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paragraph (1) overlap, the period of any extension
granted under this subsection shall not exceed the
actual number of days the issuance of the patent
was delayed.
‘‘(B) The period of extension of the term of a
patent under this subsection shall be reduced by a
period equal to the time in which the applicant failed
to engage in reasonable efforts to conclude prosecu-
tion of the application. The Commissioner shall pre-
scribe regulations establishing the circumstances
that constitute a failure of an applicant to engage in
reasonable efforts to conclude processing or exam-
ination of an application.
‘‘(C) No patent whose term has been disclaimed
beyond a specified date may be extended under this
section beyond the expiration date specified in the
disclaimer.
‘‘(3) PROCEDURES.—The Commissioner shall
prescribe regulations establishing procedures for the
notification of patent term extensions under this
subsection and procedures for contesting patent
term extensions under this subsection.’’.
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SEC. 209. EXAMINING PROCEDURE IMPROVEMENTS; FUR-
THER LIMITED REEXAMINATION OF PATENT
APPLICATIONS.
The Commissioner shall prescribe regulations to pro-
vide for the further limited reexamination of an applica-
tion for patent. The Commissioner may establish appro-
priate fees for such further limited reexamination and
shall be authorized to provide a 50 percent reduction on
such fees for small entities that qualify for reduced fees
under section 41(h)(1).
SEC. 210. LAST DAY OF PENDENCY OF PROVISIONAL APPLI-
CATION.
Section 119(e) of title 35, United States Code, is
amended by adding at the end the following:
‘‘(3) If the day that is 12 months after the filing date
of a provisional application falls on a Saturday, Sunday,
or legal holiday as defined in rule 6(a) of the Federal
Rules of Civil Procedure, the period of pendency of the
provisional application shall be extended to the next suc-
ceeding business day.’’.
SEC. 211. REPORTING REQUIREMENT.
The Commissioner shall report to Congress not later
than April 1, 2000, and each subsequent April 1 there-
after regarding the impact of publication on the applica-
tions filed by an applicant who has been accorded the sta-
tus of independent inventor under section 41(h) of this
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title. The report shall include information concerning the
frequency and number of initial and continuing patent ap-
plications, pendency, interferences, reexaminations, rejec-
tion, abandonment rates, fees, other expenses, and such
other relevant information related to the prosecution of
patent applications.
SEC. 212. EFFECTIVE DATE.
(a) SECTIONS 202 THROUGH 207.—Sections 202
through 207, and the amendments made by such sections,
shall take effect on April 1, 1997, and shall apply to all
applications filed under section 111 of title 35, United
States Code, on or after that date, and all applications
complying with section 371 of title 35, United States
Code, that resulted from international applications filed
on or after that date. The amendment made by section
204 shall also apply to international applications designat-
ing the United States that are filed on or after April 1,
1997.
(b) SECTIONS 208 THROUGH 210.—The amend-
ments made by sections 208 through 210 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 June 8, 1995, .
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TITLE III—PRIOR DOMESTIC
COMMERCIAL USE
SEC. 301. SHORT TITLE.
This title may be cited as the ‘‘Prior Domestic Com-
mercial Use Act of 1996’’.
SEC. 302. DEFENSE TO PATENT INFRINGEMENT BASED ON
PRIOR DOMESTIC COMMERCIAL USE.
(a) DEFENSE.—Chapter 28 of title 35, United States
Code, is amended by adding at the end the following new
section:
‘‘§ 273. Prior domestic commercial use; defense to in-
fringement
‘‘(a) DEFINITIONS.—For purposes of this section—
‘‘(1) the terms ‘commercially used’, ‘commer-
cially use’, and ‘commercial use’ mean the use in the
United States in commerce or the use in the design,
testing, or production in the United States of a
product or service which is used in commerce,
whether or not the subject matter at issue is acces-
sible to or otherwise known to the public;
‘‘(2) the terms ‘used in commerce’, and ‘use in
commerce’ mean that there has been an actual sale
or other commercial transfer of the subject matter
at issue or that there has been an actual sale or
other commercial transfer of a product or service re-
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sulting from the use of the subject matter at issue;
and
‘‘(3) 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
the subject matter at issue is entitled under section
119, 120, or 365 of this title.
