H. R. 2215—144
‘‘(2) may, subject to subsection (c), be a party to any appeal
taken by the patent owner under the provisions of section
134 or sections 141 through 144.’’.
(b) APPEAL
TO
BOARD
OF
PATENT
APPEALS
AND
INTER-
FERENCES.—Section 134(c) of title 35, United States Code, is
amended by striking the last sentence.
(c) APPEAL TO COURT OF APPEALS FOR THE FEDERAL CIRCUIT.—
Section 141 of title 35, United States Code, is amended in the
third sentence by inserting ‘‘, or a third-party requester in an
inter partes reexamination proceeding, who is’’ after ‘‘patent owner’’.
(d) EFFECTIVE DATE.—The amendments made by this section
apply with respect to any reexamination proceeding commenced
on or after the date of enactment of this Act.
Subtitle B—Intellectual Property and High
Technology Technical Amendments
SEC. 13201. SHORT TITLE.
This subtitle may be cited as the ‘‘Intellectual Property and
High Technology Technical Amendments Act of 2002’’.
SEC. 13202. CLARIFICATION OF REEXAMINATION PROCEDURE ACT OF
1999; TECHNICAL AMENDMENTS.
(a) OPTIONAL INTER PARTES REEXAMINATION PROCEDURES.—
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 patent, the’’ and inserting ‘‘The’’.
(2) Section 312 is amended—
(A) in subsection (a), by striking the second sentence;
and
(B) in subsection (b), by striking ‘‘, if any’’.
(3) Section 314(b)(1) is amended—
(A) by striking ‘‘(1) This’’ and all that follows 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 requester nor its privies’’; and
(B) in subsection (b), by striking ‘‘United States Code,’’.
(b) CONFORMING AMENDMENTS.—
(1) APPEAL TO THE BOARD OF PATENT APPEALS AND INTER-
FERENCES.—Subsections (a), (b), and (c) of section 134 of title
35, United States Code, are each amended by striking ‘‘adminis-
trative patent judge’’ each place it appears and inserting ‘‘pri-
mary examiner’’.
(2) PROCEEDING ON APPEAL.—Section 143 of title 35, United
States Code, is amended by amending the third sentence to
H. R. 2215—145
read as follows: ‘‘In an ex parte case or any reexamination
case, the Director shall submit to the court in writing the
grounds for the decision of the Patent and Trademark 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 Director and the parties in the
appeal.’’.
(c) CLERICAL AMENDMENTS.—
(1) Section 4604(a) of the Intellectual Property and Commu-
nications Omnibus Reform Act of 1999, as enacted by section
1000(a)(9) of Public Law 106–113, is amended by striking ‘‘Part
3’’ and inserting ‘‘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 section 4605
(b), (c), and (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 enact-
ment of Public Law 106–113.
SEC. 13203. PATENT AND TRADEMARK EFFICIENCY ACT AMENDMENTS.
(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 inserting ‘‘the Deputy Commissioner,’’ after
‘‘Commissioner,’’.
(2) Section 6(a) of title 35, United States Code, is amended
by inserting ‘‘the Deputy Commissioner,’’ after ‘‘Commissioner,’’.
(b) PUBLIC ADVISORY COMMITTEES.—Section 5 of title 35, United
States Code, is amended—
(1) in subsection (i), by inserting ‘‘, privileged,’’ after ‘‘per-
sonnel’’; and
(2) by adding at the end the following new subsection:
‘‘(j) INAPPLICABILITY OF PATENT PROHIBITION.—Section 4 shall
not apply to voting members of the Advisory 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 designated by the Director,’’.
SEC. 13204. DOMESTIC PUBLICATION OF FOREIGN FILED PATENT
APPLICATIONS ACT OF 1999 AMENDMENTS.
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 inserting ‘‘of’’; and
(2) by striking ‘‘international application’’ the last place
it appears and inserting ‘‘publication’’.
SEC. 13205. DOMESTIC PUBLICATION OF PATENT APPLICATIONS PUB-
LISHED ABROAD.
Subtitle E of title IV of the Intellectual Property and Commu-
nications 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:
H. R. 2215—146
‘‘SEC. 4505. PRIOR ART EFFECT OF PUBLISHED APPLICATIONS.
‘‘Section 102(e) of title 35, United States Code, is amended
to read as follows:
‘‘ ‘(e) the invention was described in (1) an application for patent,
published under section 122(b), by another filed in the United
States before the invention by the applicant for patent or (2) a
patent granted on an application 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
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 application 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 con-
tents 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, sections 4502
through 4504 and 4506 through 4507, and the amendments made
by such sections, shall be effective as of November 29, 2000, and
shall apply only to applications (including international applications
designating the United States) filed on or after that date. The
amendments made by section 4504 shall additionally apply to any
pending application filed before November 29, 2000, if such pending
application is published pursuant to a request of the applicant
under such procedures as may be established by the Director.
Except as otherwise provided in this section, the amendments made
by section 4505 shall be effective as of November 29, 2000 and
shall apply to all patents and all applications for patents pending
on or filed after November 29, 2000. Patents resulting from an
international application filed before November 29, 2000 and
applications published pursuant to section 122(b) or Article 21(2)
of the treaty defined in section 351(a) resulting from an inter-
national application filed before November 29, 2000 shall not be
effective as prior art as of the filing date of the international
application; however, such patents shall be effective as prior art
in accordance with section 102(e) in effect on November 28, 2000.’’.
H. R. 2215—147
SEC. 13206. MISCELLANEOUS CLERICAL AMENDMENTS.
(a) AMENDMENTS
TO TITLE 35.—The following provisions 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 subparagraph (A), by
striking ‘‘, United States Code’’;
(ii) in the first sentence of subparagraph (B)—
(I) by striking ‘‘United States Code,’’; and
(II) by striking ‘‘, United States Code’’;
(iii) in the second sentence of subparagraph (B)—
(I) by striking ‘‘United States Code,’’; and
(II) by striking ‘‘, United States Code.’’ and
inserting a period;
(iv) in the last sentence of subparagraph (B), by
striking ‘‘, United States Code’’; and
(v) in subparagraph (C), by striking ‘‘, United
States Code’’; and
(C) in subsection (c)—
(i) in the subsection caption, by striking ‘‘, UNITED
STATES CODE’’; and
(ii) by striking ‘‘United States Code,’’.
(3) Section 5 is amended in subsections (e) and (g), by
striking ‘‘, United States Code’’ each place it appears.
(4) The table of chapters for part I is amended in the
item relating to chapter 3, by striking ‘‘before’’ and inserting
‘‘Before’’.
(5) The item relating to section 21 in the table of contents
for chapter 2 is amended to read as follows:
‘‘21. Filing date and day for taking action.’’.
(6) The item relating to chapter 12 in the table of chapters
for part II is amended to read as follows:
‘‘12. Examination of Application .....................................................................
131’’.
