I
105TH CONGRESS
1ST SESSION
H. R. 400
To amend title 35, United States Code, with respect to patents, and for
other purposes.
IN THE HOUSE OF REPRESENTATIVES
JANUARY 9, 1997
Mr. COBLE (for himself, Mr. CONYERS, Mr. GOODLATTE, and Ms. LOFGREN)
introduced the following bill; which was referred to the Committee on the
Judiciary
A BILL
To amend title 35, United States Code, with respect to
patents, and for other purposes.
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 ‘‘21st Century Patent
System Improvement Act’’.
SEC. 2. TABLE OF CONTENTS.
Sec. 1. Short title.
Sec. 2. Table of contents.
TITLE I—PATENT AND TRADEMARK OFFICE MODERNIZATION
Sec. 101. Short title.
Subtitle A—United States Patent and Trademark Office
Sec. 111. Establishment of Patent and Trademark Office as a Government cor-
poration.
Sec. 112. Powers and duties.
Sec. 113. Organization and management.
Sec. 114. Management Advisory Board.
Sec. 115. Conforming amendments.
Sec. 116. Trademark Trial and Appeal Board.
Sec. 117. Board of Patent Appeals and Interferences.
Sec. 118. Suits by and against the Office.
Sec. 119. Annual report of Director.
Sec. 120. Suspension or exclusion from practice.
Sec. 121. Funding.
Sec. 122. Transfers.
Subtitle B—Effective Date; Technical Amendments
Sec. 131. Effective date.
Sec. 132. Technical and conforming amendments.
Subtitle C—Miscellaneous Provisions
Sec. 141. References.
Sec. 142. Exercise of authorities.
Sec. 143. Savings provisions.
Sec. 144. Transfer of assets.
Sec. 145. Delegation and assignment.
Sec. 146. Authority of Director of the Office of Management and Budget with
respect to functions transferred.
Sec. 147. Certain vesting of functions considered transfers.
Sec. 148. Availability of existing funds.
Sec. 149. Definitions.
TITLE II—EXAMINING PROCEDURE IMPROVEMENTS: PUBLICA-
TION WITH PROVISIONAL ROYALTIES; TERM EXTENSIONS;
FURTHER EXAMINATION
Sec. 201. Short title.
Sec. 202. Publication.
Sec. 203. Time for claiming benefit of earlier filing date.
Sec. 204. Provisional rights.
Sec. 205. Prior art effect of published applications.
Sec. 206. Cost recovery for publication.
Sec. 207. Conforming changes.
Sec. 208. Patent term extension authority.
Sec. 209. Further examination of patent applications.
Sec. 210. Last day of pendency of provisional application.
Sec. 211. Reporting requirement.
Sec. 212. Effective date.
TITLE III—PROTECTION FOR PRIOR DOMESTIC USERS OF
PATENTED TECHNOLOGIES
Sec. 301. Short title.
Sec. 302. Defense to patent infringement based on prior domestic commercial
use.
Sec. 303. Effective date and applicability.
TITLE IV—ENHANCED PROTECTION OF INVENTORS’ RIGHTS
Sec. 401. Short title.
Sec. 402. Invention development services.
Sec. 403. Technical and conforming amendment.
Sec. 404. Effective date.
TITLE V—IMPROVED REEXAMINATION PROCEDURES
Sec. 501. Short title.
Sec. 502. Definitions.
Sec. 503. Reexamination procedures.
Sec. 504. Conforming amendments.
Sec. 505. Effective date.
TITLE VI—MISCELLANEOUS IMPROVEMENTS
Sec. 601. Provisional applications.
Sec. 602. International applications.
Sec. 603. Plant patents.
Sec. 604. Electronic filing.
Sec. 605. Divisional applications.
TITLE I—PATENT AND TRADE-
MARK 
OFFICE 
MODERNIZA-
TION
SEC. 101. SHORT TITLE.
This title may be cited as the ‘‘Patent and Trade-
mark Office Modernization Act’’.
Subtitle A—United States Patent
and Trademark Office
SEC. 111. ESTABLISHMENT OF PATENT AND TRADEMARK
OFFICE AS A GOVERNMENT CORPORATION.
Section 1 of title 35, United States Code, is amended
to read as follows:
‘‘§ 1. Establishment
‘‘(a) ESTABLISHMENT.—The United States Patent
and Trademark Office is established as a wholly owned
Government corporation subject to chapter 91 of title 31,
separate from any department of the United States, and
shall be an agency of the United States under the policy
direction of the Secretary of Commerce. For purposes of
internal management, the United States Patent and
Trademark Office shall be a corporate body not subject
to direction or supervision by any department of the Unit-
ed States, except as otherwise provided in this title.
‘‘(b) OFFICES.—The United States Patent and
Trademark Office shall maintain its principal office in the
metropolitan Washington, D.C. area, for the service of
process and papers and for the purpose of carrying out
its functions. The United States Patent and Trademark
Office shall be deemed, for purposes of venue in civil ac-
tions, to be a resident of the district in which its principal
office is located, except where jurisdiction is otherwise pro-
vided by law. The United States Patent and Trademark
Office may establish satellite offices in such other places
as it considers necessary and appropriate in the conduct
of its business.
‘‘(c) REFERENCE.—For purposes of this title, the
United States Patent and Trademark Office shall also be
referred to as the ‘Office’ and the ‘Patent and Trademark
Office’.’’.
SEC. 112. POWERS AND DUTIES.
Section 2 of title 35, United States Code, is amended
to read as follows:
‘‘§ 2. Powers and duties
‘‘(a) IN GENERAL.—The United States Patent and
Trademark Office, under the policy direction of the Sec-
retary of Commerce, shall be responsible for—
‘‘(1) the granting and issuing of patents and
the registration of trademarks;
‘‘(2) conducting studies, programs, or ex-
changes of items or services regarding domestic and
international intellectual property law, the adminis-
tration of the Office, or any other function vested in
the Office by law, including programs to recognize,
identify, assess, and forecast the technology of pat-
ented inventions and their utility to industry;
‘‘(3)(A) authorizing or conducting studies and
programs cooperatively with foreign patent and
trademark offices and international organizations, in
connection with intellectual property matters; and
‘‘(B) with the concurrence of the Secretary of
State, authorizing the transfer of not to exceed
$100,000 in any year to the Department of State
for the purpose of making special payments to inter-
national intergovernmental organizations for studies
and programs for advancing international coopera-
tion concerning patents, trademarks, and related
matters; and
‘‘(4) disseminating to the public information
with respect to patents and trademarks.
The special payments under paragraph (3)(B) shall be in
addition to any other payments or contributions to inter-
national organizations described in paragraph (3)(B) and
shall not be subject to any limitations imposed by law on
the amounts of such other payments or contributions by
the United States Government.
‘‘(b) SPECIFIC POWERS.—The Office—
‘‘(1) shall have perpetual succession;
‘‘(2) shall adopt and use a corporate seal, which
shall be judicially noticed and with which letters pat-
ent, certificates of trademark registrations, and pa-
pers issued by the Office shall be authenticated;
‘‘(3) may sue and be sued in its corporate name
and be represented by its own attorneys in all judi-
cial and administrative proceedings, subject to the
provisions of section 7;
‘‘(4) may indemnify the Director, and other of-
ficers, attorneys, agents, and employees (including
members of the Management Advisory Board estab-
lished in section 5) of the Office for liabilities and
‘‘(12) may retain and use all of its revenues
and receipts, including revenues from the sale, lease,
or disposal of any real, personal, or mixed property,
or any interest therein, of the Office, including for
research and development and capital investment,
subject to the provisions of section 10101 of the
Omnibus Budget Reconciliation Act of 1990 (35
U.S.C. 41 note);
‘‘(13) shall have the priority of the United
States with respect to the payment of debts from
bankrupt, insolvent, and decedents’ estates;
‘‘(14) may accept monetary gifts or donations
of services, or of real, personal, or mixed property,
in order to carry out the functions of the Office;
‘‘(15) may execute, in accordance with its by-
laws, rules, and regulations, all instruments nec-
essary and appropriate in the exercise of any of its
powers; and
‘‘(16) may provide for liability insurance and
insurance against any loss in connection with its
property, other assets, or operations either by con-
tract or by self-insurance.
‘‘(c) CONSTRUCTION.—Nothing in this section shall
be construed to nullify, void, cancel, or interrupt any pend-
ing request-for-proposal let or contract issued by the Gen-
eral Services Administration for the specific purpose of re-
locating or leasing space to the United States Patent and
Trademark Office.’’.
SEC. 113. ORGANIZATION AND MANAGEMENT.
