[House Report 106-287]
[From the U.S. Government Publishing Office]
106th Congress Rept. 106-287
HOUSE OF REPRESENTATIVES
1st Session Part 1
======================================================================
AMERICAN INVENTORS PROTECTION ACT OF 1999
_______
August 3, 1999.--Committed to the Committee of the Whole House on the
State of the Union and ordered to be printed
_______
Mr. Coble, from the Committee on the Judiciary, submitted the following
R E P O R T
[To accompany H.R. 1907]
[Including cost estimate of the Congressional Budget Office]
The Committee on the Judiciary, to whom was referred 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, having considered the same, reports favorably thereon
with an amendment and recommends that the bill as amended do
pass.Table of Contents for Reports:
TABLE OF CONTENTS
Page
The Amendment.............................................. 2
Purpose and Summary........................................ 30
Background and Need for the Legislation.................... 31
Hearings................................................... 33
Committee Consideration.................................... 33
Committee Oversight Findings............................... 33
Committee on Government Reform Findings.................... 34
New Budget Authority and Tax Expenditures.................. 34
Congressional Budget Office Cost Estimate.................. 34
Constitutional Authority Statement......................... 39
Section-by-Section Analysis................................ 39
Changes in Existing Law Made by the Bill, as Reported...... 70
The amendment is as follows:
Strike out all after the enacting clause and insert in lieu
thereof the following:
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--PATENT LITIGATION REDUCTION ACT
Sec. 501. Short title.
Sec. 502. Definitions.
Sec. 503. Reexamination procedures.
Sec. 504. Conforming amendments.
Sec. 505. Report to Congress.
Sec. 506. Estoppel effect of reexamination.
Sec. 507. 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. Personnel flexibility.
Sec. 615. Public Advisory Committees.
Sec. 616. Patent and Trademark Office funding.
Sec. 617. Conforming amendments.
Sec. 618. Trademark Trial and Appeal Board.
Sec. 619. Board of Patent Appeals and Interferences.
Sec. 620. Annual report of Director.
Sec. 621. Suspension or exclusion from practice.
Sec. 622. Pay of Director.
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.
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; or
``(C) any person duly registered with, and in good
standing before, the United States Patent and Trademark
Office acting within the scope of that person's
registration to practice before the Patent and
Trademark Office, except when that person performs any
act described in subparagraph (B) or (C) of paragraph
(4); 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--
``(1) state in a written document, at the time a customer
enters into a contract forinvention 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 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 process or method in the United States or the use
of a process or method in the design, testing, or production in
the United States of a product or service, so long as such use
is in connection with an actual arm's-length sale or other
arm's-length commercial transfer of a product or service,
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 `process or method' means `process' as
defined in section 100(b), and includes any invention that
produces a useful end product or service which has been or
could have been claimed in a patent in the form of a process;
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 process or 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 product or service produced by a patented process or
method, by a person entitled to assert a defense under this
section with respect to that product or service 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 process or method, the
exclusive purpose of which is to produce a useful end
product or service.
``(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
``(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 (2)(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 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.
``(5) Issuance of patents on individual claims.--If the
Director in a notification to the applicant under section 132
indicates that one or more claims of a published application
are allowable, the applicant may request the issuance of a
patent incorporating those claims. The applicant may continue
prosecution of the remaining claims as provided in chapter 12
of this title. Any subsequently allowed claims may be
incorporated into the patent or issued in a separate patent, in
accordance with regulations adopted by the Director. The
Director may establish appropriate fees to cover the costs of
incorporating any additional claims into the patent or issuing
a separate patent.''.
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'';
(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--PATENT LITIGATION REDUCTION ACT
SEC. 501. SHORT TITLE.
This title may be cited as the ``Patent Litigation Reduction Act''.
SEC. 502. 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
reexamination under section 302 of this title who is not the patent
owner.''.
SEC. 503. REEXAMINATION PROCEDURES.