(7) The item relating to section 116 in the table of contents
for chapter 11 is amended to read as follows:
‘‘116. Inventors.’’.
(8) Section 154(b)(4) is amended by striking ‘‘, United States
Code,’’.
(9) Section 156 is amended—
(A) in subsection (b)(3)(B), by striking ‘‘paragraphs’’
and inserting ‘‘paragraph’’;
(B) in subsection (d)(2)(B)(i), by striking ‘‘below the
office’’ and inserting ‘‘below the Office’’; and
(C) in subsection (g)(6)(B)(iii), by striking ‘‘submittted’’
and inserting ‘‘submitted’’.
(10) The item relating to section 183 in the table of contents
for chapter 17 is amended by striking ‘‘of’’ and inserting ‘‘to’’.
(11) Section 185 is amended by striking the second period
at the end of the section.
(12) Section 201(a) is amended—
H. R. 2215—148
(A) by striking ‘‘United States Code,’’; and
(B) by striking ‘‘5, United States Code.’’ and inserting
‘‘5.’’.
(13) Section 202 is amended—
(A) in subsection (b)(4), by striking ‘‘last paragraph
of section 203(2)’’ and inserting ‘‘section 203(b)’’; and
(B) in subsection (c)—
(i) in paragraph (4), by striking ‘‘rights;’’ and
inserting ‘‘rights,’’; and
(ii) in paragraph (5), by striking ‘‘of the United
States Code’’.
(14) Section 203 is amended—
(A) in paragraph (2)—
(i) by striking ‘‘(2)’’ and inserting ‘‘(b)’’;
(ii) by striking the quotation marks and comma
before ‘‘as appropriate’’; and
(iii) by striking ‘‘paragraphs (a) and (c)’’ and
inserting ‘‘paragraphs (1) and (3) of subsection (a)’’;
and
(B) in the first paragraph—
(i) by striking ‘‘(a)’’, ‘‘(b)’’, ‘‘(c)’’, and ‘‘(d)’’ and
inserting ‘‘(1)’’, ‘‘(2)’’, ‘‘(3)’’, and ‘‘(4)’’, respectively; and
(ii) by striking ‘‘(1.’’ and inserting ‘‘(a)’’.
(15) Section 209 is amended in subsections (d)(2) and (f),
by striking ‘‘of the United States Code’’.
(16) Section 210 is amended—
(A) in subsection (a)—
(i) in paragraph (11), by striking ‘‘5901’’ and
inserting ‘‘5908’’; and
(ii) in paragraph (20) by striking ‘‘178(j)’’ and
inserting ‘‘178j’’; and
(B) in subsection (c)—
(i) by striking ‘‘paragraph 202(c)(4)’’ and inserting
‘‘section 202(c)(4)’’; and
(ii) by striking ‘‘title..’’ and inserting ‘‘title.’’.
(17) The item relating to chapter 29 in the table of chapters
for part III is amended by inserting a comma after ‘‘Patent’’.
(18) The item relating to section 256 in the table of contents
for chapter 25 is amended to read as follows:
‘‘256. Correction of named inventor.’’.
(19) Section 294 is amended—
(A) in subsection (b), by striking ‘‘United States Code,’’;
and
(B) in subsection (c), in the second sentence by striking
‘‘court to’’ and inserting ‘‘court of’’.
(20) Section 371(d) is amended by adding at the end a
period.
(21) Paragraphs (1), (2), and (3) of section 376(a) are each
amended by striking the semicolon and inserting a period.
(b) OTHER AMENDMENTS.—
(1) Section 4732(a) of the Intellectual Property and Commu-
nications Omnibus Reform Act of 1999 is amended—
(A) in paragraph (9)(A)(ii), by inserting ‘‘in subsection
(b),’’ after ‘‘(ii)’’; and
H. R. 2215—149
(B) in paragraph (10)(A), by inserting after ‘‘title 35,
United States Code,’’ the following: ‘‘other than sections
1 through 6 (as amended by chapter 1 of this subtitle),’’.
(2) Section 4802(1) of that Act is amended by inserting
‘‘to’’ before ‘‘citizens’’.
(3) Section 4804 of that Act is amended—
(A) in subsection (b), by striking ‘‘11(a)’’ and inserting
‘‘10(a)’’; and
(B) in subsection (c), by striking ‘‘13’’ and inserting
‘‘12’’.
(4) Section 4402(b)(1) of that Act is amended by striking
‘‘in the fourth paragraph’’.
SEC. 13207. TECHNICAL CORRECTIONS IN TRADEMARK LAW.
(a) AWARD OF DAMAGES.—Section 35(a) of the Act of July 5,
1946 (commonly referred to as the ‘‘Trademark Act of 1946’’) (15
U.S.C. 1117(a)), is amended by striking ‘‘a violation under section
43(a), (c), or (d),’’ and inserting ‘‘a violation under section 43(a)
or (d),’’.
(b) ADDITIONAL TECHNICAL AMENDMENTS.—The Trademark Act
of 1946 is further amended as follows:
(1) Section 1(d)(1) (15 U.S.C. 1051(d)(1)) is amended in
the first sentence by striking ‘‘specifying the date of the
applicant’s first use’’ and all that follows through the end
of the sentence and inserting ‘‘specifying the date of the
applicant’s first use of the mark in commerce and those goods
or services specified in the notice of allowance on or in connec-
tion with which the mark is used in commerce.’’.
(2) Section 1(e) (15 U.S.C. 1051(e)) is amended to read
as follows:
‘‘(e) If the applicant is not domiciled in the United States
the applicant may designate, by a document filed in the United
States Patent and Trademark Office, the name and address of
a person resident in the United States on whom may be served
notices or process in proceedings affecting the mark. Such notices
or process may be served upon the person so designated by leaving
with that person or mailing to that person a copy thereof at the
address specified in the last designation so filed. If the person
so designated cannot be found at the address given in the last
designation, or if the registrant does not designate by a document
filed in the United States Patent and Trademark Office the name
and address of a person resident in the United States on whom
may be served notices or process in proceedings affecting the mark,
such notices or process may be served on the Director.’’.
(3) Section 8(f) (15 U.S.C. 1058(f)) is amended to read
as follows:
‘‘(f) If the registrant is not domiciled in the United States,
the registrant may designate, by a document filed in the United
States Patent and Trademark Office, the name and address of
a person resident in the United States on whom may be served
notices or process in proceedings affecting the mark. Such notices
or process may be served upon the person so designated by leaving
with that person or mailing to that person a copy thereof at the
address specified in the last designation so filed. If the person
so designated cannot be found at the address given in the last
designation, or if the registrant does not designate by a document
filed in the United States Patent and Trademark Office the name
H. R. 2215—150
and address of a person resident in the United States on whom
may be served notices or process in proceedings affecting the mark,
such notices or process may be served on the Director.’’.