Section 3 of title 35, United States Code, is amended
to read as follows:
‘‘§ 3. Officers and employees
‘‘(a) DIRECTOR.—
‘‘(1) IN
GENERAL.—The management of the
United States Patent and Trademark Office shall be
vested in a Director of the United States Patent and
Trademark Office (in this title referred to as the
‘Director’), who shall be a citizen of the United
States and who shall be appointed by the President,
by and with the advice and consent of the Senate.
The Director shall be a person who, by reason of
professional background and experience in patent or
trademark law, is especially qualified to manage the
Office.
‘‘(2) DUTIES.—
‘‘(A) IN GENERAL.—The Director shall be
responsible for the management and direction
of the Office, including the issuance of patents
and the registration of trademarks, and shall
perform these duties in a fair, impartial, and
equitable manner.
‘‘(B) ADVISING THE PRESIDENT.—The Di-
rector shall advise the President, through the
Secretary of Commerce, of all activities of the
Office undertaken in response to obligations of
the United States under treaties and executive
agreements, or which relate to cooperative pro-
grams with those authorities of foreign govern-
ments that are responsible for granting patents
or registering trademarks. The Director shall
also recommend to the President, through the
Secretary of Commerce, changes in law or pol-
icy which may improve the ability of United
States citizens to secure and enforce patent
rights or trademark rights in the United States
or in foreign countries.
‘‘(C) CONSULTING
WITH
THE
MANAGE-
MENT
ADVISORY
BOARD.—The Director shall
consult with the Management Advisory Board
established in section 5 on a regular basis on
matters relating to the operation of the Office,
and shall consult with the Board before submit-
ting budgetary proposals to the Office of Man-
agement and Budget or changing or proposing
to change patent or trademark user fees or pat-
ent or trademark regulations.
‘‘(D) SECURITY CLEARANCES.—The Direc-
tor, in consultation with the Director of the Of-
fice of Personnel Management, shall maintain a
program for identifying national security posi-
tions and providing for appropriate security
clearances.
‘‘(3) TERM.—The Director shall serve a term of
5 years, and may continue to serve after the expira-
tion of the Director’s term until a successor is ap-
pointed and assumes office. The Director may be re-
appointed to subsequent terms.
‘‘(4) OATH.—The Director shall, before taking
office, take an oath to discharge faithfully the duties
of the Office.
‘‘(5) COMPENSATION.—The Director shall re-
ceive compensation at the rate of pay in effect for
level III of the Executive Schedule under section
5314 of title 5 and, in addition, may receive as a
bonus, an amount which would raise the Director’s
total compensation to not more than the equivalent
of the level of the rate of pay in effect for level I
of the Executive Schedule under section 5312 of title
5, based upon an evaluation by the Secretary of
Commerce of the Director’s performance as defined
in an annual performance agreement between the
Director and the Secretary. The annual performance
agreement shall incorporate measurable goals as de-
lineated in an annual performance plan agreed to by
the Director and the Secretary.
‘‘(6) REMOVAL.—The Director may be removed
from office by the President. The President shall
provide notification of any such removal to both
Houses of Congress.
‘‘(7) DESIGNEE OF DIRECTOR.—The Director
shall designate an officer of the Office who shall be
vested with the authority to act in the capacity of
the Director in the event of the absence or incapac-
ity of the Director.
‘‘(b) OFFICERS AND EMPLOYEES OF THE OFFICE.—
‘‘(1) COMMISSIONERS.—The Director shall ap-
point a Commissioner for Patents and a Commis-
sioner for Trademarks for terms that shall expire on
the date on which the Director’s term expires. The
Commissioner for Patents shall be a person with
demonstrated experience in patent law and the Com-
missioner for Trademarks shall be a person with
demonstrated experience in trademark law. The
Commissioner for Patents and the Commissioner for
Trademarks shall be the principal policy and man-
agement advisers to the Director on all aspects of
the activities of the Office that affect the adminis-
tration of patent and trademark operations, respec-
tively.
‘‘(2) OTHER OFFICERS AND EMPLOYEES.—The
Director shall—
‘‘(A) appoint such officers, employees (in-
cluding attorneys), and agents of the Office as
the Director considers necessary to carry out
the functions of the Office; and
‘‘(B) define the authority and duties of
such officers and employees and delegate to
them such of the powers vested in the Office as
the Director may determine.
The Office shall not be subject to any administra-
tively or statutorily imposed limitation on positions
or personnel, and no positions or personnel of the
Office shall be taken into account for purposes of
applying any such limitation.
‘‘(c) CONTINUED APPLICABILITY OF TITLE 5.—Offi-
cers and employees of the Office shall be subject to the
provisions of title 5 relating to Federal employees.
‘‘(d) ADOPTION
OF
EXISTING
LABOR
AGREE-
MENTS.—The Office shall adopt all labor agreements
which are in effect, as of the day before the effective date
of the Patent and Trademark Office Modernization Act,
with respect to such Office (as then in effect).
‘‘(e) CARRYOVER OF PERSONNEL.—
‘‘(1) FROM PTO.—Effective as of the effective
date of the Patent and Trademark Office Mod-
ernization Act, all officers and employees of the Pat-
ent and Trademark Office on the day before such ef-
fective date shall become officers and employees of
the Office, without a break in service.
‘‘(2) OTHER PERSONNEL.—Any individual who,
on the day before the effective date of the Patent
and Trademark Office Modernization Act, is an offi-
cer or employee of the Department of Commerce
(other than an officer or employee under paragraph
(1)) shall be transferred to the Office if—
‘‘(A) such individual serves in a position
for which a major function is the performance
of work reimbursed by the Patent and Trade-
mark Office, as determined by the Secretary of
Commerce;
‘‘(B) such individual serves in a position
that performed work in support of the Patent
and Trademark Office during at least half of
the incumbent’s work time, as determined by
the Secretary of Commerce; or
‘‘(C) such transfer would be in the interest
of the Office, as determined by the Secretary of
Commerce in consultation with the Director.
Any transfer under this paragraph shall be effective
as of the same effective date as referred to in para-
graph (1), and shall be made without a break in
service.
‘‘(3) ACCUMULATED
LEAVE.—The amount of
sick and annual leave and compensatory time accu-
mulated under title 5 before the effective date de-
scribed in paragraph (1), by those becoming officers
or employees of the Office pursuant to this sub-
section, are obligations of the Office.
‘‘(f) TRANSITION PROVISIONS.—
‘‘(1) INTERIM APPOINTMENT OF DIRECTOR.—
On or after the effective date of the Patent and
Trademark Office Modernization Act, the President
shall appoint an individual to serve as the Director
until the date on which a Director qualifies under
subsection (a). The President shall not make more
than one such appointment under this subsection.
‘‘(2) CONTINUATION
IN
OFFICE
OF
CERTAIN
OFFICERS.—(A) The individual serving as the As-
sistant Commissioner for Patents on the day before
the effective date of the Patent and Trademark Of-
fice Modernization Act may serve as the Commis-
sioner for Patents until the date on which a Com-
missioner for Patents is appointed under subsection
(b).
‘‘(B) The individual serving as the Assistant
Commissioner for Trademarks on the day before the
effective date of the Patent and Trademark Office
Modernization Act may serve as the Commissioner
for Trademarks until the date on which a Commis-
sioner for Trademarks is appointed under subsection
(b).’’.
SEC. 114. MANAGEMENT ADVISORY BOARD.
Chapter 1 of part I of title 35, United States Code,
is amended by inserting after section 4 the following:
‘‘§ 5. Patent and Trademark Office Management Advi-
sory Board
‘‘(a) ESTABLISHMENT OF MANAGEMENT ADVISORY
BOARD.—
‘‘(1) APPOINTMENT.—The United States Pat-
ent and Trademark Office shall have a Management
Advisory Board (hereafter in this title referred to as
the ‘Board’) of 12 members, 4 of whom shall be ap-
pointed by the President, 4 of whom shall be ap-
pointed by the Speaker of the House of Representa-
tives, and 4 of whom shall be appointed by the ma-
jority leader of the Senate. Not more than 3 of the
4 members appointed by each appointing authority
shall be members of the same political party.
‘‘(2) TERMS.—Members of the Board shall be
appointed for a term of 4 years each, except that of
the members first appointed by each appointing au-
thority, 1 shall be for a term of 1 year, 1 shall be
for a term of 2 years, and 1 shall be for a term of
3 years. No member may serve more than 1 term.
‘‘(3) CHAIR.—The President shall designate the
chair of the Board, whose term as chair shall be for
3 years.
‘‘(4) TIMING
OF
APPOINTMENTS.—Initial ap-
pointments to the Board shall be made within 3
months after the effective date of the Patent and
Trademark Office Modernization Act, and vacancies
shall be filled within 3 months after they occur.
‘‘(5) VACANCIES.—Vacancies shall be filled in
the manner in which the original appointment was
made under this subsection. Members appointed to
fill a vacancy occurring before the expiration of the
term for which the member’s predecessor was ap-
pointed shall be appointed only for the remainder of
that term. A member may serve after the expiration
of that member’s term until a successor is ap-
pointed.
‘‘(6) COMMITTEES.—The Chair shall designate
members of the Board to serve on a committee on
patent operations and on a committee on trademark
operations to perform the duties set forth in sub-
section (e) as they relate specifically to the Office’s
patent operations, and the Office’s trademark oper-
ations, respectively.
‘‘(b) BASIS FOR APPOINTMENTS.—Members of the
Board shall be citizens of the United States who shall be
chosen so as to represent the interests of diverse users
of the United States Patent and Trademark Office, and
shall include individuals with substantial background and
achievement in corporate finance and management.
‘‘(c) APPLICABILITY OF CERTAIN ETHICS LAWS.—
Members of the Board shall be special Government em-
ployees within the meaning of section 202 of title 18.
‘‘(d) MEETINGS.—The Board shall meet at the call
of the chair to consider an agenda set by the chair.
‘‘(e) DUTIES.—The Board shall—
‘‘(1) review the policies, goals, performance,
budget, and user fees of the United States Patent
and Trademark Office, and advise the Director on
these matters; and
‘‘(2) within 60 days after the end of each fiscal
year, prepare an annual report on the matters re-
ferred to in paragraph (1), transmit the report to
the President and the Committees on the Judiciary
of the Senate and the House of Representatives, and
publish the report in the Patent and Trademark Of-
fice Official Gazette.
‘‘(f) COMPENSATION.—Members of the Board shall
be compensated for each day (including travel time) dur-
ing which they are attending meetings or conferences of
the Board or otherwise engaged in the business of the
Board, at the rate which is the daily equivalent of the an-
nual rate of basic pay in effect for level III of the Execu-
tive Schedule under section 5314 of title 5, and while away
from their homes or regular places of business they may
be allowed travel expenses, including per diem in lieu of
subsistence, as authorized by section 5703 of title 5.
‘‘(g) ACCESS
TO INFORMATION.—Members of the
Board shall be provided access to records and information
in the United States Patent and Trademark Office, except
for personnel or other privileged information and informa-
tion concerning patent applications required to be kept in
confidence by section 122.’’.
SEC. 115. CONFORMING AMENDMENTS.
(a) DUTIES.—Chapter 1 of title 35, United States
Code, is amended by striking section 6.
(b) REGULATIONS FOR AGENTS AND ATTORNEYS.—
Section 31 of title 35, United States Code, and the item
relating to such section in the table of sections for chapter
3 of title 35, United States Code, are repealed.
SEC. 116. TRADEMARK TRIAL AND APPEAL BOARD.
Section 17 of the Act of July 5, 1946 (commonly re-
ferred to as the ‘‘Trademark Act of 1946’’) (15 U.S.C.
1067) is amended to read as follows:
‘‘SEC. 17. (a) In every case of interference, opposition
to registration, application to register as a lawful concur-
rent user, or application to cancel the registration of a
mark, the Director shall give notice to all parties and shall
direct a Trademark Trial and Appeal Board to determine
and decide the respective rights of registration.
‘‘(b) The Trademark Trial and Appeal Board shall
include the Director, the Commissioner for Patents, the
Commissioner for Trademarks, and members competent
in trademark law who are appointed by the Director.’’.
SEC. 117. BOARD OF PATENT APPEALS AND INTER-
FERENCES.
Chapter 1 of title 35, United States Code, is amended
by striking section 7 and inserting after section 5 the fol-
lowing:
‘‘§ 6. Board of Patent Appeals and Interferences
‘‘(a) ESTABLISHMENT
AND COMPOSITION.—There
shall be in the United States Patent and Trademark Of-
fice a Board of Patent Appeals and Interferences. The Di-
rector, the Commissioner for Patents, the Commissioner
for Trademarks, and the examiners-in-chief shall con-
stitute the Board. The examiners-in-chief shall be persons
of competent legal knowledge and scientific ability.
‘‘(b) DUTIES.—The Board of Patent Appeals and
Interferences shall, on written appeal of an applicant, re-
view adverse decisions of examiners upon applications for
patents and shall determine priority and patentability of
invention in interferences declared under section 135(a).
Each appeal and interference shall be heard by at least
3 members of the Board, who shall be designated by the
Director. Only the Board of Patent Appeals and Inter-
ferences may grant rehearings.’’.
SEC. 118. SUITS BY AND AGAINST THE OFFICE.
Chapter 1 of part I of title 35, United States Code,
is amended by inserting after section 6 the following new
section:
‘‘§ 7. Suits by and against the Office
‘‘(a) ACTIONS UNDER UNITED STATES LAW.—Any
civil action or proceeding to which the United States Pat-
ent and Trademark Office is a party is deemed to arise
under the laws of the United States. The Federal courts
shall have exclusive jurisdiction over all civil actions by
or against the Office.
‘‘(b) REPRESENTATION BY THE DEPARTMENT OF
JUSTICE.—The United States Patent and Trademark Of-
fice shall be deemed an agency of the United States for
purposes of section 516 of title 28.
‘‘(c) PROHIBITION ON ATTACHMENT, LIENS, ETC.—
No attachment, garnishment, lien, or similar process, in-
termediate or final, in law or equity, may be issued against
property of the Office.’’.
SEC. 119. ANNUAL REPORT OF DIRECTOR.
Section 14 of title 35, United States Code, is amend-
ed to read as follows:
‘‘§ 14. Annual report to Congress
‘‘The Director shall report to the Congress, not later
than 180 days after the end of each fiscal year, the mon-
eys received and expended by the Office, the purposes for
which the moneys were spent, the quality and quantity of
the work of the Office, and other information relating to
the Office. The report under this section shall also meet
the requirements of section 9106 of title 31, to the extent
that such requirements are not inconsistent with the pre-
ceding sentence. The report required under this section
shall not be deemed to be the report of the United States
Patent and Trademark Office under section 9106 of title
31, and the Director shall file a separate report under
such section.’’.
SEC. 120. SUSPENSION OR EXCLUSION FROM PRACTICE.
Section 32 of title 35, United States Code, is amend-
ed by inserting before the last sentence the following: ‘‘The
Director shall have the discretion to designate any attor-
ney who is an officer or employee of the United States
Patent and Trademark Office to conduct the hearing re-
quired by this section.’’.
SEC. 121. FUNDING.
Section 42 of title 35, United States Code, is amend-
ed to read as follows:
‘‘§ 42. Patent and Trademark Office funding
‘‘(a) FEES PAYABLE TO THE OFFICE.—All fees for
services performed by or materials furnished by the Unit-
ed States Patent and Trademark Office shall be payable
to the Office.
‘‘(b) USE OF MONEYS.—Moneys from fees shall be
available to the United States Patent and Trademark Of-
fice to carry out, to the extent provided in appropriations
Acts, the functions of the Office. Moneys of the Office not
otherwise used to carry out the functions of the Office
shall be kept in cash on hand or on deposit, or invested
in obligations of the United States or guaranteed by the
United States, or in obligations or other instruments
which are lawful investments for fiduciary, trust, or public
funds. Fees available to the Office under this title shall
be used for the processing of patent applications and for
other services and materials relating to patents. Fees
available to the Office under section 31 of the Act of July
5, 1946 (commonly referred to as the ‘Trademark Act of
1946’; 15 U.S.C. 1113), shall be used only for the process-
ing of trademark registrations and for other services and
materials relating to trademarks.
‘‘(c) BORROWING AUTHORITY.—The United States
Patent and Trademark Office is authorized to issue from
time to time for purchase by the Secretary of the Treasury
its debentures, bonds, notes, and other evidences of in-
debtedness (hereafter in this subsection referred to as ‘ob-
ligations’) to assist in financing its activities. Borrowing
under this subsection shall be subject to prior approval
in appropriations Acts. Such borrowing shall not exceed
amounts approved in appropriations Acts. Any borrowing
under this subsection shall be repaid only from fees paid
to the Office and surcharges appropriated by the Con-
gress. Such obligations shall be redeemable at the option
of the Office before maturity in the manner stipulated in
such obligations and shall have such maturity as is deter-
mined by the Office with the approval of the Secretary
of the Treasury. Each such obligation issued to the Treas-
ury shall bear interest at a rate not less than the current
yield on outstanding marketable obligations of the United
States of comparable maturity during the month preced-
ing the issuance of the obligation as determined by the
Secretary of the Treasury. The Secretary of the Treasury
shall purchase any obligations of the Office issued under
this subsection and for such purpose the Secretary of the
Treasury is authorized to use as a public-debt transaction
the proceeds of any securities issued under chapter 31 of
title 31, and the purposes for which securities may be is-
sued under that chapter are extended to include such pur-
pose. Payment under this subsection of the purchase price
of such obligations of the United States Patent and Trade-
mark Office shall be treated as public debt transactions
of the United States.’’.
SEC. 122. TRANSFERS.
(a) TRANSFER OF FUNCTIONS.—Except to the extent
that such functions, powers, and duties relate to the direc-
tion of patent or trademark policy, there are transferred
to, and vested in, the United States Patent and Trade-
mark Office all functions, powers, and duties vested by
law in the Secretary of Commerce or the Department of
Commerce or in the officers or components in the Depart-
ment of Commerce with respect to the authority to grant
patents and register trademarks, and in the Patent and
Trademark Office, as in effect on the day before the effec-
tive date of this title, and in the officers and components
of such Office.
(b) TRANSFER
OF FUNDS
AND PROPERTY.—The
Secretary of Commerce shall transfer to the United States
Patent and Trademark Office, on the effective date of this
title, so much of the assets, liabilities, contracts, property,
records, and unexpended and unobligated balances of ap-
propriations, authorizations, allocations, and other funds
employed, held, used, arising from, available to, or to be
made available to the Department of Commerce, including
funds set aside for accounts receivable, which are related
to functions, powers, and duties which are vested in the
Patent and Trademark Office by this title.
Subtitle B—Effective Date;
Technical Amendments
SEC. 131. EFFECTIVE DATE.
This title and the amendments made by this title
shall take effect 4 months after the date of the enactment
of this Act.
SEC. 132. TECHNICAL AND CONFORMING AMENDMENTS.
(a) AMENDMENTS TO TITLE 35.—
(1) The item relating to part I in the table of
parts for chapter 35, United States Code, is amend-
ed to read as follows:
‘‘I. United States Patent and Trademark Office .............
1’’.
(2) The heading for part I of title 35, United
States Code, is amended to read as follows:
‘‘PART I—UNITED STATES PATENT AND
TRADEMARK OFFICE’’.
(3) The table of chapters for part I of title 35,
United States Code, is amended by amending the
item relating to chapter 1 to read as follows:
‘‘1. Establishment, Officers and Employees, Functions ......
1’’.
(4) The table of sections for chapter 1 of title
35, United States Code, is amended to read as
follows:
‘‘CHAPTER 1—ESTABLISHMENT, OFFICERS
AND EMPLOYEES, FUNCTIONS
‘‘Sec.
‘‘1.
Establishment.
‘‘2.
Powers and duties.
‘‘3.
Officers and employees.
‘‘4.
Restrictions on officers and employees as to interest in patents.
‘‘5.
Patent and Trademark Office Management Advisory Board.
‘‘6.
Board of Patent Appeals and Interferences.
‘‘7.
Suits by and against the Office.
‘‘8.
Library.
‘‘9.
Classification of patents.
‘‘10. Certified copies of records.
‘‘11. Publications.
‘‘12. Exchange of copies of patents with foreign countries.
‘‘13. Copies of patents for public libraries.
‘‘14. Annual report to Congress.’’.
(5) Section 155 of title 35, United States Code,
is amended by striking ‘‘Commissioner of Patents
and Trademarks’’ and inserting ‘‘Director’’.
(6) Section 155A(c) of title 35, United States
Code, is amended by striking ‘‘Commissioner of Pat-
ents and Trademarks’’ and inserting ‘‘Director’’.
(7) Section 302 of title 35, United States Code,
is amended by striking ‘‘Commissioner of Patents’’
and inserting ‘‘Director’’.
(8) Title 35, United States Code, is amended by
striking ‘‘Commissioner’’ each place it appears and
inserting ‘‘Director’’.
(9) Section 41(a)(8)(A) of title 35, United
States Code, is amended by striking ‘‘On’’ and in-
serting ‘‘on’’.
(10) Section 10101 of the Omnibus Budget
Reconciliation Act of 1990 (35 U.S.C. 41 note) is
amended—
(A) in subsection (b)(2)—
(i) by inserting ‘‘United States’’ be-
fore ‘‘Patent and Trademark’’ each place it
appears; and
(ii) in subparagraph (A) by striking
‘‘in the Department of Commerce’’; and
(B) in subsection (c) by striking ‘‘Commis-
sioner of Patents and Trademarks’’ and insert-
ing ‘‘Director of the United States Patent and
Trademark Office’’.
(b) OTHER PROVISIONS OF LAW.—
(1)(A) Section 45 of the Act of July 5, 1946
(commonly referred to as the ‘‘Trademark Act of
1946’’; 15 U.S.C. 1127), is amended by striking
‘‘The term ‘Commissioner’ means the Commissioner
of Patents and Trademarks.’’ and inserting ‘‘The
term ‘Director’ means the Director of the United
States Patent and Trademark Office.’’.
(B) The Act of July 5, 1946 (commonly re-
ferred to as the ‘‘Trademark Act of 1946’’; 15
U.S.C. 1051 and following), is amended by striking
‘‘Commissioner’’ each place it appears and inserting
‘‘Director’’.
(2) Section 9101(3) of title 31, United States
Code, is amended by adding at the end the follow-
ing:
‘‘(R) the United States Patent and Trade-
mark Office.’’.
(3) Section 500(e) of title 5, United States
Code, is amended by striking ‘‘Patent Office’’ and
inserting ‘‘United States Patent and Trademark Of-
fice’’.
(4) Section 5102(c)(23) of title 5, United
States Code, is amended by striking ‘‘Patent and
Trademark Office, Department of Commerce’’ and
inserting ‘‘United States Patent and Trademark Of-
fice’’.
(5) Section 5316 of title 5, United States Code
(5 U.S.C. 5316) is amended by striking ‘‘Commis-
sioner of Patents, Department of Commerce.’’,
‘‘Deputy Commissioner of Patents and Trade-
marks.’’, ‘‘Assistant Commissioner for Patents.’’,
and ‘‘Assistant Commissioner for Trademarks.’’.
(6) Section 12 of the Act of February 14, 1903
(15 U.S.C. 1511) is amended by striking ‘‘(d) Pat-
ent and Trademark Office;’’ and redesignating sub-
sections (a) through (g) as paragraphs (1) through
(6), respectively.
(7) The Act of April 12, 1892 (27 Stat. 395;
20 U.S.C. 91) is amended by striking ‘‘Patent Of-
fice’’ and inserting ‘‘United States Patent and
Trademark Office’’.
(8) Sections 505(m) and 512(o) of the Federal
Food, Drug, and Cosmetic Act (21 U.S.C. 355(m)
and 360b(o)) are each amended by striking ‘‘Patent
and Trademark Office of the Department of Com-
merce’’ and inserting ‘‘United States Patent and
Trademark Office’’.
(9) Section 105(e) of the Federal Alcohol Ad-
ministration Act (27 U.S.C. 205(e)) is amended by
striking ‘‘United States Patent Office’’ and inserting
‘‘United States Patent and Trademark Office’’.
(10) Section 1744 of title 28, United States
Code is amended—
(A) by striking ‘‘Patent Office’’ each place
it appears in the text and section heading and
inserting ‘‘United States Patent and Trade-
mark Office’’;
(B) by striking ‘‘Commissioner of Patents’’
and inserting ‘‘Director of the United States
Patent and Trademark Office’’; and
(C) by striking ‘‘Commissioner’’ and in-
serting ‘‘Director’’.
(11) Section 1745 of title 28, United States
Code, is amended by striking ‘‘United States Patent
Office’’ and inserting ‘‘United States Patent and
Trademark Office’’.
(12) Section 1928 of title 28, United States
Code, is amended by striking ‘‘Patent Office’’ and
inserting ‘‘United States Patent and Trademark Of-
fice’’.
(13) Section 160 of the Atomic Energy Act of
1954 (42 U.S.C. 2190) is amended—
(A) by striking ‘‘United States Patent Of-
fice’’ and inserting ‘‘United States Patent and
Trademark Office’’; and
(B) by striking ‘‘Commissioner of Patents’’
and inserting ‘‘Director of the United States
Patent and Trademark Office’’.
(14) Section 305(c) of the National Aeronautics
and Space Act of 1958 (42 U.S.C. 2457(c)) is
amended—
(A) by striking ‘‘Commissioner of Patents’’
and inserting ‘‘Director of the United States
Patent and Trademark Office’’; and
(B) by striking ‘‘Commissioner’’ and in-
serting ‘‘Director’’.
(15) Section 12(a) of the Solar Heating and
Cooling Demonstration Act of 1974 (42 U.S.C.
5510(a)) is amended by striking ‘‘Commissioner of
the Patent Office’’ and inserting ‘‘Director of the
United States Patent and Trademark Office’’.
