IIB
106TH CONGRESS
1ST SESSION
H. R. 1907
IN THE SENATE OF THE UNITED STATES
AUGUST 4, 1999
Received
OCTOBER 8, 1999
Read twice and referred to the Committee on the Judiciary
AN ACT
To amend title 35, United States Code, to provide enhanced
protection for inventors and innovators, protect patent
terms, reduce patent litigation, 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 ‘‘American Inventors
Protection Act of 1999’’.
SEC. 2. TABLE OF CONTENTS.
The table of contents is as follows:
Sec. 1. Short title.
Sec. 2. Table of contents.
TITLE I—INVENTORS’ RIGHTS
Sec. 101. Short title.
Sec. 102. Invention promotion services.
Sec. 103. Effective date.
TITLE II—FIRST INVENTOR DEFENSE
Sec. 201. Short title.
Sec. 202. Defense to patent infringement based on earlier inventor.
Sec. 203. Effective date and applicability.
TITLE III—PATENT TERM GUARANTEE
Sec. 301. Short title.
Sec. 302. Patent term guarantee authority.
Sec. 303. Continued examination of patent applications.
Sec. 304. Technical clarification.
Sec. 305. Effective date.
TITLE IV—UNITED STATES PUBLICATION OF PATENT
APPLICATIONS PUBLISHED ABROAD
Sec. 401. Short title.
Sec. 402. Publication.
Sec. 403. Time for claiming benefit of earlier filing date.
Sec. 404. Provisional rights.
Sec. 405. Prior art effect of published applications.
Sec. 406. Cost recovery for publication.
Sec. 407. Conforming amendments.
Sec. 408. Effective date.
TITLE V—OPTIONAL INTER PARTES REEXAMINATION
PROCEDURE
Sec. 501. Short title.
Sec. 502. Ex parte reexamination of patents.
Sec. 503. Definitions.
Sec. 504. Optional inter partes reexamination procedures.
Sec. 505. Conforming amendments.
Sec. 506. Report to Congress.
Sec. 507. Estoppel effect of reexamination.
Sec. 508. Effective date.
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TITLE VI—PATENT AND TRADEMARK OFFICE
Sec. 601. Short title.
Subtitle A—United States Patent and Trademark Office
Sec. 611. Establishment of Patent and Trademark Office.
Sec. 612. Powers and duties.
Sec. 613. Organization and management.
Sec. 614. Public Advisory Committees.
Sec. 615. Patent and Trademark Office funding.
Sec. 616. Conforming amendments.
Sec. 617. Trademark Trial and Appeal Board.
Sec. 618. Board of Patent Appeals and Interferences.
Sec. 619. Annual report of Director.
Sec. 620. Suspension or exclusion from practice.
Sec. 621. Pay of Director and Deputy Director.
Sec. 622. Study on Alternative Fee Structures.
Subtitle B—Effective Date; Technical Amendments
Sec. 631. Effective date.
Sec. 632. Technical and conforming amendments.
Subtitle C—Miscellaneous Provisions
Sec. 641. References.
Sec. 642. Exercise of authorities.
Sec. 643. Savings provisions.
Sec. 644. Transfer of assets.
Sec. 645. Delegation and assignment.
Sec. 646. Authority of Director of the Office of Management and Budget with
respect to functions transferred.
Sec. 647. Certain vesting of functions considered transfers.
Sec. 648. Availability of existing funds.
Sec. 649. Definitions.
TITLE VII—MISCELLANEOUS PATENT PROVISIONS
Sec. 701. Provisional applications.
Sec. 702. International applications.
Sec. 703. Certain limitations on damages for patent infringement not applica-
ble.
Sec. 704. Electronic filing and publications.
Sec. 705. Study and report on biological deposits in support of biotechnology
patents.
Sec. 706. Prior invention.
Sec. 707. Prior art exclusion for certain commonly assigned patents.
TITLE I—INVENTORS’ RIGHTS
SEC. 101. SHORT TITLE.
This title may be cited as the ‘‘Inventors’ Rights
Act’’.
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SEC. 102. INVENTION PROMOTION SERVICES.
Part I of title 35, United States Code, is amended
by adding after chapter 4 the following chapter:
‘‘CHAPTER 5—INVENTION PROMOTION
SERVICES
‘‘Sec.
‘‘51. Definitions.
‘‘52. Contracting requirements.
‘‘53. Standard provisions for cover notice.
‘‘54. Reports to customer required.
‘‘55. Mandatory contract terms.
‘‘56. Remedies.
‘‘57. Records of complaints.
‘‘58. Fraudulent representation by an invention promoter.
‘‘59. Rule of construction.