(4) Section 9(c) (15 U.S.C. 1059(c)) is amended to read
as follows:
‘‘(c) If the registrant is not domiciled in the United States
the registrant may designate, by a document filed in the United
States Patent and Trademark Office, the name and address of
a person resident in the United States on whom may be served
notices or process in proceedings affecting the mark. Such notices
or process may be served upon the person so designated by leaving
with that person or mailing to that person a copy thereof at the
address specified in the last designation so filed. If the person
so designated cannot be found at the address given in the last
designation, or if the registrant does not designate by a document
filed in the United States Patent and Trademark Office the name
and address of a person resident in the United States on whom
may be served notices or process in proceedings affecting the mark,
such notices or process may be served on the Director.’’.
(5) Subsections (a) and (b) of section 10 (15 U.S.C. 1060(a)
and (b)) are amended to read as follows:
‘‘(a)(1) A registered mark or a mark for which an application
to register has been filed shall be assignable with the good will
of the business in which the mark is used, or with that part
of the good will of the business connected with the use of and
symbolized by the mark. Notwithstanding the preceding sentence,
no application to register a mark under section 1(b) shall be assign-
able prior to the filing of an amendment under section 1(c) to
bring the application into conformity with section 1(a) or the filing
of the verified statement of use under section 1(d), except for an
assignment to a successor to the business of the applicant, or
portion thereof, to which the mark pertains, if that business is
ongoing and existing.
‘‘(2) In any assignment authorized by this section, it shall
not be necessary to include the good will of the business connected
with the use of and symbolized by any other mark used in the
business or by the name or style under which the business is
conducted.
‘‘(3) Assignments shall be by instruments in writing duly
executed. Acknowledgment shall be prima facie evidence of the
execution of an assignment, and when the prescribed information
reporting the assignment is recorded in the United States Patent
and Trademark Office, the record shall be prima facie evidence
of execution.
‘‘(4) An assignment shall be void against any subsequent pur-
chaser for valuable consideration without notice, unless the pre-
scribed information reporting the assignment is recorded in the
United States Patent and Trademark Office within 3 months after
the date of the assignment or prior to the subsequent purchase.
‘‘(5) The United States Patent and Trademark Office shall
maintain a record of information on assignments, in such form
as may be prescribed by the Director.
‘‘(b) An assignee not domiciled in the United States may des-
ignate by a document filed in the United States Patent and Trade-
mark Office the name and address of a person resident in the
United States on whom may be served notices or process in pro-
ceedings affecting the mark. Such notices or process may be served
H. R. 2215—151
upon the person so designated by leaving with that person or
mailing to that person a copy thereof at the address specified
in the last designation so filed. If the person so designated cannot
be found at the address given in the last designation, or if the
assignee does not designate by a document filed in the United
States Patent and Trademark Office the name and address of
a person resident in the United States on whom may be served
notices or process in proceedings affecting the mark, such notices
or process may be served upon the Director.’’.
(6) Section 23(c) (15 U.S.C. 1091(c)) is amended by striking
the second comma after ‘‘numeral’’.
(7) Section 33(b)(8) (15 U.S.C. 1115(b)(8)) is amended by
aligning the text with paragraph (7).
(8) Section 34(d)(1)(A) (15 U.S.C. 1116(d)(1)(A)) is amended
by striking ‘‘section 110’’ and all that follows through ‘‘(36
U.S.C. 380)’’ and inserting ‘‘section 220506 of title 36, United
States Code,’’.
(9) Section 34(d)(1)(B)(ii) (15 U.S.C. 1116(d)(1)(B)(ii)) is
amended by striking ‘‘section 110’’ and all that follows through
‘‘(36 U.S.C. 380)’’ and inserting ‘‘section 220506 of title 36,
United States Code’’.
(10) Section 34(d)(11) is amended by striking ‘‘6621 of the
Internal Revenue Code of 1954’’ and inserting ‘‘6621(a)(2) of
the Internal Revenue Code of 1986’’.
(11) Section 35(b) (15 U.S.C. 1117(b)) is amended—
(A) by striking ‘‘section 110’’ and all that follows
through ‘‘(36 U.S.C. 380)’’ and inserting ‘‘section 220506
of title 36, United States Code,’’; and
(B) by striking ‘‘6621 of the Internal Revenue Code
of 1954’’ and inserting ‘‘6621(a)(2) of the Internal Revenue
Code of 1986’’.
(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. 13208. PATENT AND TRADEMARK FEE 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)’’.
SEC. 13209. COPYRIGHT RELATED CORRECTIONS TO 1999 OMNIBUS
REFORM ACT.
Title I of the Intellectual Property and Communications Omni-
bus Reform Act of 1999, as enacted by section 1000(a)(9) of Public
Law 106–113, is amended as follows:
(1) Section 1007 is amended—
(A) in paragraph (2), by striking ‘‘paragraph (2)’’ and
inserting ‘‘paragraph (2)(A)’’; and
(B) in paragraph (3), by striking ‘‘1005(e)’’ and inserting
‘‘1005(d)’’.
(2) Section 1006(b) is amended by striking ‘‘119(b)(1)(B)(iii)’’
and inserting ‘‘119(b)(1)(B)(ii)’’.
(3)(A) Section 1006(a) is amended—
(i) in paragraph (1), by adding ‘‘and’’ after the semi-
colon;
(ii) by striking paragraph (2); and
(iii) by redesignating paragraph (3) as paragraph (2).
H. R. 2215—152
(B) Section 1011(b)(2)(A) is amended to read as follows:
‘‘(A) in paragraph (1), by striking ‘primary transmission
made by a superstation and embodying a performance or
display of a work’ and inserting ‘performance or display
of a work embodied in a primary transmission made by
a superstation or by the Public Broadcasting Service sat-
ellite feed’;’’.
SEC. 13210. AMENDMENTS TO TITLE 17, UNITED STATES CODE.
Title 17, United States Code, is amended as follows:
(1) Section 119(a)(6) is amended by striking ‘‘of perform-
ance’’ and inserting ‘‘of a performance’’.
(2)(A) The section heading for section 122 is amended by
striking ‘‘rights; secondary’’ and inserting ‘‘rights: Sec-
ondary’’.
(B) The item relating to section 122 in the table of contents
for chapter 1 is amended to read as follows:
‘‘122. Limitations on exclusive rights: Secondary transmissions by satellite carriers
within local markets.’’.
(3)(A) The section heading for section 121 is amended by
striking ‘‘reproduction’’ and inserting ‘‘Reproduction’’.
(B) The item relating to section 121 in the table of contents
for chapter 1 is amended by striking ‘‘reproduction’’ and
inserting ‘‘Reproduction’’.
(4)(A) Section 106 is amended by striking ‘‘107 through
121’’ and inserting ‘‘107 through 122’’.
(B) Section 501(a) is amended by striking ‘‘106 through
121’’ and inserting ‘‘106 through 122’’.
