[Congressional Record Volume 145, Number 112 (Tuesday, August 3, 1999)]
[House]
[Pages H6929-H6950]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]
AMERICAN INVENTORS PROTECTION ACT OF 1999
Mr. COBLE. Mr. Speaker, I move to suspend the rules and pass the bill
(H.R. 1907) 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, as amended.
The Clerk read as follows:
H.R. 1907
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. Invention promotion services.
Sec. 103. Effective date.
TITLE II--FIRST INVENTOR DEFENSE
Sec. 201. Short title.
Sec. 202. Defense to patent infringement based on earlier inventor.
Sec. 203. Effective date and applicability.
TITLE III--PATENT TERM GUARANTEE
Sec. 301. Short title.
Sec. 302. Patent term guarantee authority.
Sec. 303. Continued examination of patent applications.
Sec. 304. Technical clarification.
Sec. 305. Effective date.
TITLE IV--UNITED STATES PUBLICATION OF PATENT APPLICATIONS PUBLISHED
ABROAD
Sec. 401. Short title.
Sec. 402. Publication.
Sec. 403. Time for claiming benefit of earlier filing date.
Sec. 404. Provisional rights.
Sec. 405. Prior art effect of published applications.
Sec. 406. Cost recovery for publication.
Sec. 407. Conforming amendments.
Sec. 408. Effective date.
TITLE V--OPTIONAL INTER PARTES REEXAMINATION PROCEDURE
Sec. 501. Short title.
Sec. 502. Ex parte reexamination of patents.
Sec. 503. Definitions.
Sec. 504. Optional inter partes reexamination procedures.
Sec. 505. Conforming amendments.
Sec. 506. Report to Congress.
Sec. 507. Estoppel effect of reexamination.
Sec. 508. Effective date.
TITLE VI--PATENT AND TRADEMARK OFFICE
Sec. 601. Short title.
Subtitle A--United States Patent and Trademark Office
Sec. 611. Establishment of Patent and Trademark Office.
Sec. 612. Powers and duties.
Sec. 613. Organization and management.
Sec. 614. Public Advisory Committees.
Sec. 615. Patent and Trademark Office funding.
Sec. 616. Conforming amendments.
Sec. 617. Trademark Trial and Appeal Board.
Sec. 618. Board of Patent Appeals and Interferences.
Sec. 619. Annual report of Director.
Sec. 620. Suspension or exclusion from practice.
Sec. 621. Pay of Director and Deputy Director.
Sec. 622. Study on Alternative Fee Structures.
Subtitle B--Effective Date; Technical Amendments
Sec. 631. Effective date.
Sec. 632. Technical and conforming amendments.
Subtitle C--Miscellaneous Provisions
Sec. 641. References.
Sec. 642. Exercise of authorities.
Sec. 643. Savings provisions.
Sec. 644. Transfer of assets.
Sec. 645. Delegation and assignment.
Sec. 646. Authority of Director of the Office of Management and Budget
with respect to functions transferred.
Sec. 647. Certain vesting of functions considered transfers.
Sec. 648. Availability of existing funds.
Sec. 649. Definitions.
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.
TITLE I--INVENTORS' RIGHTS
SEC. 101. SHORT TITLE.
This title may be cited as the ``Inventors' Rights Act''.
SEC. 102. INVENTION PROMOTION SERVICES.
Part I of title 35, United States Code, is amended by
adding after chapter 4 the following chapter:
``CHAPTER 5--INVENTION PROMOTION SERVICES
``Sec.
``51. Definitions.
``52. Contracting requirements.
``53. Standard provisions for cover notice.
``54. Reports to customer required.
``55. Mandatory contract terms.
``56. Remedies.
``57. Records of complaints.
``58. Fraudulent representation by an invention promoter.
``59. Rule of construction.
``Sec. 51. Definitions
``For purposes of this chapter--
``(1) the term `contract for invention promotion services'
means a contract by which an invention promoter undertakes
invention promotion services for a customer;
``(2) the term `customer' means any person, firm,
partnership, corporation, or other entity who enters into a
financial relationship or a contract with an invention
promoter for invention promotion services;
``(3) the term `invention promoter' means any person, firm,
partnership, corporation, or other entity who offers to
perform or performs for, or on behalf of, a customer any act
described under paragraph (4), but does not include--
``(A) any department or agency of the Federal Government or
of a State or local government;
``(B) any nonprofit, charitable, scientific, or educational
organization, qualified under applicable State law or
described under section 170(b)(1)(A) of the Internal Revenue
Code of 1986;
``(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, except when that
person performs any act described in subparagraph (B) or (C)
of paragraph (4); or
``(D) 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; and
``(4) the term `invention promotion services' means, with
respect to an invention by a customer, any act involved in--
``(A) evaluating the invention to determine its
protectability as some form of intellectual property, other
than evaluation by a person licensed by a State to practice
law who is acting solely within the scope of that person's
professional license;
``(B) evaluating the invention to determine its commercial
potential by any person for purposes other than providing
venture capital; or
``(C) marketing, brokering, offering to license or sell, or
promoting the invention or a product or service in which the
invention is incorporated or used, except that the display
only of an invention at a trade show or exhibit shall not be
considered to be invention promotion services.
``Sec. 52. Contracting requirements
``(a) In General.--(1) Every contract for invention
promotion services shall be in writing and shall be subject
to the provisions of this chapter. A copy of the signed
written contract shall be given to the customer at the time
the customer enters into the contract.
``(2) If a contract is entered into for the benefit of a
third party, the identity and address of such party shall be
disclosed by such party's agent and such party shall be
considered a customer for purposes of this chapter.
``(b) Requirements of Invention Promoter.--The invention
promoter shall--
[[Page H6930]]
``(1) state in a written document, at the time a customer
enters into a contract for invention promotion services,
whether the usual business practice of the invention promoter
is to--
``(A) seek more than 1 contract in connection with an
invention; or
``(B) seek to perform services in connection with an
invention in 1 or more phases, with the performance of each
phase covered in 1 or more subsequent contracts; and
``(2) supply to the customer a copy of the written document
together with a written summary of the usual business
practices of the invention promoter, including--
``(A) the usual business terms of contracts; and
``(B) the approximate amount of the usual fees or other
consideration that may be required from the customer for each
of the services provided by the invention promoter.
``(c) Right of Customer To Cancel Contract.--(1)
Notwithstanding any contractual provision to the contrary, a
customer shall have the right to terminate a contract for
invention promotion services by sending a written letter to
the invention promoter stating the customer's intent to
cancel the contract. The letter of termination must be
deposited with the United States Postal Service on or before
5 business days after the date upon which the customer or the
invention promoter executes the contract, whichever is later.
``(2) Delivery of a promissory note, check, bill of
exchange, or negotiable instrument of any kind to the
invention promoter or to a third party for the benefit of the
invention promoter, without regard to the date or dates
appearing in such instrument, shall be deemed payment
received by the invention promoter on the date received for
purposes of this section.
``Sec. 53. Standard provisions for cover notice
``(a) Contents.--Every contract for invention promotion
services shall have a conspicuous and legible cover sheet
attached with the following notice imprinted in boldface type
of not less than 12-point size:
`YOU HAVE THE RIGHT TO TERMINATE THIS CONTRACT. TO
TERMINATE THIS CONTRACT, YOU MUST SEND A WRITTEN LETTER TO
THE COMPANY STATING YOUR INTENT TO CANCEL THIS CONTRACT.
`THE LETTER OF TERMINATION MUST BE DEPOSITED WITH THE
UNITED STATES POSTAL SERVICE ON OR BEFORE FIVE (5) BUSINESS
DAYS AFTER THE DATE ON WHICH YOU OR THE COMPANY EXECUTE THE
CONTRACT, WHICHEVER IS LATER.
`THE TOTAL NUMBER OF INVENTIONS EVALUATED BY THE INVENTION
PROMOTER FOR COMMERCIAL POTENTIAL IN THE PAST FIVE (5) YEARS
IS XXXXX. OF THAT NUMBER, XXXXX RECEIVED POSITIVE EVALUATIONS
AND XXXXX RECEIVED NEGATIVE EVALUATIONS.
`IF YOU ASSIGN EVEN A PARTIAL INTEREST IN THE INVENTION TO
THE INVENTION PROMOTER, THE INVENTION PROMOTER MAY HAVE THE
RIGHT TO SELL OR DISPOSE OF THE INVENTION WITHOUT YOUR
CONSENT AND MAY NOT HAVE TO SHARE THE PROFITS WITH YOU.
`THE TOTAL NUMBER OF CUSTOMERS WHO HAVE CONTRACTED WITH THE
INVENTION PROMOTER IN THE PAST FIVE (5) YEARS IS XXXXX. THE
TOTAL NUMBER OF CUSTOMERS KNOWN BY THIS INVENTION PROMOTER TO
HAVE RECEIVED, BY VIRTUE OF THIS INVENTION PROMOTER'S
PERFORMANCE, AN AMOUNT OF MONEY IN EXCESS OF THE AMOUNT PAID
BY THE CUSTOMER TO THIS INVENTION PROMOTER IS XXXXXXX. AS A
RESULT OF THE EFFORTS OF THIS INVENTION PROMOTER, XXXXX
NUMBER OF CUSTOMERS HAVE RECEIVED LICENSE AGREEMENTS FOR
THEIR INVENTIONS.
`THE OFFICERS OF THIS INVENTION PROMOTER HAVE COLLECTIVELY
OR INDIVIDUALLY BEEN AFFILIATED IN THE LAST TEN (10) YEARS
WITH THE FOLLOWING INVENTION PROMOTION COMPANIES: (LIST THE
NAMES AND ADDRESSES OF ALL PREVIOUS INVENTION PROMOTION
COMPANIES WITH WHICH THE PRINCIPAL OFFICERS HAVE BEEN
AFFILIATED AS OWNERS, AGENTS, OR EMPLOYEES). YOU ARE
ENCOURAGED TO CHECK WITH THE UNITED STATES PATENT AND
TRADEMARK OFFICE, THE FEDERAL TRADE COMMISSION, YOUR STATE
ATTORNEY GENERAL'S OFFICE, AND THE BETTER BUSINESS BUREAU FOR
ANY COMPLAINTS FILED AGAINST ANY OF THESE COMPANIES WHICH
RESULTED IN REGULATORY SANCTIONS OR OTHER CORRECTIVE ACTIONS.
`YOU ARE ENCOURAGED TO CONSULT WITH AN ATTORNEY OF YOUR OWN
CHOOSING BEFORE SIGNING THIS CONTRACT. BY PROCEEDING WITHOUT
THE ADVICE OF AN ATTORNEY REGISTERED TO PRACTICE BEFORE THE
UNITED STATES PATENT AND TRADEMARK OFFICE, YOU COULD LOSE ANY
RIGHTS YOU MIGHT HAVE IN YOUR IDEA OR INVENTION.'.
``(b) Other Requirements for Cover Notice.--The cover
notice shall contain the items required under subsection (a)
and the name, primary office address, and local office
address of the invention promoter, and may contain no other
matter.
``(c) Disclosure of Certain Customers Not Required.--The
requirement in the notice set forth in subsection (a) to
include the `TOTAL NUMBER OF CUSTOMERS WHO HAVE CONTRACTED
WITH THE INVENTION PROMOTER IN THE PAST FIVE (5) YEARS' need
not include information with respect to customers who have
purchased trade show services, research, advertising, or
other nonmarketing services from the invention promoter, nor
with respect to customers who have defaulted in their payment
to the invention promoter.
``Sec. 54. Reports to customer required
``With respect to every contract for invention promotion
services, the invention promoter shall deliver to the
customer at the address specified in the contract, at least
once every 3 months throughout the term of the contract, a
written report that identifies the contract and includes--
``(1) a full, clear, and concise description of the
services performed to the date of the report and of the
services yet to be performed and names of all persons who it
is known will perform the services; and
``(2) the name and address of each person, firm,
corporation, or other entity to whom the subject matter of
the contract has been disclosed, the reason for each such
disclosure, the nature of the disclosure, and complete and
accurate summaries of all responses received as a result of
those disclosures.
``Sec. 55. Mandatory contract terms
``(a) Mandatory Terms.--Each contract for invention
promotion services shall include in boldface type of not less
than 12-point size--
``(1) the terms and conditions of payment and contract
termination rights required under section 52;
``(2) a statement that the customer may avoid entering into
the contract by not making the initial payment to the
invention promoter;
``(3) a full, clear, and concise description of the
specific acts or services that the invention promoter
undertakes to perform for the customer;
``(4) a statement as to whether the invention promoter
undertakes to construct, sell, or distribute one or more
prototypes, models, or devices embodying the invention of the
customer;
``(5) the full name and principal place of business of the
invention promoter and the name and principal place of
business of any parent, subsidiary, agent, independent
contractor, and any affiliated company or person who it is
known will perform any of the services or acts that the
invention promoter undertakes to perform for the customer;
``(6) if any oral or written representation of estimated or
projected customer earnings is given by the invention
promoter (or any agent, employee, officer, director, partner,
or independent contractor of such invention promoter), a
statement of that estimation or projection and a description
of the data upon which such representation is based;
``(7) the name and address of the custodian of all records
and correspondence relating to the contracted for invention
promotion services, and a statement that the invention
promoter is required to maintain all records and
correspondence relating to performance of the invention
promotion services for such customer for a period of not less
than 2 years after expiration of the term of such contract;
and
``(8) a statement setting forth a time schedule for
performance of the invention promotion services, including an
estimated date in which such performance is expected to be
completed.
``(b) Invention Promoter as Fiduciary.--To the extent that
the description of the specific acts or services affords
discretion to the invention promoter with respect to what
specific acts or services shall be performed, the invention
promoter shall be deemed a fiduciary.
``(c) Availability of Information.--Records and
correspondence described under subsection (a)(7) shall be
made available after 7 days written notice to the customer or
the representative of the customer to review and copy at a
reasonable cost on the invention promoter's premises during
normal business hours.
``Sec. 56. Remedies
``(a) In General.--(1) Any contract for invention promotion
services that does not comply with the applicable provisions
of this chapter shall be voidable at the option of the
customer.
``(2) Any contract for invention promotion services entered
into in reliance upon any material false, fraudulent, or
misleading information, representation, notice, or
advertisement of the invention promoter (or any agent,
employee, officer, director, partner, or independent
contractor of such invention promoter) shall be voidable at
the option of the customer.
``(3) Any waiver by the customer of any provision of this
chapter shall be deemed contrary to public policy and shall
be void and unenforceable.
``(4) Any contract for invention promotion services which
provides for filing for and obtaining utility, design, or
plant patent protection shall be voidable at the option of
the customer unless the invention promoter offers to perform
or performs such act through aperson duly registered to
practice before, and in good standing with, the Patent and
Trademark Office.
``(b) Civil Action.--(1) Any customer who is injured by a
violation of this chapter by an invention promoter or by any
material false or fraudulent statement or representation, or
any omission of material fact, by an
[[Page H6931]]
invention promoter (or any agent, employee, director,
officer, partner, or independent contractor of such invention
promoter) or by failure of an invention promoter to make all
the disclosures required under this chapter, may recover in a
civil action against the invention promoter (or the officers,
directors, or partners of such invention promoter) in
addition to reasonable costs and attorneys' fees, the greater
of--
``(A) $5,000; or
``(B) the amount of actual damages sustained by the
customer.
``(2) Notwithstanding paragraph (1), the court may increase
damages to not more than 3 times the amount awarded, taking
into account past complaints made against the invention
promoter that resulted in regulatory sanctions or other
corrective actions based on those record compiled by the
Director under section 57.
``(c) Rebuttable Presumption of Injury.--For purposes of
this section, substantial violation of any provision of this
chapter by an invention promoter or execution by the customer
of a contract for invention promotion services in reliance on
any material false or fraudulent statements or
representations or omissions of material fact shall establish
a rebuttable presumption of injury.
``Sec. 57. Records of complaints
``(a) Release of Complaints.--The Director shall make all
complaints received by the United States Patent and Trademark
Office involving invention promoters publicly available,
together with any response of the invention promoters.
``(b) Request for Complaints.--The Director may request
complaints relating to invention promotion services from any
Federal or State agency and include such complaints in the
records maintained under subsection (a), together with any
response of the invention promoters.
