[Congressional Record Volume 143, Number 45 (Wednesday, April 16, 1997)]
[House]
[Pages H1612-H1619]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




                               AMENDMENTS

  Under clause 6 of rule XXIII, proposed amendments were submitted as 
follows:

                                H.R. 400

                        Offered By: Mr. Campbell

       amendment no. 1: amend section 302(C)(2), p. 68 of March 20 
     text: Strike lines 4-6.
       Insert: ``under this chapter, and such use shall not be 
     greater in quantity, volume, or scope than had been the 
     actual quantity, volume, or scope of the prior use, however, 
     the defense shall also extend to improvements in ``
       Amend section 302(C)(6), p. 69 of March 20 text:
       At line 23, strike ``.'' add: ``; in which case the use of 
     the defense shall not be greater in quantity, volume, or 
     scope than had been the actual quantity, volume, or scope of 
     the prior use.''

                                H.R. 400

                        Offered By: Mr. Campbell

       amendment no. 2: page 48 of March 20 text, strike line 3, 
     insert:
       ``111(b) of this title, as to which there have been two 
     substantive Patent Office actions since the filing, shall be 
     published, in accordance''
       Line 17, insert:
       ``(D) `Substantive Patent Office action' means an action by 
     the patent office relating to the patentability of the 
     material of the application (not including an action to 
     separate a parent application into parts), unless the patent 
     applicant demonstrates under procedures to be established by 
     the patent office that the office action in question was 
     sought in greater part for a purpose other than to achieve a 
     delay in the date of publication of the application. Such 
     Patent Office decision shall not be appealable, or subject to 
     the Administrative Procedures Act.''

                                H.R. 400

                         Offered By: Mr. Coble

       Amendment No. 3: Page 3, insert in the table of contents 
     after the item relating to section 149 the following:

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

Sec. 151. Under Secretary of Commerce for Intellectual Property Policy.
Sec. 152. Relationship with existing authorities.

       Page 3, in the item relating to section 402, strike 
     ``development'' and insert ``promotion''.
       Page 5, line 12, insert ``(1)'' before ``For purposes''.
       Page 5, insert after line 15 the following:
       ``(2) As used in this title, the term `Under Secretary' 
     means the Under Secretary of Commerce for Intellectual 
     Property Policy.
       Page 5, line 21, strike ``under'' and insert ``subject 
     to''.
       Page 6, line 1, strike ``conduct'' and insert ``, in 
     support of the Under Secretary, assist with''.
       Page 6, line 4, strike ``, the administration'' and all 
     that follows through line 8 and insert a semicolon.
       Page 6, line 9, strike ``authorize or conduct studies and 
     programs cooperatively'' and insert ``, in support of the 
     Under Secretary, assist with studies and programs conducted 
     cooperatively''.
       Page 7, strike line 23 and all that follows through page 8, 
     line 3, and insert the following:
       ``(5) may establish regulations, not inconsistent with law, 
     which--
       ``(A) shall govern the conduct of proceedings in the 
     Office;
       Page 9, line 1, insert ``shall'' after ``(E)''.
       Page 9, after line 6, insert the following:
       ``(F) provide for the development of a performance-based 
     process that includes quantitative and qualitative measures 
     and standards for evaluating cost-effectiveness and is 
     consistent with the principles of impartiality and 
     competitiveness;
       Page 11, strike lines 15 through 17 and redesignate the 
     succeeding paragraphs accordingly.
       Page 11, add the following after line 25:
     ``In exercising the Director's powers under paragraphs (6) 
     and (7)(A), the Director shall consult with the Administrator 
     of General Services when the Director determines that it is 
     practicable, efficient, and cost-effective to do so.''.
       Page 13, strike lines 4 through 18 and redesignate the 
     succeeding subparagraphs accordingly.
       Page 14, strike line 18 and all that follows through page 
     15, line 7, and insert the following:
       ``(5) Compensation.--The Director shall be paid an annual 
     rate of basic pay not to exceed the maximum rate of basic pay 
     of the Senior Executive Service established under section 
     5382 of title 5, including any applicable locality-based 
     comparability payment that may be authorized under section 
     5304(h)(2)(C) of title 5. In addition, the Director may 
     receive a bonus in an amount up to, but not in excess of, 50 
     percent of such annual rate of basic pay, based upon an 
     evaluation by the Secretary of Commerce of the Director's 
     performance as defined in an annual performance agreement 
     between the Director and the Secretary. The annual 
     performance agreement shall incorporate measurable 
     organization and individual goals in key operational areas as 
     delineated in an annual performance plan agreed to by the 
     Director and the Secretary. Payment of a bonus under this 
     paragraph may be made to the Director only to the extent that 
     such payment does not cause the Director's total aggregate 
     compensation in a calendar year to equal or exceed the amount 
     of the salary of the President under section 102 of title 3.
       Page 16, line 2, strike ``policy and''.
       Page 16, insert the following after line 20:
       ``(3) Training of examiners.--The Patent and Trademark 
     Office shall develop an incentive program to retain as 
     employees patent and trademark examiners of the primary 
     examiner grade or higher who are eligible for retirement, for 
     the sole purpose of training patent and trademark 
     examiners.''.
       Page 21, line 13, insert ``including inventors,'' after 
     ``Office,''.
       Page 21, line 20, insert after ``call of the chair'' the 
     following: ``, not less than every 6 months,''.
       Page 27, line 9, insert after the period close quotation 
     marks and a second period.
       Page 27, strike line 10 and all that follows through page 
     28, line 14.
       Page 32, insert the following immediately before line 10 
     and redesignate the succeeding paragraphs accordingly:
       (5) Section 41(h) of title 35, United States Code, is 
     amended by striking ``Commissioner of Patents and 
     Trademarks'' and inserting ``Director''.
       Page 33, line 7, strike ``Title'' and insert ``(A) Except 
     as provided in subparagraph (B), title''.
       Page 33, insert the following after line 9:
       (B) Chapter 17 of title 35, United States Code, is amended 
     by striking ``Commissioner'' each place it appears and 
     inserting ``Commissioner of Patents''.
       Page 33, insert the following after line 12:
       (12) Section 157(d) of title 35, United States Code, is 
     amended by striking ``Secretary of Commerce'' and inserting 
     ``Director''.
       (13) Section 181 of title 35, United States Code, is 
     amended in the third paragraph by striking ``Secretary of 
     Commerce under rules prescribed by him'' and inserting 
     ``Director under rules prescribed by the Patent and Trademark 
     Office''.
       (14) Section 188 of title 35, United States Code, is 
     amended by striking ``Secretary of Commerce'' and inserting 
     ``Patent and Trademark Office''.
       (15) Section 202(a) of title 35, United States Code, is 
     amended by striking ``iv)'' and inserting ``(iv)''.

[[Page H1613]]

       Page 46, add the following after line 23:
   Subtitle D--Under Secretary of Commerce for Intellectual Property 
                                 Policy

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

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

     SEC. 152. RELATIONSHIP WITH EXISTING AUTHORITIES.

       Nothing in section 151 shall derogate from the duties of 
     the United States Trade Representative as set forth in 
     section 141 of the Trade Act of 1974 (19 U.S.C. 2171).
       Page 48, insert the following after line 18:
       ``(B) An application that is in the process of being 
     reviewed by the Atomic Energy Commission, the Department of 
     Defense, or a defense agency pursuant to section 181 of this 
     title shall not be published until the Director has been 
     notified by the Atomic Energy Commission, the Secretary of 
     Defense, or the chief officer of the defense agency, as the 
     case may be, that in the opinion of the Atomic Energy 
     Commission, the Secretary of Defense, or such chief officer, 
     as the case may be, publication or disclosure of the 
     invention by the granting of a patent would not be 
     detrimental to the national security of the United States.''.
       Page 48, line 19, strike ``(B)'' and insert ``(C)''.
       Page 48, strike line 22 and all that follows through page 
     49, line 2, and insert the following:
       ``(D)(i) Upon the request at the time of filing by an 
     applicant that is a small business concern or an independent 
     inventor entitled to reduced fees under section 41(h)(1) of 
     this title, the application shall not be published in 
     accordance with paragraph (1) until 3 months after the 
     Director makes a second notification to such applicant on the 
     merits of the application under section 132 of this title. 
     The Director may require applicants that no longer have the 
     status of a small business concern or an independent inventor 
     to so notify the Director not later than 15 months after the 
     earliest filing date for which a benefit is sought under this 
     title.
       Page 49, line 7, strike ``, 121,''.
       Page 49, insert after line 8 the following:
       ``(iii) Applications asserting the benefit of an earlier 
     application under section 121 shall not be eligible for a 
     request pursuant to this subparagraph unless filed within 2 
     months after the date on which the Director required the 
     earlier application to be restricted to 1 of 2 or more 
     inventions in the earlier application.
       Page 49, line 9, strike ``(iii)'' and insert ``(iv)''.
       Page 49, line 13, strike ``(iv)'' and insert ``(v)''.
       Page 49, line 14, insert ``nominal'' before ``fees''.
       Page 49, line 16, strike ``(D)'' and insert ``(E)''.
       Page 49, line 17, strike ``(C)'' and insert ``(D)''.
       Page 50, line 2, strike ``(C)'' and insert ``(D)''.
       Page 50, after line 2, insert the following:
       ``(F) No fee established under this section shall be 
     collected nor shall be available for spending without prior 
     authorization in appropriations Acts.''.
       Page 58, strike lines 1 through 17 and insert the 
     following:
       (11) Section 135(b) of title 35, United States Code, is 
     amended to read as follows:
       ``(b)(1) A claim which is the same as, or for the same or 
     substantially the same subject matter as, a claim of an 
     issued patent may only be made in an application if--
       ``(A) such a claim is made prior to 1 year after the date 
     on which the patent was granted; and
       ``(B) the applicant files evidence which demonstrates that 
     the applicant is prima facie entitled to a judgment relative 
     to the patent.
       ``(2)(A) A claim which is the same as, or for the same or 
     substantially the same subject matter as, a claim of a 
     published application may only be made in an application 
     filed after the date of publication of the published 
     application if, except in a case to which subparagraph (B) 
     applies--
       ``(i) such a claim is made prior to 1 year after the date 
     of publication of the published application; and
       ``(ii) the applicant of the application filed after the 
     date of publication of the published application files 
     evidence that demonstrates that the applicant is prima facie 
     entitled to a judgment relative to the published application.
       ``(B) If the applicant of the application filed after the 
     date of publication of the published application alleges that 
     the invention claimed in the published application was 
     derived from that applicant, such a claim may only be made if 
     that applicant files evidence which demonstrates that the 
     applicant is prima facie entitled to a judgment relative to 
     the published application.''.
       Page 59, line 7, strike ``appellate''.
       Page 61, strike lines 5 through 9 and redesignate 
     subclauses (III) through (V) as subclauses (II) through (IV), 
     respectively.
       Page 62, insert the following after line 6:
       ``(B) The period of extension of the term of a patent under 
     clause (iv) of paragraph (1)(A), which is based on the 
     failure of the Patent and Trademark Office to meet the 
     criteria set forth in clause (v) of paragraph (1)(B), shall 
     be reduced by the cumulative total of any periods of time 
     that an applicant takes to respond in excess of 3 months 
     after the date on which the Patent and Trademark Office makes 
     any rejection, objection, argument, or other request.
       Page 62, line 7, strike ``(B)'' and insert ``(C)''.
       Page 62, line 19, strike ``(C)'' and insert ``(D)''.
       Page 63, insert the following after line 4:
       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:
       Page 63, strike lines 5 through 7 and insert the following:
       ``(b) The Director shall prescribe regulations to provide 
     for the further limited examination of applications for 
     patent at the request of the applicant.
       Page 63, line 9, strike ``reexamination'' and insert 
     ``examination''.
       Page 63, strike lines 11 and 12 and insert the following:
     qualify for reduced fees under section 41(h)(1) of this 
     title.''
       Page 63, line 21, insert ``secular or'' after 
     ``succeeding''.
       Page 64, lines 2 and 3, strike ``an applicant who has been 
     accorded the status of independent inventor under section 
     41(h)'' and insert ``applicants who are independent inventors 
     entitled to reduced fees under section 41(h)(1)''.
       Page 71, line 8, strike ``DEVELOPMENT'' and insert 
     ``promotion''.
       Page 71, line 11, strike ``DEVELOPMENT'' and insert 
     ``PROMOTION''.
       Page 71, in the item relating to section 58 in the matter 
     after line 12, strike ``developer'' and insert ``promoter''.
       Page 71, line 15, strike ``development'' and insert 
     ``promotion''.
       Page 71, lines 16 and 17, strike ``developer'' and insert 
     ``promoter''.
       Page 71, line 17, strike ``development'' and inserting 
     ``promotion''.
       Page 71, strike line 20 and all that follows through page 
     72, line 1, and insert the following: ``partnership, 
     corporation, or other entity who enters into a financial 
     relationship or a contract''.
       Page 72, line 22, strike ``development'' and insert 
     ``promotion''.
       Pages 73 through 84, strike ``invention developer'' and 
     ``INVENTION DEVELOPER'' each place it appears and insert 
     ``invention promoter'' and ``INVENTION PROMOTER'', 
     respectively.

[[Page H1614]]

       Pages 73 through 84, strike ``invention development'' and 
     ``INVENTION DEVELOPMENT'' each place it appears and insert 
     ``invention promotion'' and ``INVENTION PROMOTION'', 
     respectively.
       Page 74, line 1, strike ``Developer'' and insert 
     ``Promoter''.
       Page 74, line 22, strike ``developer'' and insert 
     ``invention promoter''.
       Page 77, line 1, strike ``DEVELOPER'S'' and insert 
     ``PROMOTER'S''.
       Page 81, line 7, strike ``Developer'' and insert 
     ``Promoter''.
       Page 81, line 16, strike ``developer's'' and insert 
     ``promoter's.
       Page 83, lines 19 and 21, and page 84, line 2, strike 
     ``developers'' and insert ``promoters''.
       Page 84, lines 3 and 4, strike ``developer'' and insert 
     ``promoter''.
       Page 84, in the matter after line 19, strike 
     ``Development'' and insert ``Promotion''.
       Page 85, line 16, strike ``Any'' and insert ``(a) Request 
     for Reexamination.--''.
       Page 85, line 19, strike ``or on the basis of'' and all 
     that follows through ``invention'' on line 21.
       Page 86, line 2, strike ``or the'' and all that follows 
     through line 4 and insert a period.
       Page 86, line 7, strike the quotation marks and second 
     period and insert the following: ``If multiple requests for 
     reexamination of a patent are filed, they shall be 
     consolidated by the Office into a single reexamination, if a 
     reexamination is ordered.
       ``(b) Collection and Availability of Fees.--No fee for 
     reexamination shall be collected nor shall be available for 
     spending without prior authorization in appropriations 
     Acts.''.
       Page 86, line 21, strike ``or by the failure'' and all that 
     follows through line 24 and insert a period.
       Page 89, line 8, insert before the quotation marks the 
     following: ``Special dispatch shall not be construed to limit 
     the patent owner's ability to extend the time for taking 
     action by payment of the fees set forth in section 41(a)(8) 
     of this title.''.
       Page 95, line 13, strike ``6 months'' and insert ``1 
     year''.
       Page 95, line 15, insert ``effective'' after ``such''.
       Page 95, line 25, strike ``If'' and insert ``Subject to 
     section 119(e)(3) of this title, if''.
       Page 98, line 2, strike ``Section'' and insert ``(a) In 
     General.--Section''.
       Page 99, add the following after line 8:
       (b) Effective Date.--The amendments made by subsection (a) 
     shall take effect on the date that is 2 years after the date 
     of the enactment of this Act and shall apply to applications 
     for patent filed on or after such effective date.

     SEC. 606. PUBLICATIONS.

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

                                H.R. 400

                         Offered By: Mr. Forbes

       Amendment No. 4. Page 20, line 3, insert the following 
     after the period: ``Of the members appointed by each 
     appointing authority--
       ``(A) 1 shall be selected from among small business 
     concerns entitled to reduced fees under section 141(h)(1) of 
     title and individuals who are independent inventors entitled 
     to reduced fees under such section;
       ``(B) 1 shall be selected from among patent attorneys; and
       ``(C) 1 shall be selected from among patent examiners.
       Page 21, strike lines 10 through 15 and insert the 
     following:
       ``(b) Basis for Appointments.--Members of the Advisory 
     Board shall be citizens of the United States, and those 
     appointed under subparagraphs (A) and (B) of subsection 
     (a)(1) shall be chosen so as to represent the interests of 
     diverse users of the United States Patent and Trademark 
     Office.
       Page 22, strike line 8 and insert the following:
       ``(f) Compensation.--
       ``(1) In general.--Subject to paragraph (2), members of the 
     Advisory Board''.
       Page 22, insert the following after line 18:
       ``(2) Federal employees.--Members of the Advisory Board who 
     are appointed under subparagraph (C) of subsection (a)(1) 
     shall receive no additional compensation by reason of their 
     service on the Advisory Board.

                                H.R. 400

                         Offered By: Mr. Forbes

       Amendment No. 5. Page 48, insert the following after line 
     21:
       ``(C) An application filed by a small business concern 
     entitled to reduced fees under section 41(h)(1) of this 
     title, or by an individual who is an independent inventor 
     entitled to reduced fees under such section shall not be 
     published until a patent is issued thereon, except upon the 
     request of the applicant.
       Page 48, line 22, strike ``(C)'' and insert ``(D)''.
       Page 49, line 16, strike ``(D)'' and insert ``(E)''.
       Page 49, line 17, strike ``(C)'' and insert ``(D)''.
       Page 50, line 2, strike ``(C)'' and insert ``(D)''.

                                H.R. 400

                         Offered By: Mr. Forbes

       Amendment No. 6: Page 85, line 16, strike ``at any time'' 
     and insert ``, not later than 9 months after a patent is 
     issued,''.
       Page 85, line 17, strike ``a'' and insert ``the''.
       Page 86, line 7, insert the following after the first 
     period: ``No person may file more than 1 request for 
     reexamination with respect to the same patent.''.
       Page 90, line 20, insert ``, subject to the limitations on 
     filing requests for reexamination set forth in section 302,'' 
     after ``not''.
       Page 92, line 10, strike the quotation marks and second 
     period.
       Page 92, insert the following after line 10:
       ``(c) Limitation on Filing Requests for Reexamination.--
     Nothing in subsection (a) or (b) shall be construed to permit 
     any person to file a request for reexamination of a patent 
     more than 9 months after the patent is issued, or to file 
     more than 1 request for reexamination of a patent as provided 
     in section 302.''.

                                H.R. 400

                         Offered By: Mr. Forbes

       Amendment No. 7: Page 99, add the following after line 8:

                        TITLE VII--PATENT TERM.

     SEC. 701. PATENT TERMS.

       (a) Amendment to Title 35, United States Code.--Effective 
     on the date of the enactment of this Act, section 154 of 
     title 35, United States Code, is amended--
       (1) in paragraph (2) of subsection (a), by striking ``and 
     ending'' and all that follows in that paragraph and inserting 
     ``and ending--
       ``(A) 17 years from the date of the grant of the patent, or
       ``(B) 20 years from the date on which the application for 
     the patent was filed in the United States, except that if the 
     application contains a specific reference to an earlier filed 
     application or applications under section 120, 121, or 365(c) 
     of this title, 20 years from the date on which the earliest 
     such patent application was filed,

     whichever is later.''; and
       (2) in subsection (c)(1), by striking ``shall be the 
     greater of the 20-year term as provided in subsection (a), or 
     17 years from grant'' and inserting ``shall be the term 
     provided in subsection (a)''.
       (b) Technical Amendment.--Section 534(b) of the Uruguay 
     Round Agreements Act is amended by striking paragraph (3).

                                H.R. 400

                         Offered By: Mr. Hunter

       Amendment No. 8: Page 99, insert the following after line 8 
     and redesignate the succeeding sections accordingly:

     ``SEC. 606. CRIMINAL INFRINGEMENT OF A PATENT.

       ``(a) Establishment of Offense.--
       ``(1) In General.--Chapter 113 of title 18, United States 
     Code, is amended by adding at the end of Section 2319 the 
     following:

``Sec. 2319A. Criminal Infringement of a Patent

       ``(a) Prohibition.--Whoever,
       ``(1) willingly and intentionally uses, offers to sell, or 
     sells any infringed patented invention, within the United 
     States or imports into the United States any infringed 
     patented invention during the term of the patent;
       ``(2) attempts to commit an offense under paragraph (1); or
       ``(3) is a party to a conspiracy of two or more persons to 
     commit an offense under paragraph (1),
       ``(4) offers to sell or sells within the United States or 
     imports into the United States a component of a patented 
     machine, manufacture, combination or composition, or a 
     material or apparatus for use in practicing a patented 
     process, constituting a material part of the invention, 
     knowing the same to be especially made or especially adapted 
     for use in violation of paragraph(1)

     shall be punished as provided in subsection (b).
       ``(b) Punishment.--
       ``(1) In general.--Whoever violates subsection (a) shall be 
     punished as follows:
       ``(a) If the victim has five or more patents, the infringer 
     shall be sentenced to one year imprisonment and fined one 
     million dollars;
       ``(b) If the victim has four or fewer patents, the 
     infringer shall be sentenced to three years imprisonment and 
     fined three million dollars;
       ``(c) If the victim has one patent or has a patent pending 
     that has been published, the infringer shall be sentenced to 
     five years imprisonment and fined five million dollars and 
     shall be assessed a 5% royalty which shall be payable to the 
     victim of the infringement.
       ``(2) Restitution.--In sentencing a defendant convicted of 
     an offense under this section, the court may order the 
     defendant to make restitution in accordance with section 
     3663.
       ``(C) Definition.--In this section--
       ``(1) the term ``patent'' has the same meaning as in 
     chapter 10 of title 35, United States Code; and
       ``(2) the term ``victim'' shall mean anyone who owns a 
     patent or has a published pending patent application that has 
     not been granted that is infringed in accordance with the 
     above.
       ``(3) the term ``infringement'' has the same meaning as in 
     chapter 28 of title 35 United States Code.
       ``(2) Clerical amendment.--The chapter analysis for chapter 
     47 of title 18, United States Code, is amended by adding at 
     the end the following:

``2319. Criminal Infringement of a Patent.


[[Page H1615]]


       ``(b) Restitution.--Section 3663 of title 18, United States 
     Code, is amended by adding at the end the following:
       ``Criminal Infringement of a Patent.--
       ``(1) In general.--In sentencing a defendant convicted of 
     an offense under section 2319A, the court may order, in 
     addition to any other penalty authorized that the defendant 
     make restitution to any victim of the offense.
       ``(2) Cost included.--Making restitution to a victim under 
     this subsection may include payment for any costs, including 
     attorneys fees, incurred by the victim in connection with any 
     civil or administrative proceeding arising as a result of the 
     actions of the defendant.''.