(a) Citation of Prior Art.--Section 301 of title 35, United States
Code, is amended to read as follows:
``Sec. 301. Citation of prior art
``Any person at any time may cite to the Office in writing prior
art consisting of patents or printed publications which that person
believes to have a bearing on the patentability of any claim of a
particular patent. If the person explains in writing the pertinency and
manner of applying such prior art to at least one claim of the patent,
the citation of such prior art and the explanation thereof will become
a part of the official file of the patent.''.
(b) Request for Reexamination.--Section 302 of title 35, United
States Code, is amended to read as follows:
``Sec. 302. Request for reexamination
``(a) In General.--Any person at any time may file a request for
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 a 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.''.
(c) Determination of Issue by Director.--Section 303 of title 35,
United States Code, is amended to read as follows:
``Sec. 303. Determination of issue by Director
``(a) Reexamination.--Not later than 3 months after the filing of a
request for reexamination under section 302, 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 reexamination fee required under
section 302.''.
(d) Reexamination Order by Director.--Section 304 of title 35,
United States Code, is amended to read as follows:
``Sec. 304. Reexamination order by Director
``If, in a determination made under section 303(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 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 reexamination conducted in
accordance with section 305.''.
(e) Conduct of Reexamination Proceedings.--Section 305 of title 35,
United States Code, is amended to read as follows:
``Sec. 305. Conduct of 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 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
reexamination proceeding in which the order for reexamination is based
upon a request by a third-party requester.
``(2) With the exception of the 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 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 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.''.
(f) Appeal.--Section 306 of title 35, United States Code, is
amended to read as follows:
``Sec. 306. Appeal
``(a) Patent Owner.--The patent owner involved in a 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, and may
appeal under the provisions of sections 141 through 144, 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,
subject to subsection (c).
``(c) Civil Action.--A third-party requester whose request for a
reexamination results in an order under section 304 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
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 reexamination proceedings.''.
(g) Reexamination Prohibited; Stay of Litigation.--
(1) In general.--Chapter 30 of title 35, United States
Code, is amended by adding at the end the following new
sections:
``Sec. 308. Reexamination prohibited
``(a) Order for Reexamination.--Notwithstanding any provision of
this chapter, once an order for reexamination of a patent has been
issued under section 304, neither the patent owner nor the third-party
requester, if any, nor privies of either, may file a subsequent request
for reexamination of the patent until a reexamination certificate is
issued and published under section 307, 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 a 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 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 reexamination proceeding, and a
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 reexamination proceedings.
``Sec. 309. Stay of litigation
``Once an order for reexamination of a patent has been issued under
section 304, 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 reexamination order, unless the
court before which such litigation is pending determines that a stay
would not serve the interests of justice.''.
(2) Technical and conforming amendment.--The table of
sections for chapter 30 of title 35, United States Code, is
amended to read as follows:
``CHAPTER 30--PRIOR ART CITATIONS TO OFFICE AND REEXAMINATION OF
PATENTS
``Sec.
``301. Citation of prior art.
``302. Request for reexamination.
``303. Determination of issue by Director.
``304. Reexamination order by Director.
``305. Conduct of reexamination proceedings.
``306. Appeal.
``307. Certificate of patentability, unpatentability, and claim
cancellation.
``308. Reexamination prohibited.
``309. Stay of litigation.''.
SEC. 504. 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 a 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 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.''.
(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 or third-party requester in
a 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. 505. 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 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. 506. ESTOPPEL EFFECT OF REEXAMINATION.
