shall be vested with the authority to
act in the capacity of the Commissioner in the event
of the absence or incapacity of the Commissioner. In
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the event of a vacancy in the office of Commissioner,
the Deputy Commissioner shall fill the office of Com-
missioner until a new Commissioner is appointed
and takes office.
‘‘(2) OMBUDSMAN.—The Commissioner shall ap-
point an ombudsman to advise the Commissioner on
the concerns of independent inventors, nonprofit orga-
nizations, and small business concerns.
‘‘(3) OTHER OFFICERS AND EMPLOYEES.—Other
officers, attorneys, employees, and agents shall be se-
lected and appointed by the Commissioner, and shall
be vested with such powers and duties as the Commis-
sioner may determine.’’.
(d) MANAGEMENT ADVISORY BOARD.—Chapter 1 of
part I of title 35, United States Code, is amended by insert-
ing after section 4 the following:
‘‘§ 5. Patent Office Management Advisory Board
‘‘(a) ESTABLISHMENT
OF MANAGEMENT ADVISORY
BOARD.—
‘‘(1) APPOINTMENT.—The United States Patent
Office shall have a Management Advisory Board
(hereafter in this title referred to as the ‘Advisory
Board’) of 5 members, who shall be appointed by the
President and shall serve at the pleasure of the Presi-
dent. Not more than 3 of the 5 members shall be mem-
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bers of the same political party. At least 1 member
shall be an independent inventor, as defined in regu-
lations issued by the Commissioner.
‘‘(2) CHAIR.—The President shall designate a
Chair of the Advisory Board, whose term as chair
shall be for 3 years.
‘‘(3) TIMING
OF
APPOINTMENTS.—Initial ap-
pointments to the Advisory Board shall be made with-
in 3 months after the effective date of the United
States Patent and Trademark Organization Act of
1997. Vacancies shall be filled in the manner in
which the original appointment was made under this
subsection within 3 months after they occur.
‘‘(b) BASIS FOR APPOINTMENTS.—Members of the Ad-
visory Board shall be citizens of the United States who shall
be chosen so as to represent the interests of diverse users
of the United States Patent Office, and shall include indi-
viduals with substantial background and achievement in
corporate finance and management.
‘‘(c) MEETINGS.—The Advisory Board shall meet at
the call of the Chair to consider an agenda set by the Chair.
‘‘(d) DUTIES.—The Advisory Board shall—
‘‘(1) review the policies, goals, performance,
budget, and user fees of the United States Patent Of-
fice, and advise the Commissioner on these matters;
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‘‘(2) within 60 days after the end of each fiscal
year—
‘‘(A) prepare an annual report on the mat-
ters referred to in paragraph (1);
‘‘(B) transmit the report to the Director of
the United States Patent and Trademark Orga-
nization, the President, and the Committees on
the Judiciary of the Senate and the House of
Representatives; and
‘‘(C) publish the report in the Patent Office
Official Gazette.
‘‘(e) COMPENSATION.—Each member of the Advisory
Board shall be compensated for each day (including travel
time) during which such member is attending meetings or
conferences of the Advisory Board or otherwise engaged in
the business of the Advisory Board, at the rate which is
the daily equivalent of the annual rate of basic pay in effect
for level III of the Executive Schedule under section 5314
of title 5, and while away from such member’s home or reg-
ular place of business such member may be allowed travel
expenses, including per diem in lieu of subsistence, as au-
thorized by section 5703 of title 5.
‘‘(f) ACCESS TO INFORMATION.—Members of the Advi-
sory Board shall be provided access to records and informa-
tion in the United States Patent Office, except for personnel
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or other privileged information and information concerning
patent applications required to be kept in confidence by sec-
tion 122.
‘‘(g) APPLICABILITY
OF CERTAIN ETHICS LAWS.—
Members of the Advisory Board shall be special Government
employees within the meaning of section 202 of title 18.’’.
(e) CONFORMING AMENDMENTS.—Section 6 of title 35,
United States Code, and the item relating to such section
in the table of contents for chapter 1 of title 35, United
States Code, are repealed.
(f) BOARD
OF
PATENT
APPEALS
AND
INTER-
FERENCES.—Section 7 of title 35, United States Code, is
amended to read as follows:
‘‘§ 7. Board of Patent Appeals and Interferences
‘‘(a) ESTABLISHMENT AND COMPOSITION.—There shall
be in the United States Patent Office a Board of Patent
Appeals and Interferences. The Commissioner, the Deputy
Commissioner, and the administrative patent judges shall
constitute the Board. The administrative patent judges shall
be persons of competent legal knowledge and scientific abil-
ity.
‘‘(b) DUTIES.—
‘‘(1) IN GENERAL.—The Board of Patent Appeals
and Interferences shall, on written appeal of an ap-
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plicant, a patent owner, or a third-party requester in
a reexamination proceeding—
‘‘(A) review adverse decisions of examin-
ers—
‘‘(i) upon applications for patents; and
‘‘(ii) in reexamination proceedings;
and
‘‘(B) determine priority and patentability
of invention in interferences declared under sec-
tion 135(a).
‘‘(2) HEARINGS.—Each appeal and interference
shall be heard by at least 3 members of the Board,
who shall be designated by the Deputy Commissioner.
Only the Board of Patent Appeals and Interferences
may grant rehearings.’’.
(g) ANNUAL REPORT OF COMMISSIONER.—Section 14
of title 35, United States Code, is amended to read as fol-
lows:
‘‘§ 14. Annual report to Congress
‘‘The Commissioner shall report to the Director of the
United States Patent and Trademark Organization such
information as the Director is required to submit to Con-
gress annually under section 157(d) of this title, and under
chapter 91 of title 31, including—
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‘‘(1) the total of the moneys received and ex-
pended by the Office;
‘‘(2) the purposes for which the moneys were
spent;
‘‘(3) the quality and quantity of the work of the
Office; and
‘‘(4) other information relating to the Office.’’.