``Sec. 58. Fraudulent representation by an invention promoter
``Whoever, in providing invention promotion services,
knowingly provides any false or misleading statement,
representation, or omission of material fact to a customer or
fails to make all the disclosures required under this
chapter, shall be guilty of a misdemeanor and fined not more
than $10,000 for each offense.
``Sec. 59. Rule of construction
``Except as expressly provided in this chapter, no
provision of this chapter shall be construed to affect any
obligation, right, or remedy provided under any other Federal
or State law.''.
SEC. 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--FIRST INVENTOR DEFENSE
SEC. 201. SHORT TITLE.
This title may be cited as the ``First Inventor Defense
Act''.
SEC. 202. 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 or the 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 119, 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 asserting 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 result 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. 203. EFFECTIVE DATE AND APPLICABILITY.
This title and the amendments made by this title shall take
effect on the date of the enactment of this Act, but shall
not apply to any action for infringement that is pending on
such date of enactment or with respect to any subject matter
for which an adjudication of infringement, including a
consent judgment, has been made before such date of
enactment.
TITLE III--PATENT TERM GUARANTEE
SEC. 301. SHORT TITLE.
This title may be cited as the ``Patent Term Guarantee
Act''.
SEC. 302. 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) make a notification of the rejection of any claim for
a patent or any objection or argument under section 132, or
give or mail a written notice of allowance under section 151,
within 14 months after the date on which the application was
filed;
``(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
[[Page H6932]]
``(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 Director shall prescribe regulations
establishing the circumstances that constitute a failure of
an applicant to engage in reasonable efforts to conclude
processing or examination of an application.
``(3) Procedures for patent term adjustment
determination.--
``(A) The Director 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 Director 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 Director.
``(C) The Director 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 Director shall proceed to grant the patent after
completion of the Director'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 Director under paragraph (3) shall have remedy by a
civil action against the Director 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 Director, and the Director 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. 303. 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 Director 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 on such fees for small
entities that qualify for reduced fees under section 41(h)(1)
of this title.''.
SEC. 304. 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. 305. EFFECTIVE DATE.
(a) Sections 302 and 304.--The amendments made by sections
302 and 304 shall take effect on the date of the enactment of
this Act and, except for a design patent application filed
under chapter 16 of title 35, United States Code, shall apply
to any application filed on or after the date of the
enactment of this Act.
(b) Section 303.--The amendments made by section 303 shall
take effect 6 months after the date of the enactment of this
Act.
TITLE IV--UNITED STATES PUBLICATION OF PATENT APPLICATIONS PUBLISHED
ABROAD
SEC. 401. SHORT TITLE.
This title may be referred to as the ``Publication of
Foreign Filed Applications Act''.
SEC. 402. 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
any such application shall be given without authority of the
applicant or owner unless necessary to carry out the
provisions of an Act of Congress or in such special
circumstances as may be determined by the Director.
``(b) United States Publication of Applications Published
Abroad.--
``(1) In general.--(A) Subject to paragraph (2), each
application for patent, except applications for design
patents filed under chapter 16 and provisional applications
filed under section 111(b), shall be published, in accordance
with procedures determined by the Director, promptly upon the
expiration of a period of 18 months after the earliest filing
date for which a benefit is sought under this title. At the
request of the applicant, an application may be published
earlier than the end of such 18-month period.
``(B) No information concerning published patent
applications shall be made available to the public except as
the Director determines.
``(C) Pursuant to this title and notwithstanding any other
provision of law, a determination by the Director to release
or not to release information concerning a published patent
application shall be final and nonreviewable.
``(2) Exceptions.--(A) An application that is no longer
pending shall not be published.
``(B) An application that is subject to a secrecy order
under section 181 shall not be published.
``(C)(i) If an applicant, upon filing, makes a request that
an application not be published pursuant to paragraph (1),
and states in such request that the invention disclosed in
the application has not been 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 Director 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
[[Page H6933]]
is shown to the satisfaction of the Director that the delay
in submitting the notice was unintentional.
``(iv) If a notice is made pursuant to clause (iii), or the
applicant rescinds a request pursuant to clause (ii), the
Director shall publish the application 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 Director 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 Director
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.''.
(b) Study by GAO.--
(1) In general.--The Comptroller General of the United
States shall conduct a study of applicants for patents who
file only in the United States during the 3-year period
beginning on the effective date of this title.
(2) Contents.--The study conducted under paragraph (1)
shall--
(A) consider the number of such applicants for patent 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; and
(D) examine the manner of entity seeking an application and
any correlation that may exist between such manner and
publication of patent applications.
(3) Report to judiciary committees.--The Comptroller
General shall submit to the Committees on the Judiciary of
the House of Representatives and the Senate the results of
the study conducted under this subsection.
SEC. 403. 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, identifying the
foreign application by specifying its application number,
country, and the day, month, and year of its filing, is filed
in the Patent and Trademark Office at such time during the
pendency of the application as required by the Director.
``(2) The Director may consider the failure of the
applicant to file a timely claim for priority as a waiver of
any such claim. The Director may establish procedures,
including the payment of a surcharge, to accept an
unintentionally delayed claim under this section.
``(3) The Director may require a certified copy of the
original foreign application, specification, and drawings
upon which it is based, a translation if not in the English
language, and such other information as the Director
considers necessary. Any such certification shall be made by
the 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.--Section 120 of title 35, United
States Code, is amended by adding at the end the following:
``The Director may determine the time period during the
pendency of the application within which an amendment
containing the specific reference to the earlier filed
application is submitted. The Director may consider the
failure to submit such an amendment within that time period
as a waiver of any benefit under this section. The Director
may establish procedures, including the payment of a
surcharge, to accept unintentionally late submissions of
amendments under this section.''.
SEC. 404. PROVISIONAL RIGHTS.
Section 154 of title 35, United States Code, is amended--
(1) in the section caption by inserting ``; provisional
rights'' after ``patent''; and
(2) by adding at the end the following new subsection:
``(d) Provisional Rights.---
``(1) In general.--In addition to other rights provided by
this section, a patent shall include the right to obtain a
reasonable royalty from any person who, during the period
beginning on the date of publication of the application for
such patent pursuant to section 122(b), 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, 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 Director may require the applicant to
provide a copy of the international application and a
translation thereof.''.
SEC. 405. 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. 406. COST RECOVERY FOR PUBLICATION.
The Director of the United States Patent and Trademark
Office shall recover the cost of early publication required
by the amendment made by section 402 by charging a separate
publication fee after notice of allowance is given pursuant
to section 151 of title 35, United States Code.
SEC. 407. 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 item relating to section 122 in the table of
sections for chapter 11 is amended by inserting ``;
publication of patent applications'' after ``applications''.
(5) The item relating to section 154 in the table of
sections for chapter 14 is amended by inserting ``;
provisional rights'' after ``patent''.
(6) 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'';
[[Page H6934]]
(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.
(7) Section 252 is amended in the first undesignated
paragraph by inserting ``substantially'' before ``identical''
each place it appears.
(8) 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.''.
(9) Section 374 is amended to read as follows:
``Sec. 374. Publication of international application: effect
``The publication under the treaty defined in section
351(a) of this title of an international application
designating the United States shall confer the same rights
and shall have the same effect under this title as an
application for patent published under section 122(b), except
as provided in sections 102(e) and 154(d).''.
SEC. 408. 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 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 404 and 405 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 enactment of
this Act. The amendment made by section 404 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 V--OPTIONAL INTER PARTES REEXAMINATION PROCEDURE
SEC. 501. SHORT TITLE.
This title may be cited as the ``Optional Inter Partes
Reexamination Procedure Act''.
SEC. 502. 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. 503. 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 reexaminaiton under section 311 who is not the patent
owner.''.
SEC. 504. OPTIONAL INTER PARTES REEXAMINATION PROCEDURES.
(a) In General.--Part 3 of title 35, United Stats 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 Director.
``313. Inter partes reexamination order by Director.
``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 Director 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 Director promptly shall send a copy of the
request to the owner of record of the patent.
``Sec. 312. Determination of issue by Director
``(a) Reexamination.--Not later than 3 months after the
filing of a request for inter partes reexamination under
section 311, the Director 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 Director's initiative, and any time, the
Director may determine whether a substantial new question of
patentability is raised by patents and publications.
``(b) Record.--A record of the Director'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 Director
pursuant to subsection (a) shall be final and nonappealable.
Upon a determination that no substantial new question of
patentability has been raised, the Director may refund a
portion of the inter partes reexamination fee required under
section 311.
``Sec. 313. Inter partes reexamination order by Director
``If, in a determination made under section 312(a), the
Director 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
Director 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 Director
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 be 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
[[Page H6935]]
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 Director.
``(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 35, 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 Reexamination of
Patents...................................................301 ....
``31. Optional Inter Partes Reexamination of Patents.........311''.....
SEC. 505. 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 a 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 Patent 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 inter partes
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 ex parte and reexamination cases, the
Director 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. 506. REPORT TO CONGRESS.
Not later than 5 years after the effective date of this
title, the Director of the United States Patent and Trademark
Office 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. 507. 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. 508. 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 VI--PATENT AND TRADEMARK OFFICE
SEC. 601. SHORT TITLE.
This title may be cited as the ``Patent and Trademark
Office Efficiency Act''.
Subtitle A--United States Patent and Trademark Office
SEC. 611. ESTABLISHMENT OF PATENT AND TRADEMARK OFFICE.
Section 1 of title 35, United States Code, is amended to
read as follows:
``Sec. 1. Establishment
``(a) Establishment.--The United States Patent and
Trademark Office is established as an agency of the United
States, within the Department of Commerce. In carrying out
its functions, the United States Patent and Trademark Office
shall be subject to the policy direction of the Secretary of
Commerce, but otherwise shall retain responsibility for
decisions regarding the management and administration of its
operations and shall exercise independent control of its
budget allocations and expenditures, personnel decisions and
processes, procurements, and other administrative and
management functions in accordance with this title and
applicable provisions of law. Those operations designed to
grant and issue patents and those operations which are
designed to facilitate the registration of trademarks shall
be treated as separate operating units within the Office.
``(b) Offices.--The United States Patent and Trademark
Office shall maintain its principal office in the
metropolitan Washington, DC, area, for the service of process
and papers and for the purpose of carrying out its functions.
The United States Patent and Trademark Office shall be
deemed, for purposes of venue in civil actions, to be a
resident of the district in which its principal office is
located, except where jurisdiction is otherwise provided by
law. The United States Patent and Trademark Office may
establish satellite offices in such other places in the
United States as it considers necessary and appropriate in
the conduct of its business.
``(c) Reference.--For purposes of this title, the United
States Patent and Trademark Office shall also be referred to
as the `Office' and the `Patent and Trademark Office'.''.
SEC. 612. POWERS AND DUTIES.
Section 2 of title 35, United States Code, is amended to
read as follows:
``Sec. 2. Powers and duties
``(a) In General.--The United States Patent and Trademark
Office, subject to the policy direction of the Secretary of
Commerce--
``(1) shall be responsible for the granting and issuing of
patents and the registration of trademarks; and
``(2) shall be responsible for disseminating to the public
information with respect to patents and trademarks.
``(b) Specific Powers.--The Office--
``(1) shall adopt and use a seal of the Office, which shall
be judicially noticed and with which letters patent,
certificates of trademark registrations, and papers issued by
the Office shall be authenticated;
``(2) may establish regulations, not inconsistent with law,
which--
``(A) shall govern the conduct of proceedings in the
Office;
``(B) shall be made in accordance with section 553 of title
5;
``(C) shall facilitate and expedite the processing of
patent applications, particularly those which can be filed,
stored, processed, searched, and retrieved electronically,
subject to the provisions of section 122 relating to the
confidential status of applications;
``(D) may govern the recognition and conduct of agents,
attorneys, or other persons representing applicants or other
parties before the Office, and may require them, before being
recognized as representatives of applicants or other persons,
to show that they are of good moral character and reputation
and are possessed of the necessary qualifications to render
to applicants or other persons valuable service, advice, and
assistance in the presentation or prosecution of their
applications or other business before the Office;
``(E) shall recognize the public interest in continuing to
safeguard broad access to the
[[Page H6936]]
United States patent system through the reduced fee structure
for small entities under section 41(h)(1) of this title; and
``(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;
``(3) may acquire, construct, purchase, lease, hold,
manage, operate, improve, alter, and renovate any real,
personal, or mixed property, or any interest therein, as it
considers necessary to carry out its functions;
``(4)(A) may make such purchases, contracts for the
construction, maintenance, or management and operation of
facilities, and contracts for supplies or services, without
regard to the provisions of the Federal Property and
Administrative Services Act of 1949 (40 U.S.C. 471 and
following), the Public Buildings Act (40 U.S.C. 601 and
following), and the Stewart B. McKinney Homeless Assistance
Act (42 U.S.C.11301 and following); and
``(B) may enter into and perform such purchases and
contracts for printing services, including the process of
composition, platemaking, presswork, silk screen processes,
binding, microform, and the products of such processes, as it
considers necessary to carry out the functions of the Office,
without regard to sections 501 through 517 and 1101 through
1123 of title 44;
``(5) may use, with their consent, services, equipment,
personnel, and facilities of other departments, agencies, and
instrumentalities of the Federal Government, on a
reimbursable basis, and cooperate with such other
departments, agencies, and instrumentalities in the
establishment and use of services, equipment, and facilities
of the Office;
``(6) may, when the Director determines that it is
practicable, efficient, and cost-effective to do so, use,
with the consent of the United States and the agency,
instrumentality, patent and trademark office, or
international organization concerned, the services, records,
facilities, or personnel of any State or local government
agency or instrumentality or foreign patent and trademark
office or international organization to perform functions on
its behalf;
``(7) may retain and use all of its revenues and receipts,
including revenues from the sale, lease, or disposal of any
real, personal, or mixed property, or any interest therein,
of the Office;
``(8) shall advise the President, through the Secretary of
Commerce, on national and certain international intellectual
property policy issues;
``(9) shall advise Federal departments and agencies on
matters of intellectual property policy in the United States
and intellectual property protection in other countries;
``(10) shall provide guidance, as appropriate, with respect
to proposals by agencies to assist foreign governments and
international intergovernmental organizations on matters of
intellectual property protection;
``(11) may conduct programs, studies, or exchanges of items
or services regarding domestic and international intellectual
property law and the effectiveness of intellectual property
protection domestically and throughout the world;
``(12)(A) shall 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 intellectual property offices and
international intergovernmental organizations; and
``(B) may conduct programs and studies described in
subparagraph (A); and
``(13)(A) in coordination with the Department of State, may
conduct programs and studies cooperatively with foreign
intellectual property offices and international
intergovernmental organizations; and
``(B) with the concurrence of the Secretary of State, may
authorize the transfer of not to exceed $100,000 in any year
to the Department of State for the purpose of making special
payments to international intergovernmental organizations for
studies and programs for advancing international cooperation
concerning patents, trademarks, and other matters.
``(c) Clarification of Specific Powers.--(1) The special
payments under subsection (b)(13)(B) shall be in addition to
any other payments or contributions to international
organizations described in subsection (b)(13)(B) and shall
not be subject to any limitations imposed by law on the
amounts of such other payments or contributions by the United
States Government.
``(2) Nothing in subsection (b) shall derogate from the
duties of the Secretary of State or 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).
``(3) Nothing in subsection (b) shall derogate from the
duties and functions of the Register of Copyrights or
otherwise alter current authorities relating to copyright
matters.
``(4) In exercising the Director's powers under paragraphs
(3) and (4)(A) of subsection (b), the Director shall consult
with the Administrator of General Services.
``(d) Construction.--Nothing in this section shall be
construed to nullify, void, cancel, or interrupt any pending
request-for-proposal let or contract issued by the General
Services Administration for the specific purpose of
relocating or leasing space to the United States Patent and
Trademark Office.''.
SEC. 613. ORGANIZATION AND MANAGEMENT.
Section 3 of title 35, United States Code, is amended to
read as follows:
``Sec. 3. Officers and employees
``(a) Under Secretary and Director.--
``(1) In general.--The powers and duties of the United
States Patent and Trademark Office shall be vested in an
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office (in
this title referred to as the `Director'), who shall be a
citizen of the United States and who shall be appointed by
the President, by and with the advice and consent of the
Senate. The Director shall be a person who has a professional
background and experience in patent or trademark law.
``(2) Duties.--
``(A) In general.--The Director shall be responsible for
providing policy direction and management supervision for the
Office and for the issuance of patents and the registration
of trademarks. The Director shall perform these duties in a
fair, impartial, and equitable manner.
``(B) Consulting with the public advisory committees.--The
Director shall consult with the Patent Public Advisory
Committee established in section 5 on a regular basis on
matters relating to the patent operations of the Office,
shall consult with the Trademark Public Advisory Committee
established in section 5 on a regular basis on matters
relating to the trademark operations of the Office, and shall
consult with the respective Public Advisory Committee before
submitting budgetary proposals to the Office of Management
and Budget or changing or proposing to change patent or
trademark user fees or patent or trademark regulations which
are subject to the requirement to provide notice and
opportunity for public comment pursuant to section 553 of
title 5, as the case may be.
``(3) Oath.--The Director shall, before taking office, take
an oath to discharge faithfully the duties of the Office.
``(4) Removal.--The Director may be removed from office by
the President. The President shall provide notification of
any such removal to both Houses of Congress.
``(b) Officers and Employees of the Office.--
``(1) Deputy under secretary and deputy director.--The
Secretary of Commerce, upon nomination by the Director, shall
appoint a Deputy Under Secretary of Commerce for Intellectual
Property and Deputy Director of the United States Patent and
Trademark Office who shall be vested with the authority to
act in the capacity of the Director in the event of the
absence or incapacity of the Director. The Deputy Director
shall be a citizen of the United States who has a
professional background and experience in patent or trademark
law.
``(2) Commissioners.--
``(A) Appointment and duties.--The Secretary of Commerce
shall appoint a Commissioner for Patents and a Commissioner
for Trademarks, without regard to chapter 33, 51, or 53 of
title 5. The Commissioner for Patents shall be a citizen of
the United States with demonstrated management ability and
professional background and experience in patent law and
serve for a term of 5 years. The Commissioner for Trademarks
shall be a citizen of the United States with demonstrated
management ability and professional background and experience
in trademark law and serve for a term of 5 years. The
Commissioner for Patents and the Commissioner for Trademarks
shall serve as the chief operating officers for the
operations of the Office relating to patents and trademarks,
respectively, and shall be responsible for the management and
direction of all aspects of the activities of the Office that
affect the administration of patent and trademark operations,
respectively. The Secretary may reappoint a Commissioner to
subsequent terms of 5 years as long as the performance of the
Commissioner as set forth in the performance agreement in
subparagraph (B) is satisfactory.
``(B) Salary and performance agreement.--The Commissioners
shall be paid an annual rate of basic pay not to exceed the
maximum rate of basic pay for 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. The
compensation of the Commissioners shall be considered, for
purposes of section 207(c)(2)(A) of title 18, to be the
equivalent of that described under clause (ii) of section
207(c)(2)(A) of title 18. In addition, the Commissioners may
receive a bonus in an amount of up to, but not in excess of,
50 percent of the Commissioner's annual rate of basic pay,
based upon an evaluation by the Secretary of Commerce, acting
through the Director, of the Commissioners' performance as
defined in an annual performance agreement between the
Commissioners and the Secretary. The annual performance
agreements shall incorporate measurable organization and
individual goals in key operational areas as delineated in an
annual performance plan agreed to by the Commissioners and
the Secretary. Payment of a bonus under this subparagraph may
be made to the Commissioners only to the extent that such
payment does not cause the Commissioners' total aggregate
compensation in a calendar year to equal or exceed the amount
of the salary of the Vice President under section 104 of
title 3.
``(C) Removal.--The Commissioners may be removed from
office by the Secretary for misconduct or nonsatisfactory
performance
[[Page H6937]]
under the performance agreement described in subparagraph
(B), without regard to the provisions of title 5. The
Secretary shall provide notification of any such removal to
both Houses of Congress.
``(3) Other officers and employees.--The Director shall--
``(A) appoint such officers, employees (including
attorneys), and agents of the Office as the Director
considers necessary to carry out the functions of the Office;
and
``(B) define the title, authority, and duties of such
officers and employees and delegate to them such of the
powers vested in the Office as the Director may determine.
The Office shall not be subject to any administratively or
statutorily imposed limitation on positions or personnel, and
no positions or personnel of the Office shall be taken into
account for purposes of applying any such limitation.
``(4) Training of examiners.--The Office shall submit to
the Congress a proposal to provide an incentive program to
retain as employees patent and trademark examiners of the
primary examiner grade or higher who are eligible for
retirement, for the sole purpose of training patent and
trademark examiners.
``(c) Continued Applicability of Title 5.--Officers and
employees of the Office shall be subject to the provisions of
title 5 relating to Federal employees.
``(d) Adoption of Existing Labor Agreements.--The Office
shall adopt all labor agreements which are in effect, as of
the day before the effective date of the Patent and Trademark
Office Efficiency Act, with respect to such Office (as then
in effect).
``(e) Carryover of Personnel.--
``(1) From pto.--Effective as of the effective date of the
Patent and Trademark Office Efficiency Act, all officers and
employees of the Patent and Trademark Office on the day
before such effective date shall become officers and
employees of the Office, without a break in service.
``(2) Other personnel.--Any individual who, on the day
before the effective date of the Patent and Trademark Office
Efficiency Act, is an officer or employee of the Department
of Commerce (other than an officer or employee under
paragraph (1)) shall be transferred to the Office, as
necessary to carry out the purposes of this Act, if--
``(A) such individual serves in a position for which a
major function is the performance of work reimbursed by the
Patent and Trademark Office, as determined by the Secretary
of Commerce;
``(B) such individual serves in a position that performed
work in support of the Patent and Trademark Office during at
least half of the incumbent's work time, as determined by the
Secretary of Commerce; or
``(C) such transfer would be in the interest of the Office,
as determined by the Secretary of Commerce in consultation
with the Director.
Any transfer under this paragraph shall be effective as of
the same effective date as referred to in paragraph (1), and
shall be made without a break in service.
``(f) Transition Provisions.--
``(1) Interim appointment of director.--On or after the
effective date of the Patent and Trademark Office Efficiency
Act, the President shall appoint an individual to serve as
the Director until the date on which a Director qualifies
under subsection (a). The President shall not make more than
one such appointment under this subsection.
``(2) Continuation in office of certain officers.--(A) The
individual serving as the Assistant Commissioner for Patents
on the day before the effective date of the Patent and
Trademark Office Efficiency Act may serve as the Commissioner
for Patents until the date on which a Commissioner for
Patents is appointed under subsection (b).
``(B) The individual serving as the Assistant Commissioner
for Trademarks on the day before the effective date of the
Patent and Trademark Office Efficiency Act may serve as the
Commissioner for Trademarks until the date on which a
Commissioner for Trademarks is appointed under subsection
(b).''.
SEC. 614. PUBLIC ADVISORY COMMITTEES.
Chapter 1 of part I of title 35, United States Code, is
amended by inserting after section 4 the following:
``Sec. 5. Patent and Trademark Office Public Advisory
Committees
``(a) Establishment of Public Advisory Committees.--
``(1) Appointment.--The United States Patent and Trademark
Office shall have a Patent Public Advisory Committee and a
Trademark Public Advisory Committee, each of which shall have
9 voting members who shall be appointed by the Secretary of
Commerce and serve at the pleasure of the Secretary of
Commerce. Members of each Public Advisory Committee shall be
appointed for a term of 3 years, except that of the members
first appointed, 3 shall be appointed for a term of 1 year,
and 3 shall be appointed for a term of 2 years. In making
appointments to each Committee, the Secretary of Commerce
shall consider the risk of loss of competitive advantage in
international commerce or other harm to United States
companies as a result of such appointments.
``(2) Chair.--The Secretary shall designate a chair of each
Advisory Committee, whose term as chair shall be for 3 years.
``(3) Timing of appointments.--Initial appointments to each
Advisory Committee shall be made within 3 months after the
effective date of the Patent and Trademark Office Efficiency
Act. Vacancies shall be filled within 3 months after they
occur.
``(b) Basis for Appointments.--Members of each Advisory
Committee--
``(1) shall be citizens of the United States who shall be
chosen so as to represent the interests of diverse users of
the United States Patent and Trademark Office with respect to
patents, in the case of the Patent Public Advisory Committee,
and with respect to trademarks, in the case of the Trademark
Public Advisory Committee;
``(2) shall include members who represent small and large
entity applicants located in the United States in proportion
to the number of applications filed by such applicants, but
in no case shall members who represent small entity patent
applicants, including small business concerns, independent
inventors, and nonprofit organizations, constitute less than
25 percent of the members of the Patent Public Advisory
Committee, and such members shall include at least 1
independent inventor; and
``(3) shall include individuals with substantial background
and achievement in finance, management, labor relations,
science, technology, and office automation.
In addition to the voting members, each Advisory Committee
shall include a representative of each labor organization
recognized by the United States Patent and Trademark Office.
Such representatives shall be nonvoting members of the
Advisory Committee to which they are appointed.
``(c) Meetings.--Each Advisory Committee shall meet at the
call of the chair to consider an agenda set by the chair.
``(d) Duties.--Each Advisory Committee shall--
``(1) review the policies, goals, performance, budget, and
user fees of the United States Patent and Trademark Office
with respect to patents, in the case of the Patent Public
Advisory Committee, and with respect to Trademarks, in the
case of the Trademark Public Advisory Committee, and advise
the Director on these matters;
``(2) within 60 days after the end of each fiscal year--
``(A) prepare an annual report on the matters referred to
in paragraph (1);
``(B) transmit the report to the Secretary of Commerce, the
President, and the Committees on the Judiciary of the Senate
and the House of Representatives; and
``(C) publish the report in the Official Gazette of the
United States Patent and Trademark Office.
``(e) Compensation.--Each member of each Advisory Committee
shall be compensated for each day (including travel time)
during which such member is attending meetings or conferences
of that Advisory Committee or otherwise engaged in the
business of that Advisory Committee, at the rate which is the
daily equivalent of the annual rate of basic pay in effect
for level III of the Executive Schedule under section 5314 of
title 5. While away from such member's home or regular place
of business such member shall be allowed travel expenses,
including per diem in lieu of subsistence, as authorized by
section 5703 of title 5.
``(f) Access to Information.--Members of each Advisory
Committee shall be provided access to records and information
in the United States Patent and Trademark Office, except for
personnel or other privileged information and information
concerning patent applications required to be kept in
confidence by section 122.
``(g) Applicability of Certain Ethics Laws.--Members of
each Advisory Committee shall be special Government employees
within the meaning of section 202 of title 18.
``(h) Inapplicability of Federal Advisory Committee Act.--
The Federal Advisory Committee Act (5 U.S.C. App.) shall not
apply to each Advisory Committee.
``(i) Open Meetings.--The meetings of each Advisory
Committee shall be open to the public, except that each
Advisory Committee may by majority vote meet in executive
session when considering personnel or other confidential
information.''.
SEC. 615. 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. 616. CONFORMING AMENDMENTS.
(a) Duties.--Chapter 1 of title 35, United States Code, is
amended by striking section 6.
(b) Regulations for Agents and Attorneys.--Section 31 of
title 35, United States Code, and the item relating to such
section in the table of sections for chapter 3 of title 35,
United States Code, are repealed.
(c) Suspension or Exclusion From Practice.--Section 32 of
title 35, United States Code, is amended by striking ``31''
and inserting ``2(b)(2)(D)''.
SEC. 617. TRADEMARK TRIAL AND APPEAL BOARD.
Section 17 of the Act of July 5, 1946 (commonly referred to
as the ``Trademark Act of 1946'') (15 U.S.C. 1067) is amended
to read as follows:
``Sec. 17. (a) In every case of interference, opposition to
registration, application to register as a lawful concurrent
user, or application to cancel the registration of a mark,
the Director shall give notice to all parties and shall
direct a Trademark Trial and Appeal Board to determine and
decide the respective rights of registration.
[[Page H6938]]
``(b) The Trademark Trial and Appeal Board shall include
the Director, the Commissioner for Patents, the Commissioner
for Trademarks, and administrative trademark judges who are
appointed by the Director.''.
SEC. 618. BOARD OF PATENT APPEALS AND INTERFERENCES.
Chapter 1 of title 35, United States Code, is amended--
(1) by striking section 7 and redesignating sections 8
through 14 as sections 7 through 13, respectively; and
(2) by inserting after section 5 the following:
``Sec. 6. Board of Patent Appeals and Interferences
``(a) Establishment and Composition.--There shall be in the
United States Patent and Trademark Office a Board of Patent
Appeals and Interferences. The Director, the Commissioner for
Patents, the Commissioner for Trademarks, and the
administrative patent judges shall constitute the Board. The
administrative patent judges shall be persons of competent
legal knowledge and scientific ability who are appointed by
the Director.
``(b) Duties.--The Board of Patent Appeals and
Interferences shall, on written appeal of an applicant,
review adverse decisions of examiners upon applications for
patents and shall determine priority and patentability of
invention in interferences declared under section 135(a).
Each appeal and interference shall be heard by at least 3
members of the Board, who shall be designated by the
Director. Only the Board of Patent Appeals and Interferences
may grant rehearings.''.
SEC. 619. ANNUAL REPORT OF DIRECTOR.
Section 13 of title 35, United States Code, as redesignated
by section 618 of this Act, is amended to read as follows:
``Sec. 13. Annual report to Congress
``The Director shall report to the Congress, not later than
180 days after the end of each fiscal year, the moneys
received and expended by the Office, the purposes for which
the moneys were spent, the quality and quantity of the work
of the Office, the nature of training provided to examiners,
the evaluation of the Commissioner of Patents and the
Commissioner of Trademarks by the Secretary of Commerce, the
compensation of the Commissioners, and other information
relating to the Office.''.
SEC. 620. SUSPENSION OR EXCLUSION FROM PRACTICE.
Section 32 of title 35, United States Code, is amended by
inserting before the last sentence the following: ``The
Director shall have the discretion to designate any attorney
who is an officer or employee of the United States Patent and
Trademark Office to conduct the hearing required by this
section.''.
SEC. 621. PAY OF DIRECTOR AND DEPUTY DIRECTOR.
(a) Pay of Director.--Section 5314 of title 5, United
States Code, is amended by striking 22 ``Assistant Secretary
of Commerce and Commissioner of Patents and Trademarks.''
and inserting
``Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office.''.
(b) Pay of Deputy Director.--Section 5315 of title 5,
United States Code, is amended by adding at the end the
following:
``Deputy Under Secretary of Commerce for Intellectual
Property and Deputy Director of the United States Patent and
Trademark Office.''.
SEC. 622. STUDY ON ALTERNATIVE FEE STRUCTURES.
The Under Secretary of Commerce for Intellectual Property
and Director of the United States Patent and Trademark Office
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 Director shall submit to
the Committees on the Judiciary of the House of
Representatives and the Senate a report on the study not
later than 1 year after the date of the enactment of this
Act.
Subtitle B--Effective Date; Technical Amendments
SEC. 631. EFFECTIVE DATE.
This title and the amendments made by this title shall take
effect 4 months after the date of the enactment of this Act.
SEC. 632. TECHNICAL AND CONFORMING AMENDMENTS.
(a) Amendments to Title 35.--
(1) The item relating to part I in the table of parts for
chapter 35, United States Code, is amended to read as
follows:
``I. United States Patent and Trademark Office.................1''.....
(2) The heading for part I of title 35, United States Code,
is amended to read as follows:
``PART I--UNITED STATES PATENT AND TRADEMARK OFFICE''.
(3) The table of chapters for part I of title 35, United
States Code, is amended by amending the item relating to
chapter 1 to read as follows:
``1. Establishment, Officers and Employees, Functions..........1''.....
(4) The table of sections for chapter 1 of title 35, United
States Code, is amended to read as follows:
``CHAPTER 1--ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS
``Sec.
``1. Establishment.
``2. Powers and duties.
``3. Officers and employees.
``4. Restrictions on officers and employees as to interest in patents.
``5. Patent and Trademark Office Public Advisory Committees.
``6. Board of Patent Appeals and Interferences.
``7. Library.
``8. Classification of patents.
``9. Certified copies of records.
``10. Publications.
``11. Exchange of copies of patents and applications with foreign
countries.
``12. Copies of patents and applications for public libraries.
``13. Annual report to Congress.''.
