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Union Calendar No. 508
106TH CONGRESS
2D SESSION
H. R. 4870
[Report No. 106–853]
To make technical corrections in patent, copyright, and trademark laws.
IN THE HOUSE OF REPRESENTATIVES
JULY 18, 2000
Mr. COBLE (for himself and Mr. BERMAN) introduced the following bill; which
was referred to the Committee on the Judiciary
SEPTEMBER 14, 2000
Reported with an amendment, committed to the Committee of the Whole
House on the State of the Union, and ordered to be printed
[Strike out all after the enacting clause and insert the part printed in italic]
[For text of introduced bill, see copy of bill as introduced on July 18, 2000]
A BILL
To make technical corrections in patent, copyright, and
trademark laws.
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ‘‘Intellectual Property
Technical Amendments Act of 2000’’.
SEC. 2. OFFICERS AND EMPLOYEES.
(a) RENAMING OF OFFICERS.—(1) Title 35, United
States Code, is amended—
(A) by striking ‘‘Director’’ each place it appears
and inserting ‘‘Commissioner’’; and
(B) by striking ‘‘Director’s’’ each place it ap-
pears and inserting ‘‘Commissioner’s’’.
(2) The Act of July 5, 1946 (commonly referred to as
the ‘‘Trademark Act of 1946’’; 15 U.S.C. 1051 et seq.) is
amended by striking ‘‘Director’’ each place it appears and
inserting ‘‘Commissioner’’.
(3) Title 35, United States Code, is amended by strik-
ing ‘‘Commissioner for Patents’’ each place it appears and
inserting ‘‘Assistant Commissioner for Patents’’.
(4) Title 35, United States Code, is amended by strik-
ing ‘‘Commissioner for Trademarks’’ each place it appears
and inserting ‘‘Assistant Commissioner for Trademarks’’.
(5) Section 5314 of title 5, United States Code, is
amended by striking
‘‘Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent
and Trademark Office.’’
and inserting
‘‘Under Secretary of Commerce for Intellectual
Property and Commissioner of the United States Pat-
ent and Trademark Office.’’
(b) REFERENCES.—Any reference in any other Federal
law, Executive order, rule, regulation, or delegation of au-
thority, or any document of or pertaining to the Patent and
Trademark Office—
(1) to the Director of the United States Patent
and Trademark Office or to the Commissioner of Pat-
ents and Trademarks is deemed to refer to the Under
Secretary of Commerce for Intellectual Property and
Commissioner of the United States Patent and Trade-
mark Office;
(2) to the Commissioner for Patents is deemed to
refer to the Assistant Commissioner for Patents; and
(3) to the Commissioner for Trademarks is
deemed to refer to the Assistant Commissioner for
Trademarks.
SEC. 3. ADJUSTMENT OF TRADEMARK FEES.
Section 4203 of the Intellectual Property and Commu-
nications Omnibus Reform Act of 1999, as enacted by sec-
tion 1000(a)(9) of Public Law 106–113, is amended by
striking ‘‘Director’’ and inserting ‘‘Commissioner’’.
SEC. 4. OPTIONAL INTER PARTES REEXAMINATION PROCE-
DURE ACT OF 1999; TECHNICAL AMEND-
MENTS.
(a) OPTIONAL INTER PARTES REEXAMINATION PRO-
CEDURES.—Title 35, United States Code, is amended as fol-
lows:
(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 last
sentence; and
(B) by striking ‘‘, if any’’.
(3) Section 314(b)(1) is amended—
(A) by striking ‘‘(1) This’’ and all that fol-
lows 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 re-
quester nor its privies’’, and
(B) in subsection (b), by striking ‘‘United
States Code,’’.
(b) CONFORMING AMENDMENTS.—Subsections (a), (b),
and (c) of section 134 of title 35, United States Code, are
each amended by striking ‘‘administrative patent judge’’
each place it appears and inserting ‘‘primary examiner’’.
(c) CLERICAL AMENDMENTS.—
(1) Section 4604(a) of the Intellectual Property
and Communications Omnibus Reform Act of 1999,
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 sec-
tions 4605(c) and 4605(e) of the Intellectual Property and
Communications Omnibus Reform Act, as enacted by sec-
tion 1000(a)(9) of Public Law 106–113, shall apply to any
reexamination filed in the United States Patent and Trade-
mark Office on or after the date of the enactment of Public
Law 106–113.
SEC. 5. PATENT AND TRADEMARK EFFICIENCY ACT AMEND-
MENTS.