(h) PRACTICE BEFORE PATENT OFFICE.—
(1) IN GENERAL.—Section 31 of title 35, United
States Code, is amended to read as follows:
‘‘§ 31. Regulations for agents and attorneys
‘‘The Commissioner may prescribe regulations govern-
ing the recognition and conduct of agents, attorneys, or
other persons representing applicants or other parties before
the Office. The regulations may require such persons, before
being recognized as representatives of applicants or other
persons, to show that they are of good moral character and
reputation and are possessed of the necessary qualifications
to render to applicants or other persons valuable service,
advice, and assistance in the presentation or prosecution
of their applications or other business before the Office.’’.
(2) DESIGNATION
OF
ATTORNEY
TO
CONDUCT
HEARING.—Section 32 of title 35, United States Code,
is amended in the first sentence by striking ‘‘Patent
and Trademark Office’’ and inserting ‘‘Patent Office’’
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and by inserting before the last sentence the following:
‘‘The Commissioner shall have the discretion to des-
ignate any attorney who is an officer or employee of
the United States Patent Office to conduct the hearing
required by this section.’’.
(i) FUNDING.—
(1) ADJUSTMENT
OF
FEES.—Section 41(f) of
title 35, United States Code, is amended to read as
follows:
‘‘(f) The Commissioner, after consulting with the Pat-
ent Office Management Advisory Board pursuant to section
3(a)(2)(C) of this title and after notice and opportunity for
full participation by interested public and private parties,
may, by regulation, adjust the fees established in this sec-
tion. The Director of the United States Patent and Trade-
mark Organization shall determine whether such fees are
consistent with the policy direction of the Secretary of Com-
merce.’’.
(2) PATENT
OFFICE
FUNDING.—Section 42 of
title 35, United States Code, is amended to read as
follows:
‘‘§ 42. Patent Office funding
‘‘(a) FEES PAYABLE TO THE OFFICE.—All fees for
services performed by or materials furnished by the United
States Patent Office shall be payable to the Office.
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‘‘(b) USE OF MONEYS.—Moneys from fees shall be
available to the United States Patent Office to carry out,
to the extent provided in appropriations Acts, the functions
of the Office. Moneys of the Office not otherwise used to
carry out the functions of the Office shall be kept in cash
on hand or on deposit, or invested in obligations of the
United States or guaranteed by the United States, or in
obligations or other instruments which are lawful invest-
ments for fiduciary, trust, or public funds. Fees available
to the Commissioner under this title shall be used only for
the processing of patent applications and for other services
and materials relating to patents, including the agreed
upon share of any centralized function, as set forth in sec-
tion 113(b)(2)(E) of the United States Patent and Trade-
mark Organization Act of 1997.
‘‘(c) CONTRIBUTION TO THE OFFICE OF THE DIREC-
TOR OF THE UNITED STATES PATENT AND TRADEMARK
ORGANIZATION.—The Patent Office shall contribute 50 per-
cent of the annual budget of the Office of the Director of
the United States Patent and Trademark Organization.’’.
SEC. 115. UNITED STATES TRADEMARK OFFICE.
(a) ESTABLISHMENT OF THE UNITED STATES TRADE-
MARK OFFICE AS A SEPARATE ADMINISTRATIVE UNIT.—
The Act of July 5, 1946 (commonly referred to as the Trade-
mark Act of 1946) is amended—
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(1) by redesignating titles X and XI as titles XI
and XII, respectively;
(2) by redesignating sections 45, 46, 47, 48, 49,
50, and 51 as sections 61, 71, 72, 73, 74, 75, and 76,
respectively; and
(3) by inserting after title IX the following new
title:
‘‘TITLE X—UNITED STATES
TRADEMARK OFFICE
‘‘SEC. 51. ESTABLISHMENT.
‘‘(a) ESTABLISHMENT.—The United States Trademark
Office is established as a separate administrative unit of
the United States Patent and Trademark Organization.
‘‘(b) REFERENCE.—For purposes of this chapter, the
United States Trademark Office shall also be referred to as
the ‘Office’ and the ‘Trademark Office’.
‘‘SEC. 52. POWERS AND DUTIES.
‘‘The United States Trademark Office, under the policy
direction of the Secretary of Commerce through the Director
of the United States Patent and Trademark Organization,
shall be responsible for—
‘‘(1) the registration of trademarks;
‘‘(2) conducting studies, programs, or exchanges
of items or services regarding domestic and inter-
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national trademark law or the administration of the
Office;
‘‘(3) authorizing or conducting studies and pro-
grams cooperatively with foreign trademark offices
and international organizations, in connection with
the registration of trademarks; and
‘‘(4) disseminating to the public information
with respect to trademarks.
‘‘SEC. 53. OFFICERS AND EMPLOYEES.
‘‘(a) COMMISSIONER.—
‘‘(1) IN
GENERAL.—The management of the
United States Trademark Office shall be vested in a
Commissioner of Trademarks, who shall be a citizen
of the United States and who shall be appointed by
the Director of the United States Patent and Trade-
mark Organization and shall serve at the pleasure of
the Director of the United States Patent and Trade-
mark Organization. The Commissioner of Trademarks
shall be a person who, by reason of professional back-
ground and experience in trademark law, is especially
qualified to manage the Office.
‘‘(2) DUTIES.—
‘‘(A) IN GENERAL.—The Commissioner shall
be responsible for all aspects of the management,
administration, and operation of the Office, in-
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cluding the registration of trademarks, and shall
perform these duties in a fair, impartial, and eq-
uitable manner.
‘‘(B) ADVISING
THE
DIRECTOR
OF
THE
UNITED STATES PATENT AND TRADEMARK ORGA-
NIZATION.—The Commissioner of Trademarks
shall advise the Director of the United States
Patent and Trademark Organization of all ac-
tivities of the Office undertaken in response to
obligations of the United States under treaties
and executive agreements, or which relate to co-
operative programs with those authorities of for-
eign governments that are responsible for reg-
istering trademarks. The Commissioner of Trade-
marks shall advise the Director of the United
States Patent and Trademark Organization on
matters of trademark law and shall recommend
to the Director of the United States Patent and
Trademark Organization changes in law or pol-
icy which may improve the ability of United
States citizens to secure and enforce trademark
rights in the United States or in foreign coun-
tries.
‘‘(C) 
REGULATIONS.—The 
Commissioner
may establish regulations, not inconsistent with
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law, for the conduct of proceedings in the Trade-
mark Office. The Director of the United States
Patent and Trademark Organization shall deter-
mine whether such regulations are consistent
with the policy direction of the Secretary of
Commerce.