(C) Section 511(a) is amended by striking ‘‘106 through
121’’ and inserting ‘‘106 through 122’’.
(5) Section 101 is amended—
(A) by moving the definition of ‘‘computer program’’
so that it appears after the definition of ‘‘compilation’’;
and
(B) by moving the definition of ‘‘registration’’ so that
it appears after the definition of ‘‘publicly’’.
(6) Section 110(4)(B) is amended in the matter preceding
clause (i) by striking ‘‘conditions;’’ and inserting ‘‘conditions:’’.
(7) Section 118(b)(1) is amended in the second sentence
by striking ‘‘to it’’.
(8) Section 119(b)(1)(A) is amended—
(A) by striking ‘‘transmitted’’ and inserting ‘‘retrans-
mitted’’; and
(B) by striking ‘‘transmissions’’ and inserting ‘‘retrans-
missions’’.
(9) Section 203(a)(2) is amended—
(A) in subparagraph (A)—
(i) by striking ‘‘(A) the’’ and inserting ‘‘(A) The’’;
and
(ii) by striking the semicolon at the end and
inserting a period;
(B) in subparagraph (B)—
(i) by striking ‘‘(B) the’’ and inserting ‘‘(B) The’’;
and
(ii) by striking the semicolon at the end and
inserting a period; and
H. R. 2215—153
(C) in subparagraph (C), by striking ‘‘(C) the’’ and
inserting ‘‘(C) The’’.
(10) Section 304(c)(2) is amended—
(A) in subparagraph (A)—
(i) by striking ‘‘(A) the’’ and inserting ‘‘(A) The’’;
and
(ii) by striking the semicolon at the end and
inserting a period;
(B) in subparagraph (B)—
(i) by striking ‘‘(B) the’’ and inserting ‘‘(B) The’’;
and
(ii) by striking the semicolon at the end and
inserting a period; and
(C) in subparagraph (C), by striking ‘‘(C) the’’ and
inserting ‘‘(C) The’’.
(11) The item relating to section 903 in the table of contents
for chapter 9 is amended by striking ‘‘licensure’’ and inserting
‘‘licensing’’.
SEC. 13211. OTHER COPYRIGHT RELATED TECHNICAL AMENDMENTS.
(a) AMENDMENT TO TITLE 18.—Section 2319(e)(2) of title 18,
United States Code, is amended by striking ‘‘107 through 120’’
and inserting ‘‘107 through 122’’.
(b) STANDARD REFERENCE DATA.—(1) Section 105(f) of Public
Law 94–553 is amended by striking ‘‘section 290(e) of title 15’’
and inserting ‘‘section 6 of the Standard Reference Data Act (15
U.S.C. 290e)’’.
(2) Section 6(a) of the Standard Reference Data Act (15 U.S.C.
290e) is amended by striking ‘‘Notwithstanding’’ and all that follows
through ‘‘United States Code,’’ and inserting ‘‘Notwithstanding the
limitations under section 105 of title 17, United States Code,’’.
Subtitle C—Educational Use Copyright
Exemption
SEC. 13301. EDUCATIONAL USE COPYRIGHT EXEMPTION.
(a) SHORT TITLE.—This subtitle may be cited as the ‘‘Tech-
nology, Education, and Copyright Harmonization Act of 2002’’.
(b) EXEMPTION OF CERTAIN PERFORMANCES AND DISPLAYS FOR
EDUCATIONAL USES.—Section 110 of title 17, United States Code,
is amended—
(1) by striking paragraph (2) and inserting the following:
‘‘(2) except with respect to a work produced or marketed
primarily for performance or display as part of mediated
instructional activities transmitted via digital networks, or a
performance or display that is given by means of a copy or
phonorecord that is not lawfully made and acquired under
this title, and the transmitting government body or accredited
nonprofit educational institution knew or had reason to believe
was not lawfully made and acquired, the performance of a
nondramatic literary or musical work or reasonable and limited
portions of any other work, or display of a work in an amount
comparable to that which is typically displayed in the course
of a live classroom session, by or in the course of a transmission,
if—
H. R. 2215—154
‘‘(A) the performance or display is made by, at the
direction of, or under the actual supervision of an instructor
as an integral part of a class session offered as a regular
part of the systematic mediated instructional activities of
a governmental body or an accredited nonprofit educational
institution;
‘‘(B) the performance or display is directly related and
of material assistance to the teaching content of the trans-
mission;
‘‘(C) the transmission is made solely for, and, to the
extent technologically feasible, the reception of such trans-
mission is limited to—
‘‘(i) students officially enrolled in the course for
which the transmission is made; or
‘‘(ii) officers or employees of governmental bodies
as a part of their official duties or employment; and
‘‘(D) the transmitting body or institution—
‘‘(i) institutes policies regarding copyright, provides
informational materials to faculty, students, and rel-
evant staff members that accurately describe, and pro-
mote compliance with, the laws of the United States
relating to copyright, and provides notice to students
that materials used in connection with the course may
be subject to copyright protection; and
‘‘(ii) in the case of digital transmissions—
‘‘(I) 
applies 
technological 
measures 
that
reasonably prevent—
‘‘(aa) retention of the work in accessible
form by recipients of the transmission from
the transmitting body or institution for longer
than the class session; and
‘‘(bb) unauthorized further dissemination
of the work in accessible form by such recipi-
ents to others; and
‘‘(II) does not engage in conduct that could
reasonably be expected to interfere with techno-
logical measures used by copyright owners to pre-
vent such retention or unauthorized further
dissemination;’’; and
(2) by adding at the end the following:
‘‘In paragraph (2), the term ‘mediated instructional activi-
ties’ with respect to the performance or display of a work
by digital transmission under this section refers to activities
that use such work as an integral part of the class experience,
controlled by or under the actual supervision of the instructor
and analogous to the type of performance or display that would
take place in a live classroom setting. The term does not refer
to activities that use, in 1 or more class sessions of a single
course, such works as textbooks, course packs, or other material
in any media, copies or phonorecords of which are typically
purchased or acquired by the students in higher education
for their independent use and retention or are typically pur-
chased or acquired for elementary and secondary students for
their possession and independent use.
‘‘For purposes of paragraph (2), accreditation—
‘‘(A) with respect to an institution providing post-sec-
ondary education, shall be as determined by a regional
H. R. 2215—155
or national accrediting agency recognized by the Council
on Higher Education Accreditation or the United States
Department of Education; and
‘‘(B) with respect to an institution providing elementary
or secondary education, shall be as recognized by the
applicable state certification or licensing procedures.
‘‘For purposes of paragraph (2), no governmental body or
accredited nonprofit educational institution shall be liable for
infringement by reason of the transient or temporary storage
of material carried out through the automatic technical process
of a digital transmission of the performance or display of that
material as authorized under paragraph (2). No such material
stored on the system or network controlled or operated by
the transmitting body or institution under this paragraph shall
be maintained on such system or network in a manner ordi-
narily accessible to anyone other than anticipated recipients.