‘‘§ 51. Definitions
‘‘For purposes of this chapter—
‘‘(1) the term ‘contract for invention promotion
services’ means a contract by which an invention
promoter undertakes invention promotion services
for a customer;
‘‘(2) the term ‘customer’ means any person,
firm, partnership, corporation, or other entity who
enters into a financial relationship or a contract with
an invention promoter for invention promotion serv-
ices;
‘‘(3) the term ‘invention promoter’ means any
person, firm, partnership, corporation, or other enti-
ty who offers to perform or performs for, or on be-
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half of, a customer any act described under para-
graph (4), but does not include—
‘‘(A) any department or agency of the Fed-
eral Government or of a State or local govern-
ment;
‘‘(B) any nonprofit, charitable, scientific,
or educational organization, qualified under ap-
plicable State law or described under section
170(b)(1)(A) of the Internal Revenue Code of
1986;
‘‘(C) any person duly registered with, and
in good standing before, the United States Pat-
ent and Trademark Office acting within the
scope of that person’s registration to practice
before the Patent and Trademark Office, except
when that person performs any act described in
subparagraph (B) or (C) of paragraph (4); or
‘‘(D) any person or entity involved in the
evaluation to determine commercial potential of,
or offering to license or sell, a utility patent or
a previously filed nonprovisional utility patent
application; and
‘‘(4) the term ‘invention promotion services’
means, with respect to an invention by a customer,
any act involved in—
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‘‘(A) evaluating the invention to determine
its protectability as some form of intellectual
property, other than evaluation by a person li-
censed by a State to practice law who is acting
solely within the scope of that person’s profes-
sional license;
‘‘(B) evaluating the invention to determine
its commercial potential by any person for pur-
poses other than providing venture capital; or
‘‘(C) marketing, brokering, offering to li-
cense or sell, or promoting the invention or a
product or service in which the invention is in-
corporated or used, except that the display only
of an invention at a trade show or exhibit shall
not be considered to be invention promotion
services.
‘‘§ 52. Contracting requirements
‘‘(a) IN GENERAL.—(1) Every contract for invention
promotion services shall be in writing and shall be subject
to the provisions of this chapter. A copy of the signed writ-
ten contract shall be given to the customer at the time
the customer enters into the contract.
‘‘(2) If a contract is entered into for the benefit of
a third party, the identity and address of such party shall
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be disclosed by such party’s agent and such party shall
be considered a customer for purposes of this chapter.
‘‘(b) REQUIREMENTS OF INVENTION PROMOTER.—
The invention promoter shall—
‘‘(1) state in a written document, at the time
a customer enters into a contract for invention pro-
motion services, whether the usual business practice
of the invention promoter is to—
‘‘(A) seek more than 1 contract in connec-
tion with an invention; or
‘‘(B) seek to perform services in connection
with an invention in 1 or more phases, with the
performance of each phase covered in 1 or more
subsequent contracts; and
‘‘(2) supply to the customer a copy of the writ-
ten document together with a written summary of
the usual business practices of the invention pro-
moter, including—
‘‘(A) the usual business terms of contracts;
and
‘‘(B) the approximate amount of the usual
fees or other consideration that may be required
from the customer for each of the services pro-
vided by the invention promoter.
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‘‘(c) RIGHT OF CUSTOMER TO CANCEL CONTRACT.—
(1) Notwithstanding any contractual provision to the con-
trary, a customer shall have the right to terminate a con-
tract for invention promotion services by sending a written
letter to the invention promoter stating the customer’s in-
tent to cancel the contract. The letter of termination must
be deposited with the United States Postal Service on or
before 5 business days after the date upon which the cus-
tomer or the invention promoter executes the contract,
whichever is later.
‘‘(2) Delivery of a promissory note, check, bill of ex-
change, or negotiable instrument of any kind to the inven-
tion promoter or to a third party for the benefit of the
invention promoter, without regard to the date or dates
appearing in such instrument, shall be deemed payment
received by the invention promoter on the date received
for purposes of this section.
‘‘§ 53. Standard provisions for cover notice
‘‘(a) CONTENTS.—Every contract for invention pro-
motion services shall have a conspicuous and legible cover
sheet attached with the following notice imprinted in bold-
face type of not less than 12-point size:
‘YOU HAVE THE RIGHT TO TERMINATE THIS
CONTRACT. TO TERMINATE THIS CONTRACT,
YOU MUST SEND A WRITTEN LETTER TO THE
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COMPANY STATING YOUR INTENT TO CANCEL
THIS CONTRACT.
‘THE LETTER OF TERMINATION MUST BE
DEPOSITED WITH THE UNITED STATES POSTAL
SERVICE ON OR BEFORE FIVE (5) BUSINESS
DAYS AFTER THE DATE ON WHICH YOU OR THE
COMPANY EXECUTE THE CONTRACT, WHICH-
EVER IS LATER.
‘THE TOTAL NUMBER OF INVENTIONS
EVALUATED BY THE INVENTION PROMOTER
FOR COMMERCIAL POTENTIAL IN THE PAST
FIVE (5) YEARS IS XXXXX. OF THAT NUMBER,
XXXXX RECEIVED POSITIVE EVALUATIONS AND
XXXXX RECEIVED NEGATIVE EVALUATIONS.
‘IF YOU ASSIGN EVEN A PARTIAL INTEREST
IN THE INVENTION TO THE INVENTION PRO-
MOTER, THE INVENTION PROMOTER MAY HAVE
THE RIGHT TO SELL OR DISPOSE OF THE IN-
VENTION WITHOUT YOUR CONSENT AND MAY
NOT HAVE TO SHARE THE PROFITS WITH YOU.
‘THE TOTAL NUMBER OF CUSTOMERS WHO
HAVE CONTRACTED WITH THE INVENTION PRO-
MOTER IN THE PAST FIVE (5) YEARS IS XXXXX.
THE TOTAL NUMBER OF CUSTOMERS KNOWN
BY THIS INVENTION PROMOTER TO HAVE RE-
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CEIVED, BY VIRTUE OF THIS INVENTION PRO-
MOTER’S 
PERFORMANCE, 
AN 
AMOUNT 
OF
MONEY IN EXCESS OF THE AMOUNT PAID BY
THE CUSTOMER TO THIS INVENTION PRO-
MOTER IS XXXXXXX. AS A RESULT OF THE EF-
FORTS OF THIS INVENTION PROMOTER, XXXXX
NUMBER OF CUSTOMERS HAVE RECEIVED LI-
CENSE AGREEMENTS FOR THEIR INVENTIONS.
‘THE OFFICERS OF THIS INVENTION PRO-
MOTER HAVE COLLECTIVELY OR INDIVIDUALLY
BEEN AFFILIATED IN THE LAST TEN (10) YEARS
WITH THE FOLLOWING INVENTION PROMOTION
COMPANIES: (LIST THE NAMES AND ADDRESSES
OF ALL PREVIOUS INVENTION PROMOTION
COMPANIES WITH WHICH THE PRINCIPAL OFFI-
CERS HAVE BEEN AFFILIATED AS OWNERS,
AGENTS, OR EMPLOYEES). YOU ARE ENCOUR-
AGED TO CHECK WITH THE UNITED STATES
PATENT AND TRADEMARK OFFICE, THE FED-
ERAL TRADE COMMISSION, YOUR STATE ATTOR-
NEY GENERAL’S OFFICE, AND THE BETTER
BUSINESS BUREAU FOR ANY COMPLAINTS
FILED AGAINST ANY OF THESE COMPANIES
WHICH RESULTED IN REGULATORY SANCTIONS
OR OTHER CORRECTIVE ACTIONS.
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‘YOU ARE ENCOURAGED TO CONSULT WITH
AN ATTORNEY OF YOUR OWN CHOOSING BE-
FORE SIGNING THIS CONTRACT. BY PRO-
CEEDING WITHOUT THE ADVICE OF AN ATTOR-
NEY REGISTERED TO PRACTICE BEFORE THE
UNITED STATES PATENT AND TRADEMARK OF-
FICE, YOU COULD LOSE ANY RIGHTS YOU
MIGHT HAVE IN YOUR IDEA OR INVENTION.’.
‘‘(b) OTHER REQUIREMENTS FOR COVER NOTICE.—
The cover notice shall contain the items required under
subsection (a) and the name, primary office address, and
local office address of the invention promoter, and may
contain no other matter.
‘‘(c) DISCLOSURE OF CERTAIN CUSTOMERS NOT RE-
QUIRED.—The requirement in the notice set forth in sub-
section (a) to include the ‘TOTAL NUMBER OF CUS-
TOMERS WHO HAVE CONTRACTED WITH THE
INVENTION PROMOTER IN THE PAST FIVE (5)
YEARS’ need not include information with respect to cus-
tomers who have purchased trade show services, research,
advertising, or other nonmarketing services from the in-
vention promoter, nor with respect to customers who have
defaulted in their payment to the invention promoter.
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‘‘§ 54. Reports to customer required
‘‘With respect to every contract for invention pro-
motion services, the invention promoter shall deliver to the
customer at the address specified in the contract, at least
once every 3 months throughout the term of the contract,
a written report that identifies the contract and includes—
‘‘(1) a full, clear, and concise description of the
services performed to the date of the report and of
the services yet to be performed and names of all
persons who it is known will perform the services;
and
‘‘(2) the name and address of each person,
firm, corporation, or other entity to whom the sub-
ject matter of the contract has been disclosed, the
reason for each such disclosure, the nature of the
disclosure, and complete and accurate summaries of
all responses received as a result of those disclo-
sures.