                               H.R. 400,

                         Offered By: Mr. Hunter

       Amendment No. 9: Strike title V and insert the following:

                   ``TITLE V--REEXAMINATION PROCEDURE

     ``SEC. 501. CONDUCT OF REEXAMINATION.

       ``Section 305 of title 35, United States Code, is amended 
     in the first sentence by inserting before the period at the 
     end the following: `, except that the primary examiner who 
     issued the patent may not conduct the reexamination'.

     ``SEC. 502. EFFECTIVE DATE.

       ``The amendment made by this title shall take effect on the 
     date that is 6 months after the date of the enactment of this 
     Act and shall apply to all reexamination requests filed on or 
     after such date.''
       Amend the table of contents accordingly.

                               H.R. 400,

                         Offered By: Mr. Hunter

       Amendment No. 10: Strike title I of the bill and insert the 
     following:

                   ``TITLE I--PATENT SOVEREIGNTY ACT

     ``SEC. 101. SHORT TITLE.

       ``This title may be cited as the `Patent Sovereignty Act of 
     1997'.

     ``SEC. 102. FINDINGS.

       ``The Congress finds that--
       ``(1) the quality of United States letters patent is 
     essential for preserving the technological lead and economic 
     well-being of the United States in the next century;
       ``(2) the quality of United States letters patent is highly 
     dependent upon the maintenance and the comprehensiveness of 
     patent examiners' search files; and
       ``(3) the quality of United States letters patent is 
     inextricably linked to the professionalism of patent 
     examiners and the quality of the training of patent 
     examiners.''.

     SEC. 103. SECURE PATENT EXAMINATION.

       Section 3 of title 35, United States Code, is amended by 
     adding at the end the following:
       ``(f) All examination and search duties for the grant of 
     United States letters patent are sovereign functions which 
     shall be performed within the United States by United States 
     citizens who are employees of the United States 
     Government.''.

     SEC. 104. MAINTENANCE OF EXAMINERS' SEARCH FILES.

       Section 9 of title 35, United States Code, is amended--
       (1) by striking ``may revise and maintain'' and inserting 
     ``shall maintain and revise''; and
       (2) by adding at the end the following ``United States 
     letters patent, and all such other patents and printed 
     publications shall be maintained in the examiners' search 
     files under the United States Patent Classification 
     System.''.

     SEC. 105. PATENT EXAMINER TRAINING.

       (a) In General.--Chapter 1 of title 35, United States Code, 
     is amended by adding at the end the following new section:

     ``Sec. 15. Patent examiner training

       ``(a) In General.--All patent examiners shall spend at 
     least 5 percent of their duty time per annum in training to 
     maintain and develop the legal and technological skills 
     useful for patent examination.
       ``(b) Trainers of Examiners.--The Patent and Trademark 
     Office shall develop an incentive program to retain as 
     employees patent examiners of the primary examiner grade or 
     higher who are eligible for retirement, for the sole purpose 
     of training patent examiners who have not achieved the grade 
     of primary examiner.''.
       (b) Clerical Amendment.--The table of contents for chapter 
     1 of title 35, United States Code, is amended by adding at 
     the end the following:

``15. Patent examiner training.''.

     SEC. 106. ADMINISTRATIVE MATTERS.

       (a) Limitations on Personnel.--Section 3(a) of title 35, 
     United States Code, is amended by adding at the end the 
     following: ``The Office shall not be subject to any 
     administratively or statutorily imposed limitation on 
     positions or personnel, and no positions or personnel of the 
     Office shall be taken into account for purposes of applying 
     any such limitation.''.
       (b) Retention of Fees.--(1) Section 255(g)(1)(A) of the 
     Balanced Budget and Emergency Deficit Control Act of 1985 (2 
     U.S.C. 905(g)(1)(A)) is amended by inserting after the item 
     relating to the National Credit Union Administration, credit 
     union share insurance fund, the following new item:

                    ``Patent and Trademark Office''.

       (2) Section 10101(b)(2)(B) of the Omnibus Budget 
     Reconciliation Act of 1990 (35 U.S.C. 41 note) is amended by 
     striking ``, to the extent provided in appropriation Acts,'' 
     and inserting ``without appropriation''.
       (3) Section 42(c) of title 35, United States Code, is 
     amended by amending by striking first sentence and inserting 
     the following: ``Revenue from fees shall be available to the 
     Commissioner to carry out the activities of the Patent and 
     Trademark Office, in such allocations as are approved by Act 
     of Congress. Such revenues shall not be made available for 
     any purpose other than that authorized for the Patent and 
     Trademark Office.''.
       (c) Use of Fees.--Section 42(c) of title 35, United States 
     Code, is amended by adding at the end the following: ``All 
     patent application fees collected under paragraphs (1), 
     (3)(A), (3)(B), and (4) through (8) of section 41(a), and all 
     other fees collected under section 41 for services or the 
     extension of services to be provided by patent examiners 
     shall be used only for the pay and training of patent 
     examiners.''.
       (d) Publications.--Section 11 of title 35, United States 
     Code, is amended by adding at the end the following:
       ``(c) The Patent and Trademark Office shall make available 
     for public inspection during regular business hours all 
     solicitations issued by the Office for contracts for goods or 
     services, and all contracts for goods or services entered 
     into by the Office.
       ``(d) Notice of a proposal to change United States patent 
     law that will be made on behalf of the United States to a 
     foreign country or international body shall be published in 
     the Federal Register before, or at the same time as, the 
     proposal is transmitted.''.

     SEC. 107. EFFECTIVE DATE.

       This title, and the amendments made by this title, shall 
     take effect 30 days after the date of the enactment of this 
     Act.
       In the table of contents, strike all items relating to 
     title I and insert the following:

                    Title I--Patent Sovereignty Act

Sec. 101. Short title.
Sec. 102. Findings.
Sec. 103. Secure patent examination.
Sec. 104. Maintenance of examiners' search files.
Sec. 105. Patent examiner training.
Sec. 106. Administrative matters.
Sec. 107. Effective date.

                                H.R. 400

                      Offered by: Mr. Rohrabacher

               (Amendment in the Nature of a Substitute)

       Amendment No. 11: Strike all after the enacting clause and 
     insert the following:

     SECTION 1. SHORT TITLE.

       This Act may be cited as the ``Patent Rights and 
     Sovereignty Act of 1997''.

     SEC. 2. FINDINGS.

       The Congress finds that--
       (1) the right of an inventor to secure a patent is assured 
     through the authorization powers of the Congress contained in 
     Article I, section 8 of the Constitution, has been 
     consistently upheld by the Congress, and has been the 
     stimulus to the unique technological innovativeness of the 
     United States;
       (2) the right must be assured for a guaranteed length of 
     time in the term of the issued patent and be further secured 
     by maintaining absolute confidentiality of all patent 
     application data until the patent is granted if the applicant 
     is timely prosecuting the patent;
       (3) the quality of United States patents is also an 
     essential stimulus for preserving the technological lead and 
     economic well-being of the United States in the next century;
       (4) the process of examining and issuing patents is an 
     inherently governmental function that must be performed by 
     Federal employees acting in their quasi-judicial roles under 
     regular executive and legislative oversight; and
       (5) the quality of United States patents is inextricably 
     linked to the professionalism of patent examiners and the 
     quality of the training of patent examiners as well as to the 
     resources supplied to the Patent and Trademark Office in the 
     way of adequate manpower, appropriately maintained search 
     files, and other needed professional tools.

     SEC. 3. SECURE PATENT EXAMINATION.

       Section 3 of title 35, United States Code, is amended by 
     adding at the end thereof the following:
       ``(f) All examination and search duties for the grant of 
     United States patents are sovereign functions which shall be 
     performed within the United States by United States citizens 
     who are employees of the United States Government.''.

