I
107TH CONGRESS
1ST SESSION
H. R. 615
To make technical corrections in patent, copyright, and trademark laws.
IN THE HOUSE OF REPRESENTATIVES
FEBRUARY 14, 2001
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 2001’’.
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)(A) Title 35, United States Code, is amended by
striking ‘‘Commissioner for Patents’’ each place it appears
and inserting ‘‘Assistant Commissioner for Patents’’.
(B) Section 3(b)(2) of title 35, United States Code,
is amended—
(i) in the paragraph heading, by striking ‘‘COM-
MISSIONERS’’ and inserting ‘‘ASSISTANT
COMMIS-
SIONERS’’;
(ii) in subparagraph (A), in the last sentence—
(I) by striking ‘‘a Commissioner’’ and in-
serting ‘‘an Assistant Commissioner’’; and
(II) by striking ‘‘the Commissioner’’ and
inserting ‘‘the Assistant Commissioner’’;
(iii) in subparagraph (B)—
(I) by striking ‘‘Commissioners’’ each place
it appears and inserting ‘‘Assistant Commis-
sioners’’; and
(II) by striking ‘‘Commissioners’ ’’ each
place it appears and inserting ‘‘Assistant Com-
missioners’ ’’; and
(iii) in subparagraph (C), by striking ‘‘Commis-
sioners’’ and inserting ‘‘Assistant Commissioners’’.
(C) Section 3(f) of title 35, United States Code, is
amended in paragraphs (2) and (3), by striking ‘‘the Com-
missioner’’ each place it appears and inserting ‘‘the Assist-
ant Commissioner’’.
(D) Section 13 of title 35, United States Code, is
amended—
(i) by striking ‘‘Commissioner of’’ each place it
appears and inserting ‘‘Assistant Commissioner for’’;
and
(ii) by striking ‘‘Commissioners’’ and inserting
‘‘Assistant Commissioners’’.
(E) Chapter 17 of title 35, United States Code, is
amended by striking ‘‘Commissioner of Patents’’ each
place it appears and inserting ‘‘Assistant Commissioner
for Patents’’.
(F) Section 297 of title 35, United States Code, is
amended by striking ‘‘Commissioner of Patents’’ each
place it appears and inserting ‘‘Commissioner’’.
(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.’’.
(6)(A) Section 303 of title 35, United States Code,
is amended—
(i) in the section heading by striking ‘‘Direc-
tor ’’ and inserting ‘‘Commissioner’’; and
(ii) by striking ‘‘Director’s’’ and inserting
‘‘Commissioner’s’’.
(B) The item relating to section 303 in the table of
sections for chapter 30 of title 35, United States Code,
is amended by striking ‘‘Director’’ and inserting ‘‘Com-
missioner’’.
(b) ADDITIONAL CLERICAL AMENDMENTS.—
(1) The following provisions of law are amended
by striking ‘‘Director’’ each place it appears and in-
serting ‘‘Commissioner’’.
(A) Section 9(p)(1)(B) of the Small Busi-
ness Act (15 U.S.C. 638(p)(1)(B)).
(B) Section 19 of the Tennessee Valley
Authority Act of 1933 (16 U.S.C. 831r).
(C) Section 182(b)(2)(A) of the Trade Act
of 1974 (19 U.S.C. 2242(b)(2)(A)).
(D) Section 302(b)(2)(D) of the Trade Act
of 1974 (19 U.S.C. 2412(b)(2)(D)).
(E) Section 702(d) of the Federal Food,
Drug, and Cosmetic Act (21 U.S.C. 372(d)).
(F) Section 1295(a)(4)(B) of title 28,
United States Code.
(G) Section 1744 of title 28, United States
Code.
(H) Section 151 of the Atomic Energy Act
of 1954 (42 U.S.C. 2181).
(I) Section 152 of the Atomic Energy Act
of 1954 (42 U.S.C. 2182).
(J) Section 305 of the National Aero-
nautics and Space Act of 1958 (42 U.S.C.
2457).
(K) Section 12(a) of the Solar Heating
and Cooling Demonstration Act of 1974 (42
U.S.C. 5510(a)).
(L) Section 10(i) of the Trading with the
enemy Act (50 U.S.C. App. 10(i)).
(M) Section 4203 of the Intellectual Prop-
erty and Communications Omnibus Reform Act
of 1999, as enacted by section 1000(a)(9) of
Public Law 106–113.
(2) The item relating to section 1744 in the
table of sections for chapter 115 of title 28, United
States Code, is amended by striking ‘‘generally’’ and
inserting ‘‘, generally’’.
(c) 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. CLARIFICATION OF REEXAMINATION PROCEDURE
ACT OF 1999; TECHNICAL AMENDMENTS.