‘‘§ 55. Mandatory contract terms
‘‘(a) MANDATORY TERMS.—Each contract for inven-
tion promotion services shall include in boldface type of
not less than 12-point size—
‘‘(1) the terms and conditions of payment and
contract termination rights required under section
52;
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‘‘(2) a statement that the customer may avoid
entering into the contract by not making the initial
payment to the invention promoter;
‘‘(3) a full, clear, and concise description of the
specific acts or services that the invention promoter
undertakes to perform for the customer;
‘‘(4) a statement as to whether the invention
promoter undertakes to construct, sell, or distribute
one or more prototypes, models, or devices embody-
ing the invention of the customer;
‘‘(5) the full name and principal place of busi-
ness of the invention promoter and the name and
principal place of business of any parent, subsidiary,
agent, independent contractor, and any affiliated
company or person who it is known will perform any
of the services or acts that the invention promoter
undertakes to perform for the customer;
‘‘(6) if any oral or written representation of es-
timated or projected customer earnings is given by
the invention promoter (or any agent, employee, offi-
cer, director, partner, or independent contractor of
such invention promoter), a statement of that esti-
mation or projection and a description of the data
upon which such representation is based;
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‘‘(7) the name and address of the custodian of
all records and correspondence relating to the con-
tracted for invention promotion services, and a state-
ment that the invention promoter is required to
maintain all records and correspondence relating to
performance of the invention promotion services for
such customer for a period of not less than 2 years
after expiration of the term of such contract; and
‘‘(8) a statement setting forth a time schedule
for performance of the invention promotion services,
including an estimated date in which such perform-
ance is expected to be completed.
‘‘(b) INVENTION PROMOTER AS FIDUCIARY.—To the
extent that the description of the specific acts or services
affords discretion to the invention promoter with respect
to what specific acts or services shall be performed, the
invention promoter shall be deemed a fiduciary.
‘‘(c) AVAILABILITY OF INFORMATION.—Records and
correspondence described under subsection (a)(7) shall be
made available after 7 days written notice to the customer
or the representative of the customer to review and copy
at a reasonable cost on the invention promoter’s premises
during normal business hours.
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‘‘§ 56. Remedies
‘‘(a) IN GENERAL.—(1) Any contract for invention
promotion services that does not comply with the applica-
ble provisions of this chapter shall be voidable at the op-
tion of the customer.
‘‘(2) Any contract for invention promotion services
entered into in reliance upon any material false, fraudu-
lent, or misleading information, representation, notice, or
advertisement of the invention promoter (or any agent,
employee, officer, director, partner, or independent con-
tractor of such invention promoter) 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 promotion services
which provides for filing for and obtaining utility, design,
or plant patent protection shall be voidable at the option
of the customer unless the invention promoter offers to
perform or performs such act through a person duly reg-
istered to practice before, and in good standing with, the
Patent and Trademark Office.
‘‘(b) CIVIL ACTION.—(1) Any customer who is in-
jured by a violation of this chapter by an invention pro-
moter or by any material false or fraudulent statement
or representation, or any omission of material fact, by an
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invention promoter (or any agent, employee, director, offi-
cer, partner, or independent contractor of such invention
promoter) or by failure of an invention promoter to make
all the disclosures required under this chapter, may re-
cover in a civil action against the invention promoter (or
the officers, directors, or partners of such invention pro-
moter) in addition to reasonable costs and attorneys’ fees,
the greater of—
‘‘(A) $5,000; or
‘‘(B) the amount of actual damages sustained
by the customer.
‘‘(2) Notwithstanding paragraph (1), the court may
increase damages to not more than 3 times the amount
awarded, taking into account past complaints made
against the invention promoter that resulted in regulatory
sanctions or other corrective actions based on those
records compiled by the Director under section 57.
‘‘(c) REBUTTABLE PRESUMPTION OF INJURY.—For
purposes of this section, substantial violation of any provi-
sion of this chapter by an invention promoter or execution
by the customer of a contract for invention promotion
services in reliance on any material false or fraudulent
statements or representations or omissions of material
fact shall establish a rebuttable presumption of injury.
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‘‘§ 57. Records of complaints
‘‘(a) RELEASE OF COMPLAINTS.—The Director shall
make all complaints received by the United States Patent
and Trademark Office involving invention promoters pub-
licly available, together with any response of the invention
promoters.
‘‘(b) REQUEST
FOR COMPLAINTS.—The Director
may request complaints relating to invention promotion
services from any Federal or State agency and include
such complaints in the records maintained under sub-
section (a), together with any response of the invention
promoters.
‘‘§ 58. Fraudulent representation by an invention pro-
moter
‘‘Whoever, in providing invention promotion services,
knowingly provides any false or misleading statement, rep-
resentation, or omission of material fact to a customer or
fails to make all the disclosures required under this chap-
ter, shall be guilty of a misdemeanor and fined not more
than $10,000 for each offense.
‘‘§ 59. Rule of construction
‘‘Except as expressly provided in this chapter, no pro-
vision of this chapter shall be construed to affect any obli-
gation, right, or remedy provided under any other Federal
or State law.’’.
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SEC. 103. EFFECTIVE DATE.
This title and the amendments made by this title
shall take effect 60 days after the date of the enactment
of this Act.
TITLE II—FIRST INVENTOR
DEFENSE
SEC. 201. SHORT TITLE.
This title may be cited as the ‘‘First Inventor Defense
Act’’.
SEC. 202. DEFENSE TO PATENT INFRINGEMENT BASED ON
EARLIER INVENTOR.
