[Congressional Bills 105th Congress]
[From the U.S. Government Publishing Office]
[H.R. 400 Referred in Senate (RFS)]

  1st 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

_______________________________________________________________________

                                 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 Representatives 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 
                            corporation.
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: PUBLICATION 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 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 TRADEMARK OFFICE MODERNIZATION

SEC. 101. SHORT TITLE.

    This title may be cited as the ``Patent and Trademark 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:
``Sec. 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 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 actions, to be a 
resident of the district in which its principal office is located, 
except where jurisdiction is otherwise provided 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'.
    ``(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:
``Sec. 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 trademarks;
            ``(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 Secretary, assist 
        with studies and programs conducted cooperatively with foreign 
        patent and trademark offices 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 for the purpose of making special 
        payments to international intergovernmental organizations for 
        studies and programs for advancing international cooperation 
        concerning patents, trademarks, and other matters; 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 international 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 patent, certificates 
        of trademark registrations, and papers 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 judicial and 
        administrative proceedings, subject to the provisions of 
        section 7;
            ``(4) may indemnify the Director, and other officers, 
        attorneys, agents, and employees (including members of the 
        Management Advisory Board established in section 5) of the 
        Office for liabilities and expenses incurred within the scope 
        of their employment;
            ``(5) may establish regulations, not inconsistent with law, 
        which--
                    ``(A) shall govern the conduct of proceedings in 
                the Office;
                    ``(B) shall be made after notice and opportunity 
                for full participation by interested public and private 
                parties;
                    ``(C) shall facilitate and expedite the processing 
                of patent applications, particularly those which can be 
                filed, stored, processed, searched, and retrieved 
                electronically, subject to the provisions of section 
                122 relating to the confidential status of 
                applications;
                    ``(D) may govern the recognition and conduct of 
                agents, attorneys, or other persons representing 
                applicants or other parties before the Office, and may 
                require them, before being recognized as 
                representatives of applicants or other persons, to show 
                that they are of good moral character and reputation 
                and are possessed of the necessary qualifications to 
                render to applicants or other persons valuable service, 
                advice, and assistance in the presentation or 
                prosecution of their applications or other business 
                before the Office; and
                    ``(E) shall recognize the public interest in 
                continuing to safeguard broad access to the United 
                States patent system through the reduced fee structure 
                for small entities under section 41(h)(1) of this 
                title;
                    ``(F) provide for the development of a performance-
                based process that includes quantitative and 
                qualitative measures and standards for evaluating cost-
                effectiveness and is consistent with the principles of 
                impartiality and competitiveness;
            ``(6) may acquire, construct, purchase, lease, hold, 
        manage, operate, improve, alter, and renovate any real, 
        personal, or mixed property, or any interest therein, as it 
        considers necessary to carry out its functions;
            ``(7)(A) may make such purchases, contracts for the 
        construction, maintenance, or management and operation of 
        facilities, and contracts for supplies or services, without 
        regard to the provisions of the Federal Property and 
        Administrative Services Act of 1949 (40 U.S.C. 471 and 
        following), the Public Buildings Act (40 U.S.C. 601 and 
        following), and the Stewart B. McKinney Homeless Assistance Act 
        (42 U.S.C. 11301 and following); and
            ``(B) may enter into and perform such purchases and 
        contracts for printing services, including the process of 
        composition, platemaking, presswork, silk screen processes, 
        binding, microform, and the products of such processes, as it 
        considers necessary to carry out the functions of the Office, 
        without regard to sections 501 through 517 and 1101 through 
        1123 of title 44;
            ``(8) may use, with their consent, services, equipment, 
        personnel, and facilities of other departments, agencies, and 
        instrumentalities of the Federal Government, on a reimbursable 
        basis, and cooperate with such other departments, agencies, and 
        instrumentalities in the establishment and use of services, 
        equipment, and facilities of the Office;
            ``(9) may obtain from the Administrator of General Services 
        such services as the Administrator is authorized to provide to 
        other agencies of the United States, on the same basis as those 
        services are provided to other agencies of the United States;
            ``(10) may, when the Director determines that it is 
        practicable, efficient, and cost-effective to do so, use, with 
        the consent of the United States and the agency, government, or 
        international organization concerned, the services, records, 
        facilities, or personnel of any State or local government 
        agency or instrumentality or foreign government or 
        international organization to perform functions on its behalf;
            ``(11) may determine the character of and the necessity for 
        its obligations and expenditures and the manner in which they 
        shall be incurred, allowed, and paid, subject to the provisions 
        of this title and the Act of July 5, 1946 (commonly referred to 
        as the `Trademark Act of 1946');
            ``(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 execute, in accordance with its bylaws, rules, 
        and regulations, all instruments necessary and appropriate in 
        the exercise of any of its powers; and
            ``(15) may provide for liability insurance and insurance 
        against any loss in connection with its property, other assets, 
        or operations either by contract or by self-insurance.
In exercising the Director's powers under paragraphs (6) and (7)(A), 
the Director shall consult with the Administrator of General Services 
when the Director determines that it is practicable, efficient, and 
cost-effective to do so.
    ``(c) Construction.--Nothing in this section shall be construed to 
nullify, void, cancel, or interrupt any pending request-for-proposal 
let or contract issued by the General Services Administration for the 
specific purpose of relocating 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:
``Sec. 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) Consulting with the management 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 Advisory Board 
                before submitting budgetary proposals to the Office of 
                Management and Budget or changing or proposing to 
                change patent or trademark user fees or patent or 
                trademark regulations.
                    ``(C) Security clearances.--The Director, in 
                consultation with the Director of the Office of 
                Personnel Management, shall maintain a program for 
                identifying national security positions and providing 
                for appropriate security clearances.
            ``(3) Term.--The Director shall serve a term of 5 years, 
        and may continue to serve after the expiration of the 
        Director's term until a successor is appointed and assumes 
        office. The Director may be reappointed 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 be paid an annual 
        rate of basic pay not to exceed the maximum rate of basic pay 
        of the Senior Executive Service established under section 5382 
        of title 5, including any applicable locality-based 
        comparability payment that may be authorized under section 
        5304(h)(2)(C) of title 5. In addition, the Director may receive 
        a bonus in an amount up to, but not in excess of, 50 percent of 
        such annual rate of basic pay, 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 organization and individual goals in key operational 
        areas as delineated in an annual performance plan agreed to by 
        the Director and the Secretary. Payment of a bonus under this 
        paragraph may be made to the Director only to the extent that 
        such payment does not cause the Director's total aggregate 
        compensation in a calendar year to equal or exceed the amount 
        of the salary of the President under section 102 of title 3.
            ``(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 incapacity of the Director.
    ``(b) Officers and Employees of the Office.--
            ``(1) Commissioners.--The Director shall appoint a 
        Commissioner for Patents and a Commissioner 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 Commissioner 
        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 management 
        advisers to the Director on all aspects of the activities of 
        the Office that affect the administration of patent and 
        trademark operations, respectively.
            ``(2) Other officers and employees.--The Director shall--
                    ``(A) appoint such officers, employees (including 
                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 administratively 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.
            ``(3) Training of examiners.--The Patent and Trademark 
        Office shall develop an incentive program to retain as 
        employees patent and trademark examiners of the primary 
        examiner grade or higher who are eligible for retirement, for 
        the sole purpose of training patent and trademark examiners.
    ``(c) Continued Applicability of Title 5.--Officers and employees 
of the Office shall be subject to the provisions of title 5 relating to 
Federal employees. Section 2302 of title 5 applies to the Office, 
notwithstanding subsection (a)(2)(C) of such section.
    ``(d) Adoption of Existing Labor Agreements.--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 Modernization Act, all officers and 
        employees of the Patent and Trademark Office on the day before 
        such effective 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 officer 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 Trademark 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 paragraph (1), and shall 
        be made without a break in service.
            ``(3) Accumulated leave.--The amount of sick and annual 
        leave and compensatory time accumulated under title 5 before 
        the effective date described in paragraph (1), by those 
        becoming officers or employees of the Office pursuant to this 
        subsection, 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 Assistant Commissioner for Patents on 
        the day before the effective date of the Patent and Trademark 
        Office Modernization Act may serve as the Commissioner for 
        Patents until the date on which a Commissioner 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 
        Commissioner 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:
``Sec. 5. Patent and Trademark Office Management Advisory Board
    ``(a) Establishment of Management Advisory Board.--
            ``(1) Appointment.--The United States Patent and Trademark 
        Office shall have a Management Advisory Board (hereafter in 
        this title referred to as the `Advisory Board') of 12 members, 
        4 of whom shall be appointed by the President, 4 of whom shall 
        be appointed by the Speaker of the House of Representatives, 
        and 4 of whom shall be appointed by the majority 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 Advisory Board shall be 
        appointed for a term of 4 years each, except that of the 
        members first appointed by each appointing authority, 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 Advisory Board, whose term as chair shall be for 3 years.
            ``(4) Timing of appointments.--Initial appointments to the 
        Advisory 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 appointed 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 appointed.
            ``(6) Committees.--The Chair shall designate members of the 
        Advisory Board to serve on a committee on patent operations and 
        on a committee on trademark operations to perform the duties 
        set forth in subsection (e) as they relate specifically to the 
        Office's patent operations, and the Office's trademark 
        operations, respectively.
    ``(b) Basis for Appointments.--Members of the Advisory 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, including inventors, and shall include individuals 
with substantial background and achievement in corporate finance and 
management.
    ``(c) Applicability of Certain Ethics Laws.--Members of the 
Advisory Board shall be special Government employees within the meaning 
of section 202 of title 18.
    ``(d) Meetings.--The Advisory Board shall meet at the call of the 
chair, not less than every 6 months, to consider an agenda set by the 
chair.
    ``(e) Duties.--The Advisory 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 referred 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 Office Official Gazette.
    ``(f) Compensation.--Members of the Advisory Board shall be 
compensated for each day (including travel time) during which they are 
attending meetings or conferences of the Advisory Board or otherwise 
engaged in the business of the Advisory Board, at the rate which is the 
daily equivalent of the annual rate of basic pay in effect for level 
III of the Executive 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 Advisory 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 information 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 referred 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 concurrent 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 administrative trademark judges who are appointed by 
the Director.''.