‘‘(b) DEFENSE TO INFRINGEMENT.—(1) A person
shall not be liable as an infringer under section 271 of
this title with respect to any subject matter that would
otherwise infringe one or more claims in the patent being
asserted against such person, if such person had, acting
in good faith, commercially used the subject matter before
the effective filing date of such patent.
‘‘(2) The sale or other disposition of the subject mat-
ter of a patent by a person entitled to assert a defense
under this section with respect to that subject matter shall
exhaust the patent owner’s rights under the patent to the
extent such rights would have been exhausted had such
sale or other disposition been made by the patent owner.
‘‘(c) LIMITATIONS
AND QUALIFICATIONS
OF DE-
FENSE.—The defense to infringement under this section
is subject to the following:
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‘‘(1) DERIVATION.—A person may not assert
the defense under this section if the subject matter
on which the defense is based was derived from the
patentee or persons in privity with the patentee.
‘‘(2) NOT A GENERAL LICENSE.—The defense
asserted by a person under this section is not a gen-
eral license under all claims of the patent at issue,
but extends only to the subject matter claimed in the
patent with respect 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 im-
provements in the claimed subject matter that do
not infringe additional specifically claimed subject
matter of the patent.
‘‘(3) EFFECTIVE
AND
SERIOUS
PREPARA-
TION.—With respect to subject matter that cannot
be commercialized without a significant investment
of time, money, and effort, a person shall be deemed
to have commercially used the subject matter if—
‘‘(A) before the effective filing date of the
patent, the person reduced the subject matter
to practice in the United States, completed a
significant portion of the total investment nec-
essary to commercially use the subject matter,
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and made a commercial transaction in the Unit-
ed States in connection with the preparation to
use the subject matter, and
‘‘(B) thereafter the person diligently com-
pleted the remainder of the activities and in-
vestments necessary to commercially use the
subject matter, and promptly began commercial
use of the subject matter, even if such activities
were conducted after the effective filing date of
the patent.
‘‘(4) BURDEN OF PROOF.—A person asserting
the defense under this section shall have the burden
of establishing the defense.
‘‘(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
subsection (b) with respect to actions taken after the
date of such abandonment.
‘‘(6) PERSONAL DEFENSE.—The defense under
this section may only be asserted 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 in
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connection with the good faith assignment or trans-
fer of the entire enterprise or line of business to
which the defense relates.
‘‘(7) ONE-YEAR
LIMITATION.—A person may
not assert a defense under this section unless the
subject matter on which the defense is based had
been commercially used or reduced to practice more
than one year prior to the effective filing date of the
patent by the person asserting the defense or some-
one in privity with that person.
‘‘(d) UNSUCCESSFUL ASSERTION OF DEFENSE.—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 de-
fense, the court shall find the case exceptional for the pur-
pose of awarding attorney’s fees under section 285 of this
title.
‘‘(e) INVALIDITY.—A patent shall not be deemed to
be invalid under section 102 or 103 of this title solely be-
cause a defense is established 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 follow-
ing new item:
‘‘Sec. 273. Prior domestic commercial use; defense to infringement.’’.
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SEC. 303. 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 enactment or with respect to
any subject matter for which an adjudication of infringe-
ment, including a consent judgment, has been made before
such date of enactment.
TITLE IV—INVENTOR
PROTECTION
SEC. 401. SHORT TITLE.
This title may be cited as the ‘‘Inventor Protection
Act of 1996’’.
SEC. 402. INVENTION DEVELOPMENT SERVICES.
Part I of title 35, United States Code, is amended
by adding after chapter 4 the following new chapter:
‘‘CHAPTER 5—INVENTION DEVELOPMENT
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 developer.
‘‘59. Rule of construction.
‘‘§ 51. Definitions
‘‘For purposes of this chapter—
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‘‘(1) the term ‘contract for invention develop-
ment services’ means a contract by which an inven-
tion developer undertakes invention development
services for a customer;
‘‘(2) the term ‘customer’ means any person,
firm, partnership, corporation, or other entity who is
solicited by, seeks the services of, or enters into a
contract with an invention promoter for invention
promotion services;
‘‘(3) the term ‘invention promoter’ means any
person, firm, partnership, corporation, or other en-
tity who offers to perform or performs for, or on be-
half of, a customer any act described under para-
graph (4), but does not include—
‘‘(A) any department or agency of the Fed-
eral, State, or local government;
‘‘(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; or
‘‘(C) any person duly registered and in
good standing before the Patent and Trade-
mark Office acting within the scope of that per-
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son’s registration to practice before the Patent
and Trademark Office; and
‘‘(4) the term ‘invention development services’
means, with respect to an invention by a customer,
any act involved in—
‘‘(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, licensing, sell-
ing, or promoting the invention or a product or
service in which the invention is incorporated or
used. The mere display of an invention at a
trade show or exhibit is not considered an in-
vention promotion service.
