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tion, except with respect to a fact determination later
proved to be erroneous based on information unavailable
at the time of the inter partes reexamination decision. If
this section is held to be unenforceable, the enforceability
of the rest of this title or of this Act shall not be denied
as a result.
SEC. 608. EFFECTIVE DATE.
This title and the amendments made by this title shall
take effect on the date that is 1 year after the date of the
enactment of this Act and shall apply to inter partes reex-
amination requests filed on or after such date.
TITLE VII—MISCELLANEOUS
PATENT PROVISIONS
SEC. 701. PROVISIONAL APPLICATIONS.
(a) ABANDONMENT.—Section 111(b)(5) of title 35,
United States Code, is amended to read as follows:
‘‘(5) ABANDONMENT.—Notwithstanding the ab-
sence of a claim, upon timely request and as pre-
scribed by the Commissioner, a provisional applica-
tion may be treated as an application filed under
subsection (a). Subject to section 119(e)(3) of this
title, if no such request is made, the provisional ap-
plication shall be regarded as abandoned 12 months
after the filing date of such application and shall not
be subject to revival after such 12-month period.’’.
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(b) TECHNICAL AMENDMENT RELATING TO WEEKENDS
AND HOLIDAYS.—Section 119(e) of title 35, United States
Code, is amended by adding at the end the following:
‘‘(3) If the day that is 12 months after the filing
date of a provisional application falls on a Saturday,
Sunday, or Federal holiday within the District of Co-
lumbia, the period of pendency of the provisional ap-
plication shall be extended to the next succeeding sec-
ular or business day.’’.
(c) ELIMINATION OF COPENDENCY REQUIREMENT.—
Section 119(e)(2) of title 35, United States Code, is amend-
ed by striking ‘‘and the provisional application was pend-
ing on the filing date of the application for patent under
section 111(a) or section 363 of this title’’.
(d) EFFECTIVE DATE.—The amendments made by this
section shall take effect on the date of the enactment of this
Act and shall apply to any provisional application filed
on or after June 8, 1995, except that the amendments made
by subsections (b) and (c) shall have no effect with respect
to any patent which is the subject of litigation in an action
commenced before such date of the enactment.
SEC. 702. INTERNATIONAL APPLICATIONS.
Section 119 of title 35, United States Code, is amended
as follows—
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(1) In subsection (a), insert ‘‘or in a WTO mem-
ber country,’’ after ‘‘or citizens of the United States,’’.
(2) At the end of section 119 add the following
new subsections:
‘‘(f) Applications for plant breeder’s rights filed in a
WTO member country (or in a foreign UPOV Contracting
Party) shall have the same effect for the purpose of the right
of priority under subsections (a) through (c) of this section
as applications for patents, subject to the same conditions
and requirements of this section as apply to applications
for patents.
‘‘(g) As used in this section—
‘‘(1) the term ‘WTO member country’ has the
same meaning as the term is defined in section
104(b)(2) of this title; and
‘‘(2) the term ‘UPOV Contracting Party’ means
a member of the International Convention for the
Protection of New Varieties of Plants.’’.
SEC. 703. CERTAIN LIMITATIONS ON DAMAGES FOR PATENT
INFRINGEMENT NOT APPLICABLE.
Section 287(c)(4) of title 35, United States Code, is
amended by striking ‘‘before the date of enactment of this
subsection’’ and inserting ‘‘based on an application the ear-
liest effective filing date of which is prior to September 30,
1996’’.
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SEC. 704. ELECTRONIC FILING AND PUBLICATIONS.
(a) PRINTING OF PAPERS FILED.—Section 22 of title
35, United States Code, is amended by striking ‘‘printed
or typewritten’’ and inserting ‘‘printed, typewritten, or on
an electronic medium’’.
(b) PUBLICATIONS.—Section 11(a) of title 35, United
States Code, is amended by amending the matter preceding
paragraph 1 to read as follows:
‘‘(a) The Commissioner may publish in printed, type-
written, or electronic form, the following:’’.
(c) COPIES OF PATENTS FOR PUBLIC LIBRARIES.—
Section 13 of title 35, United States Code, is amended by
striking ‘‘The Commissioner may supply printed copies of
specifications and drawings of patents’’ and inserting ‘‘The
Commissioner may supply copies of specifications and
drawings of patents in printed or electronic form’’.