     SEC. 4. MAINTENANCE OF EXAMINERS' SEARCH FILES.

       Section 9 of title 35, United States Code, is amended--
       (1) by striking ``may revise and maintain'' and inserting 
     ``shall maintain and revise''; and
       (2) by adding at the end thereof the following: ``United 
     States patents, and all such other patents and printed 
     publications shall be maintained in the examiners' search 
     files under the United States Patent Classification 
     System.''.

     SEC. 5. PATENT EXAMINER TRAINING.

       (a) In General.--Chapter 1 of title 35, United States Code, 
     is amended by adding at the end the following new section:

     ``Sec. 15. Patent examiner training

       ``(a) In General.--All patent examiners shall spend at 
     least 5 percent of their duty time per annum in training to 
     maintain and develop the legal and technological skills 
     useful for patent examination.
       ``(b) Trainers of Examiners.--The Patent and Trademark 
     Office shall develop an incentive program to retain as 
     employees patent examiners of the primary examiner grade or

[[Page H1616]]

     higher who are eligible for retirement, for the sole purpose 
     of training patent examiners who have not achieved the grade 
     of primary examiner.''.
       (b) Conforming Amendment.--The table of sections for 
     chapter 1 is amended by adding at the end the following:

``15. Patent examiner training.''

     SEC. 6. ADMINISTRATIVE MATTERS.

       (a) Limitations on Personnel.--Section 3(a) of title 35, 
     United States Code, is amended by adding at the end thereof 
     the following: ``The Office shall not be subject to any 
     administratively or statutorily imposed limitation on 
     positions or personnel, and no positions or personnel of the 
     Office shall be taken into account for purposes of applying 
     any such limitation.''.
       (b) Retention of Fees.--(1) Section 255(g)(1)(A) of the 
     Balanced Budget and Emergency Deficit Control Act of 1985 (2 
     U.S.C. 905(g)(1)(A)) is amended by inserting after the item 
     relating to the National Credit Union Administration, credit 
     union share insurance fund, the following new item:
       ``Patent and Trademark Office''.
       (2) Section 10101(b)(2)(B) of the Omnibus Budget 
     Reconciliation Act of 1990 (35 U.S.C. 41 note) is amended by 
     striking ``, to the extent provided in appropriation Acts,'' 
     and inserting ``without appropriation''.
       (3) Section 42(c) of title 35, United States Code, is 
     amended by striking the first sentence and inserting the 
     following: ``Revenues from fees shall be available to the 
     Commissioner to carry out the activities of the Patent and 
     Trademark Office, in such allocations as are approved by Act 
     of Congress. Such revenues shall not be made available for 
     any purpose other than that authorized for the Patent and 
     Trademark Office.''.
       (c) Use of Fees.--Section 42(c) of title 35, United States 
     Code, is amended by adding at the end thereof the following: 
     ``All patent application fees collected under paragraphs (1), 
     (3)(A), (3)(B), and (4) through (8) of section 41(a), and all 
     other fees collected under section 41 for services or the 
     extension of services to be provided by patent examiners 
     shall be used only for the pay and training of patent 
     examiners.''.
       (d) Publications.--Section 11 of title 35, United States 
     Code, is amended by adding at the end thereof the following:
       ``(c) The Patent and Trademark Office shall make available 
     for public inspection during regular business hours all 
     solicitations issued by the Office for contracts for goods or 
     services and all contracts for goods or services entered into 
     by the Office.
       ``(d) Notice of a proposal to change United States patent 
     law that will be made on behalf of the United States to a 
     foreign country or international body shall be published in 
     the Federal Register before, or at the same time as, the 
     proposal is transmitted.''.

     SEC. 7. GAO STUDY AND REPORT.

       (a) In General.--The Comptroller General shall conduct a 
     study of--
       (1) the total number of patents applied for, issued, 
     abandoned, and pending in the period of the study;
       (2) the classification of the applicants for patents in 
     terms of the country they are a citizen of and whether they 
     are an individual inventor, small entity, or other:
       (3) the pendency time for applications for patents and such 
     other time and tracking data as may indicate the 
     effectiveness of the amendments made by this Act;
       (4) the number of applicants for patents who also file for 
     a patent in a foreign country, the number of foreign 
     countries in which such filings occur and which publish data 
     from patent applications in English and make it available to 
     citizens of the United States through governmental or 
     commercial sources;
       (5) a summary of the fees collected by the Patent and 
     Trademark Office for services related to patents and a 
     comparison of such fees with the fully allocated costs of 
     providing such services; and
       (6) recommendations regarding--
       (A) a revision of the organization of the Patent and 
     Trademark Office with respect to its patent functions, and
       (B) improved operating procedures in carrying out such 
     functions,

     and a cost analysis of the fees for such procedures and the 
     impact of the fees.
       (b) Additional Study Matter.--The Committees on 
     Appropriations, Judiciary, and Small Business of the House of 
     Representatives and the Senate may, no later than 12 months 
     after the beginning of the study under subsection (a), direct 
     the Comptroller General to include other matters relating to 
     patents and the Patent and Trademark Office in the study 
     conducted under subsection (a).
       (c) Report.--Upon the expiration of 36 months after the 
     beginning of the study under subsection (a), the Comptroller 
     General shall report the results of the study to the 
     Congress.

     SEC. 8. PATENT TERMS.

       (a) Amendment of Title .--Effective on the date of the 
     enactment of this Act, section 154 of title 35, United States 
     Code, as amended by the Uruguay Round Agreements Act, is 
     amended--
       (1) in paragraph (2) of subsection (a), by striking ``and 
     ending'' and all that follows in that paragraph and inserting 
     ``and ending--
       ``(A) 17 years from the date of the grant of the patent, or
       ``(B) 20 years from the date on which the application for 
     the patent was filed in the United States, except that if the 
     application contains a specific reference to an earlier filed 
     application or applications under section 120, 121, or 365(c) 
     of this title, 20 years from the date on which the earliest 
     such patent application was filed,

     whichever is later.''.
       (2) in subsection (c)(1), by striking ``shall be the 
     greater of the 20-year term as provided in subsection (a), or 
     17 years from grant'' and inserting ``shall be the term 
     provided in subsection (a)''.
       (b) Technical Amendment.--Section 534(b) of the Uruguay 
     Round Agreements Act is amended by striking paragraph (3).

     SEC. 9. DEFINITION OF SPECIAL CIRCUMSTANCES TO PROTECT THE 
                   CONFIDENTIALITY STATUS OF APPLICATIONS.

       Section 122 of title 35, United States Code, is amended by 
     striking ``as may be determined by the Commissioner'' and 
     inserting ``as in any of the following:
       ``(1) In the case of an application under section 111(a) 
     for a patent for an invention for which the applicant intends 
     to file or has filed an application for a patent in a foreign 
     country, the Commissioner may publish, at the discretion of 
     the Commissioner and by means determined suitable for the 
     purpose, no more than that data from such application under 
     section 111(a) which will be made or has been made public in 
     such foreign country. Such a publication shall be made only 
     after the date of the publication in such foreign country and 
     shall be made only if the data is not available, or cannot be 
     made readily available, in the English language through 
     commercial services.
       ``(2)(A) If the Commissioner determines that a patent 
     application which is filed after the date of the enactment of 
     this paragraph--
       ``(i) has been pending more than 5 years from the effective 
     filing date of the application,
       ``(ii) has not been previously published by the Patent and 
     Trademark Office,
       ``(iii) is not under any appellate review by the Board of 
     Patent Appeals and Interferences,
       ``(iv) is not under interference proceedings in accordance 
     with section 135(a),
       ``(v) is not under any secrecy order pursuant to section 
     181,
       ``(vi) is not being diligently pursued by the applicant in 
     accordance with this title, and
       ``(vii) is not in abandonment,