No such copy shall be maintained on the system or network
in a manner ordinarily accessible to such anticipated recipients
for a longer period than is reasonably necessary to facilitate
the transmissions for which it was made.’’.
(c) EPHEMERAL RECORDINGS.—
(1) IN GENERAL.—Section 112 of title 17, United States
Code, is amended—
(A) by redesignating subsection (f) as subsection (g); and
(B) by inserting after subsection (e) the following:
‘‘(f)(1) Notwithstanding the provisions of section 106, and with-
out limiting the application of subsection (b), it is not an infringe-
ment of copyright for a governmental body or other nonprofit edu-
cational institution entitled under section 110(2) to transmit a
performance or display to make copies or phonorecords of a work
that is in digital form and, solely to the extent permitted in para-
graph (2), of a work that is in analog form, embodying the perform-
ance or display to be used for making transmissions authorized
under section 110(2), if—
‘‘(A) such copies or phonorecords are retained and used
solely by the body or institution that made them, and no
further copies or phonorecords are reproduced from them,
except as authorized under section 110(2); and
‘‘(B) such copies or phonorecords are used solely for trans-
missions authorized under section 110(2).
‘‘(2) This subsection does not authorize the conversion of print
or other analog versions of works into digital formats, except that
such conversion is permitted hereunder, only with respect to the
amount of such works authorized to be performed or displayed
under section 110(2), if—
‘‘(A) no digital version of the work is available to the
institution; or
‘‘(B) the digital version of the work that is available to
the institution is subject to technological protection measures
that prevent its use for section 110(2).’’.
(2) TECHNICAL
AND
CONFORMING
AMENDMENT.—Section
802(c) of title 17, United States Code, is amended in the third
sentence by striking ‘‘section 112(f)’’ and inserting ‘‘section
112(g)’’.
(d) PATENT AND TRADEMARK OFFICE REPORT.—
(1) IN GENERAL.—Not later than 180 days after the date
of enactment of this Act and after a period for public comment,
H. R. 2215—156
the Undersecretary of Commerce for Intellectual Property, after
consultation with the Register of Copyrights, shall submit to
the Committees on the Judiciary of the Senate and the House
of Representatives a report describing technological protection
systems that have been implemented, are available for
implementation, or are proposed to be developed to protect
digitized 
copyrighted 
works 
and 
prevent 
infringement,
including upgradeable and self-repairing systems, and systems
that have been developed, are being developed, or are proposed
to be developed in private voluntary industry-led entities
through an open broad based consensus process. The report
submitted to the Committees shall not include any rec-
ommendations, comparisons, or comparative assessments of any
commercially available products that may be mentioned in the
report.
(2) LIMITATIONS.—The report under this subsection—
(A) is intended solely to provide information to Con-
gress; and
(B) shall not be construed to affect in any way, either
directly or by implication, any provision of title 17, United
States Code, including the requirements of clause (ii) of
section 110(2)(D) of that title (as added by this subtitle),
or the interpretation or application of such provisions,
including evaluation of the compliance with that clause
by any governmental body or nonprofit educational institu-
tion.
Subtitle D—Madrid Protocol
Implementation
SEC. 13401. SHORT TITLE.
This subtitle may be cited as the ‘‘Madrid Protocol Implementa-
tion Act’’.
SEC. 13402. PROVISIONS TO IMPLEMENT THE PROTOCOL RELATING
TO THE MADRID AGREEMENT CONCERNING THE INTER-
NATIONAL REGISTRATION OF MARKS.
The Act entitled ‘‘An Act to provide for the registration and
protection of trademarks used in commerce, to carry out the provi-
sions of certain international conventions, and for other purposes’’,
approved July 5, 1946, as amended (15 U.S.C. 1051 and following)
(commonly referred to as the ‘‘Trademark Act of 1946’’) is amended
by adding after section 51 the following:
‘‘TITLE XII—THE MADRID PROTOCOL
‘‘SEC. 60. DEFINITIONS.
‘‘In this title:
‘‘(1) BASIC
APPLICATION.—The term ‘basic application’
means the application for the registration of a mark that has
been filed with an Office of a Contracting Party and that
constitutes the basis for an application for the international
registration of that mark.
‘‘(2) BASIC
REGISTRATION.—The term ‘basic registration’
means the registration of a mark that has been granted by
an Office of a Contracting Party and that constitutes the basis
H. R. 2215—157
for an application for the international registration of that
mark.
‘‘(3) CONTRACTING
PARTY.—The term ‘Contracting Party’
means any country or inter-governmental organization that
is a party to the Madrid Protocol.
‘‘(4) DATE OF RECORDAL.—The term ‘date of recordal’ means
the date on which a request for extension of protection, filed
after an international registration is granted, is recorded on
the International Register.
‘‘(5) DECLARATION OF BONA FIDE INTENTION TO USE THE
MARK
IN
COMMERCE.—The term ‘declaration of bona fide
intention to use the mark in commerce’ means a declaration
that is signed by the applicant for, or holder of, an international
registration who is seeking extension of protection of a mark
to the United States and that contains a statement that—
‘‘(A) the applicant or holder has a bona fide intention
to use the mark in commerce;
‘‘(B) the person making the declaration believes himself
or herself, or the firm, corporation, or association in whose
behalf he or she makes the declaration, to be entitled
to use the mark in commerce; and
‘‘(C) no other person, firm, corporation, or association,
to the best of his or her knowledge and belief, has the
right to use such mark in commerce either in the identical
form of the mark or in such near resemblance to the
mark as to be likely, when used on or in connection with
the goods of such other person, firm, corporation, or associa-
tion, to cause confusion, mistake, or deception.
‘‘(6) EXTENSION OF PROTECTION.—The term ‘extension of
protection’ means the protection resulting from an international
registration that extends to the United States at the request
of the holder of the international registration, in accordance
with the Madrid Protocol.
‘‘(7) HOLDER
OF
AN
INTERNATIONAL
REGISTRATION.—A
‘holder’ of an international registration is the natural or juristic
person in whose name the international registration is recorded
on the International Register.
‘‘(8) INTERNATIONAL APPLICATION.—The term ‘international
application’ means an application for international registration
that is filed under the Madrid Protocol.
‘‘(9) INTERNATIONAL
BUREAU.—The term ‘International
Bureau’ means the International Bureau of the World Intellec-
tual Property Organization.
‘‘(10) INTERNATIONAL REGISTER.—The term ‘International
Register’ means the official collection of data concerning inter-
national registrations maintained by the International Bureau
that the Madrid Protocol or its implementing regulations
require or permit to be recorded.
‘‘(11) INTERNATIONAL
REGISTRATION.—The term ‘inter-
national registration’ means the registration of a mark granted
under the Madrid Protocol.
‘‘(12) INTERNATIONAL REGISTRATION DATE.—The term ‘inter-
national registration date’ means the date assigned to the inter-
national registration by the International Bureau.
H. R. 2215—158
‘‘(13) MADRID
PROTOCOL.—The term ‘Madrid Protocol’
means the Protocol Relating to the Madrid Agreement Con-
cerning the International Registration of Marks, adopted at
Madrid, Spain, on June 27, 1989.
‘‘(14) NOTIFICATION
OF
REFUSAL.—The term ‘notification
of refusal’ means the notice sent by the United States Patent
and Trademark Office to the International Bureau declaring
that an extension of protection cannot be granted.
‘‘(15) OFFICE OF A CONTRACTING PARTY.—The term ‘Office
of a Contracting Party’ means—
‘‘(A) the office, or governmental entity, of a Contracting
Party that is responsible for the registration of marks;
or
‘‘(B) the common office, or governmental entity, of more
than 1 Contracting Party that is responsible for the reg-
istration of marks and is so recognized by the International
Bureau.
‘‘(16) OFFICE OF ORIGIN.—The term ‘office of origin’ means
the Office of a Contracting Party with which a basic application
was filed or by which a basic registration was granted.
‘‘(17) OPPOSITION
PERIOD.—The term ‘opposition period’
means the time allowed for filing an opposition in the United
States Patent and Trademark Office, including any extension
of time granted under section 13.
‘‘SEC. 61. INTERNATIONAL APPLICATIONS BASED ON UNITED STATES
APPLICATIONS OR REGISTRATIONS.
‘‘(a) IN GENERAL.—The owner of a basic application pending
before the United States Patent and Trademark Office, or the
owner of a basic registration granted by the United States Patent
and Trademark Office may file an international application by
submitting to the United States Patent and Trademark Office a
written application in such form, together with such fees, as may
be prescribed by the Director.
‘‘(b) QUALIFIED OWNERS.—A qualified owner, under subsection
(a), shall—
‘‘(1) be a national of the United States;
‘‘(2) be domiciled in the United States; or
‘‘(3) have a real and effective industrial or commercial
establishment in the United States.
‘‘SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLICATION.
‘‘(a) CERTIFICATION PROCEDURE.—Upon the filing of an applica-
tion for international registration and payment of the prescribed
fees, the Director shall examine the international application for
the purpose of certifying that the information contained in the
international application corresponds to the information contained
in the basic application or basic registration at the time of the
certification.
‘‘(b) TRANSMITTAL.—Upon examination and certification of the
international application, the Director shall transmit the inter-
national application to the International Bureau.
‘‘SEC. 63. RESTRICTION, ABANDONMENT, CANCELLATION, OR EXPIRA-
TION OF A BASIC APPLICATION OR BASIC REGISTRATION.
‘‘With respect to an international application transmitted to
the International Bureau under section 62, the Director shall notify
the International Bureau whenever the basic application or basic
H. R. 2215—159
registration which is the basis for the international application
has been restricted, abandoned, or canceled, or has expired, with
respect to some or all of the goods and services listed in the
international registration—
‘‘(1) within 5 years after the international registration date;
or
‘‘(2) more than 5 years after the international registration
date if the restriction, abandonment, or cancellation of the
basic application or basic registration resulted from an action
that began before the end of that 5-year period.
‘‘SEC. 64. REQUEST FOR EXTENSION OF PROTECTION SUBSEQUENT
TO INTERNATIONAL REGISTRATION.
‘‘The holder of an international registration that is based upon
a basic application filed with the United States Patent and Trade-
mark Office or a basic registration granted by the Patent and
Trademark Office may request an extension of protection of its
international registration by filing such a request—
‘‘(1) directly with the International Bureau; or
‘‘(2) with the United States Patent and Trademark Office
for transmittal to the International Bureau, if the request is
in such form, and contains such transmittal fee, as may be
prescribed by the Director.
‘‘SEC. 65. EXTENSION OF PROTECTION OF AN INTERNATIONAL REG-
ISTRATION TO THE UNITED STATES UNDER THE MADRID
PROTOCOL.
‘‘(a) IN GENERAL.—Subject to the provisions of section 68, the
holder of an international registration shall be entitled to the bene-
fits of extension of protection of that international registration
to the United States to the extent necessary to give effect to any
provision of the Madrid Protocol.
‘‘(b) IF THE UNITED STATES IS OFFICE OF ORIGIN.—Where the
United States Patent and Trademark Office is the office of origin
for a trademark application or registration, any international reg-
istration based on such application or registration cannot be used
to obtain the benefits of the Madrid Protocol in the United States.
‘‘SEC. 66. EFFECT OF FILING A REQUEST FOR EXTENSION OF PROTEC-
TION OF AN INTERNATIONAL REGISTRATION TO THE
UNITED STATES.
‘‘(a) REQUIREMENT FOR REQUEST FOR EXTENSION OF PROTEC-
TION.—A request for extension of protection of an international
registration to the United States that the International Bureau
transmits to the United States Patent and Trademark Office shall
be deemed to be properly filed in the United States if such request,
when received by the International Bureau, has attached to it
a declaration of bona fide intention to use the mark in commerce
that is verified by the applicant for, or holder of, the international
registration.
‘‘(b) EFFECT OF PROPER FILING.—Unless extension of protection
is refused under section 68, the proper filing of the request for
extension of protection under subsection (a) shall constitute
constructive use of the mark, conferring the same rights as those
specified in section 7(c), as of the earliest of the following:
‘‘(1) The international registration date, if the request for
extension of protection was filed in the international applica-
tion.
H. R. 2215—160
‘‘(2) The date of recordal of the request for extension of
protection, if the request for extension of protection was made
after the international registration date.
‘‘(3) The date of priority claimed pursuant to section 67.
‘‘SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTENSION OF
PROTECTION TO THE UNITED STATES.
‘‘The holder of an international registration with a request
for an extension of protection to the United States shall be entitled
to claim a date of priority based on a right of priority within
the meaning of Article 4 of the Paris Convention for the Protection
of Industrial Property if—
‘‘(1) the request for extension of protection contains a claim
of priority; and
‘‘(2) the date of international registration or the date of
the recordal of the request for extension of protection to the
United States is not later than 6 months after the date of
the first regular national filing (within the meaning of Article
4(A)(3) of the Paris Convention for the Protection of Industrial
Property) or a subsequent application (within the meaning of
Article 4(C)(4) of the Paris Convention for the Protection of
Industrial Property).
‘‘SEC. 68. EXAMINATION OF AND OPPOSITION TO REQUEST FOR EXTEN-
SION OF PROTECTION; NOTIFICATION OF REFUSAL.
‘‘(a) EXAMINATION AND OPPOSITION.—(1) A request for extension
of protection described in section 66(a) shall be examined as an
application for registration on the Principal Register under this
Act, and if on such examination it appears that the applicant
is entitled to extension of protection under this title, the Director
shall cause the mark to be published in the Official Gazette of
the United States Patent and Trademark Office.