Any party who requests a reexamination under section 302 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. 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. 507. 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 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 after notice and opportunity
for full participation by interested public and private
parties;
``(C) shall facilitate and expedite the processing
of patent applications, particularly those which can be
filed, stored, processed, searched, and retrieved
electronically, subject to the provisions of section
122 relating to the confidential status of
applications;
``(D) may govern the recognition and conduct of
agents, attorneys, or other persons representing
applicants or other parties before the Office, and may
require them, before being recognized as
representatives of applicants or other persons, to show
that they are of good moral character and reputation
and are possessed of the necessary qualifications to
render to applicants or other persons valuable service,
advice, and assistance in the presentation or
prosecution of their applications or other business
before the Office;
``(E) shall recognize the public interest in
continuing to safeguard broad access to the United
States patent system through the reduced fee structure
for small entities under section 41(b)(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, government, or
international organization concerned, the services, records,
facilities, or personnel of any State or local government
agency or instrumentality or foreign government or
international organization to perform functions on its behalf;
``(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) in coordination with the Under Secretary of Commerce
for International Trade, shall promote exports of goods and
services of the United States industries that rely on
intellectual property;
``(9) shall advise the President, through the Secretary of
Commerce, on national and certain international intellectual
property policy issues;
``(10) shall advise Federal departments and agencies on
matters of intellectual property policy in the United States
and intellectual property protection in other countries;
``(11) 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;
``(12) 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;
``(13)(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
``(14)(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 paragraph (14)(B) shall be in addition to any other payments or
contributions to international organizations described in paragraph
(14)(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 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 the Director shall be responsible for providing
policy direction and management supervision for the Office.
``(2) Duties.--
``(A) In general.--The Director shall be
responsible for the supervision and direction of the
Office, including the issuance of patents and the
registration of trademarks, and shall perform these
duties in a fair, impartial, and equitable manner.
``(B) Consulting with the 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, as the case may be.
``(C) Security clearances.--The Director, in
consultation with the Director of the Office of
Personnel Management, shall maintain a program for
identifying national security positions and providing
for appropriate security clearances.
``(3) Oath.--The Director shall, before taking office, take
an oath to discharge faithfully the duties of the Office.
``(4) Compensation.--In addition to the Director's pay as
prescribed in section 5314 of title 5, the Director may receive
a bonus in an amount up to, but not in excess of, 50 percent of
the Director's annual rate of pay, based upon an evaluation by
the Secretary of Commerce of the Director's performance as
defined in an annual performance agreement between the Director
and the Secretary. The annual performance agreement shall
incorporate measurable organization and individual goals in key
operational areas as delineated in an annual performance plan
agreed to by the Director and the Secretary and made public in
the annual report of the Director. Payment of a bonus under
this paragraph may be made to the Director only to the extent
that such payment does not cause the Director's total aggregate
compensation in a calendar year to equal or exceed the amount
of the salary of the President under section 102 of title 3.
``(5) 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
Director shall appoint a Deputy Under Secretary of Commerce 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 Under Secretary and
Deputy Director of the United States Patent and Trademark
Office 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. 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, United States Code, 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, United States Code, 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 President under section 102
of title 3.
``(C) Removal.--The Commissioners may be removed
from office by the Secretary for misconduct or
nonsatisfactory performance under the performance
agreement described in subparagraph (B). 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 Patent and Trademark
Office shall develop an incentive program to retain as
employees patent and trademark examiners of the primary
examiner grade or higher who are eligible for retirement, for
the sole purpose of training patent and trademark examiners.
``(c) Continued Applicability of Title 5.--Officers and employees
of the Office shall be subject to the provisions of title 5 relating to
Federal employees.
``(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.
``(3) Accumulated leave.--The amount of sick and annual
leave and compensatory time accumulated under title 5 before
the effective date described in paragraph (1), by those
becoming officers or employees of the Office pursuant to this
subsection, are obligations of the Office.
``(f) Transition Provisions.--
``(1) Interim appointment of director.--On or after the
effective date of the Patent and Trademark Office 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
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 members, 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
``(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
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 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 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 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 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.
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.
``(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 Director and the
Commissioners by the Secretary of Commerce, the Director's and the
Commissioners' compensation, 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.
Section 5314 of title 5, United States Code, is amended by striking
``Assistant Secretary of Commerce and Commissioner of
Patents and Trademarks.''
and inserting
``Under Secretary of Commerce and Director of the United
States Patent and Trademark Office.''.
