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 contracted
for invention development services, and a statement
that the invention developer is required to maintain
all records and correspondence relating to perform-
ance 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 services, in-
cluding an estimated date in which such performance
is expected to be completed.
‘‘(b) INVENTION DEVELOPER AS FIDUCIARY.—To the
extent that the description of the specific acts or services
affords discretion to the invention developer with respect to
what specific acts or services shall be performed, the inven-
tion 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 de-
velopment services that does not comply with the applicable
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, em-
ployee, officer, director, partner, or independent contractor
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 per-
form or performs such act through a registered patent attor-
ney or agent.
‘‘(b) CIVIL ACTION.—(1) Any customer who is injured
by a violation of this chapter by an invention developer
or by any material false or fraudulent statement or rep-
resentation, or any omission of material fact, by an inven-
tion developer (or any agent, employee, director, officer,
partner, or independent contractor of such invention devel-
oper) or by failure of an invention developer to make all
the disclosures required under this chapter, may recover in
a civil action against the invention developer (or the offi-
cers, directors, or partners of such invention developer) 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 Commissioner
shall make all complaints received by the Patent and Trade-
mark Office involving invention developers publicly avail-
able, together with any response of the invention developers.
‘‘(b) REQUEST FOR COMPLAINTS.—The Commissioner
may request complaints relating to invention development
services from any Federal or State agency and include such
complaints in the records maintained under subsection (a),
together with any response of the invention developers.
‘‘§ 58. Fraudulent representation by an invention de-
veloper
‘‘Whoever, in providing invention development serv-
ices, knowingly provides any false or misleading statement,
representation, or omission of material fact to a customer
or fails to make all the disclosures required under this chap-
ter, 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 obliga-
tion, 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—PATENT
REEXAMINATION REFORM
SEC. 501. SHORT TITLE.
This title may be cited as the ‘‘Patent Reexamination
Reform Act of 1996’’.
SEC. 502. DEFINITIONS.
Section 100 of title 35, United States Code, is amended
by adding at the end the following new subsection:
‘‘(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 follows:
‘‘§ 302. Request for reexamination
‘‘Any person at any time may file a request for reex-
amination by the Office of a patent on the basis of any
prior art cited under the provisions of section 301 of this
title or on the basis of the requirements of section 112 of
this title except for the requirement to set forth the best mode
of carrying out the invention. The request must be in writ-
ing, must include the identity of the real party in interest,
and must be accompanied by payment of a reexamination
fee established by the Commissioner pursuant to the provi-
sions of section 41 of this title. The request must set forth
the pertinency and manner of applying cited prior art to
every claim for which reexamination is requested or the
manner in which the patent specification or claims fail to
comply with the requirements of section 112 of this title.
Unless the requesting person is the owner of the patent, the
Commissioner promptly shall send a copy of the request to
the owner of record of the patent.’’.
(b) DETERMINATION OF ISSUE BY COMMISSIONER.—
Section 303 of title 35, United States Code, is amended to
read as follows:
‘‘§ 303. Determination of issue by Commissioner
‘‘(a) REEXAMINATION.—Not later than 3 months after
the filing of a request for reexamination under the provi-
sions of section 302 of this title, the Commissioner shall de-
termine whether a substantial new question of patentability
affecting any claim of the patent concerned is raised by the
request, with or without consideration of other patents or
printed publications. On the Commissioner’s initiative, at
any time, the Commissioner may determine whether a sub-
stantial new question of patentability is raised by patents
and publications or by the failure of the patent specification
or claims to comply with the requirements of section 112
of this title except for the best mode requirement described
in section 302.
‘‘(b) RECORD.—A record of the Commissioner’s deter-
mination 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 Com-
missioner pursuant to subsection (a) shall be final and non-
appealable. Upon a determination that no substantial new
question of patentability has been raised, the Commissioner
may refund a portion of the reexamination fee required
under section 302 of this title.’’.
(c) REEXAMINATION ORDER BY COMMISSIONER.—Sec-
tion 304 of title 35, United States Code, is amended to read
as follows:
‘‘§ 304. Reexamination order by Commissioner
‘‘If, in a determination made under the provisions of
section 303(a) of this title, the Commissioner finds that a
substantial new question of patentability affecting a claim
of a patent is raised, the determination shall include an
order for reexamination of the patent for resolution of the
question. The order may be accompanied by the initial ac-
tion 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), reexam-
ination shall be conducted according to the procedures es-
tablished 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 patent
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 Patent
and Trademark Office action on the merits, the third-party
requester shall have 1 opportunity to file written comments
within a reasonable period not less than 1 month after the
date of service of the patent owner’s response. Written com-
ments provided under this paragraph shall be limited to
issues covered by the Patent and Trademark Office action
or the patent owner’s response.
‘‘(c) SPECIAL DISPATCH.—Unless otherwise provided
by the Commissioner for good cause, all reexamination pro-
ceedings under this section, including any appeal to the
Board of Patent Appeals and Interferences, shall be con-
ducted with special dispatch within the Office.’’.