‘‘(D) CONSULTATION
WITH
THE
MANAGE-
MENT ADVISORY BOARD.—(i) The Commissioner
shall consult with the Trademark Office Manage-
ment Advisory Board established under section
54—
‘‘(I) on a regular basis on matters re-
lating to the operation of the Office; and
‘‘(II) before submitting budgetary pro-
posals to the Director of the United States
Patent and Trademark Organization for
submission to the Office of Management and
Budget or changing or proposing to change
trademark user fees or trademark regula-
tions.
‘‘(ii) The Director of the United States Pat-
ent and Trademark Organization shall deter-
mine whether such fees or regulations are con-
sistent with the policy direction of the Secretary
of Commerce.
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‘‘(E) PUBLICATIONS.—(i) The Commis-
sioner may print, or cause to be printed, the fol-
lowing:
‘‘(I) Certificates of trademark registra-
tions, including statements and drawings,
together with copies of the same.
‘‘(II) The Official Gazette of the United
States Trademark Office.
‘‘(III) Annual indexes of trademarks
and registrants.
‘‘(IV) Annual volumes of decisions in
trademark cases.
‘‘(V) Pamphlet copies of laws and rules
relating to trademarks and circulars or
other publications relating to the business of
the Office.
‘‘(ii) The Commissioner may exchange any
of the publications specified under clause (i) for
publications desirable for the use of the Trade-
mark Office.
‘‘(3) OATH.—The Commissioner shall, before tak-
ing office, take an oath to discharge faithfully the du-
ties of the Office.
‘‘(4) COMPENSATION.—
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‘‘(A) IN GENERAL.—The Commissioner shall
receive compensation at the rate of pay in effect
for level IV of the Executive Schedule under sec-
tion 5315 of title 5, United States Code.
‘‘(B) BONUS.—In addition to compensation
under subparagraph (A), the Commissioner may,
at the discretion of the Director of the United
States Patent and Trademark Organization, re-
ceive as a bonus, an amount which would raise
total compensation to the equivalent of the rate
of pay in effect for level III of the Executive
Schedule under section 5314 of title 5.
‘‘(b) OFFICERS AND EMPLOYEES.—The Commissioner
shall appoint a Deputy Commissioner of Trademarks who
shall be vested with the authority to act in the capacity
of the Commissioner in the event of the absence or incapac-
ity of the Commissioner. In the event of a vacancy in the
office of Commissioner, the Deputy Commissioner shall fill
the office of Commissioner until a new Commissioner is ap-
pointed and takes office. Other officers, attorneys, employ-
ees, and agents shall be selected and appointed by the Com-
missioner, and shall be vested with such powers and duties
as the Commissioner may determine.
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‘‘SEC. 54. TRADEMARK OFFICE MANAGEMENT ADVISORY
BOARD.
‘‘(a) ESTABLISHMENT
OF MANAGEMENT ADVISORY
BOARD.—
‘‘(1) APPOINTMENT.—The United States Trade-
mark Office shall have a Management Advisory
Board (hereafter in this title referred to as the ‘Advi-
sory Board’) of 5 members, who shall be appointed by
the President and shall serve at the pleasure of the
President. Not more than 3 of the 5 members shall be
members of the same political party.
‘‘(2) CHAIR.—The President shall designate a
Chair of the Advisory Board, whose term as chair
shall be for 3 years.
‘‘(3) TIMING
OF
APPOINTMENTS.—Initial ap-
pointments to the Advisory Board shall be made with-
in 3 months after the effective date of the United
States Patent and Trademark Organization Act of
1997. Vacancies shall be filled in the manner in
which the original appointment was made under this
section within 3 months after they occur.
‘‘(b) BASIS FOR APPOINTMENTS.—Members of the Ad-
visory Board shall be citizens of the United States who shall
be chosen so as to represent the interests of diverse users
of the United States Trademark Office, and shall include
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individuals with substantial background and achievement
in corporate finance and management.
‘‘(c) MEETINGS.—The Advisory Board shall meet at
the call of the Chair to consider an agenda set by the Chair.
‘‘(d) DUTIES.—The Advisory Board shall—
‘‘(1) review the policies, goals, performance,
budget, and user fees of the United States Trademark
Office, and advise the Commissioner on these matters;
and
‘‘(2) within 60 days after the end of each fiscal
year—
‘‘(A) prepare an annual report on the mat-
ters referred to under paragraph (1);
‘‘(B) transmit the report to the Director of
the United States Patent and Trademark Orga-
nization, the President, and the Committees on
the Judiciary of the Senate and the House of
Representatives; and
‘‘(C) publish the report in the Trademark
Office Official Gazette.
‘‘(e) COMPENSATION.—Each member of the Advisory
Board shall be compensated for each day (including travel
time) during which such member is attending meetings or
conferences of the Advisory Board or otherwise engaged in
the business of the Advisory Board, at the rate which is
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the daily equivalent of the annual rate of basic pay in effect
for level III of the Executive Schedule under section 5314
of title 5, United States Code, and while away from such
member’s home or regular place of business such member
may be allowed travel expenses, including per diem in lieu
of subsistence, as authorized by section 5703 of title 5,
United States Code.
‘‘(f) ACCESS TO INFORMATION.—Members of the Advi-
sory Board shall be provided access to records and informa-
tion in the United States Trademark Office, except for per-
sonnel or other privileged information.
‘‘(g) APPLICABILITY OF CERTAIN ETHIC LAWS.—Mem-
bers of the Advisory Board shall be special Government em-
ployees within the meaning of section 202 of title 18.
‘‘SEC. 55. ANNUAL REPORT TO CONGRESS.
‘‘The Commissioner shall report to the Director of the
United States Patent and Trademark Organization such
information as the Director is required to report to Con-
gress annually under chapter 91 of title 5, including—
‘‘(1) the moneys received and expended by the
Office;
‘‘(2) the purposes for which the moneys were
spent;
‘‘(3) the quality and quantity of the work of the
Office; and
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‘‘(4) other information relating to the Office.
‘‘SEC. 56. TRADEMARK OFFICE FUNDING.