(5) Section 41(h) of title 35, United States Code, is
amended by striking ``Commissioner of Patents and
Trademarks'' and inserting ``Director''.
(6) Section 155 of title 35, United States Code, is amended
by striking ``Commissioner of Patents and Trademarks'' and
inserting ``Director''.
(7) Section 155A(c) of title 35, United States Code, is
amended by striking ``Commissioner of Patents and
Trademarks'' and inserting ``Director''.
(8) Section 302 of title 35, United States Code, is amended
by striking ``Commissioner of Patents'' and inserting
``Director''.
(9) Section 303(b) of title 35, United States Code, is
amended by striking ``Commissioner's'' and inserting
``Director's''.
(10)(A) Except as provided in subparagraph (B), title 35,
United States Code, is amended by striking ``Commissioner''
each place it appears and inserting ``Director''.
(B) Chapter 17 of title 35, United States Code, is amended
by striking ``Commissioner'' each place it appears and
inserting ``Commissioner of Patents''.
(11) Section 157(d) of title 35, United States Code, is
amended by striking ``Secretary of Commerce'' and inserting
``Director''.
(12) Section 202(a) of title 35, United States Code, is
amended--
(A) by striking ``iv)'' and inserting ``(iv)''; and
(B) by striking the second period after ``Department of
Energy'' at the end of the first sentence.
(b) Other Provisions of Law.--
(1)(A) Section 45 of the Act of July 5, 1946 (commonly
referred to as the ``Trademark Act of 1946''; 15 U.S.C.
1127), is amended by striking ``The term `Commissioner''
means the Commissioner of Patents and Trademarks.' and
inserting ``The term `Director' means the Director of the
United States Patent and Trademark Office.''.
(B) The Act of July 5, 1946 (commonly referred to as the
``Trademark Act of 1946''; 15 U.S.C. 1051 and following),
except for section 17, as amended by section 617 of this Act,
is amended by striking ``Commissioner'' each place it appears
and inserting ``Director''.
(2) Section 500(e) of title 5, United States Code, is
amended by striking ``Patent Office'' and inserting ``United
States Patent and Trademark Office''.
(3) Section 5102(c)(23) of title 5, United States Code, is
amended to read as follows:
``(23) administrative patent judges and designated
administrative patent judges in the United States Patent and
Trademark Office;''.
(4) Section 5316 of title 5, United States Code (5 U.S.C.
5316) is amended by striking ``Commissioner of Patents,
Department of Commerce.'', ``Deputy Commissioner of Patents
and Trademarks.'', ``Assistant Commissioner for Patents.'',
and ``Assistant Commissioner for Trademarks.''.
(5) Section 9(p)(1)(B) of the Small Business Act (15 U.S.C.
638(p)(1)(B)) is amended to read as follows:
``(B) the Director of the United States Patent and
Trademark Office; and''.
(6) Section 12 of the Act of February 14, 1903 (15 U.S.C.
1511) is amended--
(A) by striking ``(d) Patent and Trademark Office;'' and
inserting
``(4) United States Patent and Trademark Office; and
(B) by redesignating subsections (a), (b), (c), (e), (f),
and (g) as paragraphs (1), (2), (3), (5), (6), and (7),
respectively and indenting the paragraphs as so redesignated
2 ems to the right.
(7) Section 19 of the Tennessee Valley Authority Act of
1933 (16 U.S.C. 831r) is amended--
(A) by striking ``Patent Office of the United States'' and
inserting ``United States Patent and Trademark Office''; and
(B) by striking ``Commissioner of Patents'' and inserting
``Director of the United States Patent and Trademark
Office''.
(8) Section 182(b)(2)(A) of the Trade Act of 1974 (19
U.S.C. 2242(b)(2)(A)) is amended by striking ``Commissioner
of Patents and Trademarks'' and inserting ``Director of the
United States Patent and Trademark Office''.
(9) Section 302(b)(2)(D) of the Trade Act of 1974 (19
U.S.C. 2412(b)(2)(D)) is amended by striking ``Commissioner
of Patents and Trademarks'' and inserting ``Director of the
United States Patent and Trademark Office''.
(10) The Act of April 12, 1892 (27 Stat. 395; 20 U.S.C. 91)
is amended by striking ``Patent Office'' and inserting
``United States Patent and Trademark Office''.
(11) Sections 505(m) and 512(o) of the Federal Food, Drug,
and Cosmetic Act (21 U.S.C. 355(m) and 360b(o)) are each
amended by striking ``Patent and Trademark Office of the
Department of Commerce'' and inserting
[[Page H6939]]
``United States Patent and Trademark Office''.
(12) Section 702(d) of the Federal Food, Drug, and Cosmetic
Act (21 U.S.C. 372(d)) is amended by striking ``Commissioner
of Patents'' and inserting ``Director of the United States
Patent and Trademark Office'' and by striking
``Commissioner'' and inserting ``Director''.
(13) Section 105(e) of the Federal Alcohol Administration
Act (27 U.S.C. 205(e)) is amended by striking ``United States
Patent Office'' and inserting ``United States Patent and
Trademark Office''.
(14) Section 1295(a)(4) of title 28, United States Code, is
amended--
(A) in subparagraph (A) by inserting ``United States''
before ``Patent and Trademark''; and
(B) in subparagraph (B) by striking ``Commissioner of
Patents and Trademarks'' and inserting ``Director of the
United States Patent and Trademark Office''.
(15) Chapter 115 of title 28, United States Code, is
amended--
(A) in the item relating to section 1744 in the table of
sections by striking ``Patent Office'' and inserting ``United
States Patent and Trademark Office'';
(B) in section 1744--
(i) by striking ``Patent Office'' each place it appears in
the text and section heading and inserting ``United States
Patent and Trademark Office'';
(ii) by striking ``Commissioner of Patents'' and inserting
``Director of the United States Patent and Trademark
Office''; and
(C) by striking ``Commissioner'' and inserting
``Director''.
(16) Section 1745 of title 28, United States Code, is
amended by striking ``United States Patent Office'' and
inserting ``United States Patent and Trademark Office''.
(17) Section 1928 of title 28, United States Code, is
amended by striking ``Patent Office'' and inserting ``United
States Patent and Trademark Office''.
(18) Section 151 of the Atomic Energy Act of 1954 (42
U.S.C. 2181) is amended in subsections c. and d. by striking
``Commissioner of Patents'' and inserting ``Director of the
United States Patent and Trademark Office''.
(19) Section 152 of the Atomic Energy Act of 1954 (42
U.S.C. 2182) is amended by striking ``Commissioner of
Patents'' each place it appears and inserting ``Director of
the United States Patent and Trademark Office''.
(20) Section 305 of the National Aeronautics and Space Act
of 1958 (42 U.S.C. 2457) is amended--
(A) in subsection (c) by striking ``Commissioner of
Patents'' and inserting ``Director of the United States
Patent and Trademark Office (hereafter in this section
referred to as the `Director')''; and
(B) by striking ``Commissioner'' each subsequent place it
appears and inserting ``Director''.
(21) Section 12(a) of the Solar Heating and Cooling
Demonstration Act of 1974 (42 U.S.C. 5510(a)) is amended by
striking ``Commissioner of the Patent Office'' and inserting
``Director of the United States Patent and Trademark
Office''.
(22) Section 1111 of title 44, United States Code, is
amended by striking ``the Commissioner of Patents,''.
(23) Section 1114 of title 44, United States Code, is
amended by striking ``the Commissioner of Patents,''.
(24) Section 1123 of title 44, United States Code, is
amended by striking ``the Patent Office,''.
(25) Sections 1337 and 1338 of title 44, United States
Code, and the items relating to those sections in the table
of contents for chapter 13 of such title, are repealed.
(26) Section 10(i) of the Trading with the enemy Act (50
U.S.C. App. 10(i)) is amended by striking ``Commissioner of
Patents'' and inserting ``Director of the United States
Patent and Trademark Office''.
Subtitle C--Miscellaneous Provisions
SEC. 641. REFERENCES.
(a) In General.--Any reference in any other Federal law,
Executive order, rule, regulation, or delegation of
authority, or any document of or pertaining to a department
or office from which a function is transferred by this
title--
(1) to the head of such department or office is deemed to
refer to the head of the department or office to which such
function is transferred; or
(2) to such department or office is deemed to refer to the
department or office to which such function is transferred.
(b) Specific References.--Any reference in any other
Federal law, Executive order, rule, regulation, or delegation
of authority, or any document of or pertaining to the Patent
and Trademark Office--
(1) to the Commissioner of Patents and Trademarks is deemed
to refer to the Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and
Trademark Office;
(2) to the Assistant Commissioner for Patents is deemed to
refer to the Commissioner for Patents; or
(3) to the Assistant Commissioner for Trademarks is deemed
to refer to the Commissioner for Trademarks.
SEC. 642. EXERCISE OF AUTHORITIES.
Except as otherwise provided by law, a Federal official to
whom a function is transferred by this title may, for
purposes of performing the function, exercise all authorities
under any other provision of law that were available with
respect to the performance of that function to the official
responsible for the performance of the function immediately
before the effective date of the transfer of the function
under this title.
SEC. 643. SAVINGS PROVISIONS.
(a) Legal Documents.--All orders, determinations, rules,
regulations, permits, grants, loans, contracts, agreements,
certificates, licenses, and privileges--
(1) that have been issued, made, granted, or allowed to
become effective by the President, the Secretary of Commerce,
any officer or employee of any office transferred by this
title, or any other Government official, or by a court of
competent jurisdiction, in the performance of any function
that is transferred by this title, and
(2) that are in effect on the effective date of such
transfer (or become effective after such date pursuant to
their terms as in effect on such effective date), shall
continue in effect according to their terms until modified,
terminated, superseded, set aside, or revoked in accordance
with law by the President, any other authorized official, a
court of competent jurisdiction, or operation of law.
(b) Proceedings.--This title shall not affect any
proceedings or any application for any benefits, service,
license, permit, certificate, or financial assistance pending
on the effective date of this title before an office
transferred by this title, but such proceedings and
applications shall be continued. Orders shall be issued in
such proceedings, appeals shall be taken therefrom, and
payments shall be made pursuant to such orders, as if this
title had not been enacted, and orders issued in any such
proceeding shall continue in effect until modified,
terminated, superseded, or revoked by a duly authorized
official, by a court of competent jurisdiction, or by
operation of law. Nothing in this subsection shall be
considered to prohibit the discontinuance or modification of
any such proceeding under the same terms and conditions and
to the same extent that such proceeding could have been
discontinued or modified if this title had not been enacted.
(c) Suits.--This title shall not affect suits commenced
before the effective date of this title, and in all such
suits, proceedings shall be had, appeals taken, and judgments
rendered in the same manner and with the same effect as if
this title had not been enacted.
(d) Nonabatement of Actions.--No suit, action, or other
proceeding commenced by or against the Department of Commerce
or the Secretary of Commerce, or by or against any individual
in the official capacity of such individual as an officer or
employee of an office transferred by this title, shall abate
by reason of the enactment of this title.
(e) Continuance of Suits.--If any Government officer in the
official capacity of such officer is party to a suit with
respect to a function of the officer, and under this title
such function is transferred to any other officer or office,
then such suit shall be continued with the other officer or
the head of such other office, as applicable, substituted or
added as a party.
(f) Administrative Procedure and Judicial Review.--Except
as otherwise provided by this title, any statutory
requirements relating to notice, hearings, action upon the
record, or administrative or judicial review that apply to
any function transferred by this title shall apply to the
exercise of such function by the head of the Federal agency,
and other officers of the agency, to which such function is
transferred by this title.
SEC. 644. TRANSFER OF ASSETS.
Except as otherwise provided in this title, so much of the
personnel, property, records, and unexpended balances of
appropriations, allocations, and other funds employed, used,
held, available, or to be made available in connection with a
function transferred to an official or agency by this title
shall be available to the official or the head of that
agency, respectively, at such time or times as the Director
of the Office of Management and Budget directs for use in
connection with the functions transferred.
SEC. 645. DELEGATION AND ASSIGNMENT.
Except as otherwise expressly prohibited by law or
otherwise provided in this title, an official to whom
functions are transferred under this title (including the
head of any office to which functions are transferred under
this title) may delegate any of the functions so transferred
to such officers and employees of the office of the official
as the official may designate, and may authorize successive
redelegations of such functions as may be necessary or
appropriate. No delegation of functions under this section or
under any other provision of this title shall relieve the
official to whom a function is transferred under this title
of responsibility for the administration of the function.
SEC. 646. AUTHORITY OF DIRECTOR OF THE OFFICE OF MANAGEMENT
AND BUDGET WITH RESPECT TO FUNCTIONS
TRANSFERRED.
(a) Determinations.--If necessary, the Director of the
Office of Management and Budget shall make any determination
of the functions that are transferred under this title.
(b) Incidental Transfers.--The Director of the Office of
Management and Budget, at such time or times as the Director
shall provide, may make such determinations as may be
necessary with regard to the functions transferred by this
title, and to make such additional incidental dispositions of
personnel, assets, liabilities, grants, contracts, property,
records, and unexpended balances of appropriations,
authorizations, allocations, and other funds held, used,
arising
[[Page H6940]]
from, available to, or to be made available in connection
with such functions, as may be necessary to carry out the
provisions of this title. The Director shall provide for the
termination of the affairs of all entities terminated by this
title and for such further measures and dispositions as may
be necessary to effectuate the purposes of this title.
SEC. 647. CERTAIN VESTING OF FUNCTIONS CONSIDERED TRANSFERS.
For purposes of this title, the vesting of a function in a
department or office pursuant to reestablishment of an office
shall be considered to be the transfer of the function.
SEC. 648. AVAILABILITY OF EXISTING FUNDS.
Existing appropriations and funds available for the
performance of functions, programs, and activities terminated
pursuant to this title shall remain available, for the
duration of their period of availability, for necessary
expenses in connection with the termination and resolution of
such functions, programs, and activities, subject to the
submission of a plan to the Committees on Appropriations of
the House and Senate in accordance with the procedures set
forth in section 605 of the Departments of Commerce, Justice,
and State, the Judiciary, and Related Agencies Appropriations
Act, 1999, as contained in Public Law 105-277.
SEC. 649. DEFINITIONS.
For purposes of this title--
(1) the term ``function'' includes any duty, obligation,
power, authority, responsibility, right, privilege, activity,
or program; and
(2) the term ``office'' includes any office,
administration, agency, bureau, institute, council, unit,
organizational entity, or component thereof.
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 thereafter.''.
(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 enactment.
SEC. 702. INTERNATIONAL APPLICATIONS.
Section 119 of title 35, United States Code, is amended--
(1) in subsection (a)--
(A) by inserting ``in a WTO member country or'' after
``patent for the same invention''; and
(B) by inserting ``such WTO member country or'' after
``first filed in'';
(2) in subsection (c), by inserting ``WTO member country
or'' after ``application in the same''; and
(3) by adding at the end the following:
``(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 patent, 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 meaning given
that term in section 2(10) of the Uruguay Round Agreements
Act; 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 Director 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 Director may supply
copies of specifications and drawings of patents in printed
or electronic form''.
(d) Maintenance of Collections.--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 Director shall maintain, for
use by the public, paper, microform, or electronic''.
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 Director of the
United States Patent and Trademark Office, shall conduct a
study and submit a report to the 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 subsection (a)
shall apply to any application for patent filed on or after
the date of the enactment of this Act.
The SPEAKER pro tempore. Pursuant to the rule, the gentleman from
North Carolina (Mr. Coble) and the gentlewoman from California (Ms.
Lofgren) each will control 20 minutes.
Ms. KAPTUR. Mr. Speaker, I would like to ask if the gentlewoman from
California is opposed to the resolution that will be under
consideration.
The SPEAKER pro tempore. Is the gentlewoman from California opposed
to the bill?
Ms. LOFGREN. Mr. Speaker, if necessary to claim the time representing
the Democratic part of the aisle, but I think, pursuant to the rule, I
have been designated as the member of the minority on the committee to
represent our side. But I will certainly yield time to the gentlewoman
from Ohio to express her opinion.
The SPEAKER pro tempore. Is the gentlewoman from Ohio challenging the
gentlewoman from California for the right to control the time?
Ms. KAPTUR. I would like to claim time in opposition, and I would
like to know if the gentlewoman is opposed to the measure before us.