‘‘§ 52. Contracting requirements
‘‘(a) IN GENERAL.—(1) Every contract for invention
development services shall be in writing and shall be sub-
ject to the provisions of this chapter. A copy of the signed
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written 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, such party shall be considered a customer
for the purposes of this chapter.
‘‘(b) REQUIREMENTS OF INVENTION DEVELOPER.—
The invention developer shall—
‘‘(1) state in a written document, at the time
a customer enters into a contract for invention de-
velopment services, whether the usual business prac-
tice of the invention developer 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 devel-
oper, including—
‘‘(A) the usual business terms of contracts;
and
‘‘(B) the approximate amount of the usual
fees or other consideration that may be required
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from the customer for each of the services pro-
vided by the developer.
‘‘(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 development services by sending a writ-
ten letter to the invention developer stating the customer’s
intent 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 customer or the invention developer executes the con-
tract, whichever is later.
‘‘(2) Delivery of a promissory note, check, bill of ex-
change, or negotiable instrument of any kind to the inven-
tion developer or to a third party for the benefit of the
invention developer, without regard to the date or dates
appearing in such instrument, shall be deemed payment
received by the invention developer on the date received
for the purpose of this section.
‘‘§ 53. Standard provisions for cover notice
‘‘(a) CONTENTS.—Every contract for invention devel-
opment 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:
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‘‘ ‘YOU HAVE THE RIGHT TO TERMI-
NATE THIS CONTRACT. TO TERMINATE
THIS CONTRACT, YOU MUST SEND A WRIT-
TEN LETTER TO THE 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, WHICHEVER IS LATER.
‘‘ ‘THE TOTAL NUMBER OF INVENTIONS
EVALUATED BY THE INVENTION DEVEL-
OPER FOR COMMERCIAL POTENTIAL IN
THE PAST FIVE (5) YEARS IS 
. OF
THAT NUMBER, 
RECEIVED POSI-
TIVE EVALUATIONS AND 
RE-
CEIVED NEGATIVE EVALUATIONS.
‘‘ ‘IF YOU ASSIGN EVEN A PARTIAL IN-
TEREST IN THE INVENTION TO THE IN-
VENTION DEVELOPER, THE INVENTION DE-
VELOPER MAY HAVE THE RIGHT TO SELL
OR DISPOSE OF THE INVENTION WITHOUT
YOUR CONSENT AND MAY NOT HAVE TO
SHARE THE PROFITS WITH YOU.
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‘‘ ‘THE TOTAL NUMBER OF CUSTOMERS
WHO HAVE CONTRACTED WITH THE IN-
VENTION DEVELOPER IN THE PAST FIVE
(5) YEARS IS 
. THE TOTAL NUM-
BER OF CUSTOMERS KNOWN BY THIS IN-
VENTION DEVELOPER TO HAVE RECEIVED,
BY VIRTUE OF THIS INVENTION DEVEL-
OPER’S PERFORMANCE, AN AMOUNT OF
MONEY IN EXCESS OF THE AMOUNT PAID
BY THE CUSTOMER TO THIS INVENTION
DEVELOPER IS 
.
‘‘ ‘THE OFFICERS OF THIS INVENTION
DEVELOPER HAVE COLLECTIVELY OR INDI-
VIDUALLY BEEN AFFILIATED IN THE LAST
TEN (10) YEARS WITH THE FOLLOWING IN-
VENTION 
DEVELOPMENT 
COMPANIES:
(LIST THE NAMES AND ADDRESSES OF ALL
PREVIOUS INVENTION DEVELOPMENT COM-
PANIES WITH WHICH THE PRINCIPAL OFFI-
CERS HAVE BEEN AFFILIATED AS OWNERS,
AGENTS, OR EMPLOYEES). YOU ARE EN-
COURAGED TO CHECK WITH THE UNITED
STATES PATENT AND TRADEMARK OFFICE,
THE FEDERAL TRADE COMMISSION, YOUR
STATE ATTORNEY GENERAL’S OFFICE, AND
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THE BETTER BUSINESS BUREAU FOR ANY
COMPLAINTS 
FILED 
AGAINST 
ANY 
OF
THESE COMPANIES.