‘‘(a) FEES PAYABLE TO THE OFFICE.—All fees for
services performed by or materials furnished by the United
States Trademark Office shall be payable to the Office.
‘‘(b) USE OF MONEYS.—Moneys from fees shall be
available to the United States Trademark Office to carry
out, to the extent provided in appropriations Acts, the func-
tions of the Office. Moneys of the Office not otherwise used
to carry out the functions of the Office shall be kept in cash
on hand or on deposit, or invested in obligations of the
United States or guaranteed by the United States, or in
obligations or other instruments which are lawful invest-
ments for fiduciary, trust, or public funds. Fees available
to the Commissioner under this chapter shall be used only
for the registration of trademarks and for other services and
materials relating to trademarks, including the agreed upon
share of any centralized function, as set forth in section
113(b)(2)(E) of the United States Patent and Trademark
Organization Act of 1997.
‘‘(c) CONTRIBUTION TO THE OFFICE OF THE DIREC-
TOR OF THE UNITED STATES PATENT AND TRADEMARK
ORGANIZATION.—The Trademark Office shall contribute 50
percent of the annual budget of the Office of the Director
of the United States Patent and Trademark Organization.’’.
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(b) TRADEMARK TRIAL AND APPEAL BOARD.—Section
17 of the Act of July 5, 1946 (commonly referred to as the
Trademark Act of 1946) (15 U.S.C. 1067) is amended to
read as follows:
‘‘SEC. 17. (a) In every case of interference, opposition
to registration, application to register as a lawful concur-
rent user, or application to cancel the registration of a
mark, the Commissioner shall give notice to all parties and
shall direct a Trademark Trial and Appeal Board to deter-
mine and decide the respective rights of registration.
‘‘(b) The Trademark Trial and Appeal Board shall in-
clude the Commissioner of Trademarks, the Deputy Com-
missioner of Trademarks, and administrative trademark
judges competent in trademark law who are appointed by
the Commissioner.’’.
(c) DETERMINATION OF FEES.—Section 31(a) of the
Act of July 5, 1946 (commonly referred to as the Trademark
Act of 1946) (15 U.S.C. 1067(a)) is amended by striking
the second and third sentences and inserting the following:
‘‘Fees established under this subsection may be adjusted by
the Commissioner, after consulting with the Trademark Of-
fice Management Advisory Board in accordance with sec-
tion 53(a)(2)(C) of this Act and after notice and oppor-
tunity for full participation by interested public and pri-
vate parties. The Director of the United States Patent and
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Trademark Organization shall determine whether such fees
are consistent with the policy direction of the Secretary of
Commerce.’’.
SEC. 116. SUITS BY AND AGAINST THE ORGANIZATION.
(a) ACTIONS UNDER UNITED STATES LAW.—Any civil
action or proceeding to which the United States Patent and
Trademark Organization is a party is deemed to arise
under the laws of the United States. The Federal courts
shall have exclusive jurisdiction over all civil actions by or
against the Organization.
(b) REPRESENTATION BY THE DEPARTMENT OF JUS-
TICE.—The United States Patent and Trademark Organi-
zation shall be deemed an agency of the United States for
purposes of section 516 of title 28, United States Code.
(c) PROHIBITION ON ATTACHMENT, LIENS, OR SIMI-
LAR PROCESS.—No attachment, garnishment, lien, or simi-
lar process, intermediate or final, in law or equity, may
be issued against property of the Organization.
SEC. 117. FUNDING.
(a) IN GENERAL.—The activities of the United States
Patent and Trademark Organization and each office of the
Organization shall be funded entirely through fees payable
to the United States Patent Office (under section 42 of title
35, United States Code) and the United States Trademark
Office (under section 56 of the Act of July 5, 1946 (com-
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monly known as the Trademark Act of 1946)), and sur-
charges appropriated by Congress, to the extent provided
in appropriations Acts and subject to the provisions of sub-
section (b).
(b) BORROWING AUTHORITY.—
(1) IN GENERAL.—The United States Patent and
Trademark Organization is authorized to issue from
time to time for purchase by the Secretary of the
Treasury its debentures, bonds, notes, and other evi-
dences of indebtedness (hereafter in this subsection re-
ferred to as ‘‘obligations’’) to assist in financing the
activities of the United States Patent Office and the
United States Trademark Office. Borrowing under
this section shall be subject to prior approval in ap-
propriations Acts. Such borrowing shall not exceed
amounts approved in appropriations Acts.
(2) BORROWING
AUTHORITY.—Any borrowing
under this subsection shall be repaid only from fees
paid to the Office for which such obligations were
issued and surcharges appropriated by Congress.
Such obligations shall be redeemable at the option of
the United States Patent and Trademark Organiza-
tion before maturity in the manner stipulated in such
obligations and shall have such maturity as is deter-
mined by the United States Patent and Trademark
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Organization with the approval of the Secretary of
the Treasury. Each such obligation issued to the
Treasury shall bear interest at a rate not less than the
current yield on outstanding marketable obligations of
the United States of comparable maturity during the
month preceding the issuance of the obligation as de-
termined by the Secretary of the Treasury.
(3) PURCHASE OF OBLIGATIONS.—The Secretary
of the Treasury shall purchase any obligations of the
United States Patent and Trademark Organization
issued under this subsection and for such purpose the
Secretary of the Treasury is authorized to use as a
public-debt transaction the proceeds of any securities
issued under chapter 31 of title 31, United States
Code, and the purposes for which securities may be
issued under that chapter are extended to include such
purpose.
(4) TREATMENT.—Payment under this sub-
section of the purchase price of such obligations of the
United States Patent and Trademark Organization
shall be treated as public debt transactions of the
United States.
SEC. 118. TRANSFERS.
(a) TRANSFER OF FUNCTIONS.—Except as relates to
the direction of patent and trademark policy, there are
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transferred to, and vested in, the United States Patent and
Trademark Organization all functions, powers, and duties
vested by law in the Secretary of Commerce or the Depart-
ment of Commerce or in the officers or components in the
Department of Commerce with respect to the authority to
grant patents and register trademarks, and in the Patent
and Trademark Office, as in effect on the day before the
effective date of this title, and in the officers and compo-
nents of such office.