(d) MAINTENANCE OF COLLECTIONS.—
(1) Section 41(i)(1) of title 35, United States
Code, is amended by striking ‘‘The Commissioner
shall maintain, for use by the public, paper or
microform’’ and inserting ‘‘The Commissioner shall
maintain, for use by the public, paper, microform, or
electronic’’.
(2) The Commissioner shall not, pursuant to the
amendment made by paragraph (1), cease to main-
tain, for use by the public, paper or microform collec-
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tions of United States patents, foreign patent docu-
ments, and United States trademark registrations, ex-
cept pursuant to notice and opportunity for public
comment and except the Commissioner shall first sub-
mit a report to the Committees on the Judiciary of
the Senate and the House of Representatives detailing
such plan, including a description of the mechanisms
in place to ensure the integrity of such collections and
the data contained therein, as well as to ensure
prompt public access to the most current available in-
formation, and certifying that the implementation of
such plan will not negatively impact the public.
SEC. 705. STUDY AND REPORT ON BIOLOGICAL DEPOSITS
IN SUPPORT OF BIOTECHNOLOGY PATENTS.
(a) IN GENERAL.—No later than 6 months after the
date of the enactment of this Act, the Comptroller General
of the United States, in consultation with the Commissioner
of Patents and Trademarks, shall conduct a study and sub-
mit a report to Congress on the potential risks to the United
States biotechnology industry relating to biological deposits
in support of biotechnology patents.
(b) CONTENTS.—The study conducted under this sec-
tion shall include—
(1) an examination of the risk of export and the
risk of transfers to third parties of biological deposits,
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and the risks posed by the change to 18-month publi-
cation requirements made by this Act;
(2) an analysis of comparative legal and regu-
latory regimes; and
(3) any related recommendations.
(c) CONSIDERATION OF REPORT.—In drafting regula-
tions affecting biological deposits (including any modifica-
tion of title 37, Code of Federal Regulations, section 1.801
et seq.), the Patent and Trademark Office shall consider the
recommendations of the study conducted under this section.
SEC. 706. PRIOR INVENTION.
Section 102(g) of title 35, United States Code, is
amended to read as follows:
‘‘(g)(1) during the course of an interference conducted
under section 135 or section 291, another inventor involved
therein establishes, to the extent permitted in section 104,
that before such person’s invention thereof the invention was
made by such other inventor and not abandoned, sup-
pressed, or concealed, or (2) before such person’s invention
thereof, the invention was made in this country by another
inventor who had not abandoned, suppressed, or concealed
it. In determining priority of invention under this sub-
section, there shall be considered not only the respective
dates of conception and reduction to practice of the inven-
tion, but also the reasonable diligence of one who was first
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to conceive and last to reduce to practice, from a time prior
to conception by the other.’’.
SEC. 707. PRIOR ART EXCLUSION FOR CERTAIN COMMONLY
ASSIGNED PATENTS.
(a) PRIOR ART EXCLUSION.—Section 103(c) of title
35, United States Code, is amended by striking ‘‘subsection
(f) or (g)’’ and inserting ‘‘one or more of subsections (e),
(f), and (g)’’.
(b) EFFECTIVE DATE.—The amendment made by this
section shall apply to any application for patent filed on
or after the date of the enactment of this Act.
SEC. 708. EXCHANGE OF COPIES OF PATENTS WITH FOR-
EIGN COUNTRIES.
Section 12 of title 35, United States Code, is amended
by adding at the end the following: ‘‘The Commissioner
shall not enter into an agreement to provide such copies
of specifications and drawings of United States patents and
applications to a foreign country, other than a NAFTA
country or a WTO member country, without the express au-
thorization of the Secretary of Commerce. For purposes of
this section, the terms ‘NAFTA country’ and ‘WTO member
country’ have the meanings given those terms in section
104(b).’’.
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SEC. 709. NATIONAL SECURITY.
Section 6 of title 35, United States Code, is amended
by adding at the end the following new subsection:
‘‘(d) The Commissioner, in consultation with the Di-
rector of the Office of Personnel Management, shall main-
tain a program for identifying national security positions
and providing for appropriate security clearances, in order
to maintain the secrecy of certain inventions, as described
in section 181, and to prevent disclosure of sensitive and
strategic information in the interest of national security.’’.