[Congressional Bills 106th Congress]
[From the U.S. Government Publishing Office]
[S. 1798 Introduced in Senate (IS)]







106th CONGRESS
  1st Session
                                S. 1798

 To amend title 35, United States Code, to provide enhanced protection 
   for inventors and innovators, protect patent terms, reduce patent 
                  litigation, and for other purposes.


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                            October 27, 1999

 Mr. Hatch (for himself and Mr. Leahy) introduced the following bill; 
  which was read twice and referred to the Committee on the Judiciary

_______________________________________________________________________

                                 A BILL


 
 To amend title 35, United States Code, to provide enhanced protection 
   for inventors and innovators, protect patent terms, reduce patent 
                  litigation, 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 ``American Inventors Protection Act of 
1999''.

SEC. 2. TABLE OF CONTENTS.

    The table of contents is as follows:

Sec. 1. Short title.
Sec. 2. Table of contents.
                       TITLE I--INVENTORS' RIGHTS

Sec. 101. Short title.
Sec. 102. Integrity in invention promotion services.
Sec. 103. Effective date.
              TITLE II--PATENT AND TRADEMARK FEE FAIRNESS

Sec. 201. Short title.
Sec. 202. Adjustment of patent fees.
Sec. 203. Adjustment of trademark fees.
Sec. 204. Study on alternative fee structures.
Sec. 205. Patent and Trademark Office funding.
Sec. 206. Effective date.
                   TITLE III--FIRST INVENTOR DEFENSE

Sec. 301. Short title.
Sec. 302. Defense to patent infringement based on earlier inventor.
Sec. 303. Study and report on business methods patents.
Sec. 304. Effective date and applicability.
                    TITLE IV--PATENT TERM GUARANTEE

Sec. 401. Short title.
Sec. 402. Patent term guarantee authority.
Sec. 403. Continued examination of patent applications.
Sec. 404. Technical clarification.
Sec. 405. Effective date.
 TITLE V--DOMESTIC PUBLICATION OF PATENT APPLICATIONS PUBLISHED ABROAD

Sec. 501. Short title.
Sec. 502. Publication.
Sec. 503. Time for claiming benefit of earlier filing date.
Sec. 504. Provisional rights.
Sec. 505. Prior art effect of published applications.
Sec. 506. Cost recovery for publication.
Sec. 507. Conforming amendments.
Sec. 508. Effective date.
        TITLE VI--OPTIONAL INTER PARTES REEXAMINATION PROCEDURE

Sec. 601. Short title.
Sec. 602. Ex parte reexamination of patents.
Sec. 603. Definitions.
Sec. 604. Optional inter partes reexamination procedures.
Sec. 605. Conforming amendments.
Sec. 606. Report to Congress.
Sec. 607. Estoppel effect of reexamination.
Sec. 608. Effective date.
               TITLE VII--MISCELLANEOUS PATENT PROVISIONS

Sec. 701. Provisional applications.
Sec. 702. International applications.
Sec. 703. Certain limitations on damages for patent infringement not 
                            applicable.
Sec. 704. Electronic filing and publications.
Sec. 705. Study and report on biological deposits in support of 
                            biotechnology patents.
Sec. 706. Prior invention.
Sec. 707. Prior art exclusion for certain commonly assigned patents.
Sec. 708. Exchange of copies of patents with foreign countries.
Sec. 709. National security.

                       TITLE I--INVENTORS' RIGHTS

SEC. 101. SHORT TITLE.

    This title may be cited as the ``Inventors' Rights Act of 1999''.

SEC. 102. INTEGRITY IN INVENTION PROMOTION SERVICES.

    (a) Chapter 29 of title 35, United States Code, is amended by 
adding at the end the following new section:
``Sec. 297. Improper and deceptive invention promotion
    ``(a) In General.--An invention promoter shall have a duty to 
disclose the following information to a customer in writing, prior to 
entering into a contract for invention promotion services:
            ``(1) the total number of inventions evaluated by the 
        invention promoter for commercial potential in the past 5 
        years, as well as the number of those inventions that received 
        positive evaluations, and the number of those inventions that 
        received negative evaluations;
            ``(2) the total number of customers who have contracted 
        with the invention promoter in the past 5 years, not including 
        customers who have purchased trade show services, research, 
        advertising, or other nonmarketing services from the invention 
        promoter, or who have defaulted in their payment to the 
        invention promoter;
            ``(3) the total number of customers known by the invention 
        promoter to have received a net financial profit as a direct 
        result of the invention promotion services provided by such 
        invention promoter;
            ``(4) the total number of customers known by the invention 
        promoter to have received license agreements for their 
        inventions as a direct result of the invention promotion 
        services provided by such invention promoter; and
            ``(5) the names and addresses of all previous invention 
        promotion companies with which the invention promoter or its 
        officers have collectively or individually been affiliated in 
        the previous 10 years.
    ``(b) Civil Action.--(1) Any customer who is found by a court to 
have been injured 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 the failure 
of an invention promoter to disclose such information as required under 
subsection (a), 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--
            ``(A) the amount of actual damages incurred by the 
        plaintiff; or
            ``(B) at the election of the plaintiff at any time before 
        final judgment is rendered, statutory damages in a sum of not 
        more than $5,000, as the court considers just.
    ``(2) Notwithstanding paragraph (1), in a case where the plaintiff 
sustains the burden of proof, and the court finds, that the invention 
promoter intentionally misrepresented or omitted a material fact to 
such customer, or willfully failed to disclose such information as 
required under subsection (a), with the purpose of deceiving that 
customer, the court may increase damages to not more than 3 times the 
amount awarded, taking into account past complaints made against the 
invention promoter that resulted in regulatory sanctions or other 
corrective actions based on those records compiled by the Commissioner 
under subsection (d).
    ``(c) Definitions.--For purposes of this section--
            ``(1) a `contract for invention promotion services' means a 
        contract by which an invention promoter undertakes invention 
        promotion services for a customer;
            ``(2) a `customer' is any person, firm, partnership, 
        corporation or other entity who enters into a contract with an 
        invention promoter for invention promotion services;
            ``(3) the term `invention promoter' means any person, firm, 
        partnership, corporation, or other entity who offers to perform 
        or performs invention promotion services for, or on behalf of, 
        a customer, 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;
                    ``(C) any person or entity involved in the 
                evaluation to determine commercial potential of, or 
                offering to license or sell, a utility patent or a 
                previously filed nonprovisional utility patent 
                application;
                    ``(D) any party participating in a transaction 
                involving the sale of the stock or assets of a 
                business; or
                    ``(E) any party who directly engages in the 
                business of retail sales of products or the 
                distribution of products; and
            ``(4) the term `invention promotion services' means any 
        act, where the customer is an individual, done for the purpose 
        of procuring a firm, corporation, or other entity to develop 
        and market products or services that include the invention.
    ``(d) Records of Complaints.--
            ``(1) Release of complaints.--The Commissioner shall make 
        all complaints received by the Patent and Trademark Office 
        involving invention promoters publicly available, together with 
        any response of the invention promoters.
            ``(2) Request for complaints.--The Commissioner may request 
        complaints relating to invention promotion services from any 
        Federal or State agency and include such complaints in the 
        records maintained under paragraph (1), together with any 
        response of the invention promoters.''.
    (b) Conforming Amendment.--The table of sections at the beginning 
of chapter 29 of title 35, United States Code, is amended by adding at 
the end the following new item:

``Sec. 297. Improper and deceptive invention promotion.''.