(b) TRANSFER OF FUNDS AND PROPERTY.—The Sec-
retary of Commerce shall transfer to the United States Pat-
ent and Trademark Organization, on the effective date of
this title, so much of the assets, liabilities, contracts, prop-
erty, records, and unexpended and unobligated balances of
appropriations, authorizations, allocations, and other funds
employed, held, used, arising from, available to, or to be
made available to the Department of Commerce, including
funds set aside for accounts receivable which are related to
functions, powers, and duties which are vested in the United
States Patent and Trademark Office by this title.
SEC. 119. USE OF ORGANIZATION NAME.
The use of the terms ‘‘United States Patent and Trade-
mark Organization’’, ‘‘Patent and Trademark Office’’,
‘‘United States Patent Office’’, ‘‘Patent Office’’, ‘‘United
States Trademark Office’’, ‘‘Trademark Office’’, or any
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combination of such terms, as the name or part thereof
under which an individual or entity does business, is pro-
hibited. A violation of this section may be enjoined by any
Federal court at the suit of the Organization. In any such
suit, the Organization shall be entitled to statutory damages
of $1,000 for each day during which such violation contin-
ues or is repeated following notice by the Organization and,
in addition, may recover actual damages flowing from such
violations.
Subtitle B—Effective Date;
Technical Amendments
SEC. 131. EFFECTIVE DATE.
This title and the amendments made by this title shall
take effect 4 months after the date of the enactment of this
Act.
SEC. 132. TECHNICAL AND CONFORMING AMENDMENTS.
(a) AMENDMENTS TO TITLE 35.—
(1) TABLE OF PARTS.—The item relating to part
I in the table of parts for title 35, United States Code,
is amended to read as follows:
‘‘I. United States Patent Office ......................................................................
1.’’.
(2) HEADING.—The heading for part I of title
35, United States Code, is amended to read as follows:
‘‘PART I—UNITED STATES PATENT OFFICE’’.
(3) TABLE OF CHAPTERS.—The table of chapters
for part I of title 35, United States Code, is amended
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by amending the item relating to chapter 1 to read
as follows:
‘‘1. Establishment, Officers and Employees, Functions ........
1’’.
(4) TABLE OF SECTIONS.—The table of sections
for chapter 1 of title 35, United States Code, is
amended to read as follows:
‘‘CHAPTER 1—ESTABLISHMENT, OFFICERS
AND EMPLOYEES, FUNCTIONS
‘‘Sec.
‘‘1. Establishment.
‘‘2. Powers and duties.
‘‘3. Officers and employees.
‘‘4. Restrictions on officers and employees as to interest in patents.
‘‘5. Patent Office Management Advisory Board.
‘‘6. Duties of Commissioner.
‘‘7. Board of Patent Appeals and Interferences.
‘‘8. Library.
‘‘9. Classification of patents.
‘‘10. Certified copies of records.
‘‘11. Publications.
‘‘12. Exchange of copies of patents with foreign countries.
‘‘13. Copies of patents for public libraries.
‘‘14. Annual report to Congress.’’.
(5) COMMISSIONER
OF
PATENTS
AND
TRADE-
MARKS.—(A) Section 41(h)(1) of title 35, United
States Code, is amended by striking ‘‘Commissioner of
Patents and Trademarks’’ and inserting ‘‘Commis-
sioner’’.
(B) Section 155 of title 35, United States Code,
is amended by striking ‘‘Commissioner of Patents and
Trademarks’’ and inserting ‘‘Commissioner’’.
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(C) Section 155A(c) of title 35, United States
Code, is amended by striking ‘‘Commissioner of Pat-
ents’’ and inserting ‘‘Commissioner’’.
(6) PATENT AND TRADEMARK OFFICE.—The pro-
visions of title 35, United States Code, are amended
by striking ‘‘Patent and Trademark Office’’ each
place it appears and inserting ‘‘Patent Office’’.
(7) SECRETARY OF COMMERCE.—Section 157(d)
of title 35, United States Code, is amended by strik-
ing ‘‘Secretary of Commerce’’ and inserting ‘‘Director
of the United States Patent and Trademark Organi-
zation’’.
(b) AMENDMENTS
TO
THE
TRADEMARK
ACT
OF
1946.—
(1) REFERENCES.—All amendments in this sub-
section refer to the Act of July 5, 1946 (commonly re-
ferred to as the Trademark Act of 1946).
(2) 
AMENDMENTS
RELATING
TO
COMMIS-
SIONER.—Section 61 (as redesignated by section
115(a)(2) of this Act) is amended by striking the un-
designated paragraph relating to the definition of the
term ‘‘Commissioner’’ and inserting the following:
‘‘The term ‘Commissioner’ means the Commissioner of
Trademarks.’’.
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(3) AMENDMENTS
RELATING
TO
PATENT
AND
TRADEMARK OFFICE.—(A) Section 1(a)(1) is amended
by striking ‘‘Patent and Trademark Office’’ and in-
serting ‘‘Trademark Office’’.
(B) Section 1(a)(2) is amended by striking ‘‘Pat-
ent and Trademark Office’’ and inserting ‘‘Trade-
mark Office’’.
(C) Section 1(b)(1) is amended by striking ‘‘Pat-
ent and Trademark Office’’ and inserting ‘‘Trade-
mark Office’’.
(D) Section 1(b)(2) is amended by striking ‘‘Pat-
ent and Trademark Office’’ and inserting ‘‘Trade-
mark Office’’.
(E) Section 1(d)(1) is amended by striking ‘‘Pat-
ent and Trademark Office’’ each place such term ap-
pears and inserting ‘‘Trademark Office’’.
(F) Section 1(e) is amended by striking ‘‘Patent
and Trademark Office’’ and inserting ‘‘Trademark
Office’’.
(G) Section 2(d) is amended by striking ‘‘Patent
and Trademark Office’’ and inserting ‘‘Trademark
Office’’.
(H) Section 7(a) is amended by striking ‘‘Patent
and Trademark Office’’ each place such term appears
and inserting ‘‘Trademark Office’’.
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(I) Section 7(d) is amended by striking ‘‘Patent
and Trademark Office’’ and inserting ‘‘Trademark
Office’’.
