IIA
105TH CONGRESS
1ST SESSION
H. R. 400
IN THE SENATE OF THE UNITED STATES
APRIL 24, 1997
Received; read twice and referred to the Committee on the Judiciary
AN ACT
To amend title 35, United States Code, with respect to
patents, and for other purposes.
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled,
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SECTION 1. SHORT TITLE.
This Act may be cited as the ‘‘21st Century Patent
System Improvement Act’’.
SEC. 2. TABLE OF CONTENTS.
Sec. 1. Short title.
Sec. 2. Table of contents.
TITLE I—PATENT AND TRADEMARK OFFICE MODERNIZATION
Sec. 101. Short title.
Subtitle A—United States Patent and Trademark Office
Sec. 111. Establishment of Patent and Trademark Office as a Government cor-
poration.
Sec. 112. Powers and duties.
Sec. 113. Organization and management.
Sec. 114. Management Advisory Board.
Sec. 115. Conforming amendments.
Sec. 116. Trademark Trial and Appeal Board.
Sec. 117. Board of Patent Appeals and Interferences.
Sec. 118. Suits by and against the Office.
Sec. 119. Annual report of Director.
Sec. 120. Suspension or exclusion from practice.
Sec. 121. Funding.
Sec. 122. Extension of surcharges on patent fees.
Sec. 123. Transfers.
Sec. 124. GAO study and report.
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.
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
respect to functions transferred.
Sec. 147. Certain vesting of functions considered transfers.
Sec. 148. Availability of existing funds.
Sec. 149. Definitions.
Subtitle D—Under Secretary of Commerce for Intellectual Property Policy
Sec. 151. Under Secretary of Commerce for Intellectual Property Policy.
Sec. 152. Relationship with existing authorities.
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TITLE II—EXAMINING PROCEDURE IMPROVEMENTS: PUBLICA-
TION WITH PROVISIONAL ROYALTIES; TERM EXTENSIONS;
FURTHER EXAMINATION
Sec. 201. Short title.
Sec. 202. 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. Patent term extension authority.
Sec. 209. Further examination of patent applications.
Sec. 210. Last day of pendency of provisional application.
Sec. 211. Reporting requirement.
Sec. 212. Effective date.
TITLE III—PROTECTION FOR PRIOR DOMESTIC USERS OF
PATENTED TECHNOLOGIES
Sec. 301. Short title.
Sec. 302. Defense to patent infringement based on prior domestic commercial
or research use.
Sec. 303. Effective date and applicability.
TITLE IV—ENHANCED PROTECTION OF INVENTORS’ RIGHTS
Sec. 401. Short title.
Sec. 402. Invention promotion services.
Sec. 403. Technical and conforming amendment.
Sec. 404. Effective date.
TITLE V—MISCELLANEOUS IMPROVEMENTS
Sec. 501. Provisional applications.
Sec. 502. International applications.
Sec. 503. Plant patents.
Sec. 504. Electronic filing.
Sec. 505. Divisional applications.
Sec. 506. Publications.
TITLE I—PATENT AND TRADE-
MARK 
OFFICE 
MODERNIZA-
TION
SEC. 101. SHORT TITLE.
This title may be cited as the ‘‘Patent and Trade-
mark Office Modernization Act’’.
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Subtitle A—United States Patent
and Trademark Office
SEC. 111. ESTABLISHMENT OF PATENT AND TRADEMARK
OFFICE AS A GOVERNMENT CORPORATION.
Section 1 of title 35, United States Code, is amended
to read as follows:
‘‘§ 1. Establishment
‘‘(a) ESTABLISHMENT.—The United States Patent
and Trademark Office is established as a wholly owned
Government corporation subject to chapter 91 of title 31,
separate from any department of the United States, and
shall be an agency of the United States under the policy
direction of the Secretary of Commerce. For purposes of
internal management, the United States Patent and
Trademark Office shall be a corporate body not subject
to direction or supervision by any department of the Unit-
ed States, except as otherwise provided in this title.
‘‘(b) OFFICES.—The United States Patent and
Trademark Office shall maintain its principal office in the
metropolitan Washington, D.C. area, for the service of
process and papers and for the purpose of carrying out
its functions. The United States Patent and Trademark
Office shall be deemed, for purposes of venue in civil ac-
tions, to be a resident of the district in which its principal
office is located, except where jurisdiction is otherwise pro-
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vided by law. The United States Patent and Trademark
Office may establish satellite offices in such other places
as it considers necessary and appropriate in the conduct
of its business.
‘‘(c) REFERENCE.—(1) For purposes of this title, the
United States Patent and Trademark Office shall also be
referred to as the ‘Office’ and the ‘Patent and Trademark
Office’.
‘‘(2) As used in this title, the term ‘Under Secretary’
means the Under Secretary of Commerce for Intellectual
Property Policy.’’.
SEC. 112. POWERS AND DUTIES.
Section 2 of title 35, United States Code, is amended
to read as follows:
‘‘§ 2. Powers and duties
‘‘(a) IN GENERAL.—The United States Patent and
Trademark Office, subject to the policy direction of the
Secretary of Commerce—
‘‘(1) shall be responsible for the granting and
issuing of patents and the registration of trade-
marks;
‘‘(2) may, in support of the Under Secretary,
assist with studies, programs, or exchanges of items
or services regarding domestic and international law
of patents, trademarks, and other matters;
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‘‘(3)(A) may, in support of the Under Sec-
retary, assist with studies and programs conducted
cooperatively with foreign patent and trademark of-
fices and international organizations, in connection
with patents, trademarks, and other matters; and
‘‘(B) with the concurrence of the Secretary of
State, may authorize 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 other mat-
ters; and
‘‘(4) shall be responsible for disseminating to
the public information with respect to patents and
trademarks.
The special payments under paragraph (3)(B) shall be in
addition to any other payments or contributions to inter-
national organizations described in paragraph (3)(B) 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.
‘‘(b) SPECIFIC POWERS.—The Office—
‘‘(1) shall have perpetual succession;
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‘‘(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-
pers issued by the Office shall be authenticated;
‘‘(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 7;
‘‘(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-
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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
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;
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‘‘(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
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-
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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
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,
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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);
‘‘(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-
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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:
‘‘§ 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.
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‘‘(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-
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.
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‘‘(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
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
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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.—
‘‘(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
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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
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
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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-
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
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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.
‘‘(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-
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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
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
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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
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-
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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-
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.
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‘‘(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
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-
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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
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.’’.
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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-
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.’’.
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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.
‘‘(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
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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.’’.
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 Unit-
ed States Patent and Trademark 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 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
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
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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
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
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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
(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’’.
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(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:
‘‘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’’.
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(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’’.
(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’’.
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(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)’’.
(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
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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:
‘‘(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:
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‘‘(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 Unit-
ed States’’ and inserting ‘‘United States Patent
and Trademark Office’’; and
(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’’.
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(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
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
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(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
(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.
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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
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’’.
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(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
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;’’;
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(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’’.
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—
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(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
(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
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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
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,
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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.
(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-
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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
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
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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.
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
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of such functions, programs, and activities, subject to the
submission of a plan to the Committees on Appropriations
of the House and Senate in accordance with the proce-
dures set forth in section 605 of the Departments of Com-
merce, Justice, and State, the Judiciary, and Related
Agencies Appropriations Act 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.
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
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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.
(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.
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(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.
(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:
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‘‘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.
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).
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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.
‘‘(b) PUBLICATION.—
‘‘(1) IN GENERAL.—(A) Subject to paragraph
(2), each application for patent, except applications