SEC. 103. 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 II--PATENT AND TRADEMARK FEE FAIRNESS

SEC. 201. SHORT TITLE.

    This title may be cited as the ``Patent and Trademark Fee Fairness 
Act of 1999''.

SEC. 202. ADJUSTMENT OF PATENT FEES.

    (a) Original Filing Fee.--Section 41(a)(1)(A) of title 35, United 
States Code, relating to the fee for filing an original patent 
application, is amended by striking ``$760'' and inserting ``$690''.
    (b) Reissue Fee.--Section 41(a)(4)(A) of title 35, United States 
Code, relating to the fee for filing for a reissue of a patent, is 
amended by striking ``$760'' and inserting ``$690''.
    (c) National Fee for Certain International Applications.--Section 
41(a)(10) of title 35, United States Code, relating to the national fee 
for certain international applications, is amended by striking ``$760'' 
and inserting ``$690''.
    (d) Maintenance Fees.--Section 41(b)(1) of title 35, United States 
Code, relating to certain maintenance fees, is amended by striking 
``$940'' and inserting ``$830''.

SEC. 203. ADJUSTMENT OF TRADEMARK FEES.

    Notwithstanding the second sentence of section 31(a) of the 
Trademark Act of 1946 (15 U.S.C. 111(a)), the Commissioner of Patents 
and Trademarks is authorized in fiscal year 2000 to adjust trademark 
fees without regard to fluctuations in the Consumer Price Index during 
the preceding 12 months.

SEC. 204. STUDY ON ALTERNATIVE FEE STRUCTURES.

    The Commissioner of Patents and Trademarks shall conduct a study of 
alternative fee structures that could be adopted by the United States 
Patent and Trademark Office to encourage maximum participation by the 
inventor community in the United States. The Commissioner shall submit 
such study to the Committees on the Judiciary of the House of 
Representatives and the Senate not later than 1 year after the date of 
enactment of this Act.

SEC. 205. PATENT AND TRADEMARK OFFICE FUNDING.

    Section 42(c) of title 35, United States Code, is amended in the 
second sentence--
            (1) by striking ``Fees available'' and inserting ``All fees 
        available''; and
            (2) by striking ``may'' and inserting ``shall''.

SEC. 206. EFFECTIVE DATE.

    (a) Except as provided in subsection (b), the amendments made by 
this title shall take effect on the date of the enactment of this Act.
    (b) The amendments made by section 202 of this title shall take 
effect 30 days after the date of the enactment of this Act.

                   TITLE III--FIRST INVENTOR DEFENSE

SEC. 301. SHORT TITLE.

    This title may be cited as the ``First Inventor Defense Act of 
1999''.

SEC. 302. DEFENSE TO PATENT INFRINGEMENT BASED ON EARLIER INVENTOR.

    (a) Defense.--Chapter 28 of title 35, United States Code, is 
amended by adding at the end the following new section:
``Sec. 273. Defense to infringement based on earlier inventor
    ``(a) Definitions.--For purposes of this section--
            ``(1) the terms `commercially used' and `commercial use' 
        mean use of a method in the United States, so long as such use 
        is in connection with an internal commercial use or an actual 
        arm's-length sale or other arm's-length commercial transfer of 
        a useful end result, whether or not the subject matter at issue 
        is accessible to or otherwise known to the public, except that 
        the subject matter for which commercial marketing or use is 
        subject to a premarketing regulatory review period during which 
        the safety or efficacy of the subject matter is established, 
        including any period specified in section 156(g), shall be 
        deemed `commercially used' and in `commercial use' during such 
        regulatory review period;
            ``(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), except that the use--
                    ``(A) may be asserted as a defense under this 
                section only for continued use by and in the laboratory 
                or nonprofit entity; and
                    ``(B) may not be asserted as a defense with respect 
                to any subsequent commercialization or use outside such 
                laboratory or nonprofit entity;
            ``(3) the term `method' means a method of doing or 
        conducting business; 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 199, 120, or 365 of 
        this title.
    ``(b) Defense to Infringement.--
            ``(1) In general.--It shall be a defense to an action for 
        infringement under section 271 of this title with respect to 
        any subject matter that would otherwise infringe one or more 
        claims for a method in the patent being asserted against a 
        person, if such person had, acting in good faith, actually 
        reduced the subject matter to practice at least one year before 
        the effective filing date of such patent, and commercially used 
        the subject matter before the effective filing date of such 
        patent.
            ``(2) Exhaustion of right.--The sale or other disposition 
        of a useful end product produced by a patented method, by a 
        person entitled to assert a defense under this section with 
        respect to that useful end result 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.
            ``(3) Limitations and qualifications of defense.--The 
        defense to infringement under this section is subject to the 
        following:
                    ``(A) Patent.--A person may not assert the defense 
                under this section unless the invention for which the 
                defense is asserted is for a method.
                    ``(B) 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.
                    ``(C) 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 specific 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.
            ``(4) Burden of proof.--A person asserting the defense 
        under this section shall have the burden of establishing the 
        defense by clear and convincing evidence.
            ``(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 this section with respect to actions taken after 
        the date of such abandonment.
            ``(6) Personal defense.--The defense under this section may 
        be asserted only 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 as 
        an ancillary and subordinate part of a good faith assignment or 
        transfer for other reasons of the entire enterprise or line of 
        business to which the defense relates.
            ``(7) Limitation on sites.--A defense under this section, 
        when acquired as part of a good faith assignment or transfer of 
        an entire enterprise or line of business to which the defense 
        relates, may only be asserted for uses at sites where the 
        subject matter that would otherwise infringe one or more of the 
        claims is in use before the later of the effective filing date 
        of the patent or the date of the assignment or transfer of such 
        enterprise or line of business.
            ``(8) 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.
            ``(9) Invalidity.--A patent shall not be deemed to be 
        invalid under section 102 or 103 of this title solely because a 
        defense is raised or 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. Defense to infringement based on earlier inventor.''.