(J) Section 7(e) is amended by striking ‘‘Patent
and Trademark Office’’ each place such term appears
and inserting ‘‘Trademark Office’’.
(K) Section 7(f) is amended by striking ‘‘Patent
and Trademark Office’’ each place such term appears
and inserting ‘‘Trademark Office’’.
(L) Section 7(g) is amended by striking ‘‘Patent
and Trademark Office’’ each place such term appears
and inserting ‘‘Trademark Office’’.
(M) Section 8(a) is amended by striking ‘‘Patent
and Trademark Office’’ and inserting ‘‘Trademark
Office’’.
(N) Section 8(b) is amended by striking ‘‘Patent
and Trademark Office’’ and inserting ‘‘Trademark
Office’’.
(O) Section 10 is amended by striking ‘‘Patent
and Trademark Office’’ each place such term appears
and inserting ‘‘Trademark Office’’.
(P) Section 12(a) is amended by striking ‘‘Pat-
ent and Trademark Office’’ and inserting ‘‘Trade-
mark Office’’.
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(Q) Section 13(a) is amended by striking ‘‘Pat-
ent and Trademark Office’’ and inserting ‘‘Trade-
mark Office’’.
(R) Section 13(b)(1) is amended by striking
‘‘Patent and Trademark Office’’ each place such term
appears and inserting ‘‘Trademark Office’’.
(S) Section 15(2) is amended by striking ‘‘Pat-
ent and Trademark Office’’ and inserting ‘‘Trade-
mark Office’’.
(T) Section 17 is amended by striking ‘‘Patent
and Trademark Office’’ and inserting ‘‘Trademark
Office’’.
(U) Section 21(a)(2) is amended by striking
‘‘Patent and Trademark Office’’ and inserting
‘‘Trademark Office’’.
(V) Section 21(a)(3) is amended by striking
‘‘Patent and Trademark Office’’ each place such term
appears and inserting ‘‘Trademark Office’’.
(W) Section 21(a)(4) is amended by striking
‘‘Patent and Trademark Office’’ each place such term
appears and inserting ‘‘Trademark Office’’.
(X) Section 21(b)(3) is amended by striking
‘‘Patent and Trademark Office’’ each place such term
appears and inserting ‘‘Trademark Office’’.
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(Y) Section 21(b)(4) is amended by striking
‘‘Patent and Trademark Office’’ and inserting
‘‘Trademark Office’’.
(Z) Section 24 is amended by striking ‘‘Patent
and Trademark Office’’ and inserting ‘‘Trademark
Office’’.
(AA) Section 29 is amended by striking ‘‘Patent
and Trademark Office’’ each place such term appears
and inserting ‘‘Trademark Office’’.
(BB) Section 30 is amended by striking ‘‘Patent
and Trademark Office’’ and inserting ‘‘Trademark
Office’’.
(CC) Section 31(a) is amended by striking ‘‘Pat-
ent and Trademark Office’’ and inserting ‘‘Trade-
mark Office’’.
(DD) Section 34(a) is amended by striking
‘‘Patent and Trademark Office’’ and inserting
‘‘Trademark Office’’.
(EE) Section 34(d)(1)(B)(i) is amended by strik-
ing ‘‘Patent and Trademark Office’’ and inserting
‘‘Trademark Office’’.
(FF) Section 35(a) is amended by striking ‘‘Pat-
ent and Trademark Office’’ and inserting ‘‘Trade-
mark Office’’.
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(GG) Section 36 is amended by striking ‘‘Patent
and Trademark Office’’ and inserting ‘‘Trademark
Office’’.
(HH) Section 37 is amended by striking ‘‘Patent
and Trademark Office’’ and inserting ‘‘Trademark
Office’’.
(II) Section 38 is amended by striking ‘‘Patent
and Trademark Office’’ and inserting ‘‘Trademark
Office’’.
(JJ) Section 39(b) is amended by striking ‘‘Pat-
ent and Trademark Office’’ and inserting ‘‘Trade-
mark Office’’.
(KK) Section 41 is amended by striking ‘‘Patent
and Trademark Office’’ and inserting ‘‘Trademark
Office’’.
(LL) Section 61 (as redesignated under section
115(a)(2) of this Act) is amended in the undesignated
paragraph relating to the definition of ‘‘registered
mark’’—
(i) by striking ‘‘Patent and Trade Mark Of-
fice’’ and inserting ‘‘Trademark Office’’; and
(ii) by striking ‘‘Patent and Trade Office’’
and inserting ‘‘Trademark Office’’.
(MM) Section 72(a) (as redesignated under sec-
tion 115(a)(2) of this Act) is amended by striking
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‘‘Patent and Trademark Office’’ and inserting
‘‘Trademark Office’’.
(NN) Section 75 (as redesignated under section
115(a)(2) of this Act) is amended by striking ‘‘Patent
and Trademark Office’’ and inserting ‘‘Trademark
Office’’.
(c) AMENDMENTS TO TITLE 5.—Title 5, United States
Code, is amended—
(1) in section 5102(c)(23)—
(A) by striking ‘‘examiners-in-chief’’ in each
place it appears and inserting ‘‘administrative
patent judges’’; and
(B) by striking ‘‘Office, Department of
Commerce’’ and inserting ‘‘Organization’’; and
(2) in section 5316—
(A) by striking ‘‘Commissioner of Patents,
Department of Commerce.’’; and
(B) by striking:
‘‘Deputy Commissioner of Patents and Trade-
marks.
‘‘Assistant Commissioner for Patents.
‘‘Assistant Commissioner for Trademarks.’’.
(d) AMENDMENT TO TITLE 31.—Section 9101(3) of
title 31, United States Code, is amended by adding at the
end the following:
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‘‘(O) the United States Patent and Trade-
mark Organization.’’.
(e) AMENDMENTS TO INSPECTOR GENERAL ACT OF
1978.—Section 11 of the Inspector General Act of 1978 (5
U.S.C. App.) is amended—
(1) in paragraph (1) by striking ‘‘or the Com-
missioner of Social Security, Social Security Admin-
istration;’’ and inserting ‘‘the Commissioner of Social
Security, Social Security Administration; or the Di-
rector of the United States Patent and Trademark
Organization, United States Patent and Trademark
Organization;’’; and
(2) in paragraph (2) by striking ‘‘or the Veter-
ans’ Administration, or the Social Security Adminis-
tration;’’ and inserting ‘‘the Veterans’ Administra-
tion, the Social Security Administration, or the
United States Patent and Trademark Organization;’’.
Subtitle C—Miscellaneous
Provisions
SEC. 141. REFERENCES.
Any reference in any other Federal law, Executive
order, rule, regulation, or delegation of authority, or any
document of or pertaining to a department, agency, or office
from which a function is transferred by this title—
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(1) to the head of such department, agency, or of-
fice is deemed to refer to the head of the department,
agency, or office to which such function is transferred;
or
(2) to such department, agency, or office is
deemed to refer to the department, agency, or office to
which such function is transferred.
SEC. 142. EXERCISE OF AUTHORITIES.
Except as otherwise provided by law, a Federal official
to whom a function is transferred by this title may, for
purposes of performing the function, exercise all authorities
under any other provision of law that were available with
respect to the performance of that function to the official
responsible for the performance of the function immediately
before the effective date of the transfer of the function under
this title.
SEC. 143. SAVINGS PROVISIONS.
(a) LEGAL DOCUMENTS.—All orders, determinations,
rules, regulations, permits, grants, loans, contracts, agree-
ments, certificates, licenses, and privileges that—
(1) have been issued, made, granted, or allowed
to become effective by the President, the Secretary of
Commerce, any officer or employee of any office
transferred by this title, or any other Government of-
ficial, or by a court of competent jurisdiction, in the
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performance of any function that is transferred by
this title, and
(2) are in effect on the effective date of such
transfer (or become effective after such date pursuant
to their terms as in effect on such effective date), shall
continue in effect according to their terms until modi-
fied, terminated, superseded, set aside, or revoked in
accordance with law by the President, any other au-
thorized official, a court of competent jurisdiction, or
operation of law.
(b) PROCEEDINGS.—This title shall not affect any pro-
ceedings or any application for any benefits, service, license,
permit, certificate, or financial assistance pending on the
effective date of this title before an office transferred by this
title, but such proceedings and applications shall be contin-
ued. Orders shall be issued in such proceedings, appeals
shall be taken therefrom, and payments shall be made pur-
suant to such orders, as if this title had not been enacted,
and orders issued in any such proceeding shall continue in
effect until modified, terminated, superseded, or revoked by
a duly authorized official, by a court of competent jurisdic-
tion, or by operation of law. Nothing in this subsection shall
be considered to prohibit the discontinuance or modification
of any such proceeding under the same terms and condi-
tions and to the same extent that such proceeding could have
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been discontinued or modified if this title had not been en-
acted.
(c) SUITS.—This title shall not affect suits commenced
before the effective date of this title, and in all such suits,
proceedings shall be had, appeals taken, and judgments ren-
dered in the same manner and with the same effect as if
this title had not been enacted.
(d) NONABATEMENT OF ACTIONS.—No suit, action, or
other proceeding commenced by or against the Department
of Commerce or the Secretary of Commerce, or by or against
any individual in the official capacity of such individual
as an officer or employee of an office transferred by this
title, shall abate by reason of the enactment of this title.
(e) CONTINUANCE OF SUITS.—If any Government offi-
cer in the official capacity of such officer is party to a suit
with respect to a function of the officer, and under this title
such function is transferred to any other officer or office,
then such suit shall be continued with the other officer or
the head of such other office, as applicable, substituted or
added as a party.
(f) ADMINISTRATIVE PROCEDURE AND JUDICIAL RE-
VIEW.—Except as otherwise provided by this title, any stat-
utory requirements relating to notice, hearings, action upon
the record, or administrative or judicial review that apply
to any function transferred by this title shall apply to the
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exercise of such function by the head of the Federal agency,
and other officers of the agency, to which such function is
transferred by this title.
SEC. 144. TRANSFER OF ASSETS.
Except as otherwise provided in this title, so much of
the personnel, property, records, and unexpended balances
of appropriations, allocations, and other funds employed,
used, held, available, or to be made available in connection
with a function transferred to an official or agency by this
title shall be available to the official or the head of that
agency, respectively, at such time or times as the Director
of the Office of Management and Budget directs for use in
connection with the functions transferred.
SEC. 145. DELEGATION AND ASSIGNMENT.
(a) IN GENERAL.—Except as otherwise expressly pro-
hibited by law or otherwise provided in this title, an official
to whom functions are transferred under this title (includ-
ing the head of any office to which functions are transferred
under this title) may—
(1) delegate any of the functions so transferred to
such officers and employees of the office of the official
as the official may designate; and
(2) authorize successive redelegations of such
functions as may be necessary or appropriate.
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(b) RESPONSIBILITY FOR ADMINISTRATION.—No dele-
gation of functions under this section or under any other
provision of this title shall relieve the official to whom a
function is transferred under this title of responsibility for
the administration of the function.
SEC. 146. AUTHORITY OF DIRECTOR OF THE OFFICE OF
MANAGEMENT AND BUDGET WITH RESPECT
TO FUNCTIONS TRANSFERRED.
(a) DETERMINATIONS.—If necessary, the Director of
the Office of Management and Budget shall make any deter-
mination of the functions that are transferred under this
title.
(b) INCIDENTAL TRANSFERS.—The Director of the Of-
fice of Management and Budget, at such time or times as
the Director shall provide, may make such determinations
as may be necessary with regard to the functions transferred
by this title, and to make such additional incidental dis-
positions of personnel, assets, liabilities, grants, contracts,
property, records, and unexpended balances of appropria-
tions, authorizations, allocations, and other funds held,
used, arising from, available to, or to be made available
in connection with such functions, as may be necessary to
carry out the provisions of this title.
(c) TERMINATION OF AFFAIRS.—The Director shall
provide for the termination of the affairs of all entities ter-
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minated by this title and for such further measures and
dispositions as may be necessary to effectuate the purposes
of this title.
SEC. 147. CERTAIN VESTING OF FUNCTIONS CONSIDERED
TRANSFERS.
For purposes of this title, the vesting of a function in
a department, agency, or office pursuant to reestablishment
of an office shall be considered to be the transfer of the func-
tion.
