[Congressional Bills 106th Congress]
[From the U.S. Government Publishing Office]
[H.R. 4870 Introduced in House (IH)]







106th CONGRESS
  2d Session
                                H. R. 4870

To make technical corrections in patent, copyright, and trademark laws.


_______________________________________________________________________


                    IN THE HOUSE OF REPRESENTATIVES

                             July 18, 2000

 Mr. Coble (for himself and Mr. Berman) introduced the following bill; 
          which was referred to the Committee on the Judiciary

_______________________________________________________________________

                                 A BILL


 
To make technical corrections in patent, copyright, and trademark laws.

    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 ``Intellectual Property Technical 
Amendments Act of 2000''.

SEC. 2. OFFICERS AND EMPLOYEES.

    (a) Renaming of Officers.--(1) Title 35, United States Code, is 
amended--
            (A) by striking ``Director'' each place it appears and 
        inserting ``Commissioner''; and
            (B) by striking ``Director's'' each place it appears and 
        inserting ``Commissioner's''.
    (2) The Act of July 5, 1946 (commonly referred to as the 
``Trademark Act of 1946''; 15 U.S.C. 1051 et seq.) is amended by 
striking ``Director'' each place it appears and inserting 
``Commissioner''.
    (3) Title 35, United States Code, is amended by striking 
``Commissioner for Patents'' each place it appears and inserting 
``Assistant Commissioner for Patents''.
    (4) Title 35, United States Code, is amended by striking 
``Commissioner for Trademarks'' each place it appears and inserting 
``Assistant Commissioner for Trademarks''.
    (5) Section 5314 of title 5, United States Code, is amended by 
striking
            ``Under Secretary of Commerce for Intellectual Property and 
        Director of the United States Patent and Trademark Office.''
and inserting
            ``Under Secretary of Commerce for Intellectual Property and 
        Commissioner of the United States Patent and Trademark 
        Office.''
    (b) 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 Director of the United States Patent and 
        Trademark Office or to the Commissioner of Patents and 
        Trademarks is deemed to refer to the Under Secretary of 
        Commerce for Intellectual Property and Commissioner of the 
        United States Patent and Trademark Office;
            (2) to the Commissioner for Patents is deemed to refer to 
        the Assistant Commissioner for Patents; and
            (3) to the Commissioner for Trademarks is deemed to refer 
        to the Assistant Commissioner for Trademarks.

SEC. 3. ADJUSTMENT OF TRADEMARK FEES.

    Section 4203 of the Intellectual Property and Communications 
Omnibus Reform Act of 1999, as enacted by section 1000(a)(9) of Public 
Law 106-113, is amended by striking ``Director'' and inserting 
``Commissioner''.

SEC. 4. OPTIONAL INTER PARTES REEXAMINATION PROCEDURE ACT OF 1999; 
              TECHNICAL AMENDMENTS.

    (a) Optional Inter Partes Reexamination Procedures.--Title 35, 
United States Code, is amended as follows:
            (1) Section 311 is amended--
                    (A) in subsection (a), by striking ``person'' and 
                inserting ``third-party requester''; and
                    (B) in subsection (c), by striking ``Unless the 
                requesting person is the owner of the patent, the'' and 
                inserting ``The''.
            (2) Section 312 is amended--
                    (A) in subsection (a), by striking the last 
                sentence; and
                    (B) by striking ``if any''.
            (3) Section 314(b)(1) is amended--
                    (A) by striking ``(1) This'' and all that follows 
                through ``(2)'' and inserting ``(1)'';
                    (B) by striking ``the third-party requester shall 
                receive a copy'' and inserting ``the Office shall send 
                to the third-party requester a copy''; and
                    (C) by redesignating paragraph (3) as paragraph 
                (2).
            (4) Section 317(a) is amended by striking ``patent owner 
        nor the third-party requester, if any, nor privies of either'' 
        and inserting ``third-party requester nor its privies''.
    (b) Conforming Amendments.--Subsections (a), (b), and (c) of 
section 134 of title 35, United States Code, are each amended by 
striking ``administrative patent judge'' each place it appears and 
inserting ``primary examiner''.
    (c) Clerical Amendments.--
            (1) Section 4604(a) of the Intellectual Property and 
        Communications Omnibus Reform Act of 1999, is amended by 
        striking ``Part 3'' and inserting ``Part III''.
            (2) Section 4605(b) of that Act is amended by striking 
        ``title 25'' and inserting ``title 35''.
    (d) Effective Date.--The amendments made by sections 4605(c) and 
4605(e) of the Intellectual Property and Communications Omnibus Reform 
Act, as enacted by section 1000(a)(9) of Public Law 106-113, shall 
apply to any reexamination filed in the United States Patent and 
Trademark Office on or after the date of the enactment of Public Law 
106-113.

SEC. 5. PATENT AND TRADEMARK EFFICIENCY ACT AMENDMENTS.

    (a) Deputy Director.--
            (1) Section 5315 of title 5, United States Code, is amended 
        by striking ``Deputy Under Secretary of Commerce for 
        Intellectual Property and Deputy Director of the United States 
        Patent and Trademark Office.''.
            (2) Section 17(b) of the Act of July 5, 1946 (commonly 
        referred to as the ``Trademark Act of 1946'') (15 U.S.C. 
        1067(b)), is amended by inserting ``the Deputy Commissioner,'' 
        after ``Commissioner,''.
            (3) Section 6(a) of title 35, United States Code, is 
        amended by inserting ``the Deputy Commissioner,'' after 
        ``Commissioner,''.
    (b) Public Advisory Committees.--Section 5 of title 35, United 
States Code, is amended by adding at the end the following new 
subsection:
    ``(j) Inapplicability of Patent Prohibition.--Section 4 shall not 
apply to voting members of the Advisory Committees.''.
    (c) Chief Financial Officer.--Section 901(b)(2) of title 31, United 
States Code, is amended by adding at the end the following new 
subparagraph:
                    ``(I) The United States Patent and Trademark 
                Office.''.
    (d) Miscellaneous.--Section 153 of title 35, United States Code, is 
amended by striking ``and attested by an officer of the Patent and 
Trademark Office designated by the Director,''.

SEC. 6. DOMESTIC PUBLICATION OF FOREIGN FILED PATENT APPLICATIONS ACT 
              OF 1999 AMENDMENTS.

    Section 154(d)(4)(A) of title 35, United States Code, is amended--
            (1) by striking ``on which the Patent and Trademark Office 
        receives a copy of the'' and inserting ``of''; and
            (2) by striking ``international application'' the last 
        place it appears and inserting ``publication''.

SEC. 7. DOMESTIC PUBLICATION OF PATENT APPLICATIONS PUBLISHED ABROAD.

    Subtitle E of the Intellectual Property and Communications Omnibus 
Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law 106-
113, is amended as follows:
            (1) Section 4505 is amended to read as follows:

``SEC. 4505. PRIOR ART EFFECT OF PUBLISHED 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 under section 122(b), by another filed in the United 
States before the invention by the applicant for patent or (2) a patent 
granted on an application for patent by another filed in the United 
States before the invention by the applicant for patent, except that an 
international application filed under the treaty defined in section 
351(a) shall have the effects for the purposes of this subsection of an 
application filed in the United States if and only if the international 
application designated the United States and was published under 
Article 21(2) of such treaty in the English language; or'''.
            (2) Section 4507 is amended--
                    (A) in paragraph (1), by striking ``Section 11'' 
                and inserting ``Section 10'';
                    (B) in paragraph (2), by striking ``Section 12'' 
                and inserting ``Section 11''.
                    (C) in paragraph (3), by striking ``Section 13'' 
                and inserting ``Section 12'';
                    (D) in paragraph (4), by striking ``12 and 13'' and 
                inserting ``11 and 12'';
                    (E) in section 374 of title 35, United States Code, 
                as amended by paragraph (10), by striking ``confer the 
                same rights and shall have the same effect under this 
                title as an application for patent published'' and 
                inserting ``be deemed a publication''; and
                    (F) by adding at the end the following:
            ``(12) The item relating to section 374 in the table of 
        contents for chapter 37 of title 35, United States Code, is 
        amended to read as follows:

``374. Publication of international application.''.
            (3) Section 4508 is amended to read as follows:

``SEC. 4508. EFFECTIVE DATE.

    ``Except as otherwise provided in this section, sections 4502 
through 4507, and the amendments made by such sections, shall take 
effect on November 29, 2000, and shall apply only to applications 
(including international applications designating the United States) 
filed on or after that date. The amendments made by sections 4504 and 
4505 shall additionally apply to any pending application filed before 
November 29, 2000, if such pending application is published pursuant to 
a request of the applicant under such procedures as may be established 
by the Director. If an application is filed on or after November 29, 
2000, or is published pursuant to a request from the applicant, and the 
application claims the benefit of one or more prior-filed applications 
under section 119(e), 120, or 365(c) of title 35, United States Code, 
then the provisions of section 4505 shall apply to the prior-filed 
application in determining the filing date in the United States of the 
application.''.

SEC. 8. MISCELLANEOUS CLERICAL AMENDMENTS.

    (a) Amendments to Title 35.--The following provisions of title 35, 
United States Code, are amended:
            (1) Section 2(b) is amended in paragraphs (2)(B) and 
        (4)(B), by striking ``, United States Code''.
            (2) Section 3 is amended--
                    (A) in subsection (b)(2)--
                            (i) in the first sentence of subparagraph 
                        (B) by striking ``United States Code,'';
                            (ii) in the second sentence of subparagraph 
                        (B)--
                                    (I) by striking ``United States 
                                Code,''; and
                                    (II) by striking ``, United States 
                                Code.'' and inserting a period; and
                            (iii) in subparagraph (C), by striking ``, 
                        United States Code''; and
                    (B) in subsection (c)--
                            (i) in the subsection caption, by striking 
                        ``, United States Code''; and
                            (ii) by striking ``United States Code,''.
            (3) Section 5 is amended in subsections (e) and (g), by 
        striking ``, United States Code'' each place it appears.
            (4) The table of chapters for part I is amended in the item 
        relating to chapter 3, by striking ``before'' and inserting 
        ``Before''.
            (5) The item relating to section 21 in the table of 
        contents for chapter 2 is amended to read as follows:

``21. Filing date and day for taking action.''.
            (6) The item relating to chapter 12 in the table of 
        chapters for part II is amended to read as follows:

``12. Examination of Application............................     131''.
            (7) The item relating to section 116 in the table of 
        contents for chapter 11 is amended to read as follows:

``116. Inventors.''.
            (8) Section 156 is amended--
                    (A) in subsection (b)(3)(B), by striking 
                ``paragraphs'' and inserting ``paragraph'';
                    (B) in subsection (d)(2)(B)(i), by striking ``below 
                the office'' and inserting ``below the Office''; and
                    (C) in subsection (g)(6)(B)(iii), by striking 
                ``submittted'' and inserting ``submitted''.
            (9) The item relating to section 183 in the table of 
        contents for chapter 17 is amended by striking ``of'' and 
        inserting ``to''.
            (10) Section 185 is amended by striking the second period 
        at the end of the section.
            (11) Section 202(c)(4) is amended by striking ``rights;'' 
        and inserting ``rights,''.
            (12) Section 203 is amended--
                    (A) in paragraph (2)--
                            (i) by striking ``(2)'' and inserting 
                        ``(b)''; and
                            (ii) by striking the quotation marks and 
                        comma before ``as appropriate''.
                    (B) in the first paragraph--
                            (i) by striking ``(a)'', ``(b)'', ``(c)'', 
                        and (d)'' and inserting ``(1)'', ``(2)'', 
                        ``(3)'', and (4)'', respectively; and
                            (ii) by striking ``(1.'' and inserting 
                        ``(a)''.
            (13) Section 210 is amended--
                    (A) in subsection (a)--
                            (i) in paragraph (11), by striking ``5901'' 
                        and inserting ``5908''; and
                            (ii) in paragraph (20) by striking 
                        ``178(j)'' and inserting ``178j''; and
                    (B) in subsection (c)--
                            (i) by striking ``paragraph 202(c)(4)'' and 
                        inserting ``section 202(c)(4)''; and
                            (ii) by striking ``title..'' and inserting 
                        ``title.''.
            (14) The item relating to chapter 29 in the table of 
        chapters for part III is amended by inserting a comma after 
        ``Patent''.
            (15) The item relating to section 256 in the table of 
        contents for chapter 25 is amended to read as follows:

``256. Correction of named inventor.''.
            (16) Section 294(c) is amended in the second sentence by 
        striking ``court to'' and inserting ``court of''.
            (17)(A) The item relating to section 374 in the table of 
        contents for chapter 37 is amended to read as follows:

``374. Publication of international application.''.
            (B) The amendment made by subparagraph (A) shall take 
        effect on November 29, 2000.
            (18) Section 371(b) is amended by adding at the end a 
        period.
            (19) Section 371(d) is amended by adding at the end a 
        period.
            (20) Paragraphs (1), (2), and (3) of section 376(a) are 
        each amended by striking the semicolon and inserting a period.
    (b) Other Amendments.--
            (1) Section 4732(a) of the Intellectual Property and 
        Communications Omnibus Reform Act of 1999 is amended--
                    (A) in paragraph (9)(A)(ii), by inserting ``in 
                subsection (b),'' after ``(ii)''; and
                    (B) in paragraph (10)(A), by inserting after 
                ``title 35, United States Code,'' the following: 
                ``other than sections 1 through 6 (as amended by 
                chapter 1 of this subtitle),''.
            (2) Section 4802(1) of that Act is amended by inserting 
        ``to'' before ``citizens''.
            (3) Section 4804 of that Act is amended--
                    (A) in subsection (b), by striking ``11(a)'' and 
                inserting ``10(a)''; and
                    (B) in subsection (c), by striking ``13'' and 
                inserting ``12''.
            (4) Section 4402(b)(1) of that Act is amended by striking 
        ``in the fourth paragraph''.

SEC. 9. TECHNICAL CORRECTIONS IN TRADEMARK LAW.

    (a) Award of Damages.--Section 35(a) of the Act of July 5, 1946 
(commonly referred to as the ``Trademark Act of 1946'') (15 U.S.C. 
1117(a)), is amended by striking ``a violation under section 43(a), 
(c), or (d),'' and inserting ``a violation under section 43(a) or 
(d),''.
    (b) Clerical Amendments.--The Trademark Act of 1946 is further 
amended as follows:
            (1) Section 1(d)(1) is amended in the first sentence by 
        striking ``specifying the date of the applicant's first use'' 
        and all that follows through the end of the sentence and 
        inserting ``specifying the date of the applicant's first use of 
        the mark in commerce and those goods or services specified in 
        the notice of allowance on or in connection with which the mark 
        is used in commerce.''.
            (2) Section 23(c) is amended by striking the second comma 
        after ``numeral''.
            (3) Section 33(b)(8) is amended by aligning the text with 
        paragraph (7).
            (4) Sections 34(d)(11) and 35(b) are each amended by 
        striking ``of 1954'' and inserting ``of 1986''.
                                 <all>