(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 315(c) is amended by striking
‘‘United States Code,’’.
(5) Section 317 is amended—
(A) in subsection (a), by striking ‘‘patent
owner nor the third-party requester, if any, nor
privies of either’’ and inserting ‘‘third-party re-
quester nor its privies’’; and
(B) in subsection (b), by striking ‘‘United
States Code,’’.
(b) CONFORMING AMENDMENTS.—
(1) APPEAL TO THE BOARD OF PATENT AP-
PEALS AND INTERFERENCES.—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 examiner’’.
(2) PROCEEDING ON APPEAL.—Section 143 of
title 35, United States Code, is amended by amend-
ing the third sentence to read as follows: ‘‘In an ex
parte case or any reexamination case, the Commis-
sioner shall submit to the court in writing the
grounds for the decision of the Patent and Trade-
mark Office, addressing all the issues involved in the
appeal. The court shall, before hearing an appeal,
give notice of the time and place of the hearing to
the Commissioner and the parties in the appeal.’’.
(c) CLERICAL AMENDMENTS.—
(1) Section 4604(a) of the Intellectual Property
and Communications Omnibus Reform Act of 1999,
as enacted by section 1009(a)(9) of Public Law
106–113, is amended by striking ‘‘Part 3’’ and in-
serting ‘‘Part III’’.
(2) Section 4604(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. 4. PATENT AND TRADEMARK EFFICIENCY ACT AMEND-
MENTS.
(a) DEPUTY COMMISSIONER.—
(1) 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,’’.
(2) 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—
(1) in subsection (i), by inserting ‘‘, privileged,’’
after ‘‘personnel’’; and
(2) by adding at the end the following new sub-
section:
‘‘(j) INAPPLICABILITY OF PATENT PROHIBITION.—
Section 4 shall not apply to voting members of the Advi-
sory Committees.’’.
(c) 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 Commissioner,’’.
SEC. 5. DOMESTIC PUBLICATION OF FOREIGN FILED PAT-
ENT APPLICATIONS ACT OF 1999 AMEND-
MENTS.
Section 154(d)(4)(A) of title 35, United States Code,
as in effect on November 29, 2000, 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. 6. DOMESTIC PUBLICATION OF PATENT APPLICA-
TIONS PUBLISHED ABROAD.
Subtitle E of title IV of the Intellectual Property and
Communications Omnibus Reform Act of 1999, as enacted
by section 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:
‘‘(12) The item relating to section 374 in the
table of contents for chapter 37 of title 35, United
States Code, is amended to read as follows:
‘‘374. Publication of international application.’’.
(3) Section 4508 is amended to read as follows:
‘‘SEC. 4508. EFFECTIVE DATE.
‘‘Except as otherwise provided in this section, sec-
tions 4502 through 4507, and the amendments made by
such sections, shall be effective as of November 29, 2000,
and shall apply only to applications (including inter-
national applications designating the United States) filed
on or after that date. The amendments made by sections
4504 and 4505 shall additionally apply to any application
filed before November 29, 2000, and pending on that date,
if such pending application is published pursuant to a re-
quest of the applicant under such procedures as may be
established by the Commissioner. If an application is filed
on or after November 29, 2000, or is published pursuant
to a request from the applicant, and the application claims
the benefit of one or more prior-filed applications under
section 119(e), 120, or 365(c) of title 35, United States
Code, then the amendment made by section 4505 shall
apply to the prior-filed application in determining the fil-
ing date in the United States of the application.’’.
SEC. 7. 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 (a)(2)(B), by striking
‘‘United States Code,’’;
(B) in subsection (b)(2)—
(i) in the first sentence of subpara-
graph (A), by striking ‘‘, United States
Code’’;
(ii) in the first sentence of subpara-
graph (B)—
(I) by striking ‘‘United States
Code,’’; and
(II) by striking ‘‘, United States
Code’’;
(iii) in the second sentence of sub-
paragraph (B)—
(I) by striking ‘‘United States
Code,’’; and
(II) by striking ‘‘, United States
Code.’’ and inserting a period;
(iv) in the last sentence of subpara-
graph (B), by striking ‘‘, United States
Code’’; and
(v) in subparagraph (C), by striking
‘‘, United States Code’’; and
(C) in subsection (c)—
(12) Section 44(e) (15 U.S.C. 1126(e)) is
amended by striking ‘‘a certification’’ and inserting
‘‘a true copy, a photocopy, a certification,’’.
SEC. 9. ADDITIONAL CLERICAL AMENDMENT.
The Patent and Trademark Fee Fairness Act of 1999
(113 Stat. 1537–546 et seq.), as enacted by section
1000(a)(9) of Public Law 106–113, is amended in section
4203, by striking ‘‘111(a)’’ and inserting ‘‘1113(a)’’.
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