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 Committee.
``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)(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''.
(9) Section 41(a)(8)(A) of title 35, United States Code, is
amended by striking ``On'' and inserting ``on''.
(10) Section 157(d) of title 35, United States Code, is
amended by striking ``Secretary of Commerce'' and inserting
``Director''.
(11) Section 181 of title 35, United States Code, is
amended in the third paragraph by striking ``Secretary of
Commerce under rules prescribed by him'' and inserting
``Director under rules prescribed by the Patent and Trademark
Office''.
(12) Section 188 of title 35, United States Code, is
amended by striking ``Secretary of Commerce'' and inserting
``Patent and Trademark Office''.
(13) 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 by striking ``(d) Patent and Trademark
Office;'' and redesignating subsections (a) through (g) as
paragraphs (1) through (6), 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 ``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''.
(27) Section 11 of the Inspector General Act of 1978 (5
U.S.C. App.) is amended--
(A) in paragraph (1)--
(i) by striking ``and'' before ``the chief
executive officer of the Resolution Trust
Corporation;'';
(ii) by striking ``and'' before ``the
Chairperson of the Federal Deposit Insurance
Corporation;'';
(iii) by striking ``or'' before ``the
Commissioner of Social Security,''; and
(iv) by inserting ``or the Director of the
United States Patent and Trademark Office;''
after ``Social Security Administration;''; and
(B) in paragraph (2)--
(i) by striking ``or'' before ``the
Veterans' Administration,''; and
(ii) by striking ``or the Social Security
Administration'' and inserting ``the Social
Security Administration, or the United States
Patent and Trademark Office''.
Subtitle C--Miscellaneous Provisions
SEC. 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 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 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.
Section 22 of title 35, United States Code, is amended by striking
``printed or typewritten'' and inserting ``printed, typewritten, or on
an electronic medium''.
SEC. 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.
Purpose and Summary
The ``American Inventors Protection Act,'' H.R. 1907, will
help to solve current problems and inefficiencies in our patent
system. It guarantees 17 years of patent protection to diligent
applicants; makes technology which is accessible to citizens of
other countries available to Americans as well; allows earlier
inventors limited relief when they cannot endure the
prohibitively high costs of patenting every process or method
that contributes to the development of an ``end'' product;
reduces patent litigation by improving the reexamination
process; protects inventors from scam promoters; and
streamlines operations at the Patent and Trademark Office
(PTO).
Background and Need for the Legislation
105th Congress: Background
Generally. The United States is by far the world's largest
producer of intellectual property, which has greatly benefitted
our balance of trade. This success is dependent upon a rational
and sound policy of protecting intellectual property by
encouraging the development of new inventions and processes.
Despite this success, the U.S. patent system is not without
its problems. Patents issued in new fields of technology do not
always benefit from the search of the best prior art. The
existing patent reexamination system is an ineffective means
for bringing relevant prior art unavailable to examiners during
their search to the attention of the PTO due to the ex parte
nature of the proceeding. Without even a minimal level of
participation of third parties, many patents are now properly
issued in areas of technology previously thought to be
unpatentable, such as business methods, thereby forcing
inventors to bear unreasonable costs and infringement of their
inventions by having to apply for a patent on every process or
method employed by them--even if unrelated to an end product.
Some applicants have perfected ways to abuse the system through
dilatory prosecution that allows them to essentially extort
millions of dollars from inventors which independently
implemented and commercialized the inventions in question.
Another key problem is that the PTO is unable to run at peak
efficiency due to excessive regulation.
Since many other nations have learned from our success,
America no longer stands alone in its commitment to a strong
system of patent protection for independent inventors, small
businesses, and industries. Consequently, it is more important
now than ever that Congress adopt certain reforms that will
secure America's status as the world leader in the production
and exportation of intellectual property.