The SPEAKER pro tempore. Is the gentlewoman from Ohio opposed to the
bill?
Ms. KAPTUR. The gentlewoman from Ohio is opposed.
The SPEAKER pro tempore. Is the gentlewoman from California opposed
to the bill?
Ms. LOFGREN. Mr. Speaker, the gentlewoman from Ohio is not a member
of the committee of jurisdiction and is not, therefore, eligible to
manage our time. I would ask for a ruling.
The SPEAKER pro tempore. The gentlewoman from Ohio is eligible if the
gentlewoman from California is not opposed.
[[Page H6941]]
Ms. LOFGREN. Then I will claim opposition.
The SPEAKER pro tempore. The gentlewoman from California is opposed?
Ms. LOFGREN. I will claim opposition and the time.
The SPEAKER pro tempore. Then the gentlewoman from California
qualifies since the gentlewoman is opposed to the bill.
The gentlewoman from California will then be recognized for 20
minutes.
Point of Order
Mr. ROHRABACHER. Point of order, Mr. Speaker. With all fairness here,
claiming opposition is not what the question is. If the gentlewoman
from Ohio is indeed opposed to the bill, she deserves to have this time
as compared to someone who is unwilling to say that they are opposed to
the bill.
Ms. LOFGREN. Mr. Speaker, if I may, I have reservations about the
changes made today. I hope that I can be convinced that they are
adequately made by the time the debate is over.
The SPEAKER pro tempore. At this point, the Chair does not question
the motives of the Member. The Member has stated she is in opposition
to the bill.
The Chair recognizes the gentleman from North Carolina (Mr. Coble).
Mr. ROHRABACHER. Continuing my point of order, Mr. Speaker, does the
Member not just claiming opposition, does she oppose the bill?
Ms. LOFGREN. I believe the Chair has ruled.
Mr. ROHRABACHER. If not, if she cannot state this, I would state as a
point of order, the gentlewoman from Ohio (Ms. Kaptur), who does say
she is opposed to the bill, this is not in my interest to do this, this
is in the interest of fairness, we should make sure the time is
allotted to someone who opposes the bill.
The SPEAKER pro tempore. The gentlewoman from California has stated
that she is in opposition to the bill; is that correct?
Is the gentlewoman from California in opposition to the bill?
Ms. LOFGREN. Until convinced about the changes made, yes.
The SPEAKER pro tempore. At this point the gentlewoman from
California is in opposition to the bill. The gentlewoman qualifies.
Point of Order
Ms. KAPTUR. Point of order, Mr. Speaker.
Mr. Speaker, do I take it, then, that under your ruling, I, as
someone who is opposed to this measure, will not be allowed my own time
during debate this evening?
The SPEAKER pro tempore. Under a motion to suspend the rules, only
two Members may control the time. The gentlewoman from California has
qualified to claim the time in opposition. She will, of course, be able
to yield time if she is so inclined.
Ms. LOFGREN. Mr. Chairman, if I may, I plan to expansively yield time
to the gentlewoman from Ohio.
Ms. KAPTUR. I wanted to ask, Mr. Speaker, how much time would that be
of the total time allotted, then?
The SPEAKER pro tempore. Each side has 20 minutes. The gentlewoman
from California will control 20 minutes.
Parliamentary Inquiry
Mr. HOYER. Mr. Speaker, I have a parliamentary inquiry.
The SPEAKER pro tempore. The gentleman will state it.
Mr. HOYER. Am I correct that under the rules as they now exist, that
if in fact the gentlewoman from Ohio (Ms. Kaptur) were recognized in
opposition, she would receive half of the time allotted to the minority
side of 20 minutes? Is that correct?
The SPEAKER pro tempore. Only one Member may control time in
opposition. The gentlewoman from California, a member of the committee,
controls the time because she is opposed.
Mr. HOYER. So if she were in opposition, she would receive the entire
20 minutes?
The SPEAKER pro tempore. If the gentlewoman from California were not
in opposition, someone else could seek that time.
Mr. HOYER. Further parliamentary inquiry. If that in fact occurred,
could the gentlewoman from Ohio (Ms. Kaptur) yield to the gentlewoman
from California (Ms. Lofgren) 10 minutes?
The SPEAKER pro tempore. Any Member in control of time can yield time
to anyone else.
Mr. HOYER. In other words, there would be nothing to preclude her
from doing so?
The SPEAKER pro tempore. Repeat your question, please.
Mr. HOYER. The Speaker's response was, as I take it, if the
gentlewoman from Ohio (Ms. Kaptur) were recognized as an opponent to
the legislation, she could yield such time as she desired to the
gentlewoman from California (Ms. Lofgren) who obviously has been asked
by the committee to represent the minority side of the committee in
this action.
The SPEAKER pro tempore. That would be possible. But the gentlewoman
from California, a member of the committee, has claimed the time
because in opposition and will have the 20 minutes and will be able to
yield that time as she so desires.
Mr. HOYER. I understand.
Ms. KAPTUR. Mr. Speaker, could I ask unanimous consent to control my
own 10 minutes?
The SPEAKER pro tempore. Is there objection to the request of the
gentlewoman from Ohio?
Ms. LOFGREN. Mr. Speaker, I object.
The SPEAKER pro tempore. Objection is heard.
The gentlewoman from California (Ms. Lofgren) controls the time.
Point of Order
Mr. ROHRABACHER. Mr. Speaker, I have a point of order.
The SPEAKER pro tempore. The gentleman will state his point of order.
Mr. ROHRABACHER. Mr. Speaker, the point of order is such that it
seems to me that by being a little heavy-handed here, we are
undermining this process.
Ms. LOFGREN. Will the gentleman yield?
The CHAIRMAN. The gentleman will state his point of order first.
Mr. ROHRABACHER. I withdraw my point of order.
Ms. LOFGREN. Mr. Speaker, I ask unanimous consent to make a 10-second
statement that will save us all a lot of time.
After I make my opening statement, it is my intention to yield 10
minutes to the gentlewoman from Ohio.
The SPEAKER pro tempore. The gentlewoman may take 10 seconds of her
time and solve the problem.
Ms. LOFGREN. I think we just solved it, Mr. Speaker.
The SPEAKER pro tempore. Very well.
The Chair recognizes the gentleman from North Carolina (Mr. Coble).
General Leave
Mr. COBLE. Mr. Speaker, I ask unanimous consent that all Members may
have 5 legislative days to revise and extend their remarks and include
extraneous material on the bill under consideration.
The SPEAKER pro tempore. Is there objection to the request of the
gentleman from North Carolina?
There was no objection.
Mr. COBLE. Mr. Speaker, I yield myself such time as I may consume.
Mr. Speaker, I want to say to my friend from California and to my
friend from Ohio, the gentlewoman from California's comments, I think,
make it clear that no one is trying to roll anyone. I think that has
been made clear by the gentlewoman from California's comment subsequent
to the beginning of the debate.
I rise tonight, Mr. Speaker, in support of H.R. 1907, the American
Inventors Protection Act, and urge the House to adopt the measure.
Mr. Speaker, a coalition of Members, staff, administration officials
and other contributors have negotiated in good faith into the early
evening to clarify what few outstanding issues remain in this 100-plus-
page bill. I now anticipate overwhelming support for this complex,
important and often misunderstood measure which will bring our patent
and trademark system into the 21st century to the benefit of American
inventors and American consumers.
Mr. Speaker, H.R. 1907 is a product of compromise and negotiation. It
is comprised of several provisions that have been suggested by the
gentleman from California (Mr. Rohrabacher), the gentleman from
California (Mr. Campbell), each of whom opposed this the last session,
the gentleman from Illinois (Mr. Manzullo) and the gentleman from
Indiana (Mr. Burton), in addition to other administration and industry
officials.
[[Page H6942]]
The gentlewoman from California (Ms. Lofgren), the gentleman from
California (Mr. Berman), the ranking member of the subcommittee, among
others, have been very helpful in this process. I want to thank all the
participants and others too numerous to name for their patience and
insight as we have labored to bring this bill finally to the floor.
Mr. Speaker, with a bill this complex and lengthy, no one who
participates in its construction can get everything he or she wants. I
think we have all done a good job, however, of addressing those
legitimate concerns registered by independent inventors while retaining
the core protections of the legislation. There is no doubt in my mind
that H.R. 1907 will make our patent and trademark system, already the
world's best, even better in the new millennium.
Mr. Speaker, I place an exchange of letters in the Record concerning
committee jurisdiction on the bill H.R. 1907 between Chairman Burton
and Chairman Hyde.
U.S. House of Representatives,
Committee on Government Reform,
Washington, DC, August 3, 1999.
Hon. Henry J. Hyde,
Chairman, Committee on the Judiciary,
Washington, DC.
Dear Mr. Chairman: I am writing with regard to H.R. 1907,
the American Inventors Protection Act of 1999.
As you know, under House Rule X of the Committee on
Government Reform and Oversight has jurisdiction over the
federal civil service and the overall economy, efficiency,
and management of government operations and activities.
Sections 612, 613, 614, and 621 of the amended bill address
matters that are within the jurisdiction of this Committee.
In the interest of expediting floor consideration for this
measure, the Committee on Government Reform will agree not to
exercise its jurisdiction over those sections on the
understanding that you have agreed to amend the bill as
follows:
1. Section 613 will be revised to provide that the total
compensation of the Commissioner for Patents and the
Commissioner for Trademarks may not exceed the salary of the
Vice President. (It is our understanding that the Under
Secretary of Commerce for Intellectual Property and Director
of the United States Patent and Trademark Office and the
Deputy Under Secretary of Commerce for Intellectual Property
and Deputy Director of the United States Patent and Trademark
Office will not be eligible for bonuses under a revised
version of the bill that your committee has already agreed
to.)
2. Section 614 will be further revised to require the
Patent and Trademark Office to submit to Congress a
legislative proposal to retain patent and trademark examiners
for the purpose of training other patent and trademark
examiners rather than allow the Office to develop and
implement such program without congressional intervention.
Our decision not to exercise our jurisdiction over this
measure is not intended or designed to waive or limit our
jurisdiction over any future consideration of related
matters.
Sincerely,
Dan Burton,
Chairman.
____
U.S. House of Representatives,
Committee on the Judiciary,
Washington, DC, August 3, 1999.
Hon. Dan Burton,
Chairman, Committee on Government Reform,
Washington, DC.
Dear Mr. Chairman: Thank you for your letter regarding H.R.
1907, the ``American Inventors Protection Act.'' This letter
will serve to acknowledge your jurisdiction over sections
612, 613, 614, and 621 of the amended bill, and to confirm
our understanding that we have agreed to amend the bill as
follows:
1. Section 613 will be revised to provide that the total
compensation of the Commissioner for Patents and the
Commissioner for Trademarks may not exceed the salary of the
Vice President. (You are correct in your understanding that
the Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office,
and the Deputy Under Secretary of Commerce for Intellectual
Property and Deputy Director of the United States Patent and
Trademark Office will not be eligible for bonuses under the
amendment.)
2. Section 614 will be further revised to require the
Patent and Trademark Office to submit to Congress a
legislative proposal to retain certain patent and trademark
examiners for the purpose of training other patent and
trademark examiners rather than allow the Office to develop
and implement such a program without congressional
intervention.
I understand that your decision not to conduct a markup
over the provisions over which you have jurisdiction does not
serve to waive your jurisdiction over these provisions or
over any future consideration of related matters.
Sincerely,
Henry Hyde,
Chairman.
Mr. Speaker, I reserve the balance of my time.
Ms. LOFGREN. Mr. Speaker, I yield myself such time as I may consume.
I would like to inquire of the chairman of the committee, rising in
opposition to the bill, I need to explore the changes that have been
made to this bill to understand why it is worthy of my support.
{time} 2145
In title II there is a first inventor defense that is limited to
methods of doing or conducting business, and I need to understand why,
what the impact of that would be and why it merits our support.
Mr. COBLE. Mr. Speaker, will the gentlewoman yield?
Ms. LOFGREN. I yield to the gentleman from North Carolina.
Mr. COBLE. Mr. Speaker, it is limited, I say to the gentlewoman from
California, to the State Street Bank case. There was some discussion
early on that. Perhaps the first inventive defense should apply to
processes as well as methods. But we finally concluded that we would
restrict it to methods only, and that, by having done that, we were
able to satisfy some folks who were opposed to the bill otherwise.
Ms. LOFGREN. All right. So that is an accommodation that we have
done, given that legislation is sausage making, to move this whole
process forward.
On title IV there is a provision permitting applicants to request the
issuance of a patent as soon as one claim was allowed with the
remaining claims to be added later, and that was deleted. I am
concerned that this would change the bill as passed by the Committee on
the Judiciary, but there may be some good reason that I am not aware of
for the change that is proposed.
Can the gentleman convince me as to why this should be supported?
Mr. COBLE. Mr. Speaker, will the gentlewoman yield?
Ms. LOFGREN. I yield to the gentleman from North Carolina.
Mr. COBLE. This deletion was done at the request of the Patent and
Trademark Office, and the reason given by PTO was that it considered it
a constitution of an additional administrative burden, and for that
reason that change was made.
Ms. LOFGREN. On title V, and this is something of actual considerable
concern to me, the bill was amended to retain existing law for ex parte
reexaminations. For inter parte's reexamination the basic framework in
the bill was retained under title V but with the limitation that a
third party requestor cannot appeal an adverse decision to the court of
appeals for the Federal circuit court.
I am wondering if the gentleman can convince us why this change made
after the bill was reported from the committee was necessary and why it
should compel our support.
Mr. COBLE. If the gentlewoman from California would continue to
yield?
Ms. LOFGREN. I yield to the gentleman from North Carolina.
Mr. COBLE. Primarily this was done for the benefit of the independent
inventors to balance the interest of a third party with those of a
patent need, patentee, by allowing a third party to pursue
reexamination under the existing system or opting for a strictly
limited ex parte reexamination while assuring that a patentee would not
be subject to harassment in such proceedings.
Ms. LOFGREN. Mr. Speaker, under title VI the Public Advisory
Committee for Patents has been altered to provide a quarter of the
representation to independents, so-called independent inventors. There
is concern that institutional inventors, including universities, might
be disadvantaged by this change. Can the gentleman advise us as to the
wisdom of this proposal?
Mr. COBLE. If the gentlewoman would yield?
Ms. LOFGREN. I yield to the gentleman from North Carolina.
Mr. COBLE. This title VI, as the gentlewoman knows, came in for much
discussion. It was part of the cause for the delay. The distinguished
gentleman from Indiana (Mr. Burton) chairs a committee that has
jurisdiction over this title. He asserted that jurisdiction, and we
were in exchange with him since May, to be specific, for the desired
language that he preferred; and we finally were able to get that
language handed to us late today, and the
[[Page H6943]]
purpose for his insisting upon that, and probably a good idea, was to
ensure that independent inventors are not without a voice in the
oversight of the operation of the PTO as far as sitting on one of the
boards is concerned.
Ms. LOFGREN. Finally at this point, Mr. Speaker, I note that one
change that I think I support but I have some concerns about is that
the Patent and Trademark Office would be authorized to publish
documents electronically. That makes sense, but because of the lack of
vigorous encryption involved in the world and in government offices, I
do have concerns as to the security of such publication. I do not know
whether that can be addressed in the bill, but I do want to raise the
issue, and my 5 minutes is expired. I want to reserve the time for the
gentlewoman from Ohio (Ms. Kaptur), so I will leave that out for a
later answer.
Mr. COBLE. We will get to that substantively.
Mr. Speaker, I yield 5 minutes to the gentleman from California (Mr.
Rohrabacher).
Mr. ROHRABACHER. Mr. Speaker, I rise in strong support of H.R. 1907,
as amended. This bill is the culmination of a long process of
negotiations that followed floor battles in the last Congress between
the leadership of the Committee on the Judiciary and a group of Members
led by myself. It was far more than sausage making because we have
people with honest beliefs on both sides, and I certainly can see where
people can have honest differences on something as complicated as
patent law.
I began this fight in 1994 when I fought against provisions that were
inserted into the GATT trade agreement implementation bill to eliminate
our Nation's traditional guarantee of a 17-year patent term in an
attempt to harmonize our patent law with those of other nations with a
20-year-from-filing limit that was imposed through that legislation,
thus taking away a guaranteed patent term that had been the right of
every American inventor. This change, by the way, would have resulted
in decreasing the patent term of every application held in the Patent
Office for more than 3 years, which is a common occurrence with
breakthrough technologies.