     the Commissioner shall notify the applicant of such 
     determination.
       ``(B) An applicant which received notice of a determination 
     described in subparagraph (A) may, within 30 days of 
     receiving such notice, petition the Commissioner to review 
     the determination to verify that subclauses (i) through (vii) 
     are all applicable to the applicant's application. If the 
     applicant makes such a petition, the Commissioner shall not 
     publish the applicant's application before the Commissioner's 
     review of the petition is completed. If the applicant does 
     not submit a petition, the Commissioner may publish the 
     applicant's application no earlier than 90 days after giving 
     such a notice.
       ``(3) If after the date of the enactment of this paragraph 
     a continuing application has been filed more than 6 months 
     after the date of the initial filing of an application, the 
     Commissioner shall notify the applicant under such 
     application. The Commissioner shall establish a procedure for 
     an applicant which receives such a notice to demonstrate that 
     the purpose of the continuing application was for reasons 
     other than to achieve a delay in the time of publication of 
     the application. If the Commissioner agrees with such a 
     demonstration by the applicant, the Commissioner shall not 
     publish the applicant's application. If the Commissioner does 
     not agree with such a demonstration by the applicant or if 
     the applicant does not make an attempt at such a 
     demonstration within a reasonable period of time as 
     determined by the Commissioner, the Commissioner shall 
     publish the applicant's application.

     The Commissioner shall ensure that publications under 
     paragraph (1), (2), or (3) will not result in third-party 
     pre-issuance oppositions which will delay or interfere with 
     the issuance of the patents whose applications' data will be 
     published.''.

     SEC. 10. INVENTION DEVELOPMENT SERVICES.

       (a) Invention Development Services.--Part I of title 35, 
     United States Code, is amended by adding after chapter 4 the 
     following new chapter:

              ``CHAPTER 5--INVENTION DEVELOPMENT SERVICES

``Sec.
``51. Definitions.
``52. Contracting requirements.
``53. Standard provisions for cover notice.
``54. Reports to customer required.
``55. Mandatory contract terms.
``56. Remedies.
``57. Records of complaints.
``58. Fraudulent representation by an invention developer.
``59. Rule of construction.

     ``Sec. 51. Definitions

       ``For purposes of this chapter--
       ``(1) the term `contract for invention development 
     services' means a contract by which an invention developer 
     undertakes invention development services for a customer;
       ``(2) the term `customer' means any person, firm, 
     partnership, corporation, or other entity who is solicited 
     by, seeks the services of, or enters into a contract with an 
     invention promoter for invention promotion services;
       ``(3) the term `invention promoter' means any person, firm, 
     partnership, corporation,

[[Page H1617]]

     or other entity who offers to perform or performs for, or on 
     behalf of, a customer any act described under paragraph (4), 
     but does not include--
       ``(A) any department or agency of the Federal Government or 
     of a State or local government;
       ``(B) any nonprofit, charitable, scientific, or educational 
     organization, qualified under applicable State law or 
     described under section 170(b)(1)(A) of the Internal Revenue 
     Code of 1986; or
       ``(C) any person duly registered with, and in good standing 
     before, the United States Patent and Trademark Office acting 
     within the scope of that person's registration to practice 
     before the Patent and Trademark Office; and
       ``(4) the term `invention development services' means, with 
     respect to an invention by a customer, any act involved in--
       ``(A) evaluating the invention to determine its 
     protectability as some form of intellectual property, other 
     than evaluation by a person licensed by a State to practice 
     law who is acting solely within the scope of that person's 
     professional license;
       ``(B) evaluating the invention to determine its commercial 
     potential by any person for purposes other than providing 
     venture capital; or
       ``(C) marketing, brokering, licensing, selling, or 
     promoting the invention or a product or service in which the 
     invention is incorporated or used, except that the display 
     only of an invention at a trade show or exhibit shall not be 
     considered to be invention development services.

     ``Sec. 52. Contracting requirements

       ``(a) In General.--(1) Every contract for invention 
     development services shall be in writing and shall be subject 
     to the provisions of this chapter. A copy of the signed 
     written contract shall be given to the customer at the time 
     the customer enters into the contract.
       ``(2) If a contract is entered into for the benefit of a 
     third party, such party shall be considered a customer for 
     purposes of this chapter.
       ``(b) Requirements of Invention Developer.--The invention 
     developer shall--
       ``(1) state in a written document, at the time a customer 
     enters into a contract for invention development services, 
     whether the usual business practice of the invention 
     developer is to--
       ``(A) seek more than 1 contract in connection with an 
     invention; or
       ``(B) seek to perform services in connection with an 
     invention in 1 or more phases, with the performance of each 
     phase covered in 1 or more subsequent contracts; and
       ``(2) supply to the customer a copy of the written document 
     together with a written summary of the usual business 
     practices of the invention developer, including--
       ``(A) the usual business terms of contracts; and
       ``(B) the approximate amount of the usual fees or other 
     consideration that may be required from the customer for each 
     of the services provided by the developer.
       ``(c) Right of Customer To Cancel Contract.--(1) 
     Notwithstanding any contractual provision to the contrary, a 
     customer shall have the right to terminate a contract for 
     invention development services by sending a written letter to 
     the invention developer stating the customer's intent to 
     cancel the contract. The letter of termination must be 
     deposited with the United States Postal Service on or before 
     5 business days after the date upon which the customer or the 
     invention developer executes the contract, whichever is 
     later.
       ``(2) Delivery of a promissory note, check, bill of 
     exchange, or negotiable instrument of any kind to the 
     invention developer or to a third party for the benefit of 
     the invention developer, without regard to the date or dates 
     appearing in such instrument, shall be deemed payment 
     received by the invention developer on the date received for 
     purposes of this section.