SEC. 117. BOARD OF PATENT APPEALS AND INTERFERENCES.

    Chapter 1 of title 35, United States Code, is amended by striking 
section 7 and inserting after section 5 the following:
``Sec. 6. Board of Patent Appeals and Interferences
    ``(a) Establishment and Composition.--There shall be in the United 
States Patent and Trademark Office a Board of Patent Appeals and 
Interferences. The Director, the Commissioner for Patents, the 
Commissioner for Trademarks, and the administrative patent judges shall 
constitute the Board. The administrative patent judges shall be persons 
of competent legal knowledge and scientific ability who are appointed 
by the Director.
    ``(b) Duties.--The Board of Patent Appeals and Interferences shall, 
on written appeal of an applicant, review 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 Interferences 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:
``Sec. 7. Suits by and against the Office
    ``(a) Actions Under United States Law.--Any civil action or 
proceeding to which the United States Patent 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 Office 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, intermediate 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 amended to read as 
follows:
``Sec. 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 moneys 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 preceding 
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 amended by inserting 
before the last sentence the following: ``The Director shall have the 
discretion to designate any attorney who is an officer or employee of 
the United States Patent and Trademark Office to conduct the hearing 
required by this section.''.

SEC. 121. FUNDING.

    Section 42 of title 35, United States Code, is amended to read as 
follows:
``Sec. 42. Patent and Trademark Office funding
    ``(a) Fees Payable to the Office.--All fees for services performed 
by or materials furnished by the United 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 Office 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 processing of trademark registrations and for other 
services and materials relating to trademarks.''.

SEC. 122. EXTENSION OF SURCHARGES ON PATENT FEES.

    (a) In General.--Section 10101 of the Omnibus Budget Reconciliation 
Act of 1990 (35 U.S.C. 41 note) is amended to read as follows:

``SEC. 10101. PATENT AND TRADEMARK OFFICE USER FEES.

    ``(a) Surcharges.--There shall be a surcharge on all fees 
authorized by subsections (a) and (b) of section 41 of title 35, United 
States Code, in order to ensure that the amounts specified in 
subsection (c) are collected.
    ``(b) Use of Surcharges.--Notwithstanding section 3302 of title 31, 
United States Code, all surcharges collected by the Patent and 
Trademark Office--
            ``(1) shall be credited to a separate account established 
        in the Treasury and ascribed to the activities of the United 
        States Patent and Trademark Office as offsetting collections,
            ``(2) shall be collected by and available to the United 
        States Patent and Trademark Office for all authorized 
        activities and operations of the Office, including all direct 
        and indirect costs of services provided by the office, and
            ``(3) shall remain available until expended.
    ``(c) Establishment of Surcharges.--The Director of the United 
States Patent and Trademark Office shall establish surcharges under 
subsection (a), subject to the provisions of section 553 of title 5, 
United States Code, in order to ensure that $119,000,000, but not more 
than $119,000,000, are collected in fiscal year 1999 and each fiscal 
year thereafter.
    ``(d) Appropriations Act Required.--Notwithstanding subsections (a) 
through (c), no fee established by subsection (a) shall be collected 
nor shall be available for spending without prior authorization in 
appropriations Acts.''.
    (b) Effective Date.--The amendment made by subsection (a) shall 
take effect on October 1, 1998.

SEC. 123. TRANSFERS.

    (a) Transfer of Functions.--Except to the extent that such 
functions, powers, and duties relate to the direction of patent or 
trademark policy, there are transferred to, and vested in, the United 
States Patent and Trademark 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 Department 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 effective 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 appropriations, 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.

SEC. 124. GAO STUDY AND REPORT.

    The Comptroller General shall conduct a study of and, not later 
than the date that is 2 years after the effective date of this title, 
submit to the Committee on the Judiciary of the House of 
Representatives and the Committee on the Judiciary of the Senate a 
report on--
            (1) the operations of the Patent and Trademark Office as a 
        Government corporation; and
            (2) the feasibility and desirability of making the 
        trademark operations of the Patent and Trademark Office a 
        separate Government corporation or agency.

            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 amended 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 41(h) of title 35, United States Code, is amended by 
striking ``Commissioner of Patents and Trademarks'' and inserting 
``Director''.
            (6) Section 155 of title 35, United States Code, is amended 
        by striking ``Commissioner of Patents and Trademarks'' and 
        inserting ``Director''.
            (7) Section 155A(c) of title 35, United States Code, is 
        amended by striking ``Commissioner of Patents and Trademarks'' 
        and inserting ``Director''.
            (8) Section 302 of title 35, United States Code, is amended 
        by striking ``Commissioner of Patents'' and inserting 
        ``Director''.
            (9) Section 303(b) of title 35, United States Code, is 
        amended by striking ``Commissioner's'' and inserting 
        ``Director's''.
            (10)(A) Except as provided in subparagraph (B), title 35, 
        United States Code, is amended by striking ``Commissioner'' 
        each place it appears and inserting ``Director''.
            (B) Chapter 17 of title 35, United States Code, is amended 
        by striking ``Commissioner'' each place it appears and 
        inserting ``Commissioner of Patents''.
            (11) Section 41(a)(8)(A) of title 35, United States Code, 
        is amended by striking ``On'' and inserting ``on''.
            (12) Section 157(d) of title 35, United States Code, is 
        amended by striking ``Secretary of Commerce'' and inserting 
        ``Director''.
            (13) Section 181 of title 35, United States Code, is 
        amended in the third paragraph by striking ``Secretary of 
        Commerce under rules prescribed by him'' and inserting 
        ``Director under rules prescribed by the Patent and Trademark 
        Office''.
            (14) Section 188 of title 35, United States Code, is 
        amended by striking ``Secretary of Commerce'' and inserting 
        ``Patent and Trademark Office''.
            (15) Section 202(a) of title 35, United States Code, is 
        amended by striking ``iv)'' and inserting ``(iv)''.
    (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 referred to as the 
        ``Trademark Act of 1946''; 15 U.S.C. 1051 and following), 
        except for section 17, as amended by section 116 of this Act, 
        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 following:
                    ``(R) the United States Patent and Trademark 
                Office.''.
            (3) Section 500(e) of title 5, United States Code, is 
        amended by striking ``Patent Office'' and inserting ``United 
        States Patent and Trademark Office''.
            (4) Section 5102(c)(23) of title 5, United States Code, is 
        amended to read as follows:
            ``(23) administrative patent judges and designated 
        administrative patent judges in the United States Patent and 
        Trademark Office;''.
            (5) Section 5316 of title 5, United States Code (5 U.S.C. 
        5316) is amended by striking ``Commissioner of Patents, 
        Department of Commerce.'', ``Deputy Commissioner of Patents and 
        Trademarks.'', ``Assistant Commissioner for Patents.'', and 
        ``Assistant Commissioner for Trademarks.''.
            (6) Section 9(p)(1)(B) of the Small Business Act (15 U.S.C. 
        638(p)(1)(B)) is amended to read as follows:
                    ``(B) the Director of the United States Patent and 
                Trademark Office; and''.
            (7) Section 12 of the Act of February 14, 1903 (15 U.S.C. 
        1511) is amended by striking ``(d) Patent and Trademark 
        Office;'' and redesignating subsections (a) through (g) as 
        paragraphs (1) through (6), respectively.
            (8) Section 19 of the Tennessee Valley Authority Act of 
        1933 (16 U.S.C. 831r) is amended--
                    (A) by striking ``Patent Office of the United 
                States'' 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''.
            (9) Section 182(b)(2)(A) of the Trade Act of 1974 (19 
        U.S.C. 2242(b)(2)(A)) is amended by striking ``Commissioner of 
        Patents and Trademarks'' and inserting ``Director of the United 
        States Patent and Trademark Office''.
            (10) Section 302(b)(2)(D) of the Trade Act of 1974 (19 
        U.S.C. 2412(b)(2)(D)) is amended by striking ``Commissioner of 
        Patents and Trademarks'' and inserting ``Director of the United 
        States Patent and Trademark Office''.
            (11) The Act of April 12, 1892 (27 Stat. 395; 20 U.S.C. 91) 
        is amended by striking ``Patent Office'' and inserting ``United 
        States Patent and Trademark Office''.
            (12) 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 Commerce'' and inserting ``United States Patent 
        and Trademark Office''.
            (13) Section 702(d) of the Federal Food, Drug, and Cosmetic 
        Act (21 U.S.C. 372(d)) is amended by striking ``Commissioner of 
        Patents'' and inserting ``Director of the United States Patent 
        and Trademark Office''.
            (14) Section 105(e) of the Federal Alcohol Administration 
        Act (27 U.S.C. 205(e)) is amended by striking ``United States 
        Patent Office'' and inserting ``United States Patent and 
        Trademark Office''.
            (15) Section 1295(a)(4) of title 28, United States Code, is 
        amended--
                    (A) in subparagraph (A) by inserting ``United 
                States'' before ``Patent and Trademark''; and
                    (B) in subparagraph (B) by striking ``Commissioner 
                of Patents and Trademarks'' and inserting ``Director of 
                the United States Patent and Trademark Office''.
            (16) 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 Trademark Office'';
                    (B) by striking ``Commissioner of Patents'' and 
                inserting ``Director of the United States Patent and 
                Trademark Office''; and
                    (C) by striking ``Commissioner'' and inserting 
                ``Director''.
            (17) Section 1745 of title 28, United States Code, is 
        amended by striking ``United States Patent Office'' and 
        inserting ``United States Patent and Trademark Office''.
            (18) Section 1928 of title 28, United States Code, is 
        amended by striking ``Patent Office'' and inserting ``United 
        States Patent and Trademark Office''.
            (19) Section 151 of the Atomic Energy Act of 1954 (42 
        U.S.C. 2181) is amended in subsections c. and d. by striking 
        ``Commissioner of Patents'' and inserting ``Director of the 
        United States Patent and Trademark Office''.
            (20) Section 152 of the Atomic Energy Act of 1954 (42 
        U.S.C. 2182) is amended by striking ``Commissioner of Patents'' 
        each place it appears and inserting ``Director of the United 
        States Patent and Trademark Office''.
            (21) Section 305 of the National Aeronautics and Space Act 
        of 1958 (42 U.S.C. 2457) is amended--
                    (A) in subsection (c) by striking ``Commissioner of 
                Patents'' and inserting ``Director of the United States 
                Patent and Trademark Office (hereafter in this section 
                referred to as the `Director')''; and
                    (B) by striking ``Commissioner'' each subsequent 
                place it appears and inserting ``Director''.
            (22) 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''.
            (23) Section 1111 of title 44, United States Code, is 
        amended by striking ``the Commissioner of Patents,''.
            (24) Section 1114 of title 44, United States Code, is 
        amended by striking ``the Commissioner of Patents,''.
            (25) Section 1123 of title 44, United States Code, is 
        amended by striking ``the Patent Office,''.
            (26) 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.
            (27) 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 Trademark Office''.
            (28) 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 Insurance 
                        Corporation;'';
                            (iii) by striking ``or'' before ``the 
                        Commissioner of Social Security,''; and
                            (iv) by inserting ``or the Director of the 
                        United States Patent and Trademark Office;'' 
                        after ``Social Security Administration;''; and
                    (B) in paragraph (2)--
                            (i) by striking ``or'' before ``the 
                        Veterans' 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 Federal law, Executive 
order, rule, regulation, or delegation of authority, or any document of 
or pertaining to a department 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 office 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 function 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 Trademarks 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 Trademarks is deemed 
        to refer to the Commissioner for Trademarks.