(16) Section 1111 of title 44, United States
Code, is amended by striking ‘‘the Commissioner of
Patents,’’.
(17) Section 1114 of title 44, United States
Code, is amended by striking ‘‘the Commissioner of
Patents,’’.
(18) Section 1123 of title 44, United States
Code, is amended by striking ‘‘the Patent Office,’’.
(19) Sections 1337 and 1338 of title 44, United
States Code, and the items relating to those sections
in the table of contents for chapter 13 of such title,
are repealed.
(20) Section 10(i) of the Trading With the
Enemy Act (50 U.S.C. App. 10(i)) is amended by
striking ‘‘Commissioner of Patents’’ and inserting
‘‘Director of the United States Patent and Trade-
mark Office’’.
(21) Section 11 of the Inspector General Act of
1978 (5 U.S.C. App.) is amended—
(A) in paragraph (1)—
(i) by striking ‘‘and’’ before ‘‘the chief
executive officer of the Resolution Trust
Corporation;’’;
(ii) by striking ‘‘and’’ before ‘‘the
Chairperson of the Federal Deposit Insur-
ance Corporation;’’;
(iii) by striking ‘‘or’’ before ‘‘the Com-
missioner of Social Security,’’; and
(iv) by inserting ‘‘or the Director of
the United States Patent and Trademark
Office;’’ after ‘‘Social Security Administra-
tion;’’; and
(B) in paragraph (2)—
(i) by striking ‘‘or’’ before ‘‘the Veter-
ans’ Administration,’’; and
(ii) by striking ‘‘or the Social Security
Administration’’ and inserting ‘‘the Social
Security Administration, or the United
States Patent and Trademark Office’’.
Subtitle C—Miscellaneous
Provisions
SEC. 141. REFERENCES.
(a) IN GENERAL.—Any reference in any other Fed-
eral law, Executive order, rule, regulation, or delegation
of authority, or any document of or pertaining to a depart-
ment or office from which a function is transferred by this
title—
(1) to the head of such department or office is
deemed to refer to the head of the department or of-
fice to which such function is transferred; or
(2) to such department or office is deemed to
refer to the department or office to which such func-
tion is transferred.
(b) SPECIFIC REFERENCES.—Any reference in any
other Federal law, Executive order, rule, regulation, or
delegation of authority, or any document of or pertaining
to the Patent and Trademark Office—
(1) to the Commissioner of Patents and Trade-
marks is deemed to refer to the Director of the
United States Patent and Trademark Office;
(2) to the Assistant Commissioner for Patents
is deemed to refer to the Commissioner for Patents;
or
(3) to the Assistant Commissioner for Trade-
marks is deemed to refer to the Commissioner for
Trademarks; or
SEC. 142. EXERCISE OF AUTHORITIES.
Except as otherwise provided by law, a Federal offi-
cial to whom a function is transferred by this title may,
for purposes of performing the function, exercise all au-
thorities under any other provision of law that were avail-
able with respect to the performance of that function to
the official responsible for the performance of the function
immediately before the effective date of the transfer of the
function under this title.
SEC. 143. SAVINGS PROVISIONS.
(a) LEGAL DOCUMENTS.—All orders, determinations,
rules, regulations, permits, grants, loans, contracts, agree-
ments, certificates, licenses, and privileges—
(1) that have been issued, made, granted, or al-
lowed to become effective by the President, the Sec-
retary of Commerce, any officer or employee of any
office transferred by this title, or any other Govern-
ment official, or by a court of competent jurisdic-
tion, in the performance of any function that is
transferred by this title, and
(2) that are in effect on the effective date of
such transfer (or become effective after such date
pursuant to their terms as in effect on such effective
date),
shall continue in effect according to their terms until
modified, terminated, superseded, set aside, or revoked in
accordance with law by the President, any other author-
ized official, a court of competent jurisdiction, or operation
of law.
(b) PROCEEDINGS.—This title shall not affect any
proceedings or any application for any benefits, service,
license, permit, certificate, or financial assistance pending
on the effective date of this title before an office trans-
ferred by this title, but such proceedings and applications
shall be continued. Orders shall be issued in such proceed-
ings, appeals shall be taken therefrom, and payments shall
be made pursuant to such orders, as if this title had not
been enacted, and orders issued in any such proceeding
shall continue in effect until modified, terminated, super-
seded, or revoked by a duly authorized official, by a court
of competent jurisdiction, or by operation of law. Nothing
in this subsection shall be considered to prohibit the dis-
continuance or modification of any such proceeding under
the same terms and conditions and to the same extent that
such proceeding could have been discontinued or modified
if this title had not been enacted.
(c) SUITS.—This title shall not affect suits com-
menced before the effective date of this title, and in all
such suits, proceedings shall be had, appeals taken, and
judgments rendered in the same manner and with the
same effect as if this title had not been enacted.
(d) NONABATEMENT OF ACTIONS.—No suit, action,
or other proceeding commenced by or against the Depart-
ment of Commerce or the Secretary of Commerce, or by
or against any individual in the official capacity of such
individual as an officer or employee of an office trans-
ferred by this title, shall abate by reason of the enactment
of this title.
(e) CONTINUANCE OF SUITS.—If any Government of-
ficer in the official capacity of such officer is party to a
suit with respect to a function of the officer, and under
this title such function is transferred to any other officer
or office, then such suit shall be continued with the other
officer or the head of such other office, as applicable, sub-
stituted or added as a party.
(f) ADMINISTRATIVE PROCEDURE AND JUDICIAL RE-
VIEW.—Except as otherwise provided by this title, any
statutory requirements relating to notice, hearings, action
upon the record, or administrative or judicial review that
apply to any function transferred by this title shall apply
to the exercise of such function by the head of the Federal
agency, and other officers of the agency, to which such
function is transferred by this title.
SEC. 144. TRANSFER OF ASSETS.
Except as otherwise provided in this title, so much
of the personnel, property, records, and unexpended bal-
ances of appropriations, allocations, and other funds em-
ployed, used, held, available, or to be made available in
connection with a function transferred to an official or
agency by this title shall be available to the official or the
head of that agency, respectively, at such time or times
as the Director of the Office of Management and Budget
directs for use in connection with the functions trans-
ferred.
SEC. 145. DELEGATION AND ASSIGNMENT.
Except as otherwise expressly prohibited by law or
otherwise provided in this title, an official to whom func-
tions are transferred under this title (including the head
of any office to which functions are transferred under this
title) may delegate any of the functions so transferred to
such officers and employees of the office of the official as
the official may designate, and may authorize successive
redelegations of such functions as may be necessary or ap-
propriate. No delegation of functions under this section
or under any other provision of this title shall relieve the
official to whom a function is transferred under this title
of responsibility for the administration of the function.
SEC. 146. AUTHORITY OF DIRECTOR OF THE OFFICE OF
MANAGEMENT AND BUDGET WITH RESPECT
TO FUNCTIONS TRANSFERRED.
(a) DETERMINATIONS.—If necessary, the Director of
the Office of Management and Budget shall make any de-
termination of the functions that are transferred under
this title.
(b) INCIDENTAL TRANSFERS.—The Director of the
Office of Management and Budget, at such time or times
as the Director shall provide, may make such determina-
tions as may be necessary with regard to the functions
transferred by this title, and to make such additional inci-
dental dispositions of personnel, assets, liabilities, grants,
contracts, property, records, and unexpended balances of
appropriations, authorizations, allocations, and other
funds held, used, arising from, available to, or to be made
available in connection with such functions, as may be nec-
essary to carry out the provisions of this title. The Direc-
tor shall provide for the termination of the affairs of all
entities terminated by this title and for such further meas-
ures and dispositions as may be necessary to effectuate
the purposes of this title.
SEC. 147. CERTAIN VESTING OF FUNCTIONS CONSIDERED
TRANSFERS.
For purposes of this title, the vesting of a function
in a department or office pursuant to reestablishment of
an office shall be considered to be the transfer of the func-
tion.
SEC. 148. AVAILABILITY OF EXISTING FUNDS.
Existing appropriations and funds available for the
performance of functions, programs, and activities termi-
nated pursuant to this title shall remain available, for the
duration of their period of availability, for necessary ex-
penses in connection with the termination and resolution
of such functions, programs, and activities.
SEC. 149. DEFINITIONS.
For purposes of this title—
(1) the term ‘‘function’’ includes any duty, obli-
gation, power, authority, responsibility, right, privi-
lege, activity, or program; and
(2) the term ‘‘office’’ includes any office, ad-
ministration, agency, bureau, institute, council, unit,
organizational entity, or component thereof.
