I
106TH CONGRESS
2D SESSION
H. R. 4870
To make technical corrections in patent, copyright, and trademark laws.
IN THE HOUSE OF REPRESENTATIVES
JULY 18, 2000
Mr. COBLE (for himself and Mr. BERMAN) introduced the following bill; which
was referred to the Committee on the Judiciary
A BILL
To make technical corrections in patent, copyright, and
trademark laws.
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ‘‘Intellectual Property
Technical Amendments Act of 2000’’.
SEC. 2. OFFICERS AND EMPLOYEES.
(a) RENAMING OF OFFICERS.—(1) Title 35, United
States Code, is amended—
(A) by striking ‘‘Director’’ each place it appears
and inserting ‘‘Commissioner’’; and
(B) by striking ‘‘Director’s’’ each place it ap-
pears and inserting ‘‘Commissioner’s’’.
(2) The Act of July 5, 1946 (commonly referred to
as the ‘‘Trademark Act of 1946’’; 15 U.S.C. 1051 et seq.)
is amended by striking ‘‘Director’’ each place it appears
and inserting ‘‘Commissioner’’.
(3) Title 35, United States Code, is amended by
striking ‘‘Commissioner for Patents’’ each place it appears
and inserting ‘‘Assistant Commissioner for Patents’’.
(4) Title 35, United States Code, is amended by
striking ‘‘Commissioner for Trademarks’’ each place it ap-
pears and inserting ‘‘Assistant Commissioner for Trade-
marks’’.
(5) Section 5314 of title 5, United States Code, is
amended by striking
‘‘Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent
and Trademark Office.’’
and inserting
‘‘Under Secretary of Commerce for Intellectual
Property and Commissioner of the United States
Patent and Trademark Office.’’
(b) REFERENCES.—Any reference in any other Fed-
eral law, Executive order, rule, regulation, or delegation
of authority, or any document of or pertaining to the Pat-
ent and Trademark Office—
(1) to the Director of the United States Patent
and Trademark Office or to the Commissioner of
Patents and Trademarks is deemed to refer to the
Under Secretary of Commerce for Intellectual Prop-
erty and Commissioner of the United States Patent
and Trademark Office;
(2) to the Commissioner for Patents is deemed
to refer to the Assistant Commissioner for Patents;
and
(3) to the Commissioner for Trademarks is
deemed to refer to the Assistant Commissioner for
Trademarks.
SEC. 3. ADJUSTMENT OF TRADEMARK FEES.
Section 4203 of the Intellectual Property and Com-
munications Omnibus Reform Act of 1999, as enacted by
section 1000(a)(9) of Public Law 106–113, is amended
by striking ‘‘Director’’ and inserting ‘‘Commissioner’’.
SEC. 4. OPTIONAL INTER PARTES REEXAMINATION PROCE-
DURE ACT OF 1999; TECHNICAL AMEND-
MENTS.
(a) OPTIONAL INTER PARTES REEXAMINATION PRO-
CEDURES.—Title 35, United States Code, is amended as
follows:
(1) Section 311 is amended—
(A) in subsection (a), by striking ‘‘person’’
and inserting ‘‘third-party requester’’; and
(B) in subsection (c), by striking ‘‘Unless
the requesting person is the owner of the pat-
ent, the’’ and inserting ‘‘The’’.
(2) Section 312 is amended—
(A) in subsection (a), by striking the last
sentence; and
(B) by striking ‘‘if any’’.
(3) Section 314(b)(1) is amended—
(A) by striking ‘‘(1) This’’ and all that fol-
lows through ‘‘(2)’’ and inserting ‘‘(1)’’;
(B) by striking ‘‘the third-party requester
shall receive a copy’’ and inserting ‘‘the Office
shall send to the third-party requester a copy’’;
and
(C) by redesignating paragraph (3) as
paragraph (2).
(4) Section 317(a) is amended by striking ‘‘pat-
ent owner nor the third-party requester, if any, nor
privies of either’’ and inserting ‘‘third-party re-
quester nor its privies’’.
(b) CONFORMING AMENDMENTS.—Subsections (a),
(b), and (c) of section 134 of title 35, United States Code,
are each amended by striking ‘‘administrative patent
judge’’ each place it appears and inserting ‘‘primary exam-
iner’’.