     ``Sec. 53. Standard provisions for cover notice

       ``(a) Contents.--Every contract for invention development 
     services shall have a conspicuous and legible cover sheet 
     attached with the following notice imprinted in boldface type 
     of not less than 12-point size:
       `` `YOU HAVE THE RIGHT TO TERMINATE THIS CONTRACT. TO 
     TERMINATE THIS CONTRACT, YOU MUST SEND A WRITTEN LETTER TO 
     THE COMPANY STATING YOUR INTENT TO CANCEL THIS CONTRACT. THE 
     LETTER OF TERMINATION MUST BE DEPOSITED WITH THE UNITED 
     STATES POSTAL SERVICE ON OR BEFORE FIVE (5) BUSINESS DAYS 
     AFTER THE DATE ON WHICH YOU OR THE COMPANY EXECUTE THE 
     CONTRACT, WHICHEVER IS LATER.
       `` `THE TOTAL NUMBER OF INVENTIONS EVALUATED BY THE 
     INVENTION DEVELOPER FOR COMMERCIAL POTENTIAL IN THE PAST FIVE 
     (5) YEARS IS __________. OF THAT NUMBER, __________ RECEIVED 
     POSITIVE EVALUATIONS AND __________ RECEIVED NEGATIVE 
     EVALUATIONS.
       `` `IF YOU ASSIGN EVEN A PARTIAL INTEREST IN THE INVENTION 
     TO THE INVENTION DEVELOPER, THE INVENTION DEVELOPER MAY HAVE 
     THE RIGHT TO SELL OR DISPOSE OF THE INVENTION WITHOUT YOUR 
     CONSENT AND MAY NOT HAVE TO SHARE THE PROFITS WITH YOU.
       `` `THE TOTAL NUMBER OF CUSTOMERS WHO HAVE CONTRACTED WITH 
     THE INVENTION DEVELOPER IN THE PAST FIVE (5) YEARS IS 
     __________. THE TOTAL NUMBER OF CUSTOMERS KNOWN BY THIS 
     INVENTION DEVELOPER TO HAVE RECEIVED, BY VIRTUE OF THIS 
     INVENTION DEVELOPER'S PERFORMANCE, AN AMOUNT OF MONEY IN 
     EXCESS OF THE AMOUNT PAID BY THE CUSTOMER TO THIS INVENTION 
     DEVELOPER IS ______________.
       `` `THE OFFICERS OF THIS INVENTION DEVELOPER HAVE 
     COLLECTIVELY OR INDIVIDUALLY BEEN AFFILIATED IN THE LAST TEN 
     (10) YEARS WITH THE FOLLOWING INVENTION DEVELOPMENT 
     COMPANIES: (LIST THE NAMES AND ADDRESSES OF ALL PREVIOUS 
     INVENTION DEVELOPMENT COMPANIES WITH WHICH THE PRINCIPAL 
     OFFICERS HAVE BEEN AFFILIATED AS OWNERS, AGENTS, OR 
     EMPLOYEES). YOU ARE ENCOURAGED TO CHECK WITH THE UNITED 
     STATES PATENT AND TRADEMARK OFFICE, THE FEDERAL TRADE 
     COMMISSION, YOUR STATE ATTORNEY GENERAL'S OFFICE, AND THE 
     BETTER BUSINESS BUREAU FOR ANY COMPLAINTS FILED AGAINST ANY 
     OF THESE COMPANIES.
       `` `YOU ARE ENCOURAGED TO CONSULT WITH AN ATTORNEY OF YOUR 
     OWN CHOOSING BEFORE SIGNING THIS CONTRACT. BY PROCEEDING 
     WITHOUT THE ADVICE OF AN ATTORNEY REGISTERED TO PRACTICE 
     BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE, YOU 
     COULD LOSE ANY RIGHTS YOU MIGHT HAVE IN YOUR IDEA OR 
     INVENTION.'.
       ``(b) Other Requirements for Cover Notice.--The cover 
     notice shall contain the items required under subsection (a) 
     and the name, primary office address, and local office 
     address of the invention developer, and may contain no other 
     matter.
       ``(c) Disclosure of Certain Customers Not Required.--The 
     requirement in the notice set forth in subsection (a) to 
     include the `TOTAL NUMBER OF CUSTOMERS WHO HAVE CONTRACTED 
     WITH THE INVENTION DEVELOPER IN THE PAST FIVE (5) YEARS' need 
     not include information with respect to customers who have 
     purchased trade show services, research, advertising, or 
     other nonmarketing services from the invention developer, nor 
     with respect to customers who have defaulted in their 
     payments to the invention developer.

     ``Sec. 54. Reports to customer required

       ``With respect to every contract for invention development 
     services, the invention developer shall deliver to the 
     customer at the address specified in the contract, at least 
     once every 3 months throughout the term of the contract, a 
     written report that identifies the contract and includes--
       ``(1) a full, clear, and concise description of the 
     services performed to the date of the report and of the 
     services yet to be performed and names of all persons who it 
     is known will perform the services; and
       ``(2) the name and address of each person, firm, 
     corporation, or other entity to whom the subject matter of 
     the contract has been disclosed, the reason for each such 
     disclosure, the nature of the disclosure, and complete and 
     accurate summaries of all responses received as a result of 
     those disclosures.

     ``Sec. 55. Mandatory contract terms

       ``(a) Mandatory Terms.--Each contract for invention 
     development services shall include in boldface type of not 
     less than 12-point size--
       ``(1) the terms and conditions of payment and contract 
     termination rights required under section 52;
       ``(2) a statement that the customer may avoid entering into 
     the contract by not making a payment to the invention 
     developer;
       ``(3) a full, clear, and concise description of the 
     specific acts or services that the invention developer 
     undertakes to perform for the customer;
       ``(4) a statement as to whether the invention developer 
     undertakes to construct, sell, or distribute one or more 
     prototypes, models, or devices embodying the invention of the 
     customer;
       ``(5) the full name and principal place of business of the 
     invention developer and the name and principal place of 
     business of any parent, subsidiary, agent, independent 
     contractor, and any affiliated company or person who it is 
     known will perform any of the services or acts that the 
     invention developer undertakes to perform for the customer;
       ``(6) if any oral or written representation of estimated or 
     projected customer earnings is given by the invention 
     developer (or any agent, employee, officer, director, 
     partner, or independent contractor of such invention 
     developer), a statement of that estimation or projection and 
     a description of the data upon which such representation is 
     based;
       ``(7) the name and address of the custodian of all records 
     and correspondence relating to the contracted for invention 
     development services, and a statement that the invention 
     developer is required to maintain all records and 
     correspondence relating to performance of the invention 
     development services for such customer for a period of not 
     less than 2 years after expiration of the term of such 
     contract; and
       ``(8) a statement setting forth a time schedule for 
     performance of the invention development services, including 
     an estimated date in which such performance is expected to be 
     completed.
       ``(b) Invention Developer as Fiduciary.--To the extent that 
     the description of the specific acts or services affords 
     discretion to the invention developer with respect to what

[[Page H1618]]

     specific acts or services shall be performed, the invention 
     developer shall be deemed a fiduciary.
       ``(c) Availability of Information.--Records and 
     correspondence described under subsection (a)(7) shall be 
     made available after 7 days written notice to the customer or 
     the representative of the customer to review and copy at a 
     reasonable cost on the invention developer's premises during 
     normal business hours.

     ``Sec. 56. Remedies

       ``(a) In General.--
       ``(1) Voidable contract.--Any contract for invention 
     development services that does not comply with the applicable 
     provisions of this chapter shall be voidable at the option of 
     the customer.
       ``(2) Reliance on false, fraudulent, or misleading 
     information.--Any contract for invention development services 
     entered into in reliance upon any material false, fraudulent, 
     or misleading information, representation, notice, or 
     advertisement of the invention developer (or any agent, 
     employee, officer, director, partner, or independent 
     contractor of such invention developer) shall be voidable at 
     the option of the customer.
       ``(3) Waiver.--Any waiver by the customer of any provision 
     of this chapter shall be deemed contrary to public policy and 
     shall be void and unenforceable.
       ``(4) Action by developer.--Any contract for invention 
     development services which provides for filing for and 
     obtaining utility, design, or plant patent protection shall 
     be voidable at the option of the customer unless the 
     invention developer offers to perform or performs such act 
     through a person duly registered to practice before, and in 
     good standing with, the Patent and Trademark Office.
       ``(b) Civil Action.--
       ``(1) In general.--Any customer who is injured by a 
     violation of this chapter by an invention developer or by any 
     material false or fraudulent statement or representation, or 
     any omission of material fact, by an invention developer (or 
     any agent, employee, director, officer, partner, or 
     independent contractor of such invention developer) or by 
     failure of an invention developer to make all the disclosures 
     required under this chapter, may recover in a civil action 
     against the invention developer (or the officers, directors, 
     or partners of such invention developer) in addition to 
     reasonable costs and attorneys' fees, the greater of--
       ``(A) $5,000; or
       ``(B) the amount of actual damages sustained by the 
     customer.
       ``(2) Damage increase.--Notwithstanding paragraph (1), the 
     court may increase damages to not more than 3 times the 
     amount awarded.
       ``(c) Rebuttable Presumption of Injury.--For purposes of 
     this section, substantial violation of any provision of this 
     chapter by an invention developer or execution by the 
     customer of a contract for invention development services in 
     reliance on any material false or fraudulent statements or 
     representations or omissions of material fact shall 
     establish a rebuttable presumption of injury.

     ``Sec. 57. Records of complaints

       ``(a) Release of Complaints.--The Director shall make all 
     complaints received by the United States Patent and Trademark 
     Office involving invention developers publicly available, 
     together with any response of the invention developers.
       ``(b) Request for Complaints.--The Director may request 
     complaints relating to invention development services from 
     any Federal or State agency and include such complaints in 
     the records maintained under subsection (a), together with 
     any response of the invention developers.

     ``Sec. 58. Fraudulent representation by an invention 
       developer

       ``Whoever, in providing invention development services, 
     knowingly provides any false or misleading statement, 
     representation, or omission of material fact to a customer or 
     fails to make all the disclosures required under this 
     chapter, shall be guilty of a misdemeanor and fined not more 
     than $10,000 for each offense.

     ``Sec. 59. Rule of construction

       ``Except as expressly provided in this chapter, no 
     provision of this chapter shall be construed to affect any 
     obligation, right, or remedy provided under any other Federal 
     or State law.''.
       (b) Technical and Conforming Amendment.--The table of 
     chapters for part I of title 35, United States Code, is 
     amended by adding after the item relating to chapter 4 the 
     following:

``5. Invention Development Services...........................51''.....

     SEC. 11. PROVISIONAL APPLICATIONS, PLANT BREEDER'S RIGHTS, 
                   DIVISIONAL APPLICATIONS.

       (a) Abandonment.--Section 111(b)(5) of title 35, United 
     States Code, is amended to read as follows:
       ``(5) Abandonment.--Notwithstanding the absence of a claim, 
     upon timely request and as prescribed by the Director, a 
     provisional application may be treated as an application 
     filed under subsection (a). If no such request is made, the 
     provisional application shall be regarded as abandoned 12 
     months after the filing date of such application and shall 
     not be subject to revival thereafter.''.
       (b) Effective Date.--The amendment made by subsection (a) 
     applies to any provisional application filed on or after June 
     8, 1995.
       (c) International Applications.--Section 119 of title 35, 
     United States Code, is amended--
       (1) in subsection (a), by inserting ``or in a WTO member 
     country'' after ``the United States'' the first place it 
     appears; and
       (2) by adding at the end the following new subsections:
       ``(f) Applications for Plant Breeder's Rights.--
     Applications for plant breeder's rights filed in a WTO member 
     country (or in a UPOV Contracting Party) shall have the same 
     effect for the purpose of the right of priority under 
     subsections (a) through (c) of this section as applications 
     for patents, subject to the same conditions and requirements 
     of this section as apply to applications for patents.
       ``(g) Definitions.--As used in this section--
       ``(1) the term `WTO member country' has the same meaning as 
     the term is defined in section 104(b)(2) of this title; and
       ``(2) the term `UPOV Contracting Party' means a member of 
     the International Convention for the Protection of New 
     Varieties of Plants.''.
       (d) Plant Patents.--
       (1) Tuber propagated plants.--Section 161 of title 35, 
     United States Code, is amended by striking ``a tuber 
     propagated plant or''.
       (2) Rights in plant patents.--The text of section 163 of 
     title 35, United States Code, is amended to read as follows: 
     ``In the case of a plant patent, the grant shall include the 
     right to exclude others from asexually reproducing the plant, 
     and from using, offering for sale, or selling the plant so 
     reproduced, or any of its parts, throughout the United 
     States, or from importing the plant so reproduced, or any 
     parts thereof, into the United States.''.
       (3) Effective date.--The amendment made by paragraph (1) 
     shall apply on the date of the enactment of this Act. The 
     amendment made by paragraph (2) shall apply to any plant 
     patent issued on or after the date of the enactment of this 
     Act.
       (e) Electronic Filing.--Section 22 of title 35, United 
     States Code, is amended by striking ``printed or 
     typewritten'' and inserting ``printed, typewritten, or on an 
     electronic medium''.
       (f) Divisional Applications.--Section 121 of title 35, 
     United States Code, is amended--
       (1) in the first sentence by striking ``If'' and inserting 
     ``(a) If''; and
       (2) by adding at the end the following new subsections:
       ``(b) In a case in which restriction is required on the 
     ground that two or more independent and distinct inventions 
     are claimed in an application, the applicant shall be 
     entitled to submit an examination fee and request examination 
     for each independent and distinct invention in excess of one. 
     The examination fee shall be equal to the filing fee, 
     including excess claims fees, that would have applied had the 
     claims corresponding to the asserted independent and distinct 
     inventions been presented in a separate application for 
     patent. For each of the independent and distinct inventions 
     in excess of one for which the applicant pays an examination 
     fee within two months after the requirement for restriction, 
     the Director shall cause an examination to be made and a 
     notification of rejection or written notice of allowance 
     provided to the applicant within the time period specified in 
     section 154(b)(1)(B)(i) of this title for the original 
     application. Failure to meet this or any other time limit set 
     forth in section 154(b)(1)(B) of this title shall be treated 
     as an unusual administrative delay under section 
     154(b)(1)(A)(iv) of this title.
       ``(c) An applicant who requests reconsideration of a 
     requirement for restriction under this section and submits 
     examination fees pursuant to such requirement shall, if the 
     requirement is determined to be improper, be entitled to a 
     refund of any examination fees determined to have been paid 
     pursuant to the requirement.''.

     SEC. 12. PROVISIONAL RIGHTS.

       Section 154 of title 35, United States Code, is amended--
       (1) in the section caption by inserting ``; provisional 
     rights'' after ``patent''; and
       (2) by adding at the end the following new subsection:
       ``(d) Provisional Rights.--
       ``(1) In general.--In addition to other rights provided by 
     this section, a patent shall include the right to obtain a 
     reasonable royalty from any person who, during the period 
     beginning on the date of publication of the application for 
     such patent pursuant to the voluntary disclosure provisions 
     of section 122 or the publication provisions of section 
     122(1) or 122(2) of this title, or in the case of an 
     international application filed under the treaty defined in 
     section 351(a) of this title designating the United States 
     under Article 21(2)(a) of such treaty, the date of 
     publication of the application, and ending on the date the 
     patent is issued--
       ``(A)(i) makes, uses, offers for sale, or sells in the 
     United States the invention as claimed in the published 
     patent application or imports such an invention into the 
     United States; or
       ``(ii) if the invention as claimed in the published patent 
     application is a process, uses, offers for sale, or sells in 
     the United States or imports into the United States products 
     made by that process as claimed in the published patent 
     application; and
       ``(B) had actual notice of the published patent application 
     and, where the right arising under this paragraph is based 
     upon an international application designating the United 
     States that is published in a language other than English, a 
     translation of the international application into the English 
     language.

[[Page H1619]]

       ``(2) Right based on substantially identical inventions.--
     The right under paragraph (1) to obtain a reasonable royalty 
     shall not be available under this subsection unless the 
     invention as claimed in the patent is substantially identical 
     to the invention as claimed in the published patent 
     application.
       ``(3) Time limitation on obtaining a reasonable royalty.--
     The right under paragraph (1) to obtain a reasonable royalty 
     shall be available only in an action brought not later than 6 
     years after the patent is issued. The right under paragraph 
     (1) to obtain a reasonable royalty shall not be affected by 
     the duration of the period described in paragraph (1).
       ``(4) Requirements for international applications.--The 
     right under paragraph (1) to obtain a reasonable royalty 
     based upon the publication under the treaty defined in 
     section 351(a) of this title of an international application 
     designating the United States shall commence from the date 
     that the Patent and Trademark Office receives a copy of the 
     publication under such treaty of the international 
     application, or, if the publication under the treaty of the 
     international application is in a language other than 
     English, from the date that the Patent and Trademark Office 
     receives a translation of the international application in 
     the English language. The Director may require the applicant 
     to provide a copy of the international publication of the 
     international application and a translation thereof.''.

     SEC. 13. EFFECTIVE DATE.

       Except as otherwise provided, this Act and the amendments 
     made by this Act shall take effect 60 days after the date of 
     the enactment of this Act.