‘‘ ‘YOU ARE ENCOURAGED TO CONSULT
WITH AN ATTORNEY OF YOUR OWN CHOOS-
ING BEFORE SIGNING THIS CONTRACT. BY
PROCEEDING WITHOUT THE ADVICE OF AN
ATTORNEY REGISTERED TO PRACTICE BE-
FORE THE PATENT AND TRADEMARK OF-
FICE, YOU COULD LOSE ANY RIGHTS YOU
MIGHT HAVE IN YOUR IDEA OR INVEN-
TION.’.
‘‘(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 developer, 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 DEVELOPER 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-
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vention developer, nor with respect to customers who have
defaulted in their payments to the invention developer.
‘‘§ 54. Reports to customer required
‘‘With respect to every contract for invention develop-
ment services, the invention developer 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, or corporation, or other entity to whom the
subject matter of the contract has been disclosed,
the reason for each such disclosure, the nature of
the disclosure, and copies of all responses received as
a result of those disclosures.
‘‘§ 55. Mandatory contract terms
‘‘(a) Each contract for invention development services
shall include in boldface type of not less than 12-point
size—
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‘‘(1) the terms and conditions of payment and
contract termination rights required under section
52;
‘‘(2) a statement that the customer may avoid
entering into the contract by not making a payment
to the invention developer;
‘‘(3) a full, clear, and concise description of the
specific acts or services that the invention developer
undertakes to perform for the customer;
‘‘(4) a statement as to whether the invention
developer 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 developer 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 developer
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 developer (or any agent, employee, offi-
cer, director, partner, or independent contractor of
such invention developer) a statement of that esti-
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mation or projection and a description of the data
upon which such representation is based;
‘‘(7) the name and address of the custodian of
all records and correspondence relating to the con-
tracted for invention development services, and a
statement that the invention developer is required to
maintain all records and correspondence relating to
performance of the invention development 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 development serv-
ices, including an estimated date in which such per-
formance is expected to be completed.
‘‘(b) INVENTION DEVELOPER
AS FIDUCIARY.—To
the extent that the description of the specific acts or serv-
ices affords discretion to the invention developer with re-
spect to what specific acts or services shall be performed,
the invention developer 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
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oper or by any false or fraudulent statement, representa-
tion, or omission of material fact by an invention developer
(or any agent, employee, director, officer, partner, or inde-
pendent contractor of such invention developer) or by fail-
ure of an invention developer to make all the disclosures
required under this chapter, may recover in a civil action
against the invention developer (or the officers, directors,
or partners of such invention developer) in addition to rea-
sonable 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 not to exceed 3 times the amount award-
ed.
‘‘(c) REBUTTABLE PRESUMPTION OF INJURY.—For
the purpose of this section, substantial violation of any
provision of this chapter by an invention developer or exe-
cution by the customer of a contract for invention develop-
ment services in reliance on any false or fraudulent state-
ments, representations, or material omissions shall estab-
lish a rebuttable presumption of injury.
‘‘§ 57. Records of complaints
‘‘(a) RELEASE OF COMPLAINTS.—The Commissioner
shall make all complaints received by the Patent and
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Trademark Office involving invention developers publicly
available, together with any response of the invention de-
velopers.
‘‘(b) REQUEST
FOR COMPLAINTS.—The Commis-
sioner may request complaints relating to invention devel-
opment services from any Federal or State agency and in-
clude such complaints in the records maintained under
subsection (a) together with any response of the invention
developers.
‘‘§ 58. Fraudulent representation by an invention de-
veloper
‘‘Whoever, in providing invention development serv-
ices, knowingly provides any false or misleading state-
ment, representation, or omission of material fact to a cus-
tomer or fails to make all the disclosures required under
this chapter, 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. 403. TECHNICAL AND CONFORMING AMENDMENT.
The table of chapters for part I of title 35, United
States Code, is amended by adding after the item relating
to chapter 4 the following:
‘‘5. Invention development services ...........................................
51’’.