SEC. 142. EXERCISE OF AUTHORITIES.

    Except as otherwise provided by law, a Federal official to whom a 
function is transferred by this title may, for purposes of performing 
the function, exercise all authorities under any other provision of law 
that were available 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, agreements, 
certificates, licenses, and privileges--
            (1) that have been issued, made, granted, or allowed to 
        become effective by the President, the Secretary of Commerce, 
        any officer or employee of any office transferred by this 
        title, or any other Government official, or by a court of 
        competent jurisdiction, 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 authorized 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 transferred by this title, but such 
proceedings and applications shall be continued. Orders shall be issued 
in such proceedings, 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, superseded, 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 discontinuance 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 commenced 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 Department 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 transferred by 
this title, shall abate by reason of the enactment of this title.
    (e) Continuance of Suits.--If any Government officer 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, substituted or added as a party.
    (f) Administrative Procedure and Judicial Review.--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 balances of 
appropriations, allocations, and other funds employed, 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 transferred.

SEC. 145. DELEGATION AND ASSIGNMENT.

    Except as otherwise expressly prohibited by law or otherwise 
provided in this title, an official to whom functions 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 appropriate. 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 determination 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 determinations as may be necessary with regard to the 
functions transferred by this title, and to make such additional 
incidental 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 necessary to carry out the provisions of 
this title. The Director shall provide for the termination of the 
affairs of all entities terminated by this title and for such further 
measures 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 function.

SEC. 148. AVAILABILITY OF EXISTING FUNDS.

    Existing appropriations and funds available for the performance of 
functions, programs, and activities terminated pursuant to this title 
shall remain available, for the duration of their period of 
availability, for necessary expenses in connection with the termination 
and resolution of such functions, programs, and activities, subject to 
the submission of a plan to the Committees on Appropriations of the 
House and Senate in accordance with the procedures set forth in section 
605 of the Departments of Commerce, Justice, and State, the Judiciary, 
and Related Agencies Appropriations Act 1997.

SEC. 149. DEFINITIONS.

    For purposes of this title--
            (1) the term ``function'' includes any duty, obligation, 
        power, authority, responsibility, right, privilege, activity, 
        or program; and
            (2) the term ``office'' includes any office, 
        administration, agency, bureau, institute, council, unit, 
        organizational entity, or component thereof.

   Subtitle D--Under Secretary of Commerce for Intellectual Property 
                                 Policy

SEC. 151. UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY POLICY.

    (a) Appointment.--There shall be within the Department of Commerce 
an Under Secretary of Commerce for Intellectual Property Policy, who 
shall be appointed by the President, by and with the advice and consent 
of the Senate. On or after the effective date of this title, the 
President may appoint an individual to serve as the Under Secretary 
until the date on which an Under Secretary qualifies under this 
subsection. The President shall not make more than 1 appointment under 
the preceding sentence.
    (b) Duties.--The Under Secretary of Commerce for Intellectual 
Property Policy, under the direction of the Secretary of Commerce, 
shall perform the following functions with respect to intellectual 
property policy:
            (1) In coordination with the Under Secretary of Commerce 
        for International Trade, promote exports of goods and services 
        of the United States industries that rely on intellectual 
        property.
            (2) Advise the President, through the Secretary of 
        Commerce, on national and international intellectual property 
        policy issues.
            (3) Advise Federal departments and agencies on matters of 
        intellectual property protection in other countries.
            (4) Provide guidance, as appropriate, with respect to 
        proposals by agencies to assist foreign governments and 
        international intergovernmental organizations on matters of 
        intellectual property protection.
            (5) Conduct programs and studies related to the 
        effectiveness of intellectual property protection throughout 
        the world.
            (6) Advise the Secretary of Commerce on programs and 
        studies relating to intellectual property policy that are 
        conducted, or authorized to be conducted, cooperatively with 
        foreign patent and trademark offices and international 
        intergovernmental organizations.
            (7) In coordination with the Department of State, conduct 
        programs and studies cooperatively with foreign intellectual 
        property offices and international intergovernmental 
        organizations.
    (c) Deputy Under Secretaries.--To assist the Under Secretary of 
Commerce for Intellectual Property Policy, the Secretary of Commerce 
shall appoint a Deputy Under Secretary for Patent Policy and a Deputy 
Under Secretary for Trademark Policy as members of the Senior Executive 
Service in accordance with the provisions of title 5, United States 
Code. The Deputy Under Secretaries shall perform such duties and 
functions as the Under Secretary for Intellectual Property Policy shall 
prescribe.
    (d) Compensation.--Section 5314 of title 5, United States Code, is 
amended by adding at the end the following:
            ``Under Secretary of Commerce for Intellectual Property 
        Policy.''.
    (e) Funding.--Funds available to the United States Patent and 
Trademark Office shall be made available for all expenses of the office 
of the Under Secretary for Intellectual Property Policy, subject to 
prior approval in appropriations Acts. Amounts made available under 
this subsection shall not exceed 2 percent of the projected annual 
revenues of the Patent and Trademark Office from fees for services and 
goods of that Office. The Secretary of Commerce shall determine the 
budget requirements of the office of the Under Secretary for 
Intellectual Property Policy.

SEC. 152. RELATIONSHIP WITH EXISTING AUTHORITIES.

    Nothing in section 151 shall derogate from the duties of the United 
States Trade Representative as set forth in section 141 of the Trade 
Act of 1974 (19 U.S.C. 2171).

     TITLE II--EXAMINING PROCEDURE IMPROVEMENTS: PUBLICATION WITH 
      PROVISIONAL ROYALTIES; TERM EXTENSIONS; FURTHER EXAMINATION

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:
``Sec. 122. Confidential status of applications; publication of patent 
              applications
    ``(a) Confidentiality.--Except as provided in subsection (b), 
applications for patents shall be kept in confidence by the Patent and 
Trademark Office and no information concerning applications for patents 
shall be given without authority of the applicant or owner unless 
necessary 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, promptly 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 patent 
        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 in the process of being 
        reviewed by the Atomic Energy Commission, the Department of 
        Defense, or a defense agency pursuant to section 181 of this 
        title shall not be published until the Director has been 
        notified by the Atomic Energy Commission, the Secretary of 
        Defense, or the chief officer of the defense agency, as the 
        case may be, that in the opinion of the Atomic Energy 
        Commission, the Secretary of Defense, or such chief officer, as 
        the case may be, publication or disclosure of the invention by 
        the granting of a patent would not be detrimental to the 
        national security of the United States.
            ``(C) An application that is subject to a secrecy order 
        pursuant to section 181 of this title shall not be published.
            ``(D) An application filed by a small business concern 
        entitled to reduced fees under section 41(h)(1) of this title, 
        by an individual who is an independent inventor entitled to 
        reduced fees under such section, or by an institution of higher 
        education (as defined in section 1202 of the Higher Education 
        Act of 1965) entitled to reduced fees under such section 
        41(h)(1) shall not be published until a patent is issued 
        thereon, except upon the request of the applicant, or in any of 
        the following circumstances:
                    ``(i) In the case of an application under section 
                111(a) for a patent for an invention for which the 
                applicant intends to file or has filed an application 
                for a patent in a foreign country, the Commissioner may 
                publish, at the discretion of the Commissioner and by 
                means determined suitable for the purpose, no more than 
                that data from such application under section 111(a) 
                which will be made or has been made public in such 
                foreign country. Such a publication shall be made only 
                after the date of the publication in such foreign 
                country and shall be made only if the data is not 
                available, or cannot be made readily available, in the 
                English language through commercial services.
                    ``(ii) If the Commissioner determines that a patent 
                application which is filed after the date of the 
                enactment of this paragraph--
                            ``(I) has been pending more than 5 years 
                        from the effective filing date of the 
                        application,
                            ``(II) has not been previously published by 
                        the Patent and Trademark Office,
                            ``(III) is not under any appellate review 
                        by the Board of Patent Appeals and 
                        Interferences,
                            ``(IV) is not under interference 
                        proceedings in accordance with section 135(a),
                            ``(V) is not under any secrecy order 
                        pursuant to section 181,
                            ``(VI) is not being diligently pursued by 
                        the applicant in accordance with this title, 
                        and
                            ``(VII) is not in abandonment,
                the Commissioner shall notify the applicant of such 
                determination.
                    ``(iii) An applicant which received notice of a 
                determination described in clause (ii) may, within 30 
                days of receiving such notice, petition the 
                Commissioner to review the determination to verify that 
                subclauses (I) through (VII) are all applicable to the 
                applicant's application. If the applicant makes such a 
                petition, the Commissioner shall not publish the 
                applicant's application before the Commissioner's 
                review of the petition is completed. If the applicant 
                does not submit a petition, the Commissioner may 
                publish the applicant's application no earlier than 90 
                days after giving such a notice.
                    ``(iv) If after the date of the enactment of this 
                paragraph a continuing application has been filed more 
                than 6 months after the date of the initial filing of 
                an application, the Commissioner shall notify the 
                applicant under such application. The Commissioner 
                shall establish a procedure for an applicant which 
                receives such a notice to demonstrate that the purpose 
                of the continuing application was for reasons other 
                than to achieve a delay in the time of publication of 
                the application. If the Commissioner agrees with such a 
                demonstration by the applicant, the Commissioner shall 
                not publish the applicant's application. If the 
                Commissioner does not agree with such a demonstration 
                by the applicant or if the applicant does not make an 
                attempt at such a demonstration within a reasonable 
                period of time as determined by the Commissioner, the 
                Commissioner shall publish the applicant's application.
            ``(E)(i) Upon the request at the time of filing by an 
        applicant that is a small business concern or an independent 
        inventor entitled to reduced fees under section 41(h)(1) of 
        this title, the application shall not be published in 
        accordance with paragraph (1) until 3 months after the Director 
        makes a second notification to such applicant on the merits of 
        the application under section 132 of this title. The Director 
        may require applicants that no longer have the status of a 
        small business concern or an independent inventor to so notify 
        the Director not later than 15 months after the earliest filing 
        date for which a benefit is sought under 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 or 365(c) of this 
        title shall not be eligible for a request pursuant to this 
        subparagraph.
            ``(iii) Applications asserting the benefit of an earlier 
        application under section 121 shall not be eligible for a 
        request pursuant to this subparagraph unless filed within 2 
        months after the date on which the Director required the 
        earlier application to be restricted to 1 of 2 or more 
        inventions in the earlier application.
            ``(iv) 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.
            ``(v) The Director may establish appropriate procedures and 
        nominal fees for making a request under this subparagraph.
            ``(F)(i) In a case in which an applicant, after making a 
        request under subparagraph (E)(i), determines to file an 
        application in a foreign country, the applicant shall notify 
        the Director promptly. The application shall then be published 
        in accordance with the provisions of paragraph (1).
            ``(ii) The Director may establish appropriate fees to cover 
        the costs of processing notifications under clause (i), 
        including the costs of any special handling of applications 
        resulting from the initial request under subparagraph (E)(i).
            ``(F) No fee established under this section shall be 
        collected nor shall be available for spending without prior 
        authorization in appropriations Acts.
    ``(c) Pre-Issuance Opposition.--The provisions of this section 
shall not operate to create any new opportunity for pre-issuance 
opposition. The Director may establish appropriate procedures to ensure 
that this section does not create any new opportunity for pre-issuance 
opposition.''.