I was further energized in this fight when additional changes in our
patent system were proposed, including the publishing of all patent
applications 18 months after filing, even when no patent had been
issued, and establishing prior user rights for all inventions, opening
up new opportunities to challenge already-granted patents through
reexamination and the turning of the Patent Office into a government
corporation. These things caused me great pain and concern.
The battles we had ultimately resulted in a standoff in the Senate in
which no patent legislation was adopted, and I am pleased to note that
the negotiations I referred to earlier have resulted in a bill that is
very much different than the patent bills that went through the
Committee on the Judiciary last year and the fights we have had in the
last 4 years.
Instead of making minor, tenuous extensions in the patent term, H.R.
1907 goes most of the way in reversing the 1994 patent term reduction
by extending patent term completely to compensate for delays in the
processing of the Patent and Trademark Office or any other delay
resulting from actions taken by anyone else other than the patent
applicant. Instead of publishing all patent applications after 18
months, 1907 publishes only, only the pending applications that have
been published abroad, and thus they are already published and already
known to the people and only to the extent that they are published
abroad.
Instead of a prior user defense that applies to all inventions which
we just heard a question about a moment ago, H.R. 1907 contains a very
limited prior user defense that applies only to those business methods
which have only been considered patentable in the last few years, and
this, of course, flows from an adverse case before the court that
changed patent law.
We want to have our say in what is going on here, and we are
correcting it in this legislation; and instead of corporatizing the
Patent Office and removing civil service protection from patent
examiners, H.R. 1907 leaves the PTO as an agency within the Department
of Commerce while including valuable provisions keeping patent revenue
within the Patent Office and providing for enhanced training and
professional development for patent examiners and retaining their civil
service status.
Mr. Speaker, although as in all compromises both sides have to give
up something, maybe a little, I would say that my Committee on the
Judiciary colleagues will not mind that I am stating for the Record
that I believe that H.R. 1907 represents a major victory for the
independent inventor whose interests I have vigorously defended these
past 5 years.
I ask my colleagues to give H.R. 1907 their overwhelming support and
to join me in urging the other body to take up this compromise as is
and send it to the President for his signature without change.
Mr. Speaker, I have some more detailed comments, and I will be
inserting them at this point in the Record, but I would not want to let
this moment go by without thanking the gentleman from North Carolina
(Mr. Coble) who has, as my colleagues know, stepped forward in a spirit
of compromise, and we have worked really hard on this; the gentleman
from Illinois (Mr. Hyde) who also played an important role in this.
Their spirit of goodwill and the negotiations we have had have resulted
in a superior bill that is going to do great things for America and to
keep us technologically ahead.
I also thank the gentleman from Illinois (Mr. Manzullo). In his late-
breaking contributions to this fight he has greatly improved this
legislation, and he can be justly proud he has done a good job for
America in doing so. Finally, I would like to thank the gentleman from
California (Mr. Campbell) and the gentlewoman from Ohio (Ms. Kaptur),
and Ms. Kaptur has been deeply involved in these negotiations from the
beginning.
Ms. Kaptur has been very deeply involved in this whole fight from the
very beginning, and over the last 4 years she stood firm with us, and
in fact in the last month we have had meetings in her office trying to
negotiate these details out. We have been working with her staff, and I
do not know, it sounds like we have not satisfied all of her concerns,
but she has certainly played an important role in this process, and the
gentleman from Ohio (Mr. Kucinich) and the gentleman from California
(Mr. Hunter).
All of these people played such a significant role along with, of
course, the gentleman from North Carolina (Mr. Coble) and the gentleman
from Illinois (Mr. Hyde) in giving us this incredible piece of
legislation that I believe is going to do great things for America.
Also, my staff members Rick Dykema and Wayne Paugh and other science
fellows who worked with me, Paul Crilly, John Morgan, Biff Kramer, Dick
Backe and Richard Cowan, for all the hard work they have put in on this
piece of legislation.
I urge my colleagues to support it.
Mr. Speaker, for the last several years, this is a day I had hoped
would come. I have fought long and hard to protect the products of our
nation's independent inventors. I have fought diligently to strengthen
our patent system and to prevent changes in the name of harmonization.
Now, after the continued competition and polarization of the past, this
was finally a time for cooperation. Chairman Coble and I have both
spent many hours of individual effort pursuing our respective goals for
patent reform the past several years, and indeed the time was ripe to
work together toward a unified effort. It was time to have an open-
ended process in which everyone had an opportunity to come to the
table.
With that, I am proud to say that after a long and successful
negotiation period with my friend from North Carolina, Chairman Coble,
and with the invaluable help of my fellow colleague from California,
Mr. Campbell and with late-breaking help from my friend from Illinois,
Mr. Manzullo, we were finally able to reach agreement on the issues. As
was always the case, the devil has been in the details. Therefore, this
has been a carefully crafted effort, but has resulted in a resounding
victory for the United States patent system and the American inventor.
title ii--first to invent defense act
With regard to Title II, the First Inventor Defense, I have always
held that we simply cannot champion trade secret protection over patent
protection for clearly patentable subject matter. We cannot betray our
Founding Fathers by abandoning the foundation upon which our patent
system is based. We cannot
[[Page H6944]]
openly advocate secrecy when our patent system calls for us to
vigorously promote the progress of science through the sharing of
critical technology.
In the patent bill that passed the House last year, all patents were
subjected to prior user rights. This Congress, we were initially able
to limit this title to processes and methods only. More recently,
however, we were able to even further limit this section to business
methods only. This is an important limitation in scope to take note of
because now Title II will not affect the vast majority of independent
inventors and small businesses.
A first inventor defense that is strictly limited to business methods
will severely reduce its applicability. Furthermore, the defense
applies only to business methods that have been reduced to practice at
least one year prior to the effective filing date of the patent in
question. Even further, to successfully use this defense a litigant
must satisfy a clear and convincing evidentiary standard and risk being
subjected to paying reasonable attorney fees to the prevailing party.
Bottom line, the best defense to a charge of patent infringement will
remain the successful assertion of invalidity, and not a first inventor
defense.
title iii--patent term guarantee act
My goal all along has been to assure a minimum patent term of 17
years from the date a patent is granted. Failing that, I have insisted
on a guarantee that the PTO will extend the patent term as necessary to
assure a term of 17 years from filing for non-dilatory applicants. The
language of this bill clearly codifies this approach.
As everyone is aware, the current law governing patent term is 20
years from the date of file. Since June 8, 1995, when the 17-years-
from-grant was changed, patents have been losing precious time under
the current law. Inventors can no longer rely on a guaranteed term of
protection. In some cases, several years of effective post-grant
protection is lost due to Patent and Trademark Office (PTO)
administrative delay. This title represents an opportunity to recapture
some of the reliance of pre-GATT standards.
By codifying what constitutes PTO delay, this title can compensate
the patent applicant for lost time on a day-for-day basis without time
limitation. Furthermore, if the PTO does not issue a patent within 3
years from the date of original file, the patent term will be
compensated day-for-day until the patent issues, minus any time the
applicant has delayed prosecution by engaging in dilatory behavior.
This approach effectively eliminates the claimed submarine patent
dilemma while providing a specific framework from which the Patent and
Trademark Office must monitor and compensate the loss of any patent
term due to delay for which the applicant has no responsibility.
This approach essentially gives back to the non-dilatory patent
holder what I have fought so hard for--a guaranteed 17 year patent
term. The patentee once again will have the right to exclude the public
from using his invention for a limited time--a time that is guaranteed
and clearly defined. This Title essentially regains what GATT gave
away. It has been my core initiative and now I am proud to say that it
is my most significant success in this bill.
title iv--publication of foreign applications act
As I supported last year, this bill includes a provision similar in
spirit to the amendment successfully offered last year to H.R. 400 by
my friend from Ohio, Marcy Kaptur. Essentially, this year's effort only
permits early publication of U.S. patent applications that are filed
abroad in a country that also publishes early. Additionally, the U.S.
application will not be published before the foreign application, and
in no greater content.
Curiously, this title has generated an abundance of controversy,
although its provisions are of a positive nature. There are over 170
patent systems that currently exist globally. Our nation cannot control
foreign policies on early publication. A majority of foreign nations
choose to publish patent applications prior to granting a patent. The
published patent application is also normally printed in the home
language of each respective foreign patent system.
Generally, this title will affect large corporations, because they
are more likely to file abroad than the independent inventor community.
Since American patent applications filed abroad are indeed published
early and are in a foreign language, foreign nations have a chance to
view them at their leisure. This is the reality and the argument from
the other side in the last Congress that was the hardest to counter.
Thus we have agreed to permit the PTO to publish after 18 months only
those applications that are filed internationally. If an applicant
files an application only domestically, he will have the unqualified
right to maintain confidentiality of his patent application. If an
applicant files abroad and domestically, he will have the right to
limit the content of early domestic publication to that content which
the foreign entity has published. In no event will America publish
prior to the actual publication date in a foreign patent system. It's
that simple.
Also included, for those applications published early, is a
provisional right which allows the patent holder to recover royalties
for infringement activity during the pre-issuance period. There will
also be no pre-issuance 3rd party opposition to the patent application
permitted. Finally, the costs derived from early publication will be
applied only to those applicants who are actually subjected to
publication.
Essentially, this title is reactive to circumstances beyond our
control already present in many foreign patent systems, while going to
lengths to protect the American inventor community.
title v--patent litigation reduction act
Considering both the patent holder and third party, reexamination is
a seldom used process in proportion to the number of patent
applications filed each year. Yet, when Congress originally enacted the
reexamination statute it had an important public purpose in mind: to
restore confidence in the validity of patents issued by the PTO.
Specifically, three principal benefits were noted: 1. Resolve patent
validity disputes more quickly and less expensively than litigation; 2.
Permit courts to defer issues of patent validity to the expertise of
the PTO; and 3. Reinforce investor confidence in the certainty of
patents.
Reexamination was enacted as an important step to permitting the PTO
to better serve the public interest. As the Supreme Court stated in
Graham v. Deere, ``it must be remembered that the primary
responsibility for sifting out unpatentable material lies in the Patent
Office. To await litigation is--for all practical purposes--to
debilitate the patent system.''
The current statute permits any patent holder or third party to
submit prior art in the form of prior patents and printed publications
throughout the term of the patent for the PTO to determine whether a
substantial new question of patentability exists. Reexam procedures
currently limit a third party's participation to arguing why there is a
substantial new question of patentability.
This title was an attempt to provide an alternative to existing law
and to further encourage potential litigants to use the PTO as a avenue
to resolve patentability issues without expanding the process into one
resembling courtroom proceedings. Fundamentally, in addition to the
reexam process in law today, this title creates an additional reexam
option that permits a 3rd party requestor to file additional written
briefs. The price paid by those who would challenge a patent, however,
is that the 3rd party requestor is barred from any appeals outside of
the PTO and from subsequently litigating the same issues in a district
court or making a second reexam request. This estoppel is the
insulation that effectively protects patent holders.
Ultimately, the expanded reexam option does not subject the patent to
any greater challenge in scope than currently exists today. It merely
allows a reexam requestor the option to further explain why a
particular patent should not have been granted.
Mr. Speaker, this bill does not create new opportunities to pursue
litigation and does not create additional ways to invalidate patents.
In fact, the bill seeks to provide even further ways to reduce the
incentive for litigation in the courts and to protect against the
needless wasting of dollars independent inventors don't have.
conclusion
Certainly, last year's bill was an exercise in harmonization brought
about by the interests of large corporations. In contrast, this year's
bill, H.R. 1907, is designed to protect the products of our nation's
inventors and to help sustain our unprecedented technological
leadership. I saw to that through many intense negotiations with my
colleagues. Unfortunately, there are still those who cannot recognize
victory even when it stares them in the face.
I assure you, Mr. Speaker, that if H.R. 1907 was similar to either
H.R. 400 or S. 507 last Congress, my views would not have changed this
Congress. But that is not the case. H.R. 1907 is a brand new effort
reached through an open-ended and fair debate, and it is a bill I am
unequivocally supporting today. It is also a bill that I will stand
firmly behind as it moves through the Senate.
I know it is up to Congress to carry on the tradition of Thomas
Jefferson, Benjamin Franklin, and the will of our Founding Fathers. It
was they who provided our newly formed nation with a foundation for
freedom and the power to protect the achievements of our inventors.
I have been intimately involved in these issues because I want to
ensure that our patent system continues to respect the fundamentals of
our Founding Fathers while at the same time enhancing its operability
in modern society. We have a chance this Congress to enhance a system
that better provides a stronger protection for our nation's inventors.
[[Page H6945]]
Our patent system always has--and always will--stimulate the creation
of jobs, advance our technological leadership, and help sustain our
standard of living. It has helped to fortify our economic success,
strengthen our national defense, and reinforce our global leadership.
I look forward to passing this bill with the resounding support of my
colleagues on the House side and I look forward to the unshakeable
support for its text when it is reported in the Senate.
I want to make sure that we will firmly stand behind the text of this
bill in the event of contrary action by the Senate. But I am confident
that the other noble body of this Congress will accept the House's
efforts in patent reform and will move our version of the bill forward
without delay.
Mr. Speaker, I applaud my colleagues who have endured a labor-
intensive process to reach the final accord we have today. I know it
was not an easy thing to do and that it was a long time coming, but it
is the American people who will ultimately benefit.
This body can rest assured knowing we faithfully served American
technology. Mr. Speaker, although I know there is much work left to do
by way of vigilance and continued involvement, I am pleased looking
back and realizing all the good work that has been accomplished so far.
Ms. LOFGREN. Mr. Speaker, I yield 10 minutes to the gentlewoman from
Ohio (Ms. Kaptur), and I ask unanimous consent that she be permitted to
further yield time.
The SPEAKER pro tempore (Mr. Miller of Florida). Is there objection
to the request of the gentlewoman from California?
There was no objection.
The SPEAKER pro tempore. The gentlewoman from Ohio (Ms. Kaptur) will
now control 10 minutes of time.
Ms. KAPTUR. Mr. Speaker, I yield myself such time as I may consume.
Mr. Speaker, I must say I find it very interesting here close to 10
p.m. Washington time that we have had walked to the floor less than a
half an hour ago the bill that we are going to be asked to vote on
tomorrow. This is likely to be the last item of business tonight. This
bill is 105 pages long, and I must say I am extremely disappointed that
I could not even get 20 minutes to talk about a measure that has been
worked on in this Congress for several years, and now under the
unusual, unusual procedure of bringing up a major bill like this with
constitutional implications it is brought up under suspension, and I,
as the only person in opposition here with perhaps the exception of one
other are allowed 10 minutes. Mr. Speaker, I will not yield time at
this point, having so few minutes myself.
Mr. Speaker, any reasonable person would ask why the silence. Why are
we being silenced and not allowed to explore some of the questions that
have troubled us over several years?
I listened very carefully to those that have been involved in these
negotiations: the gentleman from Indiana (Mr. Burton), the gentleman
from Illinois (Mr. Manzullo), the gentleman from California (Mr.
Rohrabacher), the gentleman from California (Mr. Campbell).
Frankly I was not involved in the negotiations that have been
occurring here over the last several weeks. There were two meetings I
think in my office where we tried to gain clarification of language
that never came back, and I would like to ask the chairman of the full
committee, if I might, my good friend, the gentleman from North
Carolina (Mr. Coble), if this bill before us, H.R. 1907, is the same
bill that was voted out of the Committee on the Judiciary on May 24 of
this year, 1999.
Is this the same bill?
Mr. COBLE. Mr. Speaker, will the gentlewoman yield?
Ms. KAPTUR. I yield to the gentleman from North Carolina.
Mr. COBLE. It has been amended many times for the benefit of
independent inventors, many of the people the gentlewoman from Ohio
(Ms. Kaptur) represents, and that is one of the reasons why it has
taken awhile for it to get here, because there have been countless
hours that have been put into this.
Ms. KAPTUR. Excuse me, on that point where the gentleman says it has
been amended, in what formal process on the record has it been amended?
Mr. COBLE. There is a manager's amendment now.
Ms. KAPTUR. There is a manager's amendment now which was walked to
the floor at 9:17 p.m., which I could only get up to Page 54 reading
very quickly here this evening. There are 105 pages in the bill.
So the manager's amendment is the bill that was walked to the floor
tonight, so it has not come through any subcommittee; it has not come
through any full committee. It is going to be offered here and then
voted on tomorrow; is that correct?
Mr. COBLE. That is correct, and if the gentlewoman would yield, for
the people, for the very people she represents, we have done this for
them.
Ms. KAPTUR. I would say to the gentleman I have many fewer minutes
than he does here this evening, and I hate to reclaim my time, but I am
going to do that and say to the gentleman that for me, and again I have
not had to study this bill every single word as the gentleman has over
the last several weeks, but the reason for my objection is this:
{time} 2200
The Constitution of the United States sets up a very precious right
of property. I am going to read it. It is only 32 words. It says in
article I, section 8, ``The Congress shall have power to promote the
progress of science and useful arts by securing for limited times to
authors and inventors the exclusive right''--exclusive right--``to
their respective writings and discoveries.''
Now, this is not some little amendment that is part of a manager's
effort. This is the Constitution of the United States. Therefore, when
a 105-page bill comes before us on suspension, those of us who value
this document and devote much of our lives to preserving it under the
oath that we take are very suspicious of any bill of such consequence
that comes before us on suspension when we are allowed only 10 minutes
to debate.
I also would say that with all due respect to the excellent minds
that were involved in crafting this manager's amendment, it is only a
handful of Members of this institution. This bill is not up on the web.
I cannot ask the inventors I represent back home to go to any site to
look at it so I can be advised on how to vote tomorrow morning.
I know a fast ball when I see one. I have been here long enough to
know that. I am offended by this, simply because I think the
constitutional issues are so very important. I am not afraid of
sunshine on this issue or any other issue, and I would say to my good
friends from California, some of whom are on the floor tonight, I
understand a little bit about industry differences, and I know that
there are some industries that will benefit more than others from the
publication in foreign locales of some of these patents.
I would say, and I have only marked one paragraph that I will read
here, because the public will know nothing of this bill before it is
voted on tomorrow, but on page 33 there is this section that is called
``United States publications of applications published abroad.'' It
says, ``Subject to paragraph (2), each application for patent except
applications for design patents filed under chapter 16 and provisional
applications filed under section 111(b) shall be filed in accordance
with procedures determined by the Director, promptly upon the
expiration of a period of 18 months after the earliest filing date for
which a benefit is sought under this title.''
Now, that is an interesting set of words there, but I guess I would
want to take sections like that and let the sun shine in, let those
back home whose livelihoods and futures, and, frankly, the future of
this country depend on, have an opportunity to think and comment before
this particular vote.
I agree with the chairman; this is complex, it is very important, and
it is often misunderstood. I would have to say as a Member, I take some
offense that some professor from MIT, and I attended MIT, had more
influence with the committee and more ability to review these sections
than Members like myself. You must understand this frustration.
So I do really feel that we are being closed out. That means that
some interests are being looped in, and it means that we are not to be
given the chance to review this extremely important measure with
constitutional consequences before we are asked to vote on it tomorrow.
[[Page H6946]]
Mr. Speaker, I yield 2 minutes to my good friend, the gentleman from
Maryland (Mr. Hoyer), who has fought so hard trying to get reform that
is fair to all concerned.
Mr. HOYER. Mr. Speaker, I thank the gentlewoman for yielding, and I
want to join her in her expressions of concern about the process.
The gentleman from California, myself, and others as well as the
gentlewoman from Ohio (Ms. Kaptur) throughout the process of
consideration of legislation, the history of which Mr. Rohrabacher gave
a little earlier, have raised very significant concerns. Those concerns
were raised not for those who can lobby this House very effectively,
but for those small inventors whose lifeblood relies on the integrity
of their patent application.
Because of that concern we have raised repeatedly the reservations, I
do not even want to say opposition, but reservations to this bill that
were expressed to us by hundreds of small inventors, perhaps thousands
of small inventors, represented by them around this country.
My concern tonight is that the gentleman from California (Mr.
Rohrabacher), for whom I have a great deal of respect, the gentleman
from Illinois (Mr. Manzullo), for whom I have a great deal of respect,
who signed a letter with me, with the gentlewoman from Ohio (Ms.
Kaptur) and the gentleman from California (Mr. Hunter) with reference
to the bill in its previous form, we did not want it to move quickly.
We have now had changes in the bill which the gentlewoman from Ohio
(Ms. Kaptur) has referred to which, frankly, I have not had the
opportunity to review fully, and I have a sense that maybe I am with
the 430 people in this House. There perhaps have been four or five who
have reviewed this legislation. But I am very concerned that we are
moving this tonight on suspension. We are not going to vote until
tomorrow, I understand that, without having the opportunity to fully
review, debate, the provisions of this bill.
The gentleman from California made a very good statement, I thought,
going through various provisions in the bill about which we had
concerns. I regret I do not have more time to speak.
Ms. KAPTUR. Mr. Speaker, I yield myself such time as I may consume.
Mr. Speaker, I regret the gentleman does not have more time as well.
I wish to say to the gentleman, thank you very much for being here this
evening, and to say thanks to our colleagues who have also labored on
this bill.
There is regular order here. We should have regular order, especially
on a bill of constitutional magnitude. We all recognize it is.
Let me say for those of us who may question why do we need to change
anything about this patent system which protects the seed corn of our
country, the lifeblood of our ideas, what is so bad about the current
system we have today, when we are the leading industrial-military-arts-
power in the world? Everyone else wants to file their patents here
because of the very successful system that we have. If we do it wrong,
we jeopardize our own leadership.
So why are we so afraid to take the time to let Members read these
provisions? If the bill is so good, then it will go through on its own
merits, but not through clamping down on regular order in the debate
that should precede on a measure with constitutional consequences.
Frankly, if it is a bad bill, it is going to end up in the courts and
it is not going to go anywhere. So we owe it to the American people to
do it right the first time.
Mr. Speaker, I thank the gentlewoman for yielding me the 10 minutes,
but I truly wish at a minimum 20 minutes for a constitutional question,
is that really asking too much?
Ms. LOFGREN. Mr. Speaker, I yield 1 minute to the gentlewoman from
California (Ms. Sanchez).
Ms. SANCHEZ. Mr. Speaker, I thank my colleague from California for
generously yielding me time tonight on this subject.
Mr. Speaker, I rise today in support of H.R. 2654, the American
Inventors Protection Act. The bill improves current patent law and it
is in our national interests. The United States is currently the only
industrial nation without a first invention defense, and this bill will
close that gap.
The first invention defense allows a company who is using a
manufacturing process, if someone patents that process after the
company has been using it, to continue to use it. This is in the best
interests of competitive growth and our industrial technology. The bill
also makes the Patent and Trademark Office better equipped to deal with
the flood of patent applications that come in every day.
Clearly this is a bill that is good for American business, and it
therefore will also be good for the American consumer. I urge my
colleagues to vote for H.R. 2654.
Mr. COBLE. Mr. Speaker, I yield myself such time as I may consume.
Mr. Speaker, the gentlewoman from Ohio said she was offended. Well, I
am becoming offended too, when I think of all the time that we have put
in listening to every person who wanted to be heard. The gentlewoman
from Ohio (Ms. Kaptur) submitted a PTO fees for study for small
businesses. It is in the bill. Her own study is in the bill, section
622.
The Alliance for American Innovation, a group known to the
gentlewoman from Ohio (Ms. Kaptur) and adamantly opposed to our bill, I
invited them not once, but twice to send a witness to a public hearing.
On each occasion, Mr. Speaker, my invitation was declined. So, yes, I
am becoming a little bit impatient as well, because I think we have
indeed turned the other cheek, and I am proud of it.
My friend the gentlewoman from Ohio (Ms. Kaptur), when she was
reading earlier the provision that she read, of course, it is subject
to paragraph 2, exceptions for independent inventors who file only in
the United States. That is covered.
I apologize, Mr. Speaker, if I am becoming a little wrought, but I am
a little wrought, and I am normally an easy dog with which to hunt. But
when I think about all we have done, and then I see the gentleman from
California.
Mr. ROHRABACHER. Mr. Speaker, will the gentleman yield?
Mr. COBLE. I yield to the gentleman from California.
Mr. ROHRABACHER. Mr. Speaker, let me just note that the section of
the bill that the gentlewoman from Ohio (Ms. Kaptur) read and said, my
gosh, we need to look at this more, and why just foist it on us, the
gentlewoman from Ohio (Ms. Kaptur), that portion of the bill has not
been changed and has been available for 3 or 4 months now.
This is not something that somebody is moving through, trying to
slide through the system. The gentlewoman is complaining about the
section of the bill dealing with the 18-month publication. That has not
changed. The gentlewoman has had that in her possession ever since it
went through committee a couple months ago.
Let me make one or two more points. We have in the last few days,
most of what has been talked about, the gentlewoman did not get this
100-something page bill and never had a chance to read it. Most of that
bill is exactly the same, and the changes that have taken place are
small changes that were done in order, as the gentleman from North
Carolina (Chairman Coble) said, to accommodate the very people that we
have been trying to protect. Those changes are not so dramatic that it
takes very long to digest them. It is not a 118 page bill that is
shoved in your lap that is totally new. Almost all of that has been in
your possession all of this time.
Mr. COBLE. Mr. Speaker, reclaiming my time, I want to address a
question that the gentlewoman from California (Ms. Lofgren) asked
earlier, and I want to do it before I forget it. When the gentlewoman
talked about the PTO authorizing the publishing of documents
electronically, it was done to ensure that the users of the Patent and
Trademark Office may have a more expeditious and thorough access to
patent-related information. I think I know from where the gentlewoman
from California (Ms. Lofgren) is coming from, and I will be happy to
discuss the security aspect with her at a subsequent time.
Ms. LOFGREN. Mr. Speaker, will the gentleman yield?
Mr. COBLE. I yield to the gentlewoman from California.
Ms. LOFGREN. Mr. Speaker, I do not believe we need to specify the
security issues in this bill, but I accept the
[[Page H6947]]
chairman's commitment to work with me, and I am sure with the gentleman
from Virginia (Mr. Goodlatte), to ensure the encrypted security of
these measures.
Mr. COBLE. I thank the gentlewoman.
Mr. Speaker, I yield 5 minutes to the gentleman from Illinois (Mr.
Manzullo).
Mr. MANZULLO. Mr. Speaker, these past 2 days have been perhaps the
most challenging in my life as a United States Congressman. I, first of
all, want to thank the gentleman from North Carolina (Chairman Coble)
for his patience, his understanding, his wisdom, and his knowledge of
this subject. I come to this gentleman's defense not only because of
the scholarship and the reputation he has for honesty in this country,
but also for the fact that many people have attacked the gentleman from
North Carolina (Mr. Coble) personally because of this bill. I believe
that if there is any attack, it should be to the legislative language,
and not to an individual's integrity.
These have been challenging days. In addition to the gentleman from
North Carolina (Mr. Coble), I want to thank the gentleman from
California (Mr. Rohrabacher), the gentleman from Indiana (Mr. Burton)
and the gentleman from Illinois (Mr. Hyde), the chairman of the
Committee on the Judiciary.
We have labored endlessly in these past 2 days to come up with a bill
that protects the integrity of the patent system of this country, while
giving fair and open access to it by large corporations and by
individual inventors.
The bill is not a compromise in that parties give up or gain any
rights. Rather, it is a coming together of all interests in forging a
bill that represents openly and fairly the interests of everybody,
especially and including the American people.
I worked in two areas of the bill, first with regard to title II of
the first inventor defense. Before the State Street Bank and Trust case
as to which in 1998 the U.S. Supreme Court upheld the Court of Appeals
for the Federal court, it was universally thought that methods of doing
or conducting business were not patentable items.
{time} 2215
Before that case, everybody would keep that secret and never tried to
patent it. In recognition of this pioneer clarification in the law by
that case, we felt that those who kept their business practices secret
had an equitable cause not to be stopped by someone who subsequently
reinvented the method of doing or conducting the business or obtaining
a patent. We, therefore, limited the first inventor defense solely to
that class of rights dealing with methods of doing or conducting
business.
It is succinctly to be understood that we do not intend to create by
legislative fiat the first inventor defense or any prior user rights
for any other process, method, or product or other statutorily
recognized class of patentable rights.
Second, with regard to title V, Optional Inter Partes Reexamination
Procedure, what we did in that was, in addition to keeping the present
law of ex parte reexamination procedure, which gave certain rights to
the inventor and to the challenger, we came up with an additional
section, the inter partes reexamination which, if selected by the third
party requester, would entitle that person to participate further by
filing written documents within the Patent Office.
In exchange for that, there would be a complete estoppel or
prohibition to contest the decision. The purposes of our making those
changes was to stop any additional litigation that may come as a result
of this law.
This means fairness for everybody. For the inventor who has a request
for reexamination filed against him, in the present ex parte
reexamination process, he still has the same rights he does under the
present law; that is, the third party has to rely on his initial
written documents. The third party has no right to appeal in the event
that he loses a challenge. If the inventor loses, he still may obtain
his right to appeal to the Court of Appeals.
To the third party, he may proceed under the present law or the
option to file the inter partes reexamination.
So it is a matter of fairness to everybody in maintaining the
integrity of the Patent Office. Sure, we have had a lot of people help
us on this in addition to the Members and Bob Rines who founded the
Franklin Pierce Law Center at MIT, founder of the Academy of Applied
Science, an inductee of the Investors' Hall of Fame, an inductee of the
Army Signal Corps Wall of Fame, a Lecturer at the MIT since 1933, a
former lecturer of patent law at Harvard, the inventor of the sonogram,
a person who has practiced patent law for 55 years and has no interest
other than to maintain the rule of law and the integrity of the patent
system. He came and helped everybody out.
But, Mr. Speaker, this bill is a good bill because it protects
everybody. But most of all, it protects the integrity of the patent
system. I would ask that when the Senate takes it up that the bill
would be unchanged in its present form.
Mr. Speaker, these past two days have been two of the most
challenging I have had as a Member of Congress. I have had the
opportunity to work with my good friends and colleagues, Congressmen
Henry Hyde, chairman of the Judiciary Committee, Howard Coble, chairman
of the Judiciary Subcommittee on Intellectual Property, and Dana
Rohrabacher. We have labored endlessly these past 2 days to come up
with a bill that protects the integrity of the patent system in the
country, while giving fair and open access to it by large corporations
and individual inventors. The bill is not a compromise in that parties
``give up'' or ``gain'' any rights; rather, it is a coming together of
all interests in forging a bill that represents openly and fairly the
interests of everybody--including and especially the American people.
I have had a hand in working in the following areas of the bills.
First, with regard to title II--First Inventor Defense: Before the
State Street Bank and Trust case, as to which in 1998 the U.S. Supreme
Court denied certiorari and thereby upheld the Court of Appeals for the
Federal Circuit, it was universally thought that methods of doing or
conducting business were not among the statutory items that could be
patented. Before that case, everybody would keep their methods of doing
or conducting business as secret as they could and never tried to
patent them. In recognition of this pioneer clarification in the law,
we felt that those who kept their business practices secret had an
equitable cause not to be stopped by someone who subsequently
reinvented the method of doing or conducting business and obtained a
patent. We, therefore, limited the first inventor defense solely to
that class of rights dealing with ``methods of doing or conducting
business.'' It is distinctly to be understood that we do not intend to
create first inventor defense or prior user rights for any other
process, method, or product, or other statutorily recognized class of
patentable rights, which in fact had been included in the original
draft of this legislation, but which was stricken upon agreement of all
the parties on this legislation.
Second, with regard to title V--Optional Inter Partes Reexamination
Procedure: We clearly retain the present existing ex parte
reexamination rules without change, Chapter 30 of title 35, United
States Code. In addition we added an optional inter partes
reexamination procedure, which, if selected by a third party requestor,
would entitle that requestor to participate by filing written documents
within the Patent Office only, and would bar the requestor from
appealing to the Federal Court of Appeals of the Federal Circuit if the
Patent Office decided the patent reexamination in favor of the
inventor. In selecting this optional inter partes procedure, however,
the requestor would be bound by the decision of the Patent Office and
estopped (or prohibited) to contest the decision in any other civil
action outside the Patent Office.