SEC. 404. 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 V—PATENT
REEXAMINATION REFORM
SEC. 501. SHORT TITLE.
This title may be cited as the ‘‘Patent Reexamination
Reform Act of 1996’’.
SEC. 502. DEFINITIONS.
Section 100 of title 35, United States Code, is
amended by adding at the end the following new sub-
section:
‘‘(e) The term ‘third-party requester’ means a person
requesting reexamination under section 302 of this title
who is not the patent owner.’’.
SEC. 503. REEXAMINATION PROCEDURES.
(a) REQUEST FOR REEXAMINATION.—Section 302 of
title 35, United States Code, is amended to read as fol-
lows:
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‘‘§ 302. Request for reexamination
‘‘Any person at any time may file a request for reex-
amination by the Office of a patent on the basis of any
prior art cited under the provisions of section 301 of this
title or on the basis of the requirements of section 112
of this title except for the requirement to set forth the
best mode of carrying out the invention. The request must
be in writing, must include the identity of the real party
in interest, and must be accompanied by payment of a re-
examination fee established by the Commissioner of Pat-
ents and Trademarks pursuant to the provisions of section
41 of this title. The request must set forth the pertinency
and manner of applying cited prior art to every claim for
which reexamination is requested or the manner in which
the patent specification or claims fail to comply with the
requirements of section 112 of this title. Unless the re-
questing person is the owner of the patent, the Commis-
sioner promptly shall send a copy of the request to the
owner of record of the patent.’’.
(b) DETERMINATION OF ISSUE BY COMMISSIONER.—
Section 303 of title 35, United States Code, is amended
to read as follows:
‘‘§ 303. Determination of issue by Commissioner
‘‘(a) REEXAMINATION.—Not later than 3 months
after the filing of a request for reexamination under the
provisions of section 302 of this title, the Commissioner
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shall determine whether a substantial new question of pat-
entability affecting any claim of the patent concerned is
raised by the request, with or without consideration of
other patents or printed publications. On the Commis-
sioner’s initiative, and any time, the Commissioner may
determine whether a substantial new question of patent-
ability is raised by patents and publications or by the fail-
ure of the patent specification or claims to comply with
the requirements of section 112 of this title except for the
best mode requirement described in section 302.
‘‘(b) RECORD.—A record of the Commissioner’s de-
termination under subsection (a) shall be placed in the of-
ficial file of the patent, and a copy shall be promptly given
or mailed to the owner of record of the patent and to the
third-party requester, if any.
‘‘(c) FINAL DECISION.—A determination by the
Commissioner pursuant to subsection (a) shall be final
and nonappealable. Upon a determination that no sub-
stantial new question of patentability has been raised, the
Commissioner may refund a portion of the reexamination
fee required under section 302 of this title.’’.
(c) REEXAMINATION ORDER BY COMMISSIONER.—
Section 304 of title 35, United States Code, is amended
to read as follows:
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‘‘§ 304. Reexamination order by Commissioner
‘‘If, in a determination made under the provisions of
section 303(a) of this title, the Commissioner finds that
a substantial new question of patentability affecting a
claim of a patent is raised, the determination shall include
an order for reexamination of the patent for resolution of
the question. The order may be accompanied by the initial
action of the Patent and Trademark Office on the merits
of the reexamination conducted in accordance with section
305 of this title.’’.
(d) CONDUCT OF REEXAMINATION PROCEEDINGS.—
Section 305 of title 35, United States Code, is amended
to read as follows:
‘‘§ 305. Conduct of reexamination proceedings
‘‘(a) IN GENERAL.—Subject to subsection (b), reex-
amination shall be conducted according to the procedures
established for initial examination under the provisions of
sections 132 and 133 of this title. In any reexamination
proceeding under this chapter, the patent owner shall be
permitted to propose any amendment to the patent and
a new claim or claims, except that no proposed amended
or new claim enlarging the scope of the claims of the pat-
ent shall be permitted.
‘‘(b) RESPONSE.—(1) This subsection shall apply to
any reexamination proceeding in which the order for reex-
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amination is based upon a request by a third-party re-
quester.
‘‘(2) With the exception of the reexamination request,
any document filed by either the patent owner or the
third-party requester shall be served on the other party.
‘‘(3) If the patent owner files a response to any Pat-
ent and Trademark Office action on the merits, the third-
party requester shall have 1 opportunity to file written
comments within a reasonable period not less than 1
month after the date of service of the patent owner’s re-
sponse. Written comments provided under this paragraph
shall be limited to issues covered by the Patent and Trade-
mark Office action or the patent owner’s response.
‘‘(c) SPECIAL DISPATCH.—Unless otherwise provided
by the Commissioner for good cause, all reexamination
proceedings under this section, including any appeal to the
Board of Patent Appeals and Interferences, shall be con-
ducted with special dispatch within the Office.’’.
(e) APPEAL.—Section 306 of title 35, United States
Code, is amended to read as follows:
‘‘§ 306. Appeal
‘‘(a) PATENT OWNER.—The patent owner involved in
a reexamination proceeding under this chapter—
‘‘(1) may appeal under the provisions of section
134 of this title, and may appeal under the provi-
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sions of sections 141 through 144 of this title, with
respect to any decision adverse to the patentability
of any original or proposed amended or new claim
of the patent, and
‘‘(2) may be a party to any appeal taken by a
third-party requester pursuant to subsection (b) of
this section.
‘‘(b) THIRD-PARTY REQUESTER.—A third-party re-
quester may—
‘‘(1) appeal under the provisions of section 134
of this title, and may appeal under the provisions of
sections 141 through 144 of this title, with respect
to any final decision favorable to the patentability of
any original or proposed amended or new claim of
the patent, or
‘‘(2) be a party to any appeal taken by the pat-
ent owner, subject to subsection (c) of this section.
‘‘(c) PARTICIPATION AS PARTY.—(1) A third-party
requester who, under the provisions of sections 141
through 144 of this title, files a notice of appeal or who
participates as a party to an appeal by the patent owner
is estopped from asserting at a later time, in any forum,
the invalidity of any claim determined to be patentable on
appeal on any ground which the third-party requester
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raised or could have raised during the reexamination pro-
ceedings.
‘‘(2) A third-party requester is deemed not to have
participated as a party to an appeal by the patent owner
unless, not later than 20 days after the patent owner has
filed notice of appeal, the third-party requester files notice
with the Commissioner electing to participate.’’.
(f) REEXAMINATION PROHIBITED.—(1) Chapter 30
of title 35, United States Code, is amended by adding at
the end the following new section:
‘‘§ 308. Reexamination prohibited
‘‘(a) ORDER FOR REEXAMINATION.—Notwithstand-
ing any provision of this chapter, once an order for reex-
amination of a patent has been issued under section 304
of this title, neither the patent owner nor the third-party
requester, if any, nor privies of either, may file a subse-
quent request for reexamination of the patent until a reex-
amination certificate is issued and published under section
307 of this title, unless authorized by the Commissioner.
‘‘(b) FINAL DECISION.—Once a final decision has
been entered against a party in a civil action arising in
whole or in part under section 1338 of title 28 that the
party has not sustained its burden of proving the invalidity
of any patent claim in suit, then neither that party nor
its privies may thereafter request reexamination of any
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such patent claim on the basis of issues which that party
or its privies raised or could have raised in such civil ac-
tion, and a reexamination requested by that party or its
privies on the basis of such issues may not thereafter be
maintained by the Office, notwithstanding any other provi-
sion of this chapter.’’.
(2) The table of sections for chapter 30 of title 35,
United States Code, is amended by adding at the end the
following:
‘‘308. Reexamination prohibited.’’.
SEC. 504. CONFORMING AMENDMENTS.
(a) BOARD
OF
PATENT
APPEALS
AND
INTER-
FERENCES.—The first sentence of section 7(b) of title 35,
United States Code, is amended to read as follows: ‘‘The
Board of Patent Appeals and Interferences shall, on writ-
ten appeal of an applicant, or a patent owner or a third-
party requester in a reexamination proceeding, review ad-
verse decisions of examiners upon applications for patents
and decisions of examiners in reexamination proceedings,
and shall determine priority and patentability of invention
in interferences declared under section 135(a) of this
title.’’.
(b) PATENT
FEES; PATENT
AND
TRADEMARK
SEARCH SYSTEMS.—Section 41(a)(7) of title 35, United
States Code, is amended to read as follows:
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‘‘(7) On filing each petition for the revival of an
unintentionally abandoned application for a patent,
for the unintentionally delayed payment of the fee
for issuing each patent, or for an unintentionally de-
layed response by the patent owner in a reexamina-
tion proceeding, $1,250, unless the petition is filed
under sections 133 or 151 of this title, in which case
the fee shall be $110.’’.