(a) DEFENSE.—Chapter 28 of title 35, United States
Code, is amended by adding at the end the following new
section:
‘‘§ 273. Defense to infringement based on earlier in-
ventor
‘‘(a) DEFINITIONS.—For purposes of this section—
‘‘(1) the terms ‘commercially used’ and ‘com-
mercial use’ mean use of a method in the United
States, so long as such use is in connection with an
internal commercial use or an actual arm’s-length
sale or other arm’s-length commercial transfer of a
useful end result, whether or not the subject matter
at issue is accessible to or otherwise known to the
public, except that the subject matter for which com-
mercial marketing or use is subject to a premar-
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keting regulatory review period during which the
safety or efficacy of the subject matter is estab-
lished, including any period specified in section
156(g), shall be deemed ‘commercially used’ and in
‘commercial use’ during such regulatory review pe-
riod;
‘‘(2) in the case of activities performed by a
nonprofit research laboratory, or nonprofit entity
such as a university, research center, or hospital, a
use for which the public is the intended beneficiary
shall be considered to be a use described in para-
graph (1), except that the use—
‘‘(A) may be asserted as a defense under
this section only for continued use by and in
the laboratory or nonprofit entity; and
‘‘(B) may not be asserted as a defense
with respect to any subsequent commercializa-
tion or use outside such laboratory or nonprofit
entity;
‘‘(3) the term ‘method’ means a method of
doing or conducting business; and
‘‘(4) the ‘effective filing date’ of a patent is the
earlier of the actual filing date of the application for
the patent or the filing date of any earlier United
States, foreign, or international application to which
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the subject matter at issue is entitled under section
119, 120, or 365 of this title.
‘‘(b) DEFENSE TO INFRINGEMENT.—.
‘‘(1) IN GENERAL.—It shall be a defense to an
action for infringement under section 271 of this
title with respect to any subject matter that would
otherwise infringe one or more claims for a method
in the patent being asserted against a person, if
such person had, acting in good faith, actually re-
duced the subject matter to practice at least one
year before the effective filing date of such patent,
and commercially used the subject matter before the
effective filing date of such patent.
‘‘(2) EXHAUSTION
OF
RIGHT.—The sale or
other disposition, of a useful end result produced by
a patented method, by a person entitled to assert a
defense under this section with respect to that useful
end result shall exhaust the patent owner’s rights
under the patent to the extent such rights would
have been exhausted had such sale or other disposi-
tion been made by the patent owner.
‘‘(3) LIMITATIONS AND QUALIFICATIONS OF DE-
FENSE.—The defense to infringement under this
section is subject to the following:
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‘‘(A) PATENT.—A person may not assert
the defense under this section unless the inven-
tion for which the defense is asserted is for a
method.
‘‘(B) DERIVATION.—A person may not as-
sert the defense under this section if the subject
matter on which the defense is based was de-
rived from the patentee or persons in privity
with the patentee.
‘‘(C) NOT A GENERAL LICENSE.—The de-
fense asserted by a person under this section is
not a general license under all claims of the
patent at issue, but extends only to the specific
subject matter claimed in the patent with re-
spect to which the person can assert a defense
under this chapter, except that the defense shall
also extend to variations in the quantity or vol-
ume of use of the claimed subject matter, and
to improvements in the claimed subject matter
that do not infringe additional specifically
claimed subject matter of the patent.
‘‘(4) BURDEN OF PROOF.—A person asserting
the defense under this section shall have the burden
of establishing the defense by clear and convincing
evidence.
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‘‘(5) ABANDONMENT OF USE.—A person who
has abandoned commercial use of subject matter
may not rely on activities performed before the date
of such abandonment in establishing a defense under
this section with respect to actions taken after the
date of such abandonment.
‘‘(6) PERSONAL DEFENSE.—The defense under
this section may be asserted only by the person who
performed the acts necessary to establish the defense
and, except for any transfer to the patent owner, the
right to assert the defense shall not be licensed or
assigned or transferred to another person except as
an ancillary and subordinate part of a good faith as-
signment or transfer for other reasons of the entire
enterprise or line of business to which the defense
relates.
‘‘(7) LIMITATION ON SITES.—A defense under
this section, when acquired as part of a good faith
assignment or transfer of an entire enterprise or line
of business to which the defense relates, may only be
asserted for uses at sites where the subject matter
that would otherwise infringe one or more of the
claims is in use before the later of the effective filing
date of the patent or the date of the assignment or
transfer of such enterprise or line of business.
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‘‘(8) 
UNSUCCESSFUL
ASSERTION
OF
DE-
FENSE.—If the defense under this section is pleaded
by a person who is found to infringe the patent and
who subsequently fails to demonstrate a reasonable
basis for asserting the defense, the court shall find
the case exceptional for the purpose of awarding at-
torney’s fees under section 285 of this title.