This means fairness for everybody. For the inventor who has a request
for reexamination filed against him in the present ex parte
reexamination process, he still has the same rights as he does under
the present law: (a) the third party has to rely on his initial written
documents and cannot participate in the discussion between the inventor
and the patent office; (b) the third party has no right to appeal in
the event he loses his challenge; and (c) if the inventor loses, he
still maintains his right to appeal to the Court of Appeals.
For the third party, he may either proceed under the present law, as
outlined above, or have the option to filed under the inter partes
reexamination procedure, and file further documents (as opposed to just
the initial document) and thus participate in the proceedings in the
patent office, but with no right to a court appeal if the Patent Office
decides against him, and with an estoppel (prohibition) against his
challenging the Patent Office decision in any forum.
With regard to title VI--Patent and Trademark Office, we are proud to
say that the sole
[[Page H6948]]
mission of the Patent Office is to protect intellectual property of the
inventor and to that end, the title lets the Patent Office retain and
use for its purposes all the revenues and receipts. This means the
Patent Office will have additional funds to retain professional staff,
provide increase training and facilities, and make the patent system as
affordable as possible to the inventors.
Ms. LOFGREN. Mr. Speaker, how much time is remaining?
The SPEAKER pro tempore (Mr. Miller of Florida). The gentlewoman from
California (Ms. Lofgren) has 4 minutes remaining. The gentleman from
North Carolina (Mr. Coble) has 3 minutes remaining.
Ms. LOFGREN. Mr. Speaker, I yield myself such time as I may consume.
Mr. Speaker, the American Inventors Protection Act of 1999 revamps
our patent system so it is ready to meet the challenge of our Nation's
high-tech industry and the global economy.
We had a spirited debate in the last Congress on our predecessor
bill, H.R. 400. While H.R. 400 did pass the House, it died in the
Senate. This year I believe we made the changes that meet the concerns
raised during the floor debate in committee.
The bill was first published as a committee print so everyone could
make known their objections and so final details could be carefully
considered before the bill's formal introduction.
Now that the Subcommittee on Courts and Intellectual Property has
favorably reported the result of all that effort, as has the full
committee, I encourage support of the bill.
It requires early publication of our foreign competitors' technology,
it protects American investors from unscrupulous invention promotors,
it protects domestic manufacturers and jobs from late-filed and issuing
patents, half of which are foreign owned, it provides an inexpensive
and efficient system for challenging improvidently granted patents, and
it gives the Patent and Trademark Office operational flexibility that
it needs.
Under this bill, no U.S. inventor who seeks patent protection only in
the United States will have to publish their patent application, that
is, if they wish to maintain their invention's secrecy.
But a U.S. inventor will get to see what foreign competitors are
seeking to patent here more than a full year earlier than is the case
under current law.
While the administrative procedure for testing patents in the PTO by
expert examiners will be made fairer, thus enhancing its utility, a
number of safeguards have been added to ensure that patentees,
especially those of limited financial means, will not be harassed or
otherwise subject to predatory tactics.
In addition to the PTO's being reorganized into a performance-based
organization, the creation of the statutory advisory committee will be
of value both to the Congress, the President, and the public.
This Act will strengthen our Nation's technological leadership,
protect American workers, and reduce the cost of obtaining and
enforcing patents in the United States.
When I stood earlier this evening, I expressed reservations about the
changes that were made in the bill between reporting, I would say
unanimously by the full committee, and receipt of the bill today.
As I mentioned, legislating is like making sausage. There are many
aspects that are not delightful. But I would note that the changes that
have been made as explained by the chairman are really discrete ones.
As the gentleman from California (Mr. Rohrabacher) pointed out, the
bulk of this bill is exactly what was reported by the committee. It has
been available to every Member of the public and this House for many
months.
The five changes that have been made, although not what I necessarily
would have crafted, are those that I can tolerate, that I think
American inventors can tolerate. I understand that they are necessary
in order to garner the kind of broad consensus that is required in
order to move this bill forward.
We know that the intellectual property is the coin of the realm in an
information-based economy that ours has become. Without strong
protection of intellectual property, including patent law, we put at
risk the tremendous prosperity that we have created here in America,
our wonderful country.
This bill will go a long ways towards enhancing the protection that
we need for our intellectual property. Therefore, I can now,
understanding the five discrete changes, support the bill. I urge that
my colleagues would support the bill. I hope that the Senate will act
swiftly to get this long overdue measure enacted into law.
Mr. COBLE. Mr. Speaker, I yield myself such time as I may consume.
Mr. Speaker, I say to the gentlewoman from Ohio (Ms. Kaptur) I did
not yield to her earlier because I did not have the time; and the
gentlewoman from California (Ms. Lofgren) did yield 10 minutes, so I do
not think anybody was cutting anybody off.
Much has been said about coming here tonight. Last night, this bill
was on the calendar. But in an effort to make yet more changes for the
independent inventors, we are here tonight, almost at the bewitching
hour. Fifty-five cosponsors, Mr. Speaker, nine hearings have been
conducted, 90 witnesses have been before three sessions of the
Congress.
No, this is not a Johnny-come-lately. This is not a guy who came to
the party at midnight. We know this visitor. This visitor is well known
to all of us.
Let me tell my colleagues, Mr. Speaker, who sponsors it, who supports
the bill: Inventors Digest and independent inventor Robert Rines. I
mentioned the gentleman from California (Mr. Rohrabacher), the
gentleman from California (Mr. Campbell), the gentleman from Illinois
(Mr. Manzullo), and the gentleman from Indiana (Mr. Burton) because
they opposed this last year.
The gentlewoman from Ohio (Ms. Kaptur) said, well, there is only four
or five. Well, this is representative government. We cannot have 435
out here. This is representative. If we get a sampling of a dozen
people, we have gotten a good input.
The gentleman from Missouri (Mr. Gephardt), the minority leader. Both
parties, Republican and Democrat, have high-tech agendas, and this
matter is on both those agendas. Patent Coalition, major associations
involved in intellectual property. Bipartisan and unanimous support of
members of the Subcommittee on Courts and Intellectual Property and the
Committee on the Judiciary.
I think the significant feature here, Mr. Speaker, is that
intellectual property is so obviously important to the well-being of
our economy, and it should not be casually dismissed.
I want to thank the gentlewoman from California (Ms. Lofgren) for her
effort tonight. I want to thank the gentleman from Illinois (Chairman
Hyde), the gentleman from Michigan (Mr. Conyers), the ranking member,
the Democrats and Republicans alike who sat on our subcommittee.
I am proud of what we have done. I am happy to have our converts over
from last year who opposed us. We embrace one another now. I think we
are on our way. Even the Whip appears to be smiling as if he is in our
corner.
I want to echo what the gentlewoman from California (Ms. Lofgren)
said. Let us send this to the Senate. Let the Senate, the other body,
act with dispatch, and let us get this into law for the benefit of
America generally and the inventing community specifically.
Mr. ROHRABACHER. Mr. Speaker, will the gentleman yield?
Mr. COBLE. I yield to the gentleman from California.
Mr. ROHRABACHER. Mr. Speaker, I think we should pay tribute also to
the gentlewoman from Ohio (Ms. Kaptur) who has put a lot work in on
this. When she reads all of this, she is going to be so happy with this
bill.
The gentleman from North Carolina (Chairman Coble) has done a great
job, and the gentlewoman from Ohio (Ms. Kaptur) is going to be happy
with it.
Mr. COBLE. Mr. Speaker, I say to the gentleman, I hope she will be
happy because her study report is in the bill. Most of what the
gentlewoman wanted is in here, so I would be amazed if she was not
happy.
Mrs. KELLY. Mr. Speaker, I rise in strong support of H.R. 1907, the
American Inventors Protection Act, legislation which might be more
aptly titled the ``Keep America Competitive Act.''
H.R. 1907 comes before us as a consensus bill. In the last Congress
we had a battle on the floor when we debated this issue. Now we
[[Page H6949]]
have a bill before us that, while, as we have heard, there is very
limited opposition, I believe almost all of us can support. A manager's
amendment contains the core provisions of H.R. 1907 which enjoys 56
cosponsors nearly equally represented by both sides of the aisle.
H.R. 1907 makes a number of common-sense improvements to our patent
system. It is the culmination of over 4 years of extensive hearings and
debate among Members of differing views on patent reform who have had
many opportunities to refine the legislation to what we will be voting
upon today.
Members have agreed upon these provisions because they recognize that
we in Congress cannot continue to postpone action on this critical
topic of how our patent system works. Those of you who are businessmen
and women know that to be successful, you must constantly refine how
your organizations operate in order to remain competitive in the face
of a changing environment. The same is true to our patent system.
We are facing an economic environment that is changing more rapidly
than ever, and we must give our inventors, entrepreneurs, and patent
system the tools they need to address these changes.
H.R. 1907 provides significant benefits and additional protection for
all those with the inventive and entrepreneurial spirit, while
addressing some of the abuses in the patent system, that we have
witnessed in the past. Among the attractions of H.R. 1907 are:
The opportunity for inventors to collect royalties from the time a
patent application is published;
Assurance that diligent inventors will get a minimum patent term of
17 years;
Protection for small businesses who are first to invent and use
processes, so that they do not have to pay others who later usurp their
technology and patent it;
Publication of U.S. patent applications which are also filed abroad,
thus eliminating an advantage our patent system gives to foreign
companies;
Reducing costly patent litigation by improving the Patent Trademark
Office reexamination process for patents which may have been issued
inappropriately.
We are all working hard to make sure that U.S. inventors and
entrepreneurs are positioned to take advantage of the significant
transformations underway in our economy, transformations that are
unsurpassed in increasing new jobs. These transformations, many of
which can rightly be labeled electronic commerce, are generating
significant innovations. However, not all innovations are patented. We
must make sure that true innovators have the incentives and protection
they need to continue the process of invention, whether or not they
elect to patent their inventions. However, nothing in H.R. 1907
eliminates a patentee's exclusive right to collect royalties on his or
her invention. At the same time, we must continue to provide new
incentives for our patentees, and to make sure that a U.S. letter
patent remains a thing of quality and value.
H.R. 1907 does all these things, and I urge its passage by this Body
and its enactment at the earliest opportunity. In short, I hope my
colleagues will join me in supporting this important legislation to
keep America competitive in the 21st century. I thank you, Mr. Coble,
Chairman Hyde and all others in making this bill a reality.
Mr. GOODLATTE. Mr. Speaker, I rise today in strong support of this
important legislation, and I want to congratulate those who worked so
hard to reach this agreement. This is a very good bill and a very, very
important bill to protect the competitiveness of American business and
American inventors, large and small.
I commend the gentleman from North Carolina, my good conservative
friend, and the gentleman from California, Mr. Rohrabacher, for pushing
this legislation forward. Both gentlemen know how important this
legislation is for the American people.
Mr. Speaker, we are currently dealing with a situation where we have
got to act and act now to protect American inventors from a situation
where that technology is being stolen under current law.
Under current law, every single patent that is filed in the other
major industrial countries around the world is published after 18-
months, in Japanese, in German, in French, for those inventors and
those countries to see. Forty-five percent of all the patents filed
with the U.S. Patent Office are filed by foreign inventors, and U.S.
inventors do not get to see that technology filed here in the United
States.
This bill provides greater protection for the small inventor by
improving the patent pending provisions of the law. This bill protects
the small inventor in this country by giving them the opportunity to
get capital behind those inventions much sooner than they get under
current law.
Mr. Speaker, this is a good bill. It is a good bill for the little
guy, and we should vote for the bill and get this major improvement to
competitiveness in the United States against our foreign competition
done.
Mr. BERMAN. Mr. Speaker, I rise in strong support of H.R. 1907. As
ranking member of the Subcommittee on Courts and Intellectual Property,
I can attest to the longstanding efforts of my colleagues and
predecessors on the Subcommittee, Carlos Moorehead, Pat Schroeder, and
Barney Frank, on behalf of this legislation. Now thanks to the very
hard work of the gentleman from North Carolina and his staff, with the
assistance of the gentlelady from California, we now move one step
closer to enactment of reforms that will more effectively protect the
creativity and investments of American inventors, entrepreneurs, and
businesses.
A voluminous record has been complied by our subcommittee in support
of this legislation, comprising many days of hearings over several
Congresses. As a result of that record, I am convinced that this bill
is unquestionably in the national interest. I embrace the conclusions
of the 21st Century Patent Coalition that the bill will improve the
quality of patents, reduce the costs of resolving patent disputes, put
an end to rules favoring foreign applicants over American companies,
protect American businesses and jobs, and not least of all, strengthen
the rights of inventors who now suffer from delays at PTO that are not
their fault.
In view of the strong support of a wide range of associations and
interests, including a very large number of Fortune 500 companies, the
Biotechnology Industry Association, the Computer and Communications
Industry Association, the Pharmaceutical Research and Manufacturers
Association, the Business Software Alliance, the National Association
of Manufacturers--why even the Indiana Manufacturers Association--the
obstacles that have been thrown up to our efforts to get this bill
scheduled for consideration are very hard to understand.
While I supported earlier versions of this legislation, including
H.R. 400 as approved by our Committee last year, I am always loathe to
make the best enemy of the good. Today's legislation has won broader
support than previous versions of this legislation, and I salute my
colleague from North Carolina and his staff for their patience and
persistence in bringing us a giant step closer today to our mutual goal
of patent reform.
I strongly support this bill, and urge my colleagues to do so as
well.
Mr. DOOLEY of California. Mr. Speaker, I rise today in support of
H.R. 1907, the American Inventors Protection Act. The bill, introduced
by Representatives Coble and Berman, and now cosponsored by a
bipartisan coalition, will provide much needed patent protection to
American inventors. This bill also makes the Patent and Trademark
Office (PTO) more accountable to its customers, and allows customers to
recoup patent term lost during the patent process at the PTO. Without a
doubt, H.R. 1907 is a pro-growth bill that would foster technological
advancements without leaving the small businessperson behind.
The United States is by far the world's largest producer of
intellectual property. Many other nations have learned from our
success, and have enacted laws targeted to protecting intellectual
property developed by small businesses, inventors and industries. Major
changes are needed in U.S. patent law to ensure that American inventors
and businesses that are largely dependent on the development of
intellectual property have the opportunity to compete and win in the
global marketplace.
Enactment of this legislation is crucial to promoting growth in the
New Economy and to ensuring that the competitiveness of the U.S. high-
tech sector, including biotechnology will be enhanced by this bill.
The bill would require the publication of patent applications at
eighteen months--a requirement that would make U.S. patent law
consistent with the laws of our leading foreign competitors. Under the
current two-tiered system almost 80 percent of all patent applications
pending in the United States are also filed and published in other
countries and printed in the language of the host country. This
publication requirement means that foreign competitors may review the
U.S. patent application. But because the U.S. system does not require
patent publication prior to issuance, foreign competitors are not
required to reveal the subject of their applications until after a U.S.
patent is issued.
Patent reform legislation also targets a practice known as
``submarine patenting,'' in which a patent applicant deliberately files
a very broad application and then delays the issuance of a patent for
several years until someone else, who is unaware of the hidden patent
application, invests in research and technology to develop a new
consumer product. When the product is developed, the holder of the
``submarine patent'' rises above the surface to sue those who have
developed the technology.
Submarine patent filings have risen sharply since the early 1980's.
One of these submarine patents cost one company more than
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$500 million, not including court costs, taking R&D dollars out of the
system. Reform is needed to prevent individuals from manipulating the
system at great costs to others who are investing in research and
innovation.
The U.S. should promote industries and sectors of our economy that
provide the U.S. with the greatest relative competitive advantage in
the global marketplace. The U.S. is a leader in research, innovation,
and the development of intellectual property, but this advantage could
be jeopardized if U.S. patent law is not reformed to create a level
playing field with our competitors. U.S. patent law should be reformed
to ensure that our businesses and researchers are well positioned to
compete in the global economy today and into the future.
The SPEAKER pro tempore. The question is on the motion offered by the
gentleman from North Carolina (Mr. Coble) that the House suspend the
rules and pass the bill, H.R. 1907, as amended.
The question was taken; and the Speaker pro tempore announced that
the ayes appeared to have it.
Mr. COBLE. Mr. Speaker, on that I demand the yeas and nays.
The yeas and nays were ordered.
The SPEAKER pro tempore. Pursuant to clause 8 of rule XX and the
Chair's prior announcement, further proceeding on this motion will be
postponed.
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