(c) CLERICAL AMENDMENTS.—
(1) Section 4604(a) of the Intellectual Property
and Communications Omnibus Reform Act of 1999,
is amended by striking ‘‘Part 3’’ and inserting ‘‘Part
III’’.
(2) Section 4605(b) of that Act is amended by
striking ‘‘title 25’’ and inserting ‘‘title 35’’.
(d) EFFECTIVE DATE.—The amendments made by
sections 4605(c) and 4605(e) of the Intellectual Property
and Communications Omnibus Reform Act, as enacted by
section 1000(a)(9) of Public Law 106–113, shall apply to
any reexamination filed in the United States Patent and
Trademark Office on or after the date of the enactment
of Public Law 106–113.
SEC. 5. PATENT AND TRADEMARK EFFICIENCY ACT AMEND-
MENTS.
(a) DEPUTY DIRECTOR.—
(1) Section 5315 of title 5, United States Code,
is amended by striking ‘‘Deputy Under Secretary of
Commerce for Intellectual Property and Deputy Di-
rector of the United States Patent and Trademark
Office.’’.
(2) Section 17(b) of the Act of July 5, 1946
(commonly referred to as the ‘‘Trademark Act of
1946’’) (15 U.S.C. 1067(b)), is amended by insert-
ing ‘‘the Deputy Commissioner,’’ after ‘‘Commis-
sioner,’’.
(3) Section 6(a) of title 35, United States Code,
is amended by inserting ‘‘the Deputy Commis-
sioner,’’ after ‘‘Commissioner,’’.
(b) PUBLIC ADVISORY COMMITTEES.—Section 5 of
title 35, United States Code, is amended by adding at the
end the following new subsection:
‘‘(j) INAPPLICABILITY OF PATENT PROHIBITION.—
Section 4 shall not apply to voting members of the Advi-
sory Committees.’’.
(c) CHIEF FINANCIAL OFFICER.—Section 901(b)(2)
of title 31, United States Code, is amended by adding at
the end the following new subparagraph:
‘‘(I) The United States Patent and Trade-
mark Office.’’.
(d) MISCELLANEOUS.—Section 153 of title 35,
United States Code, is amended by striking ‘‘and attested
by an officer of the Patent and Trademark Office des-
ignated by the Director,’’.
SEC. 6. DOMESTIC PUBLICATION OF FOREIGN FILED PAT-
ENT APPLICATIONS ACT OF 1999 AMEND-
MENTS.
Section 154(d)(4)(A) of title 35, United States Code,
is amended—
(1) by striking ‘‘on which the Patent and
Trademark Office receives a copy of the’’ and insert-
ing ‘‘of’’; and
(2) by striking ‘‘international application’’ the
last place it appears and inserting ‘‘publication’’.
SEC. 7. DOMESTIC PUBLICATION OF PATENT APPLICA-
TIONS PUBLISHED ABROAD.
Subtitle E of the Intellectual Property and Commu-
nications Omnibus Reform Act of 1999, as enacted by sec-
tion 1000(a)(9) of Public Law 106–113, is amended as
follows:
(1) Section 4505 is amended to read as follows:
‘‘SEC. 4505. 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 applica-
tion for patent, published under section 122(b), by another
filed in the United States before the invention by the ap-
plicant for patent or (2) a patent granted on an applica-
tion for patent by another filed in the United States before
the invention by the applicant for patent, except that an
international application filed under the treaty defined in
section 351(a) shall have the effects for the purposes of
this subsection of an application filed in the United States
if and only if the international application designated the
United States and was published under Article 21(2) of
such treaty in the English language; or’ ’’.
(2) Section 4507 is amended—
(A) in paragraph (1), by striking ‘‘Section
11’’ and inserting ‘‘Section 10’’;
(B) in paragraph (2), by striking ‘‘Section
12’’ and inserting ‘‘Section 11’’.
(C) in paragraph (3), by striking ‘‘Section
13’’ and inserting ‘‘Section 12’’;
(D) in paragraph (4), by striking ‘‘12 and
13’’ and inserting ‘‘11 and 12’’;
(E) in section 374 of title 35, United
States Code, as amended by paragraph (10), by
striking ‘‘confer the same rights and shall have
the same effect under this title as an applica-
tion for patent published’’ and inserting ‘‘be
deemed a publication’’; and
(F) by adding at the end the following:
SEC. 8. MISCELLANEOUS CLERICAL AMENDMENTS.