SEC. 203. TIME FOR CLAIMING BENEFIT OF EARLIER FILING 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 identifies 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 applicant to 
file a timely claim for priority as a waiver of any such claim, and may 
require the payment of a surcharge as a condition of accepting an 
untimely claim during 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 considers 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 benefit of an earlier filed application under 
this section unless an amendment containing the specific reference to 
the earlier filed application is submitted at such time during the 
pendency of the application as is required by the Commissioner. 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 establish 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 ``; provisional 
        rights'' after ``patent''; and
            (2) by adding at the end the following new subsection:
    ``(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 publication 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 
        defined 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 published 
                patent application is a process, uses, offers for sale, 
                or sells in the United States or imports into the 
                United States products made by that process as claimed 
                in the published patent application; and
                    ``(B) had actual notice of the published patent 
                application and, where the right arising under this 
                paragraph is based upon an international 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 identical 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 invention as claimed in the published patent 
        application.
            ``(3) Time limitation on obtaining a reasonable 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 applications.--The 
        right under paragraph (1) to obtain 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 international application, or, if the publication 
        under the treaty of the international application is in a 
        language other than English, from the date that the Patent and 
        Trademark Office receives a translation of the international 
        application in the English language. 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 APPLICATIONS.

    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 pursuant to 
        section 122(b) of this title, by another filed in the United 
        States before the invention by the applicant for patent, except 
        that an international application 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 published under 
        Article 21(2)(a) of such treaty in the English language, or
            ``(2) a patent granted on an application for patent 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 Trademark Office shall 
recover the cost of early publication required by the amendment made by 
section 202 by adjusting 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 applications 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 applications 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 applications for 
                patents'' after ``patents''.
            (4) The items relating to sections 12 and 13 in the table 
        of sections for chapter 1, as amended by section 132(a)(4) of 
        this Act, 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 ``applications''.
            (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 paragraph 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: ``Increased 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:
``Sec. 374. Publication of international application: Effect
    ``The publication under the treaty defined in section 351(a) of 
this title of an international application designating the United 
States shall confer the same rights and shall have the same effect 
under this title as an application for patent published under section 
122(b), except as provided in sections 102(e) and 154(d) of this 
title.''.
            (11) Section 135(b) of title 35, United States Code, is 
        amended to read as follows:
    ``(b)(1) A claim which is the same as, or for the same or 
substantially the same subject matter as, a claim of an issued patent 
may only be made in an application if--
            ``(A) such a claim is made prior to 1 year after the date 
        on which the patent was granted; and
            ``(B) the applicant files evidence which demonstrates that 
        the applicant is prima facie entitled to a judgment relative to 
        the patent.
    ``(2)(A) A claim which is the same as, or for the same or 
substantially the same subject matter as, a claim of a published 
application may only be made in an application filed after the date of 
publication of the published application if, except in a case to which 
subparagraph (B) applies--
            ``(i) such a claim is made prior to 1 year after the date 
        of publication of the published application; and
            ``(ii) the applicant of the application filed after the 
        date of publication of the published application files evidence 
        that demonstrates that the applicant is prima facie entitled to 
        a judgment relative to the published application.
    ``(B) If the applicant of the application filed after the date of 
publication of the published application alleges that the invention 
claimed in the published application was derived from that applicant, 
such a claim may only be made if that applicant files evidence which 
demonstrates that the applicant is prima facie entitled to a judgment 
relative to the published application.''.

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 section 146, of 
                        this title,
                            ``(ii) the imposition of an order pursuant 
                        to section 181 of this title,
                            ``(iii) 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 issuing the 
                        patent,
                the term of the patent shall be extended for the period 
                of delay.
                    ``(B) Administrative delay.--For purposes of 
                subparagraph (A)(iv), an unusual administrative delay 
                by the Patent and Trademark Office is the failure to--
                            ``(i) make a notification of the rejection 
                        of any claim for a patent or any objection or 
                        argument under section 132 of this title or 
                        give or mail a written notice of allowance 
                        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 Interferences 
                        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;
                            ``(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 satisfied; or
                            ``(v) issue a patent within 3 years after 
                        the filing date of the application in the 
                        United States, if the applicant--
                                    ``(I) has not obtained further 
                                limited examination of the application 
                                under section 209 of the Examining 
                                Procedure Improvements Act;
                                    ``(II) has not benefitted from an 
                                extension of patent term under clause 
                                (i), (ii), or (iii) of paragraph 
                                (1)(A);
                                    ``(III) has not sought or obtained 
                                appellate review by the Board of Patent 
                                Appeals and Interferences or by a 
                                Federal Court other than in a case in 
                                which the patent was issued pursuant to 
                                a decision in the review reversing an 
                                adverse determination of patentability; 
                                and
                                    ``(IV) has not requested any delay 
                                in the processing of the application by 
                                the Patent and Trademark Office.
            ``(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 paragraph (1) overlap, the period of any 
        extension granted under this subsection shall not exceed the 
        actual number of days the issuance of the patent was delayed.
            ``(B) The period of extension of the term of a patent under 
        clause (iv) of paragraph (1)(A), which is based on the failure 
        of the Patent and Trademark Office to meet the criteria set 
        forth in clause (v) of paragraph (1)(B), shall be reduced by 
        the cumulative total of any periods of time that an applicant 
        takes to respond in excess of 3 months after the date on which 
        the Patent and Trademark Office makes any rejection, objection, 
        argument, or other request.
            ``(C) 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 prosecution of the application. The Director shall 
        prescribe regulations establishing the circumstances that 
        constitute a failure of an applicant to engage in reasonable 
        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).
            ``(D) No patent the term of which has been disclaimed 
        beyond a specified date may be extended under this section 
        beyond the expiration date specified in the disclaimer.
            ``(3) Procedures.--The Director shall prescribe regulations 
        establishing procedures for the notification of patent term 
        extensions under this subsection and procedures for contesting 
        patent term extensions under this subsection.''.

SEC. 209. FURTHER EXAMINATION OF PATENT APPLICATIONS.

    Section 132 of title 35, United States Code, is amended--
            (1) in the first sentence by striking ``Whenever'' and 
        inserting ``(a) Whenever''; and
            (2) by adding at the end the following:
    ``(b) The Director shall prescribe regulations to provide for the 
further limited examination of applications for patent at the request 
of the applicant. The Director may establish appropriate fees for such 
further limited examination and shall be authorized to provide a 50 
percent reduction on such fees for small entities that qualify for 
reduced fees under section 41(h)(1) of this title.

SEC. 210. LAST DAY OF PENDENCY OF PROVISIONAL APPLICATION.

    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 
secular or business day.''.

SEC. 211. REPORTING REQUIREMENT.

    The Director of the United States Patent and Trademark 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 patent applications filed by applicants who are independent 
inventors entitled to reduced fees under section 41(h)(1) 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 amendments 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 and Research Users of Patented Technologies Act''.

SEC. 302. DEFENSE TO PATENT INFRINGEMENT BASED ON PRIOR DOMESTIC 
              COMMERCIAL OR RESEARCH USE.

    (a) Defense.--Chapter 28 of title 35, United States Code, is 
amended by adding at the end the following new section:
``Sec. 273. Prior domestic commercial or research use; defense to 
              infringement
    ``(a) Definitions.--For purposes of this section--
            ``(1) the terms `commercially used', `commercially 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 
        accessible to or otherwise known to the public;
            ``(2) in the case of activities performed by a nonprofit 
        research laboratory, or nonprofit entity such as a university, 
        research center, or hospital, a use for which the public is the 
        intended beneficiary shall be considered to be a use described 
        in paragraph (1) if the use is limited to activity that 
        occurred within the laboratory or nonprofit entity or by 
        persons in privity with that laboratory or nonprofit entity 
        before the effective filing date of the application for patent 
        at issue, except that the use--
                    ``(A) may be asserted as a defense under this 
                section only by the laboratory or nonprofit entity; and
                    ``(B) may not be asserted as a defense with respect 
                to any subsequent use by any entity other than such 
                laboratory, nonprofit entity, or persons in privity;
            ``(3) the terms `used in commerce', and `use in commerce' 
        mean that there has been an actual sale or other arm's-length 
        commercial transfer of the subject matter at issue or that 
        there has been an actual sale or other arm's-length commercial 
        transfer of a product or service resulting from the use of the 
        subject matter at issue; and
            ``(4) 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 matter 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 Defense.--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 general 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 
        volume of use of the claimed subject matter, and to 
        improvements in the claimed subject matter that do not infringe 
        additional specifically claimed subject matter of the patent.
            ``(3) Effective and serious preparation.--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 actually reduced the subject matter 
                to practice in the United States, completed a 
                significant portion of the total investment necessary 
                to commercially use the subject matter, and made an 
                arm's-length commercial transaction in the United 
                States in connection with the preparation to use the 
                subject matter; and
                    ``(B) thereafter the person diligently completed 
                the remainder of the activities and investments 
                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 transfer 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 actually 
        reduced to practice more than one year prior to the effective 
        filing date of the patent by the person asserting the defense 
        or someone 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 defense, the court shall find the case exceptional for the purpose 
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 because a defense is 
established under this section.''.
    (b) Conforming Amendment.--The table of sections at the beginning 
of chapter 28 of title 35, United States Code, is amended by adding at 
the end the following new item:

``273. Prior domestic commercial or research 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 
infringement, including a consent judgment, has been made before such 
date of enactment.

           TITLE IV--ENHANCED PROTECTION OF INVENTORS' RIGHTS

SEC. 401. SHORT TITLE.

    This title may be cited as the ``Enhanced Protection of Inventors' 
Rights Act''.

SEC. 402. INVENTION PROMOTION SERVICES.

    Part I of title 35, United States Code, is amended by adding after 
chapter 4 the following new chapter:

               ``CHAPTER 5--INVENTION PROMOTION 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 promoter.
``59. Rule of construction.
``Sec. 51. Definitions
    ``For purposes of this chapter--
            ``(1) the term `contract for invention promotion services' 
        means a contract by which an invention promoter undertakes 
        invention promotion services for a customer;
            ``(2) the term `customer' means any person, firm, 
        partnership, corporation, or other entity who enters into a 
        financial relationship or a contract with an invention promoter 
        for invention promotion services;
            ``(3) the term `invention promoter' means any person, firm, 
        partnership, corporation, or other entity who offers to perform 
        or performs for, or on behalf of, a customer any act described 
        under paragraph (4), but does not include--
                    ``(A) any department or agency of the Federal 
                Government or of a State or local government;
                    ``(B) any nonprofit, charitable, scientific, or 
                educational organization, qualified under applicable 
                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 Patent 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 promotion 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 licensed by a State 
                to practice law who is acting solely within the scope 
                of that person's professional license;
                    ``(B) evaluating the invention to determine its 
                commercial potential by any person for purposes other 
                than providing venture capital; or
                    ``(C) marketing, brokering, licensing, selling, or 
                promoting the invention or a product or service in 
                which the invention is incorporated or used, except 
                that the display only of an invention at a trade show 
                or exhibit shall not be considered to be invention 
                promotion services.
``Sec. 52. Contracting requirements
    ``(a) In General.--(1) Every contract for invention promotion 
services shall be in writing and shall be subject 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 Promoter.--The invention promoter 
shall--
            ``(1) state in a written document, at the time a customer 
        enters into a contract for invention promotion services, 
        whether the usual business practice of the invention promoter 
        is to--
                    ``(A) seek more than 1 contract in connection 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 written document 
        together with a written summary of the usual business practices 
        of the invention promoter, 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 provided by the 
                invention promoter.
    ``(c) Right of Customer To Cancel Contract.--(1) Notwithstanding 
any contractual provision to the contrary, a customer shall have the 
right to terminate a contract for invention promotion services by 
sending a written letter to the invention promoter 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 
promoter executes the contract, whichever is later.
    ``(2) Delivery of a promissory note, check, bill of exchange, or 
negotiable instrument of any kind to the invention promoter or to a 
third party for the benefit of the invention promoter, without regard 
to the date or dates appearing in such instrument, shall be deemed 
payment received by the invention promoter on the date received for 
purposes of this section.
``Sec. 53. Standard provisions for cover notice
    ``(a) Contents.--Every contract for invention promotion services 
shall have a conspicuous and legible cover sheet attached with the 
following notice imprinted in boldface type of not less than 12-point 
size:
            ```YOU HAVE THE RIGHT TO TERMINATE THIS CONTRACT. TO 
        TERMINATE THIS CONTRACT, YOU MUST SEND A WRITTEN 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 PROMOTER FOR COMMERCIAL POTENTIAL IN THE PAST FIVE 
        (5) YEARS IS __________. OF THAT NUMBER, __________ RECEIVED 
        POSITIVE EVALUATIONS AND __________ RECEIVED NEGATIVE 
        EVALUATIONS.
            ```IF YOU ASSIGN EVEN A PARTIAL INTEREST IN THE INVENTION 
        TO THE INVENTION PROMOTER, THE INVENTION PROMOTER 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 INVENTION PROMOTER IN THE PAST FIVE (5) YEARS IS 
        __________. THE TOTAL NUMBER OF CUSTOMERS KNOWN BY THIS 
        INVENTION PROMOTER TO HAVE RECEIVED, BY VIRTUE OF THIS 
        INVENTION PROMOTER'S PERFORMANCE, AN AMOUNT OF MONEY IN EXCESS 
        OF THE AMOUNT PAID BY THE CUSTOMER TO THIS INVENTION PROMOTER 
        IS ______________.
            ```THE OFFICERS OF THIS INVENTION PROMOTER HAVE 
        COLLECTIVELY OR INDIVIDUALLY BEEN AFFILIATED IN THE LAST TEN 
        (10) YEARS WITH THE FOLLOWING INVENTION PROMOTION COMPANIES: 
        (LIST THE NAMES AND ADDRESSES OF ALL PREVIOUS INVENTION 
        PROMOTION COMPANIES WITH WHICH THE PRINCIPAL OFFICERS HAVE BEEN 
        AFFILIATED AS OWNERS, AGENTS, OR EMPLOYEES). YOU ARE ENCOURAGED 
        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 CHOOSING BEFORE SIGNING THIS CONTRACT. BY PROCEEDING 
        WITHOUT THE ADVICE OF AN ATTORNEY REGISTERED TO PRACTICE BEFORE 
        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 promoter, and 
may contain no other matter.
    ``(c) Disclosure of Certain Customers Not Required.--The 
requirement in the notice set forth in subsection (a) to include the 
`TOTAL NUMBER OF CUSTOMERS WHO HAVE CONTRACTED WITH THE INVENTION 
PROMOTER IN THE PAST FIVE (5) YEARS' need not include information with 
respect to customers who have purchased trade show services, research, 
advertising, or other nonmarketing services from the invention 
promoter, nor with respect to customers who have defaulted in their 
payments to the invention promoter.
``Sec. 54. Reports to customer required
    ``With respect to every contract for invention promotion services, 
the invention promoter 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 subject 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 disclosures.
``Sec. 55. Mandatory contract terms
    ``(a) Mandatory Terms.--Each contract for invention promotion 
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 promoter;
            ``(3) a full, clear, and concise description of the 
        specific acts or services that the invention promoter 
        undertakes to perform for the customer;
            ``(4) a statement as to whether the invention promoter 
        undertakes to construct, sell, or distribute one or more 
        prototypes, models, or devices embodying the invention of the 
        customer;
            ``(5) the full name and principal place of business of the 
        invention promoter 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 promoter 
        undertakes to perform for the customer;
            ``(6) if any oral or written representation of estimated or 
        projected customer earnings is given by the invention promoter 
        (or any agent, employee, officer, director, partner, or 
        independent contractor of such invention promoter), a statement 
        of that estimation 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 
        promotion services, and a statement that the invention promoter 
        is required to maintain all records and correspondence relating 
        to performance of the invention promotion 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 promotion services, including an 
        estimated date in which such performance is expected to be 
        completed.
    ``(b) Invention Promoter as Fiduciary.--To the extent that the 
description of the specific acts or services affords discretion to the 
invention promoter with respect to what specific acts or services shall 
be performed, the invention promoter 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 promoter's 
premises during normal business hours.
``Sec. 56. Remedies
    ``(a) In General.--(1) Any contract for invention promotion 
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 promotion services entered into in 
reliance upon any material false, fraudulent, or misleading 
information, representation, notice, or advertisement of the invention 
promoter (or any agent, employee, officer, director, partner, or 
independent contractor of such invention promoter) 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 promotion 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 promoter offers to perform or performs such act through a 
person duly registered to practice before, and in good standing with, 
the Patent and Trademark Office.
    ``(b) Civil Action.--(1) Any customer who is injured by a violation 
of this chapter by an invention promoter or by any material false or 
fraudulent statement or representation, or any omission of material 
fact, by an invention promoter (or any agent, employee, director, 
officer, partner, or independent contractor of such invention promoter) 
or by failure of an invention promoter to make all the disclosures 
required under this chapter, may recover in a civil action against the 
invention promoter (or the officers, directors, or partners of such 
invention promoter) 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 provision of this chapter by an 
invention promoter or execution by the customer of a contract for 
invention promotion services in reliance on any material false or 
fraudulent statements or representations or omissions of material fact 
shall establish a rebuttable presumption of injury.
``Sec. 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 promoters publicly available, together with any 
response of the invention promoters.
    ``(b) Request for Complaints.--The Director may request complaints 
relating to invention promotion 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 promoters.
``Sec. 58. Fraudulent representation by an invention promoter
    ``Whoever, in providing invention promotion services, 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 chapter, shall be guilty of a misdemeanor and fined 
not more than $10,000 for each offense.
``Sec. 59. Rule of construction
    ``Except as expressly provided in this chapter, no provision of 
this chapter shall be construed to affect any obligation, 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 Promotion 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--MISCELLANEOUS IMPROVEMENTS

SEC. 501. PROVISIONAL APPLICATIONS.

    (a) Abandonment.--Section 111(b)(5) of title 35, United States 
Code, is amended to read as follows:
            ``(5) Abandonment.--Notwithstanding the absence of a claim, 
        upon timely request and as prescribed by the Director, a 
        provisional application may be treated as an application filed 
        under subsection (a). Subject to section 119(e)(3) of this 
        title, if no such request is made, the provisional 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. 502. 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,''; and
            (2) by adding at the end the following new subsections:
    ``(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. 503. 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 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.''.
    (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. 504. ELECTRONIC FILING.

    Section 22 of title 35, United States Code, is amended by striking 
``printed or typewritten'' and inserting ``printed, typewritten, or on 
an electronic medium''.

SEC. 505. DIVISIONAL APPLICATIONS.

    (a) In General.--Section 121 of title 35, United States Code, is 
amended--
            (1) in the first sentence by striking ``If'' and inserting 
        ``(a) If''; and
            (2) by adding at the end the following new subsections:
    ``(b) In a case in which restriction is required on the ground that 
two or more independent and distinct inventions are claimed in an 
application, the applicant shall be entitled to submit an examination 
fee and request examination for each independent and distinct invention 
in excess 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 application 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 
requirement for restriction, the Director shall cause an examination 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.''.
    (b) Effective Date.--The amendments made by subsection (a) shall 
take effect on the date that is 2 years after the date of the enactment 
of this Act and shall apply to applications for patent filed on or 
after such effective date.

SEC. 506. PUBLICATIONS.

    Section 11 of title 35, United States Code, is amended by adding at 
the end the following:
    ``(c) The Patent and Trademark Office shall make available for 
public inspection during regular business hours all solicitations 
issued by the Office for contracts for goods or services, and all 
contracts entered into by the Office for goods or services.''.

            Passed the House of Representatives April 24, 1997.

            Attest:

                                                ROBIN H. CARLE,

                                                                 Clerk.