TITLE 
II—EXAMINING 
PROCE-
DURE IMPROVEMENTS: PUB-
LICATION WITH PROVISIONAL
ROYALTIES; 
TERM 
EXTEN-
SIONS; 
FURTHER 
EXAMINA-
TION
SEC. 201. SHORT TITLE.
This title may be cited as the ‘‘Examining Procedure
Improvements Act’’.
SEC. 202. PUBLICATION.
Section 122 of title 35, United States Code, is
amended to read as follows:
‘‘§ 122. Confidential status of applications; publica-
tion of patent applications
‘‘(a) CONFIDENTIALITY.—Except as provided in sub-
section (b), applications for patents shall be kept in con-
fidence by the Patent and Trademark Office and no infor-
mation concerning applications for patents shall be given
without authority of the applicant or owner unless nec-
essary to carry out the provisions of an Act of Congress
or in such special circumstances as may be determined by
the Director.
‘‘(b) PUBLICATION.—
‘‘(1) IN GENERAL.—(A) Subject to paragraph
(2), each application for patent, except applications
for design patents filed under chapter 16 of this title
and provisional applications filed under section
111(b) of this title, shall be published, in accordance
with procedures determined by the Director, prompt-
ly after the expiration of a period of 18 months from
the earliest filing date for which a benefit is sought
under this title. At the request of the applicant, an
application may be published earlier than the end of
such 18-month period.
‘‘(B) No information concerning published pat-
ent applications shall be made available to the public
except as the Director determines.
‘‘(C) Notwithstanding any other provision of
law, a determination by the Director to release or
not to release information concerning a published
patent application shall be final and nonreviewable.
‘‘(2) EXCEPTIONS.—(A) An application that is
no longer pending shall not be published.
‘‘(B) An application that is subject to a secrecy
order pursuant to section 181 of this title shall not
be published.
‘‘(C)(i) Upon the request of the applicant at the
time of filing, the application shall not be published
in accordance with paragraph (1) until 3 months
after the Director makes a notification to the appli-
cant under section 132 of this title.
‘‘(ii) Applications filed pursuant to section 363
of this title, applications asserting priority under
section 119 or 365(a) of this title, and applications
asserting the benefit of an earlier application under
section 120, 121, or 365(c) of this title shall not be
eligible for a request pursuant to this subparagraph.
‘‘(iii) In a request under this subparagraph, the
applicant shall certify that the invention disclosed in
the application was not and will not be the subject
of an application filed in a foreign country.
‘‘(iv) The Director may establish appropriate
procedures and fees for making a request under this
subparagraph.
‘‘(c) PRE-ISSUANCE OPPOSITION.—The provisions of
this section shall not operate to create any new oppor-
tunity for pre-issuance opposition. The Director may es-
tablish appropriate procedures to ensure that this section
does not create any new opportunity for pre-issuance op-
position.’’.
SEC. 203. TIME FOR CLAIMING BENEFIT OF EARLIER FIL-
ING DATE.
(a) IN A FOREIGN COUNTRY.—Section 119(b) of title
35, United States Code, is amended to read as follows:
‘‘(b)(1) No application for patent shall be entitled to
this right of priority unless a claim is filed in the Patent
and Trademark Office, at such time during the pendency
of the application as is required by the Director, that iden-
tifies the foreign application by specifying its application
number, the country in or for which the application was
filed, and the date of its filing.
‘‘(2) The Director may consider the failure of the ap-
plicant to file a timely claim for priority as a waiver of
any such claim, and may require the payment of a sur-
charge as a condition of accepting an untimely claim dur-
ing the pendency of the application.
‘‘(3) The Director may require a certified copy of the
original foreign application, specification, and drawings
upon which it is based, a translation if not in the English
language, and such other information as the Director con-
siders necessary. Any such certification shall be made by
the intellectual property authority in the foreign country
in which the foreign application was filed and show the
date of the application and of the filing of the specification
and other papers.’’.
(b) IN THE UNITED STATES.—Section 120 of title
35, United States Code, is amended by adding at the end
the following: ‘‘No application shall be entitled to the bene-
fit of an earlier filed application under this section unless
an amendment containing the specific reference to the ear-
lier filed application is submitted at such time during the
pendency of the application as is required by the Commis-
sioner. The Director may consider the failure to submit
such an amendment within that time period as a waiver
of any benefit under this section. The Director may estab-
lish procedures, including the payment of a surcharge, to
accept unavoidably late submissions of amendments under
this section.’’.
SEC. 204. PROVISIONAL RIGHTS.
Section 154 of title 35, United States Code, is
amended—
(1) in the section caption by inserting ‘‘; pro-
visional rights’’ after ‘‘patent’’; and
(2) by adding at the end the following new sub-
section:
‘‘(d) PROVISIONAL RIGHTS.—
‘‘(1) IN GENERAL.—In addition to other rights
provided by this section, a patent shall include the
right to obtain a reasonable royalty from any person
who, during the period beginning on the date of pub-
lication of the application for such patent pursuant
to section 122(b) of this title, or in the case of an
international application filed under the treaty de-
fined in section 351(a) of this title designating the
United States under Article 21(2)(a) of such treaty,
the date of publication of the application, and ending
on the date the patent is issued—
‘‘(A)(i) makes, uses, offers for sale, or sells
in the United States the invention as claimed in
the published patent application or imports
such an invention into the United States; or
‘‘(ii) if the invention as claimed in the pub-
lished patent application is a process, uses, of-
fers for sale, or sells in the United States or
imports into the United States products made
by that process as claimed in the published pat-
ent application; and
‘‘(B) had actual notice of the published
patent application and, where the right arising
under this paragraph is based upon an inter-
national application designating the United
States that is published in a language other
than English, a translation of the international
application into the English language.
‘‘(2) RIGHT BASED ON SUBSTANTIALLY IDEN-
TICAL INVENTIONS.—The right under paragraph (1)
to obtain a reasonable royalty shall not be available
under this subsection unless the invention as claimed
in the patent is substantially identical to the inven-
tion as claimed in the published patent application.
‘‘(3) TIME LIMITATION ON OBTAINING A REA-
SONABLE ROYALTY.—The right under paragraph (1)
to obtain a reasonable royalty shall be available only
in an action brought not later than 6 years after the
patent is issued. The right under paragraph (1) to
obtain a reasonable royalty shall not be affected by
the duration of the period described in paragraph
(1).
‘‘(4) REQUIREMENTS FOR INTERNATIONAL AP-
PLICATIONS.—The right under paragraph (1) to ob-
tain a reasonable royalty based upon the publication
under the treaty defined in section 351(a) of this
title of an international application designating the
United States shall commence from the date that
the Patent and Trademark Office receives a copy of
the publication under such treaty of the inter-
national application, or, if the publication under the
treaty of the international application is in a lan-
guage other than English, from the date that the
Patent and Trademark Office receives a translation
of the international application in the English lan-
guage. The Director may require the applicant to
provide a copy of the international publication of the
international application and a translation thereof.’’.
SEC. 205. 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 pursu-
ant to section 122(b) of this title, by another filed
in the United States before the invention by the ap-
plicant for patent, except that an international appli-
cation filed under the treaty defined in section
351(a) of this title shall have the effect under this
subsection of a national application published under
section 122(b) of this title only if the international
application designating the United States was pub-
lished under Article 21(2)(a) of such treaty in the
English language, or
‘‘(2) a patent granted on an application for pat-
ent by another filed in the United States before the
invention by the applicant for patent, or’’.
SEC. 206. COST RECOVERY FOR PUBLICATION.
The Director of the United States Patent and Trade-
mark Office shall recover the cost of early publication re-
quired by the amendment made by section 202 by adjust-
ing the filing, issue, and maintenance fees under title 35,
United States Code, by charging a separate publication
fee, or by any combination of these methods.
SEC. 207. CONFORMING CHANGES.
The following provisions of title 35, United States
Code, are amended:
(1) Section 11 is amended in paragraph 1 of
subsection (a) by inserting ‘‘and published applica-
tions for patents’’ after ‘‘Patents’’.
(2) Section 12 is amended—
(A) in the section caption by inserting
‘‘and applications’’ after ‘‘patents’’; and
(B) by inserting ‘‘and published applica-
tions for patents’’ after ‘‘patents’’.
(3) Section 13 is amended—
(A) in the section caption by inserting
‘‘and applications’’ after ‘‘patents’’; and
(B) by inserting ‘‘and published applica-
tions for patents’’ after ‘‘patents’’.
(4) The items relating to sections 12 and 13 in
the table of sections for chapter 1 are each amended
by inserting ‘‘and applications’’ after ‘‘patents’’.
(5) The item relating to section 122 in the table
of sections for chapter 11 is amended by inserting
‘‘; publication of patent applications’’ after ‘‘applica-
tions’’.