(e) APPEAL.—Section 306 of title 35, United States
Code, is amended to read as follows:
‘‘§ 306. Appeal
‘‘(a) PATENT OWNER.—The patent owner involved in
a reexamination proceeding under this chapter—
‘‘(1) may appeal under the provisions of section
134 of this title, and may appeal under the provisions
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
requester—
‘‘(1) may appeal under the provisions of section
134 of this title, and may appeal under the provisions
of sections 141 through 144 of this title, with respect
to any final decision favorable to the patentability of
any original or proposed amended or new claim of
the patent; and
‘‘(2) may be a party to any appeal taken by the
patent owner, subject to subsection (c) of this section.
‘‘(c) PARTICIPATION AS PARTY.—(1) A third-party re-
quester who, under the provisions of sections 141 through
144 of this title, files a notice of appeal or who participates
as a party to an appeal by the patent owner is estopped
from asserting at a later time, in any forum, the invalidity
of any claim determined to be patentable on appeal on any
ground which the third-party requester raised or could have
raised during the reexamination proceedings.
‘‘(2) A third-party requester is deemed not to have par-
ticipated as a party to an appeal by the patent owner un-
less, not later than 20 days after the patent owner has filed
notice of appeal, the third-party requester files notice with
the Commissioner electing to participate.’’.
(f) REEXAMINATION PROHIBITED.—(1) Chapter 30 of
title 35, United States Code, is amended by adding at the
end the following new section:
‘‘§ 308. Reexamination prohibited
‘‘(a) ORDER FOR REEXAMINATION.—Notwithstanding
any provision of this chapter, once an order for reexamina-
tion of a patent has been issued under section 304 of this
title, neither the patent owner nor the third-party requester,
if any, nor privies of either, may file a subsequent request
for reexamination of the patent until a reexamination cer-
tificate is issued and published under section 307 of this
title, unless authorized by the Commissioner.
‘‘(b) FINAL DECISION.—Once a final decision has been
entered against a party in a civil action arising in whole
or in part under section 1338 of title 28 that the party
has not sustained its burden of proving the invalidity of
any patent claim in suit, then neither that party nor its
privies may thereafter request reexamination of any such
patent claim on the basis of issues which that party or its
privies raised or could have raised in such civil action, 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 provision 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 Ap-
peals and Interferences shall, on written appeal of an appli-
cant, or a patent owner or a third-party requester in a reex-
amination proceeding, review adverse decisions of exam-
iners upon applications for patents and decisions of exam-
iners in reexamination proceedings, and shall determine
priority and patentability of invention in interferences de-
clared 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 delayed
response by the patent owner in a reexamination pro-
ceeding, $1,250, unless the petition is filed under sec-
tions 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 patent,
any of whose claims has been twice rejected, may appeal
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 ap-
peal 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 ap-
peal.’’.
(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 sec-
tion 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 reexamination
cases, the Commissioner shall submit to the court in writing
the grounds for the decision of the Patent and Trademark
Office, addressing all the issues involved in the appeal.’’.
(f) CIVIL ACTION TO OBTAIN PATENT.—Section 145
of title 35, United States Code, is amended in the first sen-
tence 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 reexamina-
tion requests filed on or after such date.
TITLE VI—MISCELLANEOUS
PATENT PROVISIONS
SEC. 601. PROVISIONAL APPLICATIONS.
(a) ABANDONMENT.—Section 111(b)(5) of title 35,
United States Code, is amended to read as follows:
‘‘(5) ABANDONMENT.—Notwithstanding the ab-
sence of a claim, upon timely request and as pre-
scribed by the Commissioner, a provisional applica-
tion may be treated as an application filed under
subsection (a). If no such request is made, the provi-
sional application shall be regarded as abandoned 12
months after the filing date of such application and
shall not be subject to revival thereafter.’’.
(b) EFFECTIVE DATE.—The amendment made by sub-
section (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), as amended by section 203
of this Act, by striking ‘‘patent office of the foreign
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 applications
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 in-
clude the right to exclude others from asexually reproducing
the plant, and from using, offering for sale, or selling the
plant so reproduced, or any of its parts, throughout the
United States, or from importing the plant so reproduced,
or any parts thereof, into the United States.’’.
100
(c) EFFECTIVE DATE.—The amendment made by sub-
section (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 enact-
ment of this Act.
SEC. 604. JUST COMPENSATION FOR U.S. GOVERNMENT USE
OF PATENTS.
(a) COMPENSATION.—Section 1498(a) of title 28,
United States Code, is amended by adding at the end of
the first paragraph the following: ‘‘Reasonable and entire
compensation shall include the owner’s reasonable costs, in-
cluding reasonable fees for expert witnesses and attorneys,
in pursuing the action if the owner is an independent in-
ventor, a nonprofit organization, or an entity that had no
more than 500 employees at any time during the 5-year
period preceding the use or manufacture of the patented in-
vention by or for the United States.’’.
(b) EFFECTIVE DATE.—The amendment made by sub-
section (a) shall apply to actions under section 1498(a) of
title 28, United States Code, that are pending on, or
brought on or after, the date of the enactment of this Act.
SEC. 605. ELECTRONIC FILING.
Section 22 of title 35, United States Code, is amended
by striking ‘‘printed or typewritten’’ and inserting ‘‘print-
ed, typwritten, or on an electronic medium’’.