H.R. 400/S.507. In light of this background, Chairman Coble
introduced an omnibus patent and trademark bill during the
105th Congress to improve our current system. This legislation,
H.R. 400, contained several titles addressing major problems
which threaten our patent system. With one exception (that
portion of the legislation containing miscellaneous
provisions), each title consisted of an independent bill that
was the subject of comprehensive hearings in the Subcommittee
on Courts and Intellectual Property over two Congresses. Each
of these titles also reflected changes that were made in
response to valuable comments submitted by expert witnesses,
Members, independent inventors, small businesses, large
corporations, universities and research institutions, industry
organizations, patent law associations, and the PTO.
The House passed H.R. 400 in amended form on April 24,
1997. The Senate Committee on the Judiciary reported a
substitute version of the bill--S. 507--on March 23, 1998, but
the full Senate took no further action on the legislation.
Both H.R. 400 and S. 507 contained several titles that were
nearly identical or at least similar in content, but there were
major differences as well, largely owing to amendments adopted
during floor consideration of H.R. 400.
More specifically, Title I of both bills would have
transformed the PTO into a government corporation; however,
H.R. 400 created an intellectual property policy office in the
Department of Commerce funded by user fees. There was no policy
office equivalent in S. 507.
Title II of both bills contained provisions which required
early publication of patent applications 18 months after filing
(under current law, publication only occurs upon issuance of
the patent). Pursuant to an amendment offered by Representative
Kaptur, H.R. 400 generally exempted small businesses,
independent inventors, and universities from the publication
requirement unless they filed a counterpart application in a
foreign country. S. 507 expanded this exemption to any U.S.
patent filed only in the United States.
Both bills contained essentially the same patent term
restoration provisions, but they were set forth in different
sections: Title III of S. 507, and Title II of H.R. 400.
Extensions of up to 10 years would be available in the case of
successful appeals and unusual administrative delays. If delays
were a function of patent interferences or government secrecy
orders, a patent could be extended for the period of delay
without any cap under either version.
Similarly, both H.R. 400 and S. 507 contained highly
similar provisions pertaining to prior domestic commercial user
rights. Unlike earlier prior user rights legislation, H.R. 400
expanded the scope of the right to include prior domestic
``research'' users, and this expansion was incorporated into S.
507. These changes were set forth in Title IV of S. 507 and
Title III of H.R. 400.
Title IV of H.R. 400 established new regulations governing
invention promotion services, an increasing source of consumer
fraud within the patent world. There was no counterpart in S.
507.
Title V of S. 507 amended current law on the matter of
patent reexamination in an effort to remove some of the
disincentives to test patent validity in an inexpensive
administrative proceeding in the PTO rather than in expensive
U.S. district court proceedings. The House equivalent was
deleted from H.R. 400 by the Kaptur amendment.
Finally, Title VI of S. 507 and Title V of H.R. 400 share
some of the same miscellaneous patent provisions, excepting a
section in the House bill that permitted applicants to pay
extra fees instead of filing divisional applications and
another requiring the PTO to publish procurement contracts not
found in the Senate measure. In turn, S. 507 had provisions on
electronic patent information in rural States and a GAO study
of biological deposits which were not in H.R. 400.
106th Congress: Background
Generally. At the beginning of the 106th Congress, Chairman
Coble worked with a coalition of members and groups, led by
Representative Rohrabacher, to include in H.R. 1907 the
amendments offered on the floor of the House in the 105th
Congress and other responses to concerns raised by independent
inventors. This good-faith collaboration has resulted in the
reported version of H.R. 1907.
Major concerns. First-time inventors are frequently cheated
out of hundreds of millions of dollars annually by unscrupulous
invention promoters. American jobs are at risk by late issuing
patents and patents issued on inventions previously considered
to be unpatentable subject matter. Our foreign competitors, who
obtain nearly 50% of the U.S. patents issued each year, protect
their companies and workers from the disruptions caused by such
late-issuing patents.