(c) APPEAL TO THE BOARD OF PATENT APPEALS
AND INTERFERENCES.—Section 134 of title 35, United
States Code, is amended to read as follows:
‘‘§ 134. Appeal to the Board of Patent Appeals and
Interferences
‘‘(a) PATENT APPLICANT.—An applicant for a pat-
ent, any of whose claims has been twice rejected, may ap-
peal from the decision of the primary examiner to the
Board of Patent Appeals and Interferences, having once
paid the fee for such appeal.
‘‘(b) PATENT OWNER.—A patent owner in a reexam-
ination proceeding may appeal from the final rejection of
any claim by the primary examiner to the Board of Patent
Appeals and Interferences, having once paid the fee for
such appeal.
‘‘(c) THIRD-PARTY.—A third-party requester may
appeal to the Board of Patent Appeals and Interferences
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from the final decision of the primary examiner favorable
to the patentability of any original or proposed amended
or new claim of a patent, having once paid the fee for
such appeal.’’.
(d) APPEAL TO COURT OF APPEALS FOR THE FED-
ERAL CIRCUIT.—Section 141 of title 35, United States
Code, is amended by amending the first sentence to read
as follows: ‘‘An applicant, a patent owner, or a third-party
requester, dissatisfied with the final decision in an appeal
to the Board of Patent Appeals and Interferences under
section 134 of this title, may appeal the decision to the
United States Court of Appeals for the Federal Circuit.’’.
(e) PROCEEDINGS ON APPEAL.—Section 143 of title
35, United States Code, is amended by amending the third
sentence to read as follows: ‘‘In ex parte and reexamina-
tion cases, the Commissioner 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.’’.
(f) CIVIL ACTION TO OBTAIN PATENT.—Section 145
of title 35, United States Code, is amended in the first
sentence by inserting ‘‘(a)’’ after ‘‘section 134’’.
SEC. 505. EFFECTIVE DATE.
This title and the amendments made by this title
shall take effect on the date that is 6 months after the
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date of the enactment of this Act and shall apply to all
reexamination requests filed on or after such date.
TITLE VI—MISCELLANEOUS
PATENT PROVISIONS
SEC. 601. 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). If no such request is made, the provi-
sional application shall be regarded as abandoned 12
months after the filing date of such application and
shall not be subject to revival thereafter.’’.
(b) EFFECTIVE DATE.—The amendments made by
subsection (a) apply to a provisional application filed on
or after June 8, 1995.
SEC. 602. INTERNATIONAL APPLICATIONS.
Section 119 of title 35, United States Code, is
amended as follows:
(1) In subsection (a), insert ‘‘or in a foreign
WTO member country’’ after ‘‘or to citizens of the
United States,’’.
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(2) In subsection (b), delete ‘‘patent office of
the foreign country’’ and insert ‘‘foreign intellectual
property authority.’’.
(3) At the end of section 119 add the following
subsection:
‘‘(f) Applications for plant breeder’s rights filed in
a foreign WTO member country (or in a foreign UPOV
Contracting Party) shall have the same effect for the pur-
pose of the right of priority under this section as applica-
tions for patents, subject to the same conditions and re-
quirements of this section as apply to applications for pat-
ents.’’
SEC. 603. PLANT PATENTS.
(a) TUBER PROPAGATED PLANTS.—Section 161 of
title 35, United States Code, is amended by striking ‘‘a
tuber propagated plant or’’.
(b) RIGHTS IN PLANT PATENTS.—The text of section
163 of title 35, United States Code, is amended to read
as follows: ‘‘In the case of a plant patent, the grant to
the patentee, such patentee’s heirs or assigns, shall have
the right to exclude others from asexually reproducing the
plant, and from using, offering for sale, or selling the
plant so reproduced, or any of its parts, throughout the
United States, or from importing the plant so reproduced,
or any parts thereof, into the United States.’’.
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(c) EFFECTIVE DATE.—The amendments by sub-
section (a) shall apply on the date of enactment of this
Act. The amendments made by subsection (b) shall apply
to any plant patent issued on or after the date of enact-
ment of this Act.
Æ