IIA
Calendar No. 33
105TH CONGRESS
2D SESSION
H. R. 400
IN THE SENATE OF THE UNITED STATES
APRIL 24, 1997
Received; read twice and referred to the Committee on the Judiciary
MARCH 23, 1998
Reported by Mr. HATCH, with an amendment in the nature of a substitute
[Strike out all after the enacting clause and insert the part printed in italic]
AN ACT
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.
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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. Extension of surcharges on patent fees.
Sec. 123. Transfers.
Sec. 124. GAO study and report.
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.
Subtitle D—Under Secretary of Commerce for Intellectual Property Policy
Sec. 151. Under Secretary of Commerce for Intellectual Property Policy.
Sec. 152. Relationship with existing authorities.
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.
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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
or research use.
Sec. 303. Effective date and applicability.
TITLE IV—ENHANCED PROTECTION OF INVENTORS’ RIGHTS
Sec. 401. Short title.
Sec. 402. Invention promotion services.
Sec. 403. Technical and conforming amendment.
Sec. 404. Effective date.
TITLE V—MISCELLANEOUS IMPROVEMENTS
Sec. 501. Provisional applications.
Sec. 502. International applications.
Sec. 503. Plant patents.
Sec. 504. Electronic filing.
Sec. 505. Divisional applications.
Sec. 506. Publications.
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
HR 400 RS
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
United 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.—(1) 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’.
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‘‘(2) As used in this title, the term ‘Under Secretary’
means the Under Secretary of Commerce for Intellectual
Property Policy.’’.
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, subject to the policy direction of the
Secretary of Commerce—
‘‘(1) shall be responsible for the granting and
issuing of patents and the registration of trade-
marks;
‘‘(2) may, in support of the Under Secretary,
assist with studies, programs, or exchanges of items
or services regarding domestic and international law
of patents, trademarks, and other matters;
‘‘(3)(A) may, in support of the Under Sec-
retary, assist with studies and programs conducted
cooperatively with foreign patent and trademark of-
fices and international organizations, in connection
with patents, trademarks, and other matters; and
‘‘(B) with the concurrence of the Secretary of
State, may authorize the transfer of not to exceed
$100,000 in any year to the Department of State
HR 400 RS
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 other mat-
ters; and
‘‘(4) shall be responsible for 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;