SEC. 303. STUDY AND REPORT ON BUSINESS METHODS PATENTS.

    (a) In General.--No later than 120 days after the date of the 
enactment of this Act, the General Accounting Office, in consultation 
with the Patent and Trademark Office, shall conduct a study and submit 
a report to the Judiciary Committees of the Senate and House of 
Representatives on the effect on innovation, competition (foreign and 
domestic), and American businesses (including electronic commerce) of 
the quality of patents being issued on business methods by the Patent 
and Trademark Office.
    (b) Contents.--The study conducted under this section shall 
include--
            (1) an examination of the number of applications received 
        for patents on methods of doing business, including recent 
        trends and forecasts, and the number of patents granted based 
        on such applications;
            (2) an examination of the nature of the applicants filing 
        for and receiving such business methods patents, including by 
        industry sectors, the extent to which such applicants have 
        filed for patent protection for such business methods in 
        foreign countries, and the nature of the technologies or 
        business models represented in such patents and patent 
        applications;
            (3) an evaluation of the database of patents, publications, 
        and other information used by the Patent and Trademark Office 
        to examine applications for patents on methods of doing 
        business;
            (4) an analysis of the types of skills needed by patent 
        examiners to adequately examine applications for patents on 
        business methods, whether there are a sufficient number of 
        examiners handling these applications with the requisite 
        skills, and what types of training, if any, may be called for 
        to augment these skills;
            (5) an analysis of the economic and competitive impact of 
        patents issued on business methods on American businesses, 
        particularly on businesses involved in electronic commerce, 
        including the effect of such patents on companies' abilities to 
        raise investment capital, compete in their relevant markets, 
        and innovate in emerging markets and technologies; and
            (6) the extent, outcome, and effects on American business, 
        competition, and innovation of litigation surrounding approved 
        business methods patents.

SEC. 304. 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 the 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--PATENT TERM GUARANTEE

SEC. 401. SHORT TITLE.

    This title may be cited as the ``Patent Term Guarantee Act of 
1999''.

SEC. 402. PATENT TERM GUARANTEE AUTHORITY.

    (a) Adjustment of Patent Term.--Section 154(b) of title 35, United 
States Code, is amended to read as follows:
    ``(b) Adjustment of Patent Term.--
            ``(1) Patent term guarantees.--
                    ``(A) Guarantee of prompt patent and trademark 
                office responses.--Subject to the limitations under 
                paragraph (2), if the issue of an original patent is 
                delayed due to the failure of the Patent and Trademark 
                Office to--
                            ``(i) provide at least 1 of the 
                        notifications under section 132 of this title 
                        or a notice of allowance under section 151 of 
                        this title not later than 14 months after--
                                    ``(I) the date on which an 
                                application was filed under section 
                                111(a) of this title; or
                                    ``(II) the date on which an 
                                international application fulfilled the 
                                requirements of section 371 of this 
                                title;
                            ``(ii) respond to a reply under section 
                        132, or to an appeal taken under section 134, 
                        within 4 months after the date on which the 
                        reply was filed or the appeal was taken;
                            ``(iii) act on an application within 4 
                        months after the date of a decision by the 
                        Board of Patent Appeals and Interferences under 
                        section 134 or 135 or a decision by a Federal 
                        court under section 141, 145, or 146 in a case 
                        in which allowable claims remain in the 
                        application; or
                            ``(iv) issue a patent within 4 months after 
                        the date on which the issue fee was paid under 
                        section 151 and all outstanding requirements 
                        were satisfied,
                the term of the patent shall be extended one day for 
                each day after the end of the period specified in 
                clause (i), (ii), (iii), or (iv), as the case may be, 
                until the action described in such clause is taken.
                    ``(B) Guarantee of no more than 3-year application 
                pendency.--Subject to the limitations under paragraph 
                (2), if the issue of an original patent is delayed due 
                to the failure of the Patent and Trademark Office to 
                issue a patent within 3 years after the actual filing 
                date of the application in the United States, not 
                including--
                            ``(i) any time consumed by continued 
                        examination of the application requested by the 
                        applicant under section 132(b);
                            ``(ii) any time consumed by a proceeding 
                        under section 135(a), any time consumed by the 
                        imposition of an order pursuant to section 181, 
                        or any time consumed by appellate review by the 
                        Board of Patent Appeals and Interferences or by 
                        a Federal court; or
                            ``(iii) any delay in the processing of the 
                        application by the Patent and Trademark Office 
                        requested by the applicant except as permitted 
                        by paragraph (3)(C),
                the term of the patent shall be extended 1 day for each 
                day after the end of that 3-year period until the 
                patent is issued.
                    ``(C) Guarantee or adjustments for delays due to 
                interferences, secrecy orders, and appeals.--Subject to 
                the limitations under paragraph (2), if the issue of an 
                original patent is delayed due to--
                            ``(i) a proceeding under section 135(a);
                            ``(ii) the imposition of an order pursuant 
                        to section 181; or
                            ``(iii) appellate review by the Board of 
                        Patent Appeals and Interferences or by a 
                        Federal court in a case in which the patent was 
                        issued pursuant to a decision in the review 
reversing an adverse determination of patentability,
                the term of the patent shall be extended one day for 
                each day of the pendency of the proceeding, order, or 
                review, as the case may be.
            ``(2) Limitations.--
                    ``(A) In general.--To the extent that periods of 
                delay attributable to grounds specified in paragraph 
                (1) overlap, the period of any adjustment granted under 
                this subsection shall not exceed the actual number of 
                days the issuance of the patent was delayed.
                    ``(B) Disclaimed term.--No patent the term of which 
                has been disclaimed beyond a specified date may be 
                adjusted under this section beyond the expiration date 
                specified in the disclaimer.
                    ``(C) Reduction of period of adjustment.--
                            ``(i) The period of adjustment of the term 
                        of a patent under paragraph (1) shall be 
                        reduced by a period equal to the period of time 
                        during which the applicant failed to engage in 
                        reasonable efforts to conclude prosecution of 
                        the application.
                            ``(ii) With respect to adjustments to 
                        patent term made under the authority of 
                        paragraph (1)(B), an applicant shall be deemed 
                        to have failed to engage in reasonable efforts 
                        to conclude processing or examination of an 
                        application for the cumulative total of any 
                        periods of time in excess of 3 months that are 
                        taken to respond to a notice from the Office 
                        making any rejection, objection, argument, or 
                        other request, measuring such 3-month period 
                        from the date the notice was given or mailed to 
                        the applicant.
                            ``(iii) The Commissioner 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.
            ``(3) Procedures for patent term adjustment 
        determination.--
                    ``(A) The Commissioner shall prescribe regulations 
                establishing procedures for the application for and 
                determination of patent term adjustments under this 
                subsection.
                    ``(B) Under the procedures established under 
                subparagraph (A), the Commissioner shall--
                            ``(i) make a determination of the period of 
                        any patent term adjustment under this 
                        subsection, and shall transmit a notice of that 
                        determination with the written notice of 
                        allowance of the application under section 151; 
                        and
                            ``(ii) provide the applicant one 
                        opportunity to request reconsideration of any 
                        patent term adjustment determination made by 
                        the Commissioner.
                    ``(C) The Commissioner shall reinstate all or part 
                of the cumulative period of time of an adjustment under 
                paragraph (2)(C) if the applicant, prior to the 
                issuance of the patent, makes a showing that, in spite 
                of all due care, the applicant was unable to respond 
                within the 3-month period, but in no case shall more 
                than 3 additional months for each such response beyond 
                the original 3-month period be reinstated.
                    ``(D) The Commissioner shall proceed to grant the 
                patent after completion of the Commissioner's 
                determination of a patent term adjustment under the 
                procedures established under this subsection, 
                notwithstanding any appeal taken by the applicant of 
                such determination.
            ``(4) Appeal of patent term adjustment determination.--
                    ``(A) An applicant dissatisfied with a 
                determination made by the Commissioner under paragraph 
                (3) shall have remedy by a civil action against the 
                Commissioner filed in the United States District Court 
                for the District of Columbia within 180 days after the 
                grant of the patent. Chapter 7 of title 5 shall apply 
                to such action. Any final judgment resulting in a 
                change to the period of adjustment of the patent term 
                shall be served on the Commissioner, and the 
                Commissioner shall thereafter alter the term of the 
                patent to reflect such change.
                    ``(B) The determination of a patent term adjustment 
                under this subsection shall not be subject to appeal or 
                challenge by a third party prior to the grant of the 
                patent.''.
    (b) Conforming Amendments.--
            (1) Section 282 of title 35, United States Code, is amended 
        in the fourth paragraph by striking ``156 of this title'' and 
        inserting ``154(b) or 156 of this title''.
            (2) Section 1295(a)(4)(C) of title 28, United States Code, 
        is amended by striking ``145 or 146'' and inserting ``145, 146, 
        or 154(b)''.

SEC. 403. CONTINUED 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 Commissioner shall prescribe regulations to provide for 
the continued examination of applications for patent at the request of 
the applicant. The Commissioner may establish appropriate fees for such 
continued examination and shall provide a 50 percent reduction in such 
fees for small entities that qualify for reduced fees under section 
41(h)(1) of this title.''.

SEC. 404. TECHNICAL CLARIFICATION.

    Section 156(a) of title 35, United States Code, is amended in the 
matter preceding paragraph (1) by inserting ``, which shall include any 
patent term adjustment granted under section 154(b),'' after ``the 
original expiration date of the patent''.

SEC. 405. EFFECTIVE DATE.

    (a) Amendments Made by Sections 402 and 404.--The amendments made 
by sections 402 and 404 shall take effect on the date that is 6 months 
after 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 the date that is 
6 months after the date of the enactment of this Act.
    (b) Amendments Made by Section 403.--The amendments made by section 
403--
            (1) shall take effect on the date that is 6 months after 
        the date of the enactment of this Act, and shall apply to all 
        applications filed under section 111(a) of title 35, United 
        States Code, on or after June 8, 1995, and all applications 
        complying with section 371 of title 35, United States Code, 
        that resulted from international applications filed on or after 
        June 8, 1995; and
            (2) do not apply to applications for design patents under 
        chapter 16 of title 35, United States Code.

 TITLE V--DOMESTIC PUBLICATION OF PATENT APPLICATIONS PUBLISHED ABROAD

SEC. 501. SHORT TITLE.

    This title may be cited as the ``Domestic Publication of Foreign 
Filed Patent Applications Act of 1999''.

SEC. 502. PUBLICATION.

    (a) 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 the same 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 Commissioner.
    ``(b) Publication.--
            ``(1) In general.--(A) Subject to paragraph (2), each 
        application for a patent shall be published, in accordance with 
        procedures determined by the Commissioner, 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 Commissioner determines.
            ``(C) Notwithstanding any other provision of law, a 
        determination by the Commissioner to release or not to release 
        information concerning a published patent application shall be 
        final and nonreviewable.
            ``(2) Exceptions.--(A) An application shall not be 
        published if that application is--
                    ``(i) no longer pending;
                    ``(ii) subject to a secrecy order pursuant to 
                section 181 of this title;
                    ``(iii) a provisional application filed under 
                section 111(b) of this title; or
                    ``(iv) an application for a design patent filed 
                under chapter 16 of this title.
            ``(B)(i) Where an applicant makes a request upon filing, 
        certifying that the invention disclosed in the application has 
        not and will not be the subject of an application filed in 
        another country, or under a multilateral international 
        agreement, that requires publication of applications 18 months 
        after filing, the application shall not be published as 
        provided in paragraph (1).
            ``(ii) An applicant may rescind a request made under clause 
        (i) at any time.
            ``(iii) An applicant who has made a request under clause 
        (i) but who subsequently files, in a foreign country or under a 
        multilateral international agreement specified in clause (i), 
        an application directed to the invention disclosed in the 
        application filed in the Patent and Trademark Office, shall 
        notify the Commissioner of such filing not later than 45 days 
        after the date of the filing of such foreign or international 
        application. A failure of the applicant to provide such notice 
        within the prescribed period shall result in the application 
        being regarded as abandoned, unless it is shown to the 
        satisfaction of the Commissioner that the delay in submitting 
        the notice was unintentional.
            ``(iv) Where an applicant rescinds a request made under 
        clause (i) or notifies the Commissioner that an application was 
        filed in a foreign country or under a multilateral 
        international agreement specified in clause (i), the 
        application shall be published in accordance with the 
        provisions of paragraph (1) on or as soon as is practical after 
        the date that is specified in clause (i).
            ``(v) If an applicant has filed applications in one or more 
        foreign countries, directly or through a multilateral 
        international agreement, and such foreign filed applications 
        corresponding to an application filed in the Patent and 
        Trademark Office or the description of the invention in such 
        foreign filed applications is less extensive than the 
        application or description of the invention in the application 
        filed in the Patent and Trademark Office, the applicant may 
        submit a redacted copy of the application filed in the Patent 
        and Trademark Office eliminating any part or description of the 
        invention in such application that is not also contained in any 
        of the corresponding applications filed in a foreign country. 
        The Commissioner may only publish the redacted copy of the 
        application unless the redacted copy of the application is not 
        received within 16 months after the earliest effective filing 
        date for which a benefit is sought under this title. The 
        provisions of section 154(d) shall not apply to a claim if the 
        description of the invention published in the redacted 
        application filed under this clause with respect to the claim 
        does not enable a person skilled in the art to make and use the 
        subject matter of the claim.
    ``(c) Protest and Pre-Issuance Opposition.--The Commissioner shall 
establish appropriate procedures to ensure that no protest or other 
form of pre-issuance opposition to the grant of a patent on an 
application may be initiated after publication of the application 
without the express written consent of the applicant.
    ``(d) National Security.--No application for patent shall be 
published under subsection (b)(1) where the publication or disclosure 
of such invention would be detrimental to the national security. The 
Commissioner shall establish appropriate procedures to ensure that such 
applications are promptly identified and the secrecy of such inventions 
is maintained in accordance with chapter 17 of this title.''.
    (b) Study.--
            (1) In general.--The General Accounting Office shall 
        conduct a 3-year study of the applicants who file only in the 
        United States after the effective date of this title and shall 
        provide the results of such study to the Judiciary Committees 
        of the House of Representatives and the Senate.
            (2) Contents.--The study conducted under paragraph (1) 
        shall--
                    (A) consider the number of such applicants in 
                relation to the number of applicants who file in the 
                United States and outside the United States;
                    (B) examine how many domestic-only filers request 
                at the time of filing not to be published;
                    (C) examine how many such filers rescind that 
                request or later choose to file abroad;
                    (D) examine the status of the entity seeking an 
                application and any correlation that may exist between 
                such status and the publication of patent applications; 
                and
                    (E) examine the abandonment/issuance ratios and 
                length of application pendency before patent issuance 
                or abandonment for published versus unpublished 
                applications.

SEC. 503. 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, 
identifying the foreign application by specifying the application 
number on that foreign application, the intellectual property authority 
or country in or for which the application was filed, and the date of 
filing the application, at such time during the pendency of the 
application as required by the Commissioner.
    ``(2) The Commissioner may consider the failure of the applicant to 
file a timely claim for priority as a waiver of any such claim. The 
Commissioner may establish procedures, including the payment of a 
surcharge, to accept an unintentionally delayed claim under this 
section.
    ``(3) The Commissioner 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 Commissioner considers necessary. Any such 
certification shall be made by the foreign intellectual property 
authority 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.--
            (1) In general.--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 required by the Commissioner. The 
        Commissioner may consider the failure to submit such an 
        amendment within the time period as a waiver of any benefit 
        under this section. The Commissioner may establish procedures, 
        including the payment of a surcharge, to accept an 
        unintentionally delayed submission of an amendment under this 
        section.''.
            (2) Right of priority.--Section 119(e)(1) 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 provisional application under this subsection 
        unless an amendment containing the specific reference to the 
        earlier filed provisional application is submitted at such time 
        during the pendency of the application as required by the 
        Commissioner. The Commissioner may consider the failure to 
        submit such an amendment within that time period as a waiver of 
        any benefit under this subsection. The Commissioner may 
        establish procedures, including the payment of a surcharge, to 
        accept an unintentionally delayed submission of an amendment 
        under this subsection during the pendency of the 
        application.''.

SEC. 504. 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 section:
    ``(d) Provisional Rights.--
            ``(1) In general.--In addition to other rights provided by 
        this section, a patent shall include the right to obtain a 
        reasonable royalty from any person who, during the period 
        beginning on the date of publication of the application for 
such patent pursuant to section 122(b), or in the case of an 
international application filed under the treaty defined in section 
351(a) 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, in a case in which 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, had 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.--
                    ``(A) Effective date.--The right under paragraph 
                (1) to obtain a reasonable royalty based upon the 
                publication under the treaty defined in section 351(a) 
                of an international application designating the United 
                States shall commence on the date on which the Patent 
                and Trademark Office receives a copy of the publication 
                under the treaty of the international application, or, 
                if the publication under the treaty of the 
                international application is in a language other than 
                English, on the date on which the Patent and Trademark 
                Office receives a translation of the international 
                application in the English language.
                    ``(B) Copies.--The Commissioner may require the 
                applicant to provide a copy of the international 
                application and a translation thereof.''.

SEC. 505. 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)(A) an application for patent, published pursuant to 
        section 122(b), 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 effect under this subsection of a 
        national application published under section 122(b) only if the 
        international application designating the United States was 
        published under Article 21(2)(a) of such treaty in the English 
        language; or
            ``(B) 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 a patent shall not be deemed 
        filed in the United States for the purposes of this subsection 
        based on the filing of an international application filed under 
        the treaty defined in section 351(a); or''.

SEC. 506. COST RECOVERY FOR PUBLICATION.

    The Commissioner of Patents and Trademarks shall recover the cost 
of early publication required by the amendment made by section 502 by 
charging a separate publication fee after notice of allowance is given 
pursuant to section 151 of title 35, United States Code.

SEC. 507. CONFORMING AMENDMENTS.

    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 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 undesignated 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 undesignated paragraph by 
                inserting ``by the publication of an application or'' 
                after ``disclosure of an invention'';
                    (C) in the third undesignated 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 undesignated paragraph by 
                inserting ``the publication of an application or'' 
                after ``and'' in the first sentence.
            (8) Section 252 is amended in the first undesignated 
        paragraph by inserting ``substantially'' before ``identical'' 
        each place it appears.
            (9) Section 284 is amended by adding at the end of the 
        second undesignated 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
    ``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) is amended--
                    (A) by inserting ``(1)'' after ``(b)''; and
                    (B) by adding at the end the following:
    ``(2) A claim which is the same as, or for the same or 
substantially the same subject matter as, a claim of an application 
published pursuant to section 122(b) of this title may be made in an 
application filed after the application is published only if the claim 
is made before 1 year after the date on which the application is 
published.''.

SEC. 508. EFFECTIVE DATE.

    Sections 502 through 507, and the amendments made by such sections, 
shall take effect on the date that is 1 year after the date of 
enactment of this Act and shall apply to all applications filed under 
section 111 of title 35, United States Code, on or after that date, and 
all applications complying with section 371 of title 35, United States 
Code, that resulted from international applications filed on or after 
that date. The amendments made by sections 504 and 505 shall apply to 
any such application voluntarily published by the applicant under 
procedures established under this title that is pending on the date 
that is 1 year after the date of the enactment of this Act. The 
amendment made by section 504 shall also apply to international 
applications designating the United States that are filed on or after 
the date that is 1 year after the date of the enactment of this Act.

        TITLE VI--OPTIONAL INTER PARTES REEXAMINATION PROCEDURE

SEC. 601. SHORT TITLE.

    This title may be cited as the ``Optional Inter Partes 
Reexamination Procedure Act of 1999''.

SEC. 602. EX PARTE REEXAMINATION OF PATENTS.

    Chapter 30 of title 35, United States Code, is amended in the title 
by inserting ``EX PARTE'' before ``REEXAMINATION OF PATENTS''.

SEC. 603. DEFINITIONS.

    Section 100 of title 35, United States Code, is amended by adding 
at the end the following new subsection:
    ``(e) The term `third-party requester' means a person requesting ex 
parte reexamination under section 302 or inter partes reexamination 
under section 311 who is not the patent owner.''.

SEC. 604. OPTIONAL INTER PARTES REEXAMINATION PROCEDURES.

    (a) In General.--Part 3 of title 35, United States Code, is amended 
by adding after chapter 30 the following new chapter:

      ``CHAPTER 31--OPTIONAL INTER PARTES REEXAMINATION PROCEDURES

``Sec.
``311. Request for inter partes reexamination.
``312. Determination of issue by Commissioner.
``313. Inter partes reexamination order by Commissioner.
``314. Conduct of inter partes reexamination proceedings.
``315. Appeal.
``316. Certificate of patentability, unpatentability, and claim 
                            cancellation.
``317. Inter partes reexamination prohibited.
``318. Stay of litigation.
``Sec. 311. Request for inter partes reexamination
    ``(a) In General.--Any person at any time may file a request for 
inter partes reexamination by the Office of a patent on the basis of 
any prior art cited under the provisions of section 301.
    ``(b) Requirements.--The request shall--
            ``(1) be in writing, include the identity of the real party 
        in interest, and be accompanied by payment of an inter partes 
        reexamination fee established by the Commissioner under section 
        41; and
            ``(2) set forth the pertinency and manner of applying cited 
        prior art to every claim for which reexamination is requested.
            ``(c) Copy.--Unless the requesting person is the owner of 
        the patent, the Commissioner promptly shall send a copy of the 
        request to the owner of record of the patent.
``Sec. 312. Determination of issue by Commissioner
    ``(a) Reexamination.--Not later than 3 months after the filing of a 
request for inter partes reexamination under section 311, the 
Commissioner shall determine whether a substantial new question of 
patentability affecting any claim of the patent concerned is raised by 
the request, with or without consideration of other patents or printed 
publications. On the Commissioner's initiative, and at any time, the 
Commissioner may determine whether a substantial new question of 
patentability is raised by patents and publications.
    ``(b) Record.--A record of the Commissioner's determination under 
subsection (a) shall be placed in the official file of the patent, and 
a copy shall be promptly given or mailed to the owner of record of the 
patent and to the third-party requester, if any.
    ``(c) Final Decision.--A determination by the Commissioner pursuant 
to subsection (a) shall be final and non-appealable. Upon a 
determination that no substantial new question of patentability has 
been raised, the Commissioner may refund a portion of the inter partes 
reexamination fee required under section 311.
``Sec. 313. Inter partes reexamination order by Commissioner
    ``If, in a determination made under section 312(a), the 
Commissioner finds that a substantial new question of patentability 
affecting a claim of a patent is raised, the determination shall 
include an order for inter partes reexamination of the patent for 
resolution of the question. The order may be accompanied by the initial 
action of the Patent and Trademark Office on the merits of the inter 
partes reexamination conducted in accordance with section 314.
``Sec. 314. Conduct of inter partes reexamination proceedings
    ``(a) In General.--Subject to subsection (b), reexamination shall 
be conducted according to the procedures established for initial 
examination under the provisions of sections 132 and 133, except as 
provided for under this section. In any inter partes reexamination 
proceeding under this chapter, the patent owner shall be permitted to 
propose any amendment to the patent and a new claim or claims, except 
that no proposed amended or new claim enlarging the scope of the claims 
of the patent shall be permitted.
    ``(b) Response.--(1) This subsection shall apply to any inter 
partes reexamination proceeding in which the order for inter partes 
reexamination is based upon a request by a third-party requester.
    ``(2) With the exception of the inter partes reexamination request, 
any document filed by either the patent owner or the third-party 
requester shall be served on the other party. In addition, the third-
party requester shall receive a copy of any communication sent by the 
Office to the patent owner concerning the patent subject to the inter 
partes reexamination proceeding.
    ``(3) Each time that the patent owner files a response to an action 
on the merits from the Patent and Trademark Office, the third-party 
requester shall have one opportunity to file written comments 
addressing issues raised by the action of the Office or the patent 
owner's response thereto, if those written comments are received by the 
Office within 30 days after the date of service of the patent owner's 
response.
    ``(c) Special Dispatch.--Unless otherwise provided by the 
Commissioner for good cause, all inter partes reexamination proceedings 
under this section, including any appeal to the Board of Patent Appeals 
and Interferences, shall be conducted with special dispatch within the 
Office.
``Sec. 315. Appeal
    ``(a) Patent Owner.--The patent owner involved in an inter partes 
reexamination proceeding under this chapter--
            ``(1) may appeal under the provisions of section 134 and 
        may appeal under the provisions of sections 141 through 144, 
        with respect to any decision adverse to the patentability of 
        any original or proposed amended or new claim of the patent; 
        and
            ``(2) may be a party to any appeal taken by a third-party 
        requester under subsection (b).
    ``(b) Third-Party Requester.--A third-party requester may--
            ``(1) appeal under the provisions of section 134 with 
        respect to any final decision favorable to the patentability of 
        any original or proposed amended or new claim of the patent; or
            ``(2) be a party to any appeal taken by the patent owner 
        under the provisions of section 134, subject to subsection (c).
    ``(c) Civil Action.--A third-party requester whose request for an 
inter partes reexamination results in an order under section 313 is 
estopped from asserting at a later time, in any civil action arising in 
whole or in part under section 1338 of title 28, the invalidity of any 
claim finally determined to be valid and patentable on any ground which 
the third-party requester raised or could have raised during the inter 
partes reexamination proceedings. This subsection does not prevent the 
assertion of invalidity based on newly discovered prior art unavailable 
to the third-party requester and the Patent and Trademark Office at the 
time of the inter partes reexamination proceedings.
``Sec. 316. Certificate of patentability, unpatentability, and claim 
              cancellation
    ``(a) In General.--In an inter partes reexamination proceeding 
under this chapter, when the time for appeal has expired or any appeal 
proceeding has terminated, the Commissioner shall issue and publish a 
certificate canceling any claim of the patent finally determined to be 
unpatentable, confirming any claim of the patent determined to be 
patentable, and incorporating in the patent any proposed amended or new 
claim determined to be patentable.
    ``(b) Amended or New Claim.--Any proposed amended or new claim 
determined to patentable and incorporated into a patent following an 
inter partes reexamination proceeding shall have the same effect as 
that specified in section 252 of this title for reissued patents on the 
right of any person who made, purchased, or used within the United 
States, or imported into the United States, anything patented by such 
proposed amended or new claim, or who made substantial preparation for 
the same, prior to issuance of a certificate under the provisions of 
subsection (a) of this section.
``Sec. 317. Inter partes reexamination prohibited
    ``(a) Order for Reexamination.--Notwithstanding any provision of 
this chapter, once an order for inter partes reexamination of a patent 
has been issued under section 313, neither the patent owner nor the 
third-party requester, if any, nor privies of either, may file a 
subsequent request for inter partes reexamination of the patent until 
an inter partes reexamination certificate is issued and published under 
section 316, unless authorized by the Commissioner.
    ``(b) Final Decision.--Once a final decision has been entered 
against a party in a civil action arising in whole or in part under 
section 1338 of title 28 that the party has not sustained its burden of 
proving the invalidity of any patent claim in suit or if a final 
decision in an inter partes reexamination proceeding instituted by a 
third-party requester is favorable to the patentability of any original 
or proposed amended or new claim of the patent then neither that party 
nor its privies may thereafter request inter partes reexamination of 
any such patent claim on the basis of issues which that party or its 
privies raised or could have raised in such civil action or inter 
partes reexamination proceeding, and an inter partes reexamination 
requested by that party or its privies on the basis of such issues may 
not thereafter be maintained by the Office, notwithstanding any other 
provision of this chapter. This subsection does not prevent the 
assertion of invalidity based on newly discovered prior art unavailable 
to the third-party requester and the Patent and Trademark Office at the 
time of the inter partes reexamination proceedings.
``Sec. 318. Stay of litigation
    ``Once an order for inter partes reexamination of a patent has been 
issued under section 313, the patent owner may obtain a stay of any 
pending litigation which involves an issue of patentability of any 
claims of the patent which are the subject of the inter partes 
reexamination order, unless the court before which such litigation is 
pending determines that a stay would not serve the interests of 
justice.''.
    (b) Conforming Amendments.--The table of chapters for part III of 
title 25, United States Code, is amended by striking the item relating 
to chapter 30 and inserting the following:

``30. Prior Art Citations to Office and Ex Parte                    301
                            Reexamination of Patents.
``31. Optional Inter Partes Reexamination of Patents........     311''.

SEC. 605. CONFORMING AMENDMENTS.

    (a) Patent Fees; Patent Search Systems.--Section 41(a)(7) of title 
35, United States Code, is amended to read as follows:
            ``(7) On filing each petition for the revival of an 
        unintentionally abandoned application for a patent, for the 
        unintentionally delayed payment of the fee for issuing each 
        patent, or for an unintentionally delayed response by the 
        patent owner in any reexamination proceeding, $1,210, unless 
        the petition is filed under section 133 or 151 of this title, 
        in which case the fee shall be $110.''.
    (b) Appeal to the Board of Patents Appeals and Interferences.--
Section 134 of title 35, United States Code, is amended to read as 
follows:
``Sec. 134. Appeal to the Board of Patent Appeals and Interferences
    ``(a) Patent Applicant.--An applicant for a patent, any of whose 
claims has been twice rejected, may appeal from the decision of the 
primary examiner to the Board of Patent Appeals and Interferences, 
having once paid the fee for such appeal.
    ``(b) Patent Owner.--A patent owner in any reexamination proceeding 
may appeal from the final rejection of any claim by the primary 
examiner to the Board of Patent Appeals and Interferences, having once 
paid the fee for such appeal.
    ``(c) Third-Party.--A third-party requester in an inter partes 
proceeding may appeal to the Board of Patent Appeals and Interferences 
from the final decision of the primary examiner favorable to the 
patentability of any original or proposed amended or new claim of a 
patent, having once paid the fee for such appeal. The third-party 
requester may not appeal the decision of the Board of Patent Appeals 
and Interferences.''.
    (c) Appeal to Court of Appeals for the Federal Circuit.--Section 
141 of title 35, United States Code, is amended by adding the following 
after the second sentence: ``A patent owner in any reexamination 
proceeding dissatisfied with the final decision in an appeal to the 
Board of Patent Appeals and Interferences under section 134 may appeal 
the decision only to the United States Court of Appeals for the Federal 
Circuit.''.
    (d) Proceedings on Appeal.--Section 143 of title 35, United States 
Code, is amended by amending the third sentence to read as follows: 
``In any reexamination cases, the Commissioner shall submit to the 
court in writing the grounds for the decision of the Patent and 
Trademark Office, addressing all the issues involved in the appeal.''.
    (e) Civil Action To Obtain Patent.--Section 145 of title 35, United 
States Code, is amended in the first sentence by inserting ``(a)'' 
after ``section 134''.

SEC. 606. REPORT TO CONGRESS.

    Not later than 5 years after the effective date of this title, the 
Commissioner of Patents and Trademarks shall submit to the Congress a 
report evaluating whether the inter partes reexamination proceedings 
established under the amendments made by this title are inequitable to 
any of the parties in interest and, if so, the report shall contain 
recommendations for changes to the amendments made by this title to 
remove such inequity.

SEC. 607. ESTOPPEL EFFECT OF REEXAMINATION.

    Any party who requests an inter partes reexamination under section 
311 of title 35, United States Code, is estopped from challenging at a 
later time, in any civil action, any fact determined during the process 
of such reexamination, except with respect to a fact determination 
later proved to be erroneous based on information unavailable at the 
time of the inter partes reexamination decision. If this section is 
held to be unenforceable, the enforceability of the rest of this title 
or of this Act shall not be denied as a result.

SEC. 608. EFFECTIVE DATE.