‘‘(9) INVALIDITY.—A patent shall not be
deemed to be invalid under section 102 or 103 of
this title solely because a defense is raised or estab-
lished under this section.’’.
(b) CONFORMING AMENDMENT.—The table of sec-
tions at the beginning of chapter 28 of title 35, United
States Code, is amended by adding at the end the fol-
lowing new item:
‘‘273. Defense to infringement based on earlier inventor.’’.
SEC. 203. EFFECTIVE DATE AND APPLICABILITY.
This title and the amendments made by this title
shall take effect on the date of the enactment of this Act,
but shall not apply to any action for infringement that
is pending on such date of the enactment or with respect
to any subject matter for which an adjudication of in-
fringement, including a consent judgment, has been made
before such date of the enactment.
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TITLE III—PATENT TERM
GUARANTEE
SEC. 301. SHORT TITLE.
This title may be cited as the ‘‘Patent Term Guar-
antee Act’’.
SEC. 302. PATENT TERM GUARANTEE AUTHORITY.
(a) ADJUSTMENT
OF
PATENT
TERM.—Section
154(b) of title 35, United States Code, is amended to read
as follows:
‘‘(b) ADJUSTMENT OF PATENT TERM.—
‘‘(1) PATENT TERM GUARANTEES.—
‘‘(A) GUARANTEE
OF
PROMPT
PATENT
AND TRADEMARK OFFICE RESPONSES.—Subject
to the limitations under paragraph (2), if the
issue of an original patent is delayed due to the
failure of the Patent and Trademark Office
to—
‘‘(i) make a notification of the rejec-
tion of any claim for a patent or any objec-
tion or argument under section 132, or
give or mail a written notice of allowance
under section 151, within 14 months after
the date on which the application was filed;
‘‘(ii) respond to a reply under section
132, or to an appeal taken under section
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134, within 4 months after the date on
which the reply was filed or the appeal was
taken;
‘‘(iii) act on an application within 4
months after the date of a decision by the
Board of Patent Appeals and Interferences
under section 134 or 135 or a decision by
a Federal court under section 141, 145, or
146 in a case in which allowable claims re-
main in the application; or
‘‘(iv) issue a patent within 4 months
after the date on which the issue fee was
paid under section 151 and all outstanding
requirements were satisfied,
the term of the patent shall be extended one
day for each day after the end of the period
specified in clause (i), (ii), (iii), or (iv), as the
case may be, until the action described in such
clause is taken.
‘‘(B) GUARANTEE OF NO MORE THAN 3-
YEAR APPLICATION PENDENCY.—Subject to the
limitations under paragraph (2), if the issue of
an original patent is delayed due to the failure
of the Patent and Trademark Office to issue a
patent within 3 years after the actual filing
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date of the application in the United States, not
including—
‘‘(i) any time consumed by continued
examination of the application requested
by the applicant under section 132(b);
‘‘(ii) any time consumed by a pro-
ceeding under section 135(a), any time
consumed by the imposition of an order
pursuant to section 181, or any time con-
sumed by appellate review by the Board of
Patent Appeals and Interferences or by a
Federal court; or
‘‘(iii) any delay in the processing of
the application by the Patent and Trade-
mark Office requested by the applicant ex-
cept as permitted by paragraph (3)(C),
the term of the patent shall be extended 1 day
for each day after the end of that 3-year period
until the patent is issued.
‘‘(C) GUARANTEE OR ADJUSTMENTS FOR
DELAYS DUE TO INTERFERENCES, SECRECY OR-
DERS, AND
APPEALS.—Subject to the limita-
tions under paragraph (2), if the issue of an
original patent is delayed due to—
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‘‘(i) 
a 
proceeding 
under 
section
135(a);
‘‘(ii) the imposition of an order pursu-
ant to section 181; or
‘‘(iii) appellate review by the Board of
Patent Appeals and Interferences or by a
Federal court in a case in which the patent
was issued pursuant to a decision in the
review reversing an adverse determination
of patentability,
the term of the patent shall be extended one
day for each day of the pendency of the pro-
ceeding, order, or review, as the case may be.
‘‘(2) LIMITATIONS.—
‘‘(A) IN GENERAL.—To the extent that pe-
riods of delay attributable to grounds specified
in paragraph (1) overlap, the period of any ad-
justment granted under this subsection shall
not exceed the actual number of days the
issuance of the patent was delayed.
‘‘(B) DISCLAIMED TERM.—No patent the
term of which has been disclaimed beyond a
specified date may be adjusted under this sec-
tion beyond the expiration date specified in the
disclaimer.
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‘‘(C) REDUCTION OF PERIOD OF ADJUST-
MENT.—
‘‘(i) The period of adjustment of the
term of a patent under paragraph (1) shall
be reduced by a period equal to the period
of time during which the applicant failed
to engage in reasonable efforts to conclude
prosecution of the application.