(a) AMENDMENTS TO TITLE 35.—The following pro-
visions of title 35, United States Code, are amended:
(1) Section 2(b) is amended in paragraphs
(2)(B) and (4)(B), by striking ‘‘, United States
Code’’.
(2) Section 3 is amended—
(A) in subsection (b)(2)—
(i) in the first sentence of subpara-
graph (B) by striking ‘‘United States
Code,’’;
(ii) in the second sentence of subpara-
graph (B)—
(I) by striking ‘‘United States
Code,’’; and
(II) by striking ‘‘, United States
Code.’’ and inserting a period; and
(iii) in subparagraph (C), by striking
‘‘, United States Code’’; and
(B) in subsection (c)—
(i) in the subsection caption, by strik-
ing ‘‘, UNITED STATES CODE’’; and
(ii) by striking ‘‘United States Code,’’.
(3) Section 5 is amended in subsections (e) and
(g), by striking ‘‘, United States Code’’ each place
it appears.
(4) The table of chapters for part I is amended
in the item relating to chapter 3, by striking ‘‘be-
fore’’ and inserting ‘‘Before’’.
(5) The item relating to section 21 in the table
of contents for chapter 2 is amended to read as fol-
lows:
‘‘21. Filing date and day for taking action.’’.
(6) The item relating to chapter 12 in the table
of chapters for part II is amended to read as fol-
lows:
‘‘12. Examination of Application ..................................................
131’’.
(7) The item relating to section 116 in the table
of contents for chapter 11 is amended to read as fol-
lows:
‘‘116. Inventors.’’.
(8) Section 156 is amended—
(A) in subsection (b)(3)(B), by striking
‘‘paragraphs’’ and inserting ‘‘paragraph’’;
(B) in subsection (d)(2)(B)(i), by striking
‘‘below the office’’ and inserting ‘‘below the Of-
fice’’; and
(C) in subsection (g)(6)(B)(iii), by striking
‘‘submittted’’ and inserting ‘‘submitted’’.
(9) The item relating to section 183 in the table
of contents for chapter 17 is amended by striking
‘‘of’’ and inserting ‘‘to’’.
(10) Section 185 is amended by striking the
second period at the end of the section.
(11) Section 202(c)(4) is amended by striking
‘‘rights;’’ and inserting ‘‘rights,’’.
(12) Section 203 is amended—
(A) in paragraph (2)—
(i) by striking ‘‘(2)’’ and inserting
‘‘(b)’’; and
(ii) by striking the quotation marks
and comma before ‘‘as appropriate’’.
(B) in the first paragraph—
(i) by striking ‘‘(a)’’, ‘‘(b)’’, ‘‘(c)’’,
and (d)’’ and inserting ‘‘(1)’’, ‘‘(2)’’, ‘‘(3)’’,
and (4)’’, respectively; and
(ii) by striking ‘‘(1.’’ and inserting
‘‘(a)’’.
(13) Section 210 is amended—
(A) in subsection (a)—
(i) in paragraph (11), by striking
‘‘5901’’ and inserting ‘‘5908’’; and
(ii) in paragraph (20) by striking
‘‘178(j)’’ and inserting ‘‘178j’’; and
(B) in subsection (c)—
(i) by striking ‘‘paragraph 202(c)(4)’’
and inserting ‘‘section 202(c)(4)’’; and
(ii) by striking ‘‘title..’’ and inserting
‘‘title.’’.
(14) The item relating to chapter 29 in the
table of chapters for part III is amended by insert-
ing a comma after ‘‘Patent’’.
(15) The item relating to section 256 in the
table of contents for chapter 25 is amended to read
as follows:
‘‘256. Correction of named inventor.’’.
(16) Section 294(c) is amended in the second
sentence by striking ‘‘court to’’ and inserting ‘‘court
of’’.
(17)(A) The item relating to section 374 in the
table of contents for chapter 37 is amended to read
as follows:
‘‘374. Publication of international application.’’.
(B) The amendment made by subparagraph (A)
shall take effect on November 29, 2000.
(18) Section 371(b) is amended by adding at
the end a period.
(19) Section 371(d) is amended by adding at
the end a period.
(20) Paragraphs (1), (2), and (3) of section
376(a) are each amended by striking the semicolon
and inserting a period.
(b) OTHER AMENDMENTS.—