(6) The item relating to section 154 in the table
of sections for chapter 14 is amended by inserting
‘‘; provisional rights’’ after ‘‘patent’’.
(7) Section 181 is amended—
(A) in the first paragraph—
(i) by inserting ‘‘by the publication of
an application or’’ after ‘‘disclosure’’; and
(ii) by inserting ‘‘the publication of
the application or’’ after ‘‘withhold’’;
(B) in the second paragraph by inserting
‘‘by the publication of an application or’’ after
‘‘disclosure of an invention’’;
(C) in the third paragraph—
(i) by inserting ‘‘by the publication of
the application or’’ after ‘‘disclosure of the
invention’’; and
(ii) by inserting ‘‘the publication of
the application or’’ after ‘‘withhold’’; and
(D) in the fourth paragraph by inserting
‘‘the publication of an application or’’ after
‘‘and’’ in the first sentence.
(8) Section 252 is amended in the first para-
graph by inserting ‘‘substantially’’ before ‘‘identical’’
each place it appears.
(9) Section 284 is amended by adding at the
end of the second paragraph the following: ‘‘In-
creased damages under this paragraph shall not
apply to provisional rights under section 154(d) of
this title.’’.
(10) Section 374 is amended to read as follows:
‘‘§ 374. Publication of international application: Ef-
fect
‘‘The publication under the treaty defined in section
351(a) of this title of an international application des-
ignating the United States shall confer the same rights
and shall have the same effect under this title as an appli-
cation for patent published under section 122(b), except
as provided in sections 102(e) and 154(d) of this title.’’.
SEC. 208. PATENT TERM EXTENSION AUTHORITY.
Section 154(b) of title 35, United States Code, is
amended to read as follows:
‘‘(b) TERM EXTENSION.—
‘‘(1) BASIS FOR PATENT TERM EXTENSION.—
‘‘(A) DELAY.—Subject to the limitations
set forth in paragraph (2), if the issue of an
original patent is delayed due to—
‘‘(i) a proceeding under section 135(a)
of this title, including any appeal under
section 141, or any civil action under sec-
tion 146, of this title,
‘‘(ii) the imposition of an order pursu-
ant to section 181 of this title,
‘‘(iii) appellate review by the Board of
Patent Appeals and Interferences or by a
Federal court in a case in which the patent
was issued pursuant to a decision in the
review reversing an adverse determination
of patentability, or
‘‘(iv) an unusual administrative delay
by the Patent and Trademark Office in is-
suing the patent,
the term of the patent shall be extended for the
period of delay.
‘‘(B) ADMINISTRATIVE DELAY.—For pur-
poses of subparagraph (A)(iv), an unusual ad-
ministrative delay by the Patent and Trade-
mark office is the failure to—
‘‘(i) make a notification of the rejec-
tion of any claim for a patent or any objec-
tion or argument under section 132 of this
title or give or mail a written notice of al-
lowance under section 151 of this title not
later than 14 months after the date on
which the application was filed;
‘‘(ii) respond to a reply under section
132 of this title or to an appeal taken
under section 134 of this title not later
than 4 months after the date on which the
reply was filed or the appeal was taken;
‘‘(iii) act on an application not later
than 4 months after the date of a decision
by the Board of Patent Appeals and Inter-
ferences under section 134 or 135 of this
title or a decision by a Federal court under
section 141, 145, or 146 of this title in a
case in which allowable claims remain in
an application; or
‘‘(iv) issue a patent not later than 4
months after the date on which the issue
fee was paid under section 151 of this title
and all outstanding requirements were sat-
isfied.
‘‘(2) LIMITATIONS.—(A) The total duration of
any extensions granted pursuant to either clause (iii)
or (iv) of paragraph (1)(A) or both such clauses
shall not exceed 10 years. To the extent that periods
of delay attributable to grounds specified in para-
graph (1) overlap, the period of any extension grant-
ed under this subsection shall not exceed the actual
number of days the issuance of the patent was de-
layed.
‘‘(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 Director shall prescribe
regulations establishing the circumstances that con-
stitute a failure of an applicant to engage in reason-
able efforts to conclude processing or examination of
an application in order to ensure that applicants are
appropriately compensated for any delays by the
Patent and Trademark Office in excess of the time
periods specified in paragraph (1)(B).
‘‘(C) No patent the term of which has been dis-
claimed beyond a specified date may be extended
under this section beyond the expiration date speci-
fied in the disclaimer.
‘‘(3) PROCEDURES.—The Director shall pre-
scribe regulations establishing procedures for the no-
tification of patent term extensions under this sub-
section and procedures for contesting patent term
extensions under this subsection.’’.
SEC. 209. FURTHER EXAMINATION OF PATENT APPLICA-
TIONS.
The Director of the United States Patent and Trade-
mark Office shall prescribe regulations to provide for the
further limited reexamination of applications for patent.
The Director may establish appropriate fees for such fur-
ther limited reexamination and shall be authorized to pro-
vide a 50 percent reduction on such fees for small entities
that qualify for reduced fees under section 41(h)(1) of title
35, United States Code.
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 Federal holiday within the District of Columbia, the
period of pendency of the provisional application shall be
extended to the next succeeding business day.’’.
SEC. 211. REPORTING REQUIREMENT.
The Director of the United States Patent and Trade-
mark Office shall report to the Congress not later than
April 1, 2001, and not later than April 1 of each year
thereafter, regarding the impact of publication on the pat-
ent applications filed by an applicant who has been ac-
corded the status of independent inventor under section
41(h) of title 35, United States Code. The report shall
include information concerning the frequency and number
of initial and continuing patent applications, pendency,
interferences, reexaminations, rejection, abandonment
rates, fees, other expenses, and 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, 1998, and shall apply to all
applications filed under section 111 of title 35, United
States Code, on or after that date, and all international
applications designating the United States that are filed
on or after that date.
(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.
TITLE 
III—PROTECTION 
FOR
PRIOR DOMESTIC USERS OF
PATENTED TECHNOLOGIES
SEC. 301. SHORT TITLE.
This title may be cited as the ‘‘Protection for Prior
Domestic Commercial Users of Patented Technologies
Act’’.
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-
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:
‘‘(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,
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
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:
‘‘273. Prior domestic commercial use; defense to infringement.’’.
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—ENHANCED PROTEC-
TION OF INVENTORS’ RIGHTS
SEC. 401. SHORT TITLE.
This title may be cited as the ‘‘Enhanced Protection
of Inventors’ Rights Act’’.
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—
‘‘(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 Government or of a State or local govern-
ment;
‘‘(B) any nonprofit, charitable, scientific,
or educational organization, qualified under ap-
plicable State law or described under section
170(b)(1)(A) of the Internal Revenue Code of
1986; or
‘‘(C) any person duly registered with, and
in good standing before, the United States Pat-
ent and Trademark Office acting within the
scope of that person’s registration to practice
before the Patent and Trademark Office; 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, except that the display only of an inven-
tion at a trade show or exhibit shall not be con-
sidered to be invention development services.
‘‘§ 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
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 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
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 purposes 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:
‘‘ ‘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.
‘‘ ‘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
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 UNITED STATES PATENT AND
TRADEMARK OFFICE, YOU COULD LOSE
ANY RIGHTS YOU MIGHT HAVE IN YOUR
IDEA OR INVENTION.’.
‘‘(b) OTHER REQUIREMENTS FOR COVER NOTICE.—
The cover notice shall contain the items required under
subsection (a) and the name, primary office address, and
local office address of the invention 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-
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, corporation, or other entity to whom the sub-
ject matter of the contract has been disclosed, the
reason for each such disclosure, the nature of the
disclosure, and complete and accurate summaries of
all responses received as a result of those disclo-
sures.
‘‘§ 55. Mandatory contract terms
‘‘(a) MANDATORY TERMS.—Each contract for inven-
tion development services shall include in boldface type of
not less than 12-point size—
‘‘(1) the terms and conditions of payment and
contract termination rights required under section
52;
‘‘(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-
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
at a reasonable cost on the invention developer’s premises
during normal business hours.
‘‘§ 56. Remedies
‘‘(a) IN GENERAL.—(1) Any contract for invention
development services that does not comply with the appli-
cable provisions of this chapter shall be voidable at the
option of the customer.
‘‘(2) Any contract for invention development services
entered into in reliance upon any material false, fraudu-
lent, or misleading information, representation, notice, or
advertisement of the invention developer (or any agent,
employee, officer, director, partner, or independent con-
tractor of such invention developer) shall be voidable at
the option of the customer.
‘‘(3) Any waiver by the customer of any provision of
this chapter shall be deemed contrary to public policy and
shall be void and unenforceable.
‘‘(4) Any contract for invention development services
which provides for filing for and obtaining utility, design,
or plant patent protection shall be voidable at the option
of the customer unless the invention developer offers to
perform or performs such act through a person duly reg-
istered to practice before, and in good standing with, the
Patent and Trademark Office.
‘‘(b) CIVIL ACTION.—(1) Any customer who is in-
jured by a violation of this chapter by an invention devel-
oper or by any material false or fraudulent statement or
representation, or any omission of material fact, by an in-
vention developer (or any agent, employee, director, offi-
cer, partner, or independent contractor of such invention
developer) or by failure of an invention developer to make
all the disclosures required under this chapter, may re-
cover in a civil action against the invention developer (or
the officers, directors, or partners of such invention devel-
oper) in addition to reasonable costs and attorneys’ fees,
the greater of—
‘‘(A) $5,000; or
‘‘(B) the amount of actual damages sustained
by the customer.
‘‘(2) Notwithstanding paragraph (1), the court may
increase damages to not more than 3 times the amount
awarded.
‘‘(c) REBUTTABLE PRESUMPTION OF INJURY.—For
purposes of this section, substantial violation of any provi-
sion of this chapter by an invention developer or execution
by the customer of a contract for invention development
services in reliance on any material false or fraudulent
statements or representations or omissions of material
fact shall establish a rebuttable presumption of injury.
‘‘§ 57. Records of complaints
‘‘(a) RELEASE OF COMPLAINTS.—The Director shall
make all complaints received by the United States Patent
and Trademark Office involving invention developers pub-
licly available, together with any response of the invention
developers.
‘‘(b) REQUEST
FOR COMPLAINTS.—The Director
may request complaints relating to invention development
services from any Federal or State agency and include
such complaints in the records maintained under sub-
section (a), together with any response of the invention
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.’’.
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—IMPROVED
REEXAMINATION PROCEDURES
SEC. 501. SHORT TITLE.
This title may be cited as the ‘‘Improved Reexamina-
tion Procedures Act’’.
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:
‘‘§ 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 other than 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 Director 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 re-
quested or the manner in which the patent specification
or claims fail to comply with the requirements of section
112 of this title. Unless the requesting person is the owner
of the patent, the Director promptly shall send a copy of
the request to the owner of record of the patent.’’.
(b) DETERMINATION OF ISSUE BY DIRECTOR.—Sec-
tion 303 of title 35, United States Code, is amended to
read as follows:
‘‘§ 303. Determination of issue by Director
‘‘(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 Director shall
determine whether a substantial new question of patent-
ability affecting any claim of the patent concerned is
raised by the request, with or without consideration of
other patents or printed publications. On the Director’s
initiative, at any time, the Director may determine wheth-
er a substantial new question of patentability is raised by
any other patent or publication or by the failure of the
patent specification or claims of a patent to comply with
the requirements of section 112 of this title other than
the best mode requirement described in section 302.
‘‘(b) RECORD.—A record of the Director’s determina-
tion under subsection (a) shall be placed in the official
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 Di-
rector pursuant to subsection (a) shall be final and non-
appealable. Upon a determination that no substantial new
question of patentability has been raised, the Director may
refund a portion of the reexamination fee required under
section 302 of this title.’’.
(c) REEXAMINATION ORDER BY DIRECTOR.—Section
304 of title 35, United States Code, is amended to read
as follows:
‘‘§ 304. Reexamination order by Director
‘‘If, in a determination made under the provisions of
section 303(a) of this title, the Director finds that a sub-
stantial 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 ques-
tion. 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-
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 action
on the merits by the Patent and Trademark Office, the
third-party requester shall have 1 opportunity to file writ-
ten 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 action of the Patent
and Trademark Office or the patent owner’s response.
‘‘(c) SPECIAL DISPATCH.—Unless otherwise provided
by the Director for good cause, all reexamination proceed-
ings under this section, including any appeal to the Board
of Patent Appeals and Interferences, shall be conducted
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-
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 in a reexamination proceeding—
‘‘(1) may appeal under the provisions of section
134 of this title, and may appeal under the provi-
sions of sections 141 through 144 of this title, with
respect to any final decision in the reexamination
proceeding that is favorable 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 the
patent owner with respect to a decision in the reex-
amination proceeding, 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,
with respect to a reexamination proceeding, is estopped
from asserting at a later time, in any forum, the invalidity
of any claim determined to be patentable on that appeal
on any ground which the third-party requester raised or
could have raised during the reexamination proceeding.
‘‘(2) For purposes of paragraph (1), a third-party re-
quester 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 a notice of appeal,
the third-party requester files notice with the Commis-
sioner 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, unless author-
ized by the Director, file a subsequent request for reexam-
ination of the patent until a certificate relating to that
reexamination proceeding is issued and published under
section 307 of this title.
‘‘(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
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 6(b) of title 35,
United States Code, as amended by section 117 of this
Act, is amended to read as follows: ‘‘The Board of Patent
Appeals and Interferences shall, on written appeal of an
applicant, or a patent owner or a third-party requester in
a reexamination proceeding, review adverse decisions of
examiners upon applications for patents and decisions of
examiners in reexamination proceedings, and shall deter-
mine priority and patentability of invention in inter-
ferences 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:
‘‘(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 section 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
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 Director shall submit to the court in writing
the grounds for the decision of the United States 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
date of the enactment of this Act and shall apply to all
reexamination requests filed on or after such date.
TITLE VI—MISCELLANEOUS
IMPROVEMENTS
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 Director, a provisional application
may be treated as an application filed under sub-
section (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 amendment made by
subsection (a) applies to any provisional application filed
on or after June 8, 1995.
SEC. 602. INTERNATIONAL APPLICATIONS.
Section 119 of title 35, United States Code, is
amended—
(1) in subsection (a), by inserting ‘‘or in a
WTO member country’’ after ‘‘or to citizens of the
United States,’’;
(2) in subsection (b)(3), as amended by section
203 of this Act, by striking ‘‘patent office of the for-
eign country’’ and inserting ‘‘foreign intellectual
property authority’’; and
(3) by adding at the end the following new sub-
sections:
‘‘(f) 
APPLICATIONS
FOR
PLANT
BREEDER’S
RIGHTS.—Applications for plant breeder’s rights filed in
a WTO member country (or in a UPOV Contracting
Party) shall have the same effect for the purpose of the
right of priority under subsections (a) through (c) of this
section as applications for patents, subject to the same
conditions and requirements of this section as apply to ap-
plications for patents.
‘‘(g) DEFINITIONS.—As used in this section—
‘‘(1) the term ‘WTO member country’ has the
same meaning as the term is defined in section
104(b)(2) of this title; and
‘‘(2) the term ‘UPOV Contracting Party’ means
a member of the International Convention for the
Protection of New Varieties of Plants.’’.
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 shall
include the right to exclude others from asexually repro-
ducing the plant, and from using, offering for sale, or sell-
ing the plant so reproduced, or any of its parts, through-
out the United States, or from importing the plant so re-
produced, or any parts thereof, into the United States.’’.
(c) EFFECTIVE DATE.—The amendment made by
subsection (a) shall apply on the date of the enactment
of this Act. The amendment made by subsection (b) shall
apply to any plant patent issued on or after the date of
the enactment of this Act.
SEC. 604. ELECTRONIC FILING.
Section 22 of title 35, United States Code, is amend-
ed by striking ‘‘printed or typewritten’’ and inserting
‘‘printed, typewritten, or on an electronic medium’’.
SEC. 605. DIVISIONAL APPLICATIONS.
Section 121 of title 35, United States Code, is
amended—
(1) in the first sentence by striking ‘‘If’’ and in-
serting ‘‘(a) If’’; and
(2) by adding at the end the following new sub-
sections:
‘‘(b) In a case in which restriction is required on the
ground that two or more independent and distinct inven-
tions are claimed in an application, the applicant shall be
entitled to submit an examination fee and request exam-
ination for each independent and distinct invention in ex-
cess of one. The examination fee shall be equal to the filing
fee, including excess claims fees, that would have applied
had the claims corresponding to the asserted independent
and distinct inventions been presented in a separate appli-
cation for patent. For each of the independent and distinct
inventions in excess of one for which the applicant pays
an examination fee within two months after the require-
ment for restriction, the Director shall cause an examina-
tion to be made and a notification of rejection or written
notice of allowance provided to the applicant within the
time period specified in section 154(b)(1)(B)(i) of this title
for the original application. Failure to meet this or any
other time limit set forth in section 154(b)(1)(B) of this
title shall be treated as an unusual administrative delay
under section 154(b)(1)(A)(iv) of this title.
‘‘(c) An applicant who requests reconsideration of a
requirement for restriction under this section and submits
examination fees pursuant to such requirement shall, if
the requirement is determined to be improper, be entitled
to a refund of any examination fees determined to have
been paid pursuant to the requirement.’’.
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