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 pro-
ceedings, 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 pro-
ceeding shall continue in effect until modified, terminated,
superseded, or revoked by a duly authorized official, by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 discontinuance or modification of any such proceeding
under the same terms and conditions and to the same ex-
tent 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-
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. 644. 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. 645. 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
official to whom a function is transferred under this title
of responsibility for the administration of the function.
SEC. 646. 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.
SEC. 647. 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. 648. 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, 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, 1999, as contained in Public
Law 105–277.
SEC. 649. 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.
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
100
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 thereafter.’’.
(b) TECHNICAL AMENDMENT RELATING TO WEEK-
ENDS AND HOLIDAYS.—Section 119(e) of title 35, United
States code, is amended by adding at the end the fol-
lowing:
‘‘(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 Columbia, the
period of pendency of the provisional application shall be
extended to the next succeeding secular or business day.’’.
(c) 
ELIMINATION
OF
COPENDENCY
REQUIRE-
MENT.—Section 119(e)(2) of title 35, United States Code,
is amended by striking ‘‘and the provisional application
was pending 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 amend-
ments made by subsections (b) and (c) shall have no effect
with respect to any patent which is the subject of litigation
101
in an action commenced before such date of the enact-
ment.
SEC. 702. INTERNATIONAL APPLICATIONS.
Section 119 of title 35, United States Code, is
amended—
(1) in subsection (a)—
(A) by inserting ‘‘in a WTO member coun-
try or’’ after ‘‘patent for the same invention’’;
and
(B) by inserting ‘‘such WTO member
country or’’ after ‘‘first filed in’’;
(2) in subsection (c), by inserting ‘‘WTO mem-
ber country or’’ after ‘‘application in the same’’; and
(3) by adding at the end the following:
‘‘(f) Applications for plant breeder’s rights filed in
a WTO member country (or in a foreign UPOV Con-
tracting 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 patent, 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
meaning given that term in section 2(10) of the
Uruguay Round Agreements Act; and
102
‘‘(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 PAT-
ENT 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
earliest effective filing date of which is prior to September
30, 1996’’.
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 pre-
ceding paragraph 1 to read as follows:
‘‘(a) The Director 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
103
‘‘The Director may supply copies of specifications and
drawings of patents in printed or electronic form’’.
(d) 
MAINTENANCE
OF
COLLECTIONS.—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 Director
shall maintain, for use by the public, paper, microform,
or electronic’’.
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 Director of
the United States Patent and Trademark Office, shall
conduct a study and submit a report to the Congress on
the potential risks to the United States biotechnology in-
dustry relating to biological deposits in support of bio-
technology 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 depos-
its, and the risks posed by the change to 18-month
publication requirements made by this Act;
104
(2) an analysis of comparative legal and regu-
latory regimes; and
(3) any related recommendations.
(c) CONSIDERATION OF REPORT.—In drafting regu-
lations affecting biological deposits (including any modi-
fication of title 37, Code of Federal Regulations, section
1.801 et seq.), the Patent and Trademark Office shall con-
sider 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 con-
ducted under section 135 or section 291, another inventor
involved therein establishes, to the extent permitted in sec-
tion 104, that before such person’s invention thereof the
invention was made by such other inventor and not aban-
doned, suppressed, or concealed, or (2) before such per-
son’s invention thereof, the invention was made in this
country by another inventor who had not abandoned, sup-
pressed, or concealed it. In determining priority of inven-
tion under this subsection, there shall be considered not
only the respective dates of conception and reduction to
practice of the invention, but also the reasonable diligence
105
of one who was first to conceive and last to reduce to prac-
tice, 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 ‘‘sub-
section (f) or (g)’’ and inserting ‘‘one or more of sub-
sections (e), (f), and (g)’’.
(b) EFFECTIVE DATE.—The amendment made by
subsection (a) shall apply to any application for patent
filed on or after the date of the enactment of this Act.
Passed the House of Representatives August 4,
1999.
Attest:
Clerk.