‘‘(ii) With respect to adjustments to
patent term made under the authority of
paragraph (1)(B), an applicant shall be
deemed to have failed to engage in reason-
able efforts to conclude processing or ex-
amination of an application for the cumu-
lative total of any periods of time in excess
of 3 months that are taken to respond to
a notice from the Office making any rejec-
tion, objection, argument, or other request,
measuring such 3-month period from the
date the notice was given or mailed to the
applicant.
‘‘(iii) The Director shall prescribe reg-
ulations establishing the circumstances
that constitute a failure of an applicant to
engage in reasonable efforts to conclude
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processing or examination of an applica-
tion.
‘‘(3) PROCEDURES FOR PATENT TERM ADJUST-
MENT DETERMINATION.—
‘‘(A) The Director shall prescribe regula-
tions establishing procedures for the application
for and determination of patent term adjust-
ments under this subsection.
‘‘(B) Under the procedures established
under subparagraph (A), the Director shall—
‘‘(i) make a determination of the pe-
riod of any patent term adjustment under
this subsection, and shall transmit a notice
of that determination with the written no-
tice of allowance of the application under
section 151; and
‘‘(ii) provide the applicant one oppor-
tunity to request reconsideration of any
patent term adjustment determination
made by the Director.
‘‘(C) The Director shall reinstate all or
part of the cumulative period of time of an ad-
justment under paragraph (2)(C) if the appli-
cant, prior to the issuance of the patent, makes
a showing that, in spite of all due care, the ap-
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plicant was unable to respond within the 3-
month period, but in no case shall more than 3
additional months for each such response be-
yond the original 3-month period be reinstated.
‘‘(D) The Director shall proceed to grant
the patent after completion of the Director’s de-
termination of a patent term adjustment under
the procedures established under this sub-
section, notwithstanding any appeal taken by
the applicant of such determination.
‘‘(4) APPEAL OF PATENT TERM ADJUSTMENT
DETERMINATION.—
‘‘(A) An applicant dissatisfied with a de-
termination made by the Director under para-
graph (3) shall have remedy by a civil action
against the Director filed in the United States
District Court for the District of Columbia
within 180 days after the grant of the patent.
Chapter 7 of title 5 shall apply to such action.
Any final judgment resulting in a change to the
period of adjustment of the patent term shall be
served on the Director, and the Director shall
thereafter alter the term of the patent to reflect
such change.
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‘‘(B) The determination of a patent term
adjustment under this subsection shall not be
subject to appeal or challenge by a third party
prior to the grant of the patent.’’.
(b) CONFORMING AMENDMENTS.—
(1) Section 282 of title 35, United States Code,
is amended in the fourth paragraph by striking ‘‘156
of this title’’ and inserting ‘‘154(b) or 156 of this
title’’.
(2) Section 1295(a)(4)(C) of title 28, United
States Code, is amended by striking ‘‘145 or 146’’
and inserting ‘‘145, 146, or 154(b)’’.
SEC. 303. CONTINUED EXAMINATION OF PATENT APPLICA-
TIONS.
Section 132 of title 35, United States Code, is
amended—
(1) in the first sentence by striking ‘‘Whenever’’
and inserting ‘‘(a) Whenever’’; and
(2) by adding at the end the following:
‘‘(b) The Director shall prescribe regulations to pro-
vide for the continued examination of applications for pat-
ent at the request of the applicant. The Director may es-
tablish appropriate fees for such continued examination
and shall provide a 50 percent reduction in such fees for
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small entities that qualify for reduced fees under section
41(h)(1) of this title.’’.
SEC. 304. TECHNICAL CLARIFICATION.
Section 156(a) of title 35, United States Code, is
amended in the matter preceding paragraph (1) by insert-
ing ‘‘, which shall include any patent term adjustment
granted under section 154(b),’’ after ‘‘the original expira-
tion date of the patent’’.
SEC. 305. EFFECTIVE DATE.
(a) SECTIONS 302 AND 304.—The amendments made
by sections 302 and 304 shall take effect on the date of
the enactment of this Act and, except for a design patent
application filed under chapter 16 of title 35, United
States Code, shall apply to any application filed on or after
the date of the enactment of this Act.
(b) SECTION 303.—The amendments made by sec-
tion 303 shall take effect 6 months after the date of the
enactment of this Act.
TITLE IV—UNITED STATES PUB-
LICATION OF PATENT APPLI-
CATIONS 
PUBLISHED
ABROAD
SEC. 401. SHORT TITLE.
This title may be referred to as the ‘‘Publication of
Foreign Filed Applications Act’’.
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SEC. 402. PUBLICATION.
(a) 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 any such application 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) UNITED STATES PUBLICATION
OF APPLICA-
TIONS PUBLISHED ABROAD.—
‘‘(1) IN GENERAL.—(A) Subject to paragraph
(2), each application for patent, except applications
for design patents filed under chapter 16 and provi-
sional applications filed under section 111(b), shall
be published, in accordance with procedures deter-
mined by the Director, promptly upon the expiration
of a period of 18 months after the earliest filing date
for which a benefit is sought under this title. At the
request of the applicant, an application may be pub-
lished earlier 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 Director determines.
‘‘(C) Pursuant to this title and notwithstanding
any other provision of law, a determination by the
Director to release or not to release information con-
cerning 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 under section 181 shall not be published.
‘‘(C)(i) If an applicant, upon filing, makes a re-
quest that an application not be published pursuant
to paragraph (1), and states in such request that the
invention disclosed in the application has not been
the subject of an application filed in another coun-
try, or under a multilateral international agreement,
that requires publication of applications 18 months
after filing, the application shall not be published as
provided in paragraph (1).
‘‘(ii) An applicant may rescind a request made
under clause (i) at any time.
‘‘(iii) An applicant who has made a request
under clause (i) but who subsequently files, in a for-
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eign country or under a multilateral international
agreement specified in clause (i), an application di-
rected to the invention disclosed in the application
filed in the Patent and Trademark Office, shall no-
tify the Director of such filing not later than 45
days after the date of the filing of such foreign or
international application. A failure of the applicant
to provide such notice within the prescribed period
shall result in the application being regarded as
abandoned, unless it is shown to the satisfaction of
the Director that the delay in submitting the notice
was unintentional.
‘‘(iv) If a notice is made pursuant to clause
(iii), or the applicant rescinds a request pursuant to
clause (ii), the Director shall publish the application
on or as soon as is practical after the date that is
specified in clause (i).
‘‘(v) If an applicant has filed applications in
one or more foreign countries, directly or through a
multilateral international agreement, and such for-
eign filed applications corresponding to an applica-
tion filed in the Patent and Trademark Office or the
description of the invention in such foreign filed ap-
plications is less extensive than the application or
description of the invention in the application filed
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in the Patent and Trademark Office, the applicant
may submit a redacted copy of the application filed
in the Patent and Trademark Office eliminating any
part or description of the invention in such applica-
tion that is not also contained in any of the cor-
responding applications filed in a foreign country.
The Director may only publish the redacted copy of
the application unless the redacted copy of the appli-
cation is not received within 16 months after the
earliest effective filing date for which a benefit is
sought under this title. The provisions of section
154(d) shall not apply to a claim if the description
of the invention published in the redacted applica-
tion filed under this clause with respect to the claim
does not enable a person skilled in the art to make
and use the subject matter of the claim.
‘‘(c) PROTEST AND PRE-ISSUANCE OPPOSITION.—
The Director shall establish appropriate procedures to en-
sure that no protest or other form of pre-issuance opposi-
tion to the grant of a patent on an application may be
initiated after publication of the application without the
express written consent of the applicant.’’.
(b) STUDY BY GAO.—
(1) IN GENERAL.—The Comptroller General of
the United States shall conduct a study of appli-
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cants for patents who file only in the United States
during the 3-year period beginning on the effective
date of this title.
(2) CONTENTS.—The study conducted under
paragraph (1) shall—
(A) consider the number of such applicants
for patent in relation to the number of appli-
cants who file in the United States and outside
the United States;
(B) examine how many domestic-only filers
request at the time of filing not to be published;
(C) examine how many such filers rescind
that request or later choose to file abroad; and
(D) examine the manner of entity seeking
an application and any correlation that may
exist between such manner and publication of
patent applications.
(3) REPORT TO JUDICIARY COMMITTEES.—The
Comptroller General shall submit to the Committees
on the Judiciary of the House of Representatives
and the Senate the results of the study conducted
under this subsection.
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SEC. 403. 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
pendency of the application as required by the Director.
‘‘(2) The Director may consider the failure of the ap-
plicant to file a timely claim for priority as a waiver of
any such claim. The Director may establish procedures,
including the payment of a surcharge, to accept an unin-
tentionally delayed claim under this section.
‘‘(3) The Director may require a certified copy of the
original foreign application, specification, and drawings
upon which it is based, a translation if not in the English
language, and such other information as the Director con-
siders necessary. Any such certification shall be made by
the foreign intellectual property authority in which the for-
eign application was filed and show the date of the appli-
cation and of the filing of the specification and other pa-
pers.’’.
(b) IN THE UNITED STATES.—Section 120 of title
35, United States Code, is amended by adding at the end
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the following: ‘‘The Director may determine the time pe-
riod during the pendency of the application within which
an amendment containing the specific reference to the ear-
lier filed application is submitted. The Director may con-
sider the failure to submit such an amendment within that
time period as a waiver of any benefit under this section.
The Director may establish procedures, including the pay-
ment of a surcharge, to accept unintentionally late submis-
sions of amendments under this section.’’.
SEC. 404. 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), or in the case of an international
application filed under the treaty defined in section
351(a) designating the United States under Article
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21(2)(a) of such treaty, the date of publication of
the application, and ending on the date the patent
is issued—
‘‘(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
‘‘(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 in a case in which the
right arising under this paragraph is based
upon an international application designating
the United States that is published in a lan-
guage other than English, a translation of the
international application into the English lan-
guage.
‘‘(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