‘‘(2) Subject to the provisions of subsection (c), a request for
extension of protection under this title shall be subject to opposition
under section 13.
‘‘(3) Extension of protection shall not be refused on the ground
that the mark has not been used in commerce.
‘‘(4) Extension of protection shall be refused to any mark not
registrable on the Principal Register.
‘‘(b) NOTIFICATION
OF REFUSAL.—If, a request for extension
of protection is refused under subsection (a), the Director shall
declare in a notification of refusal (as provided in subsection (c))
that the extension of protection cannot be granted, together with
a statement of all grounds on which the refusal was based.
‘‘(c) NOTICE TO INTERNATIONAL BUREAU.—(1) Within 18 months
after the date on which the International Bureau transmits to
the Patent and Trademark Office a notification of a request for
extension of protection, the Director shall transmit to the Inter-
national Bureau any of the following that applies to such request:
‘‘(A) A notification of refusal based on an examination
of the request for extension of protection.
‘‘(B) A notification of refusal based on the filing of an
opposition to the request.
‘‘(C) A notification of the possibility that an opposition
to the request may be filed after the end of that 18-month
period.
‘‘(2) If the Director has sent a notification of the possibility
of opposition under paragraph (1)(C), the Director shall, if
H. R. 2215—161
applicable, transmit to the International Bureau a notification of
refusal on the basis of the opposition, together with a statement
of all the grounds for the opposition, within 7 months after the
beginning of the opposition period or within 1 month after the
end of the opposition period, whichever is earlier.
‘‘(3) If a notification of refusal of a request for extension of
protection is transmitted under paragraph (1) or (2), no grounds
for refusal of such request other than those set forth in such
notification may be transmitted to the International Bureau by
the Director after the expiration of the time periods set forth in
paragraph (1) or (2), as the case may be.
‘‘(4) If a notification specified in paragraph (1) or (2) is not
sent to the International Bureau within the time period set forth
in such paragraph, with respect to a request for extension of protec-
tion, the request for extension of protection shall not be refused
and the Director shall issue a certificate of extension of protection
pursuant to the request.
‘‘(d) DESIGNATION
OF AGENT
FOR SERVICE
OF PROCESS.—In
responding to a notification of refusal with respect to a mark,
the holder of the international registration of the mark may des-
ignate, by a document filed in the United States Patent and Trade-
mark Office, the name and address of a person residing in the
United States on whom notices or process in proceedings affecting
the mark may be served. Such notices or process may be served
upon the person designated by leaving with that person, or mailing
to that person, a copy thereof at the address specified in the
last designation filed. If the person designated cannot be found
at the address given in the last designation, or if the holder does
not designate by a document filed in the United States Patent
and Trademark Office the name and address of a person residing
in the United States for service of notices or process in proceedings
affecting the mark, the notice or process may be served on the
Director.
‘‘SEC. 69. EFFECT OF EXTENSION OF PROTECTION.
‘‘(a) ISSUANCE OF EXTENSION OF PROTECTION.—Unless a request
for extension of protection is refused under section 68, the Director
shall issue a certificate of extension of protection pursuant to the
request and shall cause notice of such certificate of extension of
protection to be published in the Official Gazette of the United
States Patent and Trademark Office.
‘‘(b) EFFECT OF EXTENSION OF PROTECTION.—From the date
on which a certificate of extension of protection is issued under
subsection (a)—
‘‘(1) such extension of protection shall have the same effect
and validity as a registration on the Principal Register; and
‘‘(2) the holder of the international registration shall have
the same rights and remedies as the owner of a registration
on the Principal Register.
‘‘SEC. 70. DEPENDENCE OF EXTENSION OF PROTECTION TO THE
UNITED STATES ON THE UNDERLYING INTERNATIONAL
REGISTRATION.
‘‘(a) EFFECT OF CANCELLATION OF INTERNATIONAL REGISTRA-
TION.—If the International Bureau notifies the United States Patent
and Trademark Office of the cancellation of an international reg-
istration with respect to some or all of the goods and services
listed in the international registration, the Director shall cancel
H. R. 2215—162
any extension of protection to the United States with respect to
such goods and services as of the date on which the international
registration was canceled.
‘‘(b) EFFECT OF FAILURE TO RENEW INTERNATIONAL REGISTRA-
TION.—If the International Bureau does not renew an international
registration, the corresponding extension of protection to the United
States shall cease to be valid as of the date of the expiration
of the international registration.
‘‘(c) TRANSFORMATION OF AN EXTENSION OF PROTECTION INTO
A UNITED STATES APPLICATION.—The holder of an international
registration canceled in whole or in part by the International
Bureau at the request of the office of origin, under article 6(4)
of the Madrid Protocol, may file an application, under section 1
or 44 of this Act, for the registration of the same mark for any
of the goods and services to which the cancellation applies that
were covered by an extension of protection to the United States
based on that international registration. Such an application shall
be treated as if it had been filed on the international registration
date or the date of recordal of the request for extension of protection
with the International Bureau, whichever date applies, and, if the
extension of protection enjoyed priority under section 67 of this
title, shall enjoy the same priority. Such an application shall be
entitled to the benefits conferred by this subsection only if the
application is filed not later than 3 months after the date on
which the international registration was canceled, in whole or in
part, and only if the application complies with all the requirements
of this Act which apply to any application filed pursuant to section
1 or 44.
‘‘SEC. 71. AFFIDAVITS AND FEES.
‘‘(a) REQUIRED AFFIDAVITS AND FEES.—An extension of protec-
tion for which a certificate of extension of protection has been
issued under section 69 shall remain in force for the term of
the international registration upon which it is based, except that
the extension of protection of any mark shall be canceled by the
Director—
‘‘(1) at the end of the 6-year period beginning on the date
on which the certificate of extension of protection was issued
by the Director, unless within the 1-year period preceding the
expiration of that 6-year period the holder of the international
registration files in the Patent and Trademark Office an affi-
davit under subsection (b) together with a fee prescribed by
the Director; and
‘‘(2) at the end of the 10-year period beginning on the
date on which the certificate of extension of protection was
issued by the Director, and at the end of each 10-year period
thereafter, unless—
‘‘(A) within the 6-month period preceding the expiration
of such 10-year period the holder of the international reg-
istration files in the United States Patent and Trademark
Office an affidavit under subsection (b) together with a
fee prescribed by the Director; or
‘‘(B) within 3 months after the expiration of such 10-
year period, the holder of the international registration
files in the Patent and Trademark Office an affidavit under
subsection (b) together with the fee described in subpara-
graph (A) and the surcharge prescribed by the Director.
H. R. 2215—163
‘‘(b) CONTENTS OF AFFIDAVIT.—The affidavit referred to in sub-
section (a) shall set forth those goods or services recited in the
extension of protection on or in connection with which the mark
is in use in commerce and the holder of the international registra-
tion shall attach to the affidavit a specimen or facsimile showing
the current use of the mark in commerce, or shall set forth that
any nonuse is due to special circumstances which excuse such
nonuse and is not due to any intention to abandon the mark.