SEC. 148. AVAILABILITY OF EXISTING FUNDS.
Existing appropriations and funds available for the
performance of functions, programs, and activities termi-
nated pursuant to this title shall remain available, for the
duration of their period of availability, for necessary ex-
penses in connection with the termination and resolution
of such functions, programs, and activities.
SEC. 149. 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, admin-
istration, agency, bureau, institute, council, unit, or-
ganizational entity, or component thereof.
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TITLE II—EARLY PUBLICATION
OF PATENT APPLICATIONS
SEC. 201. SHORT TITLE.
This title may be cited as the ‘‘Patent Application
Publication Act of 1997’’.
SEC. 202. EARLY 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 Office and no information concerning
the same given without authority of the applicant or owner
unless necessary to carry out the provisions of an Act of
Congress or in such special circumstances as may be deter-
mined by the Commissioner.
‘‘(b) PUBLICATION.—
‘‘(1) IN
GENERAL.—(A) Subject to paragraph
(2), each application for patent, except applications
for design patents filed under chapter 16 of this title
and provisional applications filed under section
111(b) of this title, shall be published, in accordance
with procedures determined by the Commissioner, as
soon as possible after the expiration of a period of 18
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months from the earliest filing date for which a bene-
fit is sought under this title. At the request of the ap-
plicant, an application may be published 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
or not to release information concerning 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 pursuant to section 181 of this title shall not
be published.
‘‘(C)(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 a foreign country, the applica-
tion shall not be published as provided in paragraph
(1).
‘‘(ii) An applicant may rescind a request made
under clause (i) at any time. An applicant has a
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duty to notify the Director within 1 month of filing
an application in a foreign country.
‘‘(iii) Where an applicant rescinds a request
made under clause (i) or notifies the Director that an
application was filed in a foreign country, the appli-
cation shall be published in accordance with the pro-
visions of paragraph (1).
‘‘(c) PRE-ISSUANCE OPPOSITION.—The provisions of
this section shall not operate to create any new opportunity
for pre-issuance opposition. The Commissioner may estab-
lish appropriate procedures to ensure that this section does
not create any new opportunity for pre-issuance opposition
that did not exist prior to the adoption of this section.
‘‘(d) 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.
‘‘(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;
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‘‘(B) examine how many domestic-only fil-
ers request at the time of filing not to be pub-
lished;
‘‘(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.’’.
SEC. 203. 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, identifying the foreign
application by specifying its application number, country,
and the day, month, and year of its filing, is filed in the
Patent Office at such time during the pendency of the appli-
cation 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.
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‘‘(3) The Commissioner may require a certified copy
of the original foreign application, specification, and draw-
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.—Section 120 of title 35,
United States Code, is amended by adding at the end the
following: ‘‘The Commissioner 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 Commissioner may
consider the failure to submit such an amendment within
that time period as a waiver of any benefit under this sec-
tion. The Commissioner may establish procedures, includ-
ing the payment of a surcharge, to accept unavoidably late
submissions of amendments under this section.’’.
SEC. 204. PROVISIONAL RIGHTS.
Section 154 of title 35, United States Code, is amend-
ed—
(1) in the section caption by inserting ‘‘; provi-
sional rights’’ after ‘‘patent’’; and
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(2) by adding at the end the following new sub-
section:
‘‘(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-
lication of the application for such patent pursuant
to section 122(b) of this title, or in the case of an
international application filed under the treaty de-
fined in section 351(a) of this title 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
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‘‘(B) had actual notice of the published pat-
ent application, and where the right arising
under this paragraph is based upon an inter-
national application designating the United
States that is published in a language other than
English, a translation of the international appli-
cation into the English language.
‘‘(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 of
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an international application designating the
United States shall commence from the date that
the Patent Office receives a copy of the publica-
tion under the treaty defined in section 351(a)
of this title of the international application, or,
if the publication under the treaty of the inter-
national application is in a language other than
English, from the date that the Patent Office re-
ceives a translation of the international applica-
tion 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.
‘‘(5) ISSUANCE
OF
PATENTS
ON
INDIVIDUAL
CLAIMS.—Where the Director in a notification to the
applicant under section 132 of this title indicates that
one or more claims of a published application are al-
lowable, the applicant may request the issuance of a
patent incorporating those claims. The applicant may
continue prosecution of the remaining claims as pro-
vided in chapter 12 of this title. Any subsequently al-
lowed claims may be incorporated into the patent.
The Director may establish appropriate fees to cover
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the costs of incorporating any additional claims into
the patent.’’.
SEC. 205. 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) of this title, by another
filed in the United States before the invention by the
applicant for patent, except that an international ap-
plication filed under the treaty defined in section
351(a) of this title shall have the effect under this sub-
section of a national application published under sec-
tion 122(b) of this title only if the international ap-
plication 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
invention by the applicant for patent, or’’.
SEC. 206. COST RECOVERY FOR PUBLICATION.
The Commissioner shall recover the cost of early publi-
cation required by the amendment made by section 202 by
adjusting the filing, issue, and maintenance fees under title
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35, United States Code, by charging a separate publication
fee, or by any combination of these methods.
SEC. 207. CONFORMING CHANGES.
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 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’’.
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(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) ‘‘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) ‘‘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.
(8) Section 252 is amended in the first undesig-
nated paragraph by inserting ‘‘substantially’’ before
‘‘identical’’ each place it appears.
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(9) Section 284 is amended by adding at the end
of the second undesignated paragraph the following:
‘‘Increased damages under this paragraph shall not
apply to provisional rights under section 154(d) of
this title.’’.
(10) Section 374 is amended to read as follows:
‘‘§ 374. Publication of international application: Ef-
fect
‘‘The publication under the treaty, defined in section
351(a) of this title, of an international application des-
ignating 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) of this title.’’.
SEC. 208. LAST DAY OF PENDENCY OF PROVISIONAL APPLI-
CATION.
Section 119(e) of title 35, United States Code, is
amended by adding at the end the following:
‘‘(3) If the day that is 12 months after the filing date
of a provisional application falls on a Saturday, Sunday,
or legal holiday as defined in rule 6(a) of the Federal Rules
of Civil Procedure, the period of pendency of the provisional
application shall be extended to the next succeeding business
day.’’.