Notwithstanding how diligent a patent applicant might be,
there are circumstances where such an applicant can nonetheless
lose years of effective patent term due to delays in the PTO
and other circumstances beyond her control. While our foreign
competitors are able to see the latest U.S. patent technology
in their native languages barely six months after a U.S.
inventor files a patent application in their country, the
reverse is not true. U.S. researchers and investors are denied
the opportunity to learn what their foreign competitors are
working on until a U.S. patent issues. This causes duplicative
research and wasted developmental expenditures, putting U.S.
inventors at a serious disadvantage vis-a-vis their foreign
counterparts and competitors.
An individual or company that wishes to test the validity
of an issued U.S. patent that is believed to be too broad in
scope has no effective alternative to simply waiting and
challenging the patent in an expensive district court
proceeding. Further, an independent inventor, when challenged
on the validity of her patent, is potentially subject to suit
anywhere in the country at great litigious expense. The ability
of the PTO to recruit and train highly qualified engineers to
become patent examiners and to give them the resources they
need to avoid issuing patents on such questionable inventions
is hampered by the maze of red tape in which the Office must
function, a situation frequently worsened by excessive
regulation.
H.R. 1907 will alleviate these concerns and improve the
American intellectual property system.
Hearings
The Committee's Subcommittee on Courts and Intellectual
Property held a hearing on the Committee Print of the
``American Inventors Protection Act'' (later introduced as H.R.
1907) on March 25, 1999. Testimony was received from seven
witnesses representing seven organizations, along with two
Members of Congress.
Committee Consideration
On May 20, 1999, the Subcommittee on Courts and
Intellectual Property met in open session and ordered reported
the Committee Print on the ``American Inventors Protection
Act'' by voice vote, a quorum being present. On May 26, 1999,
the Committee met in open session and ordered reported
favorably the bill H.R. 1907 with amendment by voice vote, a
quorum being present.
Committee Oversight Findings
In compliance with clause 2(1)(3)(A) of rule XI of the
Rules of the House of Representatives, the Committee reports
that the findings and recommendations of the Committee, based
on oversight activities under clause 2(b)(1) of rule X of the
Rules of the House of Representatives, are incorporated in the
descriptive portions of this report.
Committee on Government Reform Findings
No findings or recommendations of the Committee on
Government Reform and Oversight were received as referred to in
clause 2(1)(3)(D) of rule XI of the rules of the House of
Representatives.
New Budget Authority and Tax Expenditures
Clause 2(1)(3)(B) of rule XI of the Rules of the House of
Representatives is inapplicable because this legislation does
not provide new budgetary authority or increased tax
expenditures.
Congressional Budget Office Cost Estimate
In compliance with clause 2(1)(3)(C) of rule XI of the
Rules of the House of Representatives, the Committee sets
forth, with respect to the bill, H.R. 1907, the following
estimate and comparison prepared by the Director of the
Congressional Budget Office under section 403 of the
Congressional Budget Act of 1974:
U.S. Congress,
Congressional Budget Office,
Washington, DC, July 21, 1999.
Hon. Henry J. Hyde,
Chairman, Committee on the Judiciary,
House of Representatives, Washington, DC.
Dear Mr. Chairman: The Congressional Budget Office has
prepared the enclosed cost estimate for H.R. 1907, the American
Inventors Protection Act of 1999.
If you wish further details on this estimate, we will be
pleased to provide them. The CBO staff contacts are Mark Hadley
(for federal costs), who can be reached at 226-2860, and John
Harris (for the private-sector impact), who can be reached at
226-2649.
Sincerely,
Dan L. Crippen, Director.
Enclosure
H.R. 1907--American Inventors Protection Act of 1999
SUMMARY
H.R. 1907 would establish the United States Patent and
Trademark Office (PTO) as an independent agency within the
Department of Commerce and make a number of other changes in
laws governing the issuance of patents and related procedures.
CBO estimates that implementing H.R. 1907 would result in
net discretionary spending by the PTO totaling about $37
million over the 2000-2004 period, assuming appropriation of
the authorized amounts. Enacting H.R. 1907 would increase
direct spending and receipts, but CBO estimