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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.
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.
TITLE II—EARLY PUBLICATION
OF PATENT APPLICATIONS
SEC. 201. SHORT TITLE.
This title may be cited as the ‘‘Patent Application
Publication Act of 1996’’.
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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 and Trademark Office and no infor-
mation concerning the same given without authority of the
applicant or owner unless necessary to carry out the provi-
sions of an Act of Congress or in such special cir-
cumstances as may be determined 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 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 ear-
lier than the end of such 18-month period.
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‘‘(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) Upon the request of the applicant at the
time of filing, the application shall not be published
in accordance with paragraph (1) until 3 months
after the Commissioner makes a notification to the
applicant under section 132 of 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, 121, or 365(c) of this title shall not be
eligible for a request pursuant to this subparagraph.
‘‘(iii) In a request under this subparagraph, the
applicant shall certify that the invention disclosed in
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the application was not and will not be the subject
of an application filed in a foreign country.
‘‘(iv) A request under this subparagraph shall
only be available to an applicant who has been ac-
corded the status of independent inventor under sec-
tion 41(h) of this title.
‘‘(v) The Commissioner may establish appro-
priate procedures and fees for making a request
under this subparagraph.
‘‘(c) PRE-ISSUANCE OPPOSITION.—The provisions of
this section shall not operate to create any new oppor-
tunity for pre-issuance or pre-grant opposition. The Com-
missioner may establish appropriate procedures to ensure
that this section does not create any new opportunity for
pre-issuance or pre-grant opposition that did not exist
prior to the adoption of this section.’’.
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, identifying the foreign
application by specifying its application number, country,
and the day, month, and year of its filing, is filed in the
Patent and Trademark Office at such time during the
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pendency of the application as required by the Commis-
sioner.
‘‘(2) The Commissioner may consider the failure of
the applicant 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 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 patent office of 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.’’.
(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
period 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-
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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
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-
lication of the application for such patent pursuant
to section 122(b) of this title, or in the case of an
international application designating the United
States, the date of international publication of the
application, and ending on the date the patent is is-
sued—
‘‘(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
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‘‘(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.
‘‘(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
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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 of an international application des-
ignating the United States shall commence from the
date that the Patent and Trademark Office receives
a copy of the publication under the treaty of the
international 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
Patent and Trademark Office receives a translation
of the international application in the English lan-
guage.’’.
SEC. 205. PRIOR ART EFFECT OF PUBLISHED APPLICA-
TIONS.
(a) DESCRIPTION.—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, or
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‘‘(B) an international application designating
the United States, published under the treaty, de-
fined in section 351(a) of this title, by another who
has fulfilled the requirements of paragraphs (1), (2),
and (4) of section 371(c) of this title before the in-
vention by applicant for patent, 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 on an inter-
national application by another who has fulfilled the
requirements of paragraphs (1), (2), and (4) of sec-
tion 371(c) of this title before the invention by the
applicant for patent, or’’.
(b) TREATY.—Section 102 of title 35, United States
Code, is amended—
(1) by redesignating subsections (c) through (g)
as (d) through (h), respectively; and
(2) by inserting after subsection (b) the follow-
ing:
‘‘(c) an international application designating
the United States was published under the treaty,
defined in section 351(a) of this title, in the English
language by another before the invention by the ap-
plicant for patent, or’’.
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SEC. 206. COST RECOVERY FOR PUBLICATION.
The Commissioner shall recover the cost of early pub-
lication required by the amendment made by section 202
by adjusting the filing, issue, and maintenance fees under
title 35, United States Code, by charging a separate publi-
cation 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’’.
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(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) ‘‘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) ‘‘the publication of the application
or’’ after ‘‘withhold’’; and
(D) in the fourth paragraph by inserting
‘‘the publication of an application or’’ after
‘‘and’’ in the first sentence.
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(8) Section 252 is amended in the first undesig-
nated paragraph 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 section 102(e) of this title.’’.
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—
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‘‘(i) a proceeding under section 135(a)
of this title,
‘‘(ii) the imposition of an order pursu-
ant to section 181 of this title,
‘‘(iii) appellate review by the Board of
Patent Appeals and Interferences or by a
Federal court where the patent was issued
pursuant to a decision in the review revers-
ing an adverse determination of patentabil-
ity, or
‘‘(iv) an unusual administrative delay
by the Patent and Trademark Office in is-
suing the patent,
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
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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 where
allowable claims remain in an application;
or
‘‘(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.
‘‘(2) LIMITATIONS.—(A) The total duration of
any extensions granted pursuant to either subclause
(iii) or (iv) of paragraph (1)(A) or both such sub-
clauses shall not exceed 10 years. To the extent that
periods of delay attributable to grounds specified in
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at a reasonable cost on the invention developer’s premises
during normal business hours.
‘‘§ 56. Remedies
‘‘(a) IN GENERAL.—(1) Any contract for invention
development services that does not comply with the appli-
cable provisions of this chapter shall be voidable at the
option of the customer.
‘‘(2) Any contract for invention development services
entered into in reliance upon any material false, fraudu-
lent, or misleading information, representation, notice, or
advertisement of the invention developer (or any agent,
employee, officer, director, partner, or independent con-
tractor of such invention developer) 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 development services
which provides for any act involved in filing for and ob-
taining utility, design, or plant patent protection shall be
voidable at the option of the customer unless the invention
developer offers to perform or performs such act through
a registered patent attorney or agent.
‘‘(b) CIVIL ACTION.—(1) Any customer who is in-
jured by a violation of this chapter by an invention devel-