Special notice of the requirement for such affidavit shall be attached
to each certificate of extension of protection.
‘‘(c) NOTIFICATION.—The Director shall notify the holder of the
international registration who files 1 of the affidavits of the Direc-
tor’s acceptance or refusal thereof and, in case of a refusal, the
reasons therefor.
‘‘(d) SERVICE OF NOTICE OR PROCESS.—The holder of the inter-
national registration of the mark may designate, by a document
filed in the United States Patent and Trademark Office, the name
and address of a person residing in the United States on whom
notices or process in proceedings affecting the mark may be served.
Such notices or process may be served upon the person so designated
by leaving with that person, or mailing to that person, a copy
thereof at the address specified in the last designation so filed.
If the person designated cannot be found at the address given
in the last designation, or if the holder does not designate by
a document filed in the United States Patent and Trademark Office
the name and address of a person residing in the United States
for service of notices or process in proceedings affecting the mark,
the notice or process may be served on the Director.
‘‘SEC. 72. ASSIGNMENT OF AN EXTENSION OF PROTECTION.
‘‘An extension of protection may be assigned, together with
the goodwill associated with the mark, only to a person who is
a national of, is domiciled in, or has a bona fide and effective
industrial or commercial establishment either in a country that
is a Contracting Party or in a country that is a member of an
intergovernmental organization that is a Contracting Party.
‘‘SEC. 73. INCONTESTABILITY.
‘‘The period of continuous use prescribed under section 15 for
a mark covered by an extension of protection issued under this
title may begin no earlier than the date on which the Director
issues the certificate of the extension of protection under section
69, except as provided in section 74.
‘‘SEC. 74. RIGHTS OF EXTENSION OF PROTECTION.
‘‘When a United States registration and a subsequently issued
certificate of extension of protection to the United States are owned
by the same person, identify the same mark, and list the same
goods or services, the extension of protection shall have the same
rights that accrued to the registration prior to issuance of the
certificate of extension of protection.’’.
SEC. 13403. EFFECTIVE DATE.
This subtitle and the amendments made by this subtitle shall
take effect on the later of—
(1) the date on which the Madrid Protocol (as defined
in section 60 of the Trademark Act of 1946) enters into force
with respect to the United States; or
H. R. 2215—164
(2) the date occurring 1 year after the date of enactment
of this Act.
TITLE IV—ANTITRUST TECHNICAL
CORRECTIONS ACT OF 2002
SEC. 14101. SHORT TITLE.
This title may be cited as the ‘‘Antitrust Technical Corrections
Act of 2002’’.
SEC. 14102. AMENDMENTS.
(a) PANAMA CANAL ACT.—Section 11 of the Panama Canal
Act (37 Stat. 566; 15 U.S.C. 31) is amended by striking the undesig-
nated paragraph that begins ‘‘No vessel permitted’’.
(b) SHERMAN ACT.—Section 3 of the Sherman Act (15 U.S.C.
3) is amended—
(1) by inserting ‘‘(a)’’ after ‘‘SEC. 3.’’; and
(2) by adding at the end the following:
‘‘(b) Every person who shall monopolize, or attempt to monopo-
lize, or combine or conspire with any other person or persons,
to monopolize any part of the trade or commerce in any Territory
of the United States or of the District of Columbia, or between
any such Territory and another, or between any such Territory
or Territories and any State or States or the District of Columbia,
or with foreign nations, or between the District of Columbia, and
any State or States or foreign nations, shall be deemed guilty
of a felony, and, on conviction thereof, shall be punished by fine
not exceeding $10,000,000 if a corporation, or, if any other person,
$350,000, or by imprisonment not exceeding three years, or by
both said punishments, in the discretion of the court.’’.
(c) WILSON TARIFF ACT.—
(1) TECHNICAL
AMENDMENT.—The Wilson Tariff Act (28
Stat. 509; 15 U.S.C. 8 et seq.) is amended—
(A) by striking section 77; and
(B) in section 78—
(i) by striking ‘‘76, and 77’’ and inserting ‘‘and
76’’; and
(ii) by redesignating such section as section 77.
(2) CONFORMING AMENDMENTS TO OTHER LAWS.—
(A) CLAYTON ACT.—Subsection (a) of the 1st section
of the Clayton Act (15 U.S.C. 12(a)) is amended by striking
‘‘seventy-seven’’ and inserting ‘‘seventy-six’’.
(B) FEDERAL TRADE COMMISSION ACT.—Section 4 of the
Federal Trade Commission Act (15 U.S.C. 44) is amended
by striking ‘‘77’’ and inserting ‘‘76’’.
(C) PACKERS
AND
STOCKYARDS
ACT, 1921.—Section
405(a) of the Packers and Stockyards Act, 1921 (7 U.S.C.
225(a)) is amended by striking ‘‘77’’ and inserting ‘‘76’’.
(D) ATOMIC ENERGY ACT OF 1954.—Section 105 of the
Atomic Energy Act of 1954 (42 U.S.C. 2135) is amended
by striking ‘‘seventy-seven’’ and inserting ‘‘seventy-six’’.
(E) DEEP
SEABED
HARD
MINERAL
RESOURCES
ACT.—
Section 103(d)(7) of the Deep Seabed Hard Mineral
Resources Act (30 U.S.C. 1413(d)(7)) is amended by striking
‘‘77’’ and inserting ‘‘76’’.
H. R. 2215—165
(d) CLAYTON ACT.—The first section 27 of the Clayton Act
(15 U.S.C. 27) is redesignated as section 28 and is transferred
so as to appear at the end of such Act.
(e) YEAR 2000 INFORMATION AND READINESS DISCLOSURE ACT.—
Section 5(a)(2) of the Year 2000 Information and Readiness Disclo-
sure Act (Public Law 105–271) is amended by inserting a period
after ‘‘failure’’.
(f) ACT OF MARCH 3, 1913.—The Act of March 3, 1913 (chapter
114, 37 Stat. 731; 15 U.S.C. 30) is repealed.
(g) REPEAL.—Section 116 of the Act of November 19, 2001
is repealed.
SEC. 14103. EFFECTIVE DATE; APPLICATION OF AMENDMENTS.
(a) EFFECTIVE DATE.—Except as provided in subsection (b),
this subtitle and the amendments made by this subtitle shall take
effect on the date of enactment of this Act.
(b) APPLICATION TO CASES.—(1) Section 14102(f) shall apply
to cases pending on or after the date of the enactment of this
Act.
(2) The amendments made by subsections (a), (b), and (c) of
section 14102 shall apply only with respect to cases commenced
on or after the date of enactment of this Act.
Speaker of the House of Representatives.
Vice President of the United States and
President of the Senate.