(a) DEPUTY DIRECTOR.—
(1) Section 5315 of title 5, United States Code,
is amended by striking ‘‘Deputy Under Secretary of
Commerce for Intellectual Property and Deputy Di-
rector of the United States Patent and Trademark Of-
fice.’’.
(2) 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,’’.
(3) 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 by adding at the
end the following new subsection:
‘‘(j) INAPPLICABILITY OF PATENT PROHIBITION.—Sec-
tion 4 shall not apply to voting members of the Advisory
Committees.’’.
(c) CHIEF FINANCIAL OFFICER.—Section 901(b)(2) of
title 31, United States Code, is amended by adding at the
end the following new subparagraph:
‘‘(I) The United States Patent and Trademark
Office.’’.
(d) 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 Commissioner,’’.
SEC. 6. DOMESTIC PUBLICATION OF FOREIGN FILED PAT-
ENT APPLICATIONS ACT OF 1999 AMEND-
MENTS.
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 Trade-
mark Office receives a copy of the’’ and inserting
‘‘of’’; and
(2) by striking ‘‘international application’’ the
last place it appears and inserting ‘‘publication’’.
SEC. 7. DOMESTIC PUBLICATION OF PATENT APPLICATIONS
PUBLISHED ABROAD.
Subtitle E of title IV of the Intellectual Property and
Communications 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:
‘‘SEC. 4505. PRIOR ART EFFECT OF PUBLISHED APPLICA-
TIONS.
‘‘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 in-
vention by the applicant for patent, except that an inter-
national application filed under the treaty defined in sec-
tion 351(a) shall have the effects for the purposes of this
subsection of an application filed in the United States if
and 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’’;
lished pursuant to a request from the applicant, and the
application claims the benefit of one or more prior-filed ap-
plications under section 119(e), 120, or 365(c) of title 35,
United States Code, then the provisions of section 4505 shall
apply to the prior-filed application in determining the fil-
ing date in the United States of the application.’’.
SEC. 8. MISCELLANEOUS CLERICAL AMENDMENTS.
(a) AMENDMENTS TO TITLE 35.—The following provi-
sions 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 subpara-
graph (A), by striking ‘‘, United States
Code’’;
(ii) in the first sentence of subpara-
graph (B)—
(I) by striking ‘‘United States
Code,’’; and
(II) by striking ‘‘, United States
Code’’;
(iii) in the second sentence of subpara-
graph (B)—
(I) by striking ‘‘United States
Code,’’; and
(II) by striking ‘‘, United States
Code.’’ and inserting a period;
(iv) in the last sentence of subpara-
graph (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 strik-
ing ‘‘, 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 ‘‘be-
fore’’ and inserting ‘‘Before’’.
(5) The item relating to section 21 in the table
of contents for chapter 2 is amended to read as fol-
lows:
‘‘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 fol-
lows:
‘‘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 Of-
fice’’; 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 sec-
ond period at the end of the section.
(12) Section 201(a) is amended—
(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 ‘‘sec-
tion 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 (a)
and (f)(1), 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 fol-
lows:
‘‘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)(A) The item relating to section 374 in the
table of contents for chapter 37 is amended to read as
follows:
‘‘374. Publication of international application.’’.
(B) The amendment made by subparagraph (A)
shall take effect on November 29, 2000.
(21) Section 371(b) is amended by adding at the
end a period.
(22) Section 371(d) is amended by adding at the
end a period.
(23) 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 Communications Omnibus Reform Act of 1999 is
amended—
(A) in paragraph (9)(A)(ii), by inserting
‘‘in subsection (b),’’ after ‘‘(ii)’’; and
(B) in paragraph (10)(A), by inserting
after ‘‘title 35, United States Code,’’ the fol-
lowing: ‘‘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. 9. 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) CLERICAL AMENDMENTS.—The Trademark Act of
1946 is further amended as follows:
(1) Section 1(d)(1) is amended in the first sen-
tence by striking ‘‘specifying the date of the appli-
cant’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 allow-
ance on or in connection with which the mark is used
in commerce.’’.
(2) Section 23(c) is amended by striking the sec-
ond comma after ‘‘numeral’’.
(3) Section 33(b)(8) is amended by aligning the
text with paragraph (7).
(4) Sections 34(d)(11) and 35(b) are each
amended by striking ‘‘of 1954’’ and inserting ‘‘of
1986’’.
Union Calendar No. 508
106TH CONGRESS
2D SESSION
H. R. 4870
[Report No. 106–853]
A BILL
To make technical corrections in patent, copyright,
and trademark laws.
SEPTEMBER 14, 2000
Reported with an amendment, committed to the Com-
mittee of the Whole House on the State of the Union,
and ordered to be printed