    This title and the amendments made by this title shall take effect 
on the date that is 1 year after the date of the enactment of this Act 
and shall apply to inter partes reexamination requests filed on or 
after such date.

               TITLE VII--MISCELLANEOUS PATENT PROVISIONS

SEC. 701. 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 Commissioner, 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 after 
        such 12-month period.''.
    (b) Technical Amendment Relating to Weekends and Holidays.--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.''.
    (c) Elimination of Copendency Requirement.--Section 119(e)(2) of 
title 35, United States Code, is amended by striking ``and the 
provisional application was pending on the filing date of the 
application for patent under section 111(a) or section 363 of this 
title''.
    (d) Effective Date.--The amendments made by this section shall take 
effect on the date of the enactment of this Act and shall apply to any 
provisional application filed on or after June 8, 1995, except that the 
amendments made by subsections (b) and (c) shall have no effect with 
respect to any patent which is the subject of litigation in an action 
commenced before such date of the enactment.

SEC. 702. INTERNATIONAL APPLICATIONS.

    Section 119 of title 35, United States Code, is amended as 
follows--
            (1) In subsection (a), insert ``or in a WTO member 
        country,'' after ``or citizens of the United States,''.
            (2) At the end of section 119 add the following new 
        subsections:
    ``(f) Applications for plant breeder's rights filed in a WTO member 
country (or in a foreign 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) 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. 703. CERTAIN LIMITATIONS ON DAMAGES FOR PATENT INFRINGEMENT NOT 
              APPLICABLE.

    Section 287(c)(4) of title 35, United States Code, is amended by 
striking ``before the date of enactment of this subsection'' and 
inserting ``based on an application the earliest effective filing date 
of which is prior to September 30, 1996''.

SEC. 704. ELECTRONIC FILING AND PUBLICATIONS.

    (a) Printing of Papers Filed.--Section 22 of title 35, United 
States Code, is amended by striking ``printed or typewritten'' and 
inserting ``printed, typewritten, or on an electronic medium''.
    (b) Publications.--Section 11(a) of title 35, United States Code, 
is amended by amending the matter preceding paragraph 1 to read as 
follows:
    ``(a) The Commissioner may publish in printed, typewritten, or 
electronic form, the following:''.
    (c) Copies of Patents for Public Libraries.--Section 13 of title 
35, United States Code, is amended by striking ``The Commissioner may 
supply printed copies of specifications and drawings of patents'' and 
inserting ``The Commissioner may supply copies of specifications and 
drawings of patents in printed or electronic form''.
    (d) Maintenance of Collections.--
            (1) Section 41(i)(1) of title 35, United States Code, is 
        amended by striking ``The Commissioner shall maintain, for use 
        by the public, paper or microform'' and inserting ``The 
        Commissioner shall maintain, for use by the public, paper, 
        microform, or electronic''.
            (2) The Commissioner shall not, pursuant to the amendment 
        made by paragraph (1), cease to maintain, for use by the 
        public, paper or microform collections of United States 
        patents, foreign patent documents, and United States trademark 
        registrations, except pursuant to notice and opportunity for 
        public comment and except the Commissioner shall first submit a 
        report to the Committees on the Judiciary of the Senate and the 
        House of Representatives detailing such plan, including a 
        description of the mechanisms in place to ensure the integrity 
        of such collections and the data contained therein, as well as 
        to ensure prompt public access to the most current available 
        information, and certifying that the implementation of such 
        plan will not negatively impact the public.

SEC. 705. STUDY AND REPORT ON BIOLOGICAL DEPOSITS IN SUPPORT OF 
              BIOTECHNOLOGY PATENTS.

    (a) In General.--No later than 6 months after the date of the 
enactment of this Act, the Comptroller General of the United States, in 
consultation with the Commissioner of Patents and Trademarks, shall 
conduct a study and submit a report to Congress on the potential risks 
to the United States biotechnology industry relating to biological 
deposits in support of biotechnology patents.
    (b) Contents.--The study conducted under this section shall 
include--
            (1) an examination of the risk of export and the risk of 
        transfers to third parties of biological deposits, and 
the risks posed by the change to 18-month publication requirements made 
by this Act;
            (2) an analysis of comparative legal and regulatory 
        regimes; and
            (3) any related recommendations.
    (c) Consideration of Report.--In drafting regulations affecting 
biological deposits (including any modification of title 37, Code of 
Federal Regulations, section 1.801 et seq.), the Patent and Trademark 
Office shall consider the recommendations of the study conducted under 
this section.

SEC. 706. PRIOR INVENTION.

    Section 102(g) of title 35, United States Code, is amended to read 
as follows:
    ``(g)(1) during the course of an interference conducted under 
section 135 or section 291, another inventor involved therein 
establishes, to the extent permitted in section 104, that before such 
person's invention thereof the invention was made by such other 
inventor and not abandoned, suppressed, or concealed, or (2) before 
such person's invention thereof, the invention was made in this country 
by another inventor who had not abandoned, suppressed, or concealed it. 
In determining priority of invention under this subsection, there shall 
be considered not only the respective dates of conception and reduction 
to practice of the invention, but also the reasonable diligence of one 
who was first to conceive and last to reduce to practice, from a time 
prior to conception by the other.''.

SEC. 707. PRIOR ART EXCLUSION FOR CERTAIN COMMONLY ASSIGNED PATENTS.

    (a) Prior Art Exclusion.--Section 103(c) of title 35, United States 
Code, is amended by striking ``subsection (f) or (g)'' and inserting 
``one or more of subsections (e), (f), and (g)''.
    (b) Effective Date.--The amendment made by this section shall apply 
to any application for patent filed on or after the date of the 
enactment of this Act.

SEC. 708. EXCHANGE OF COPIES OF PATENTS WITH FOREIGN COUNTRIES.

    Section 12 of title 35, United States Code, is amended by adding at 
the end the following: ``The Commissioner shall not enter into an 
agreement to provide such copies of specifications and drawings of 
United States patents and applications to a foreign country, other than 
a NAFTA country or a WTO member country, without the express 
authorization of the Secretary of Commerce. For purposes of this 
section, the terms `NAFTA country' and `WTO member country' have the 
meanings given those terms in section 104(b).''.

SEC. 709. NATIONAL SECURITY.

    Section 6 of title 35, United States Code, is amended by adding at 
the end the following new subsection:
    ``(d) The Commissioner, 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, in order to maintain the secrecy of certain 
inventions, as described in section 181, and to prevent disclosure of 
sensitive and strategic information in the interest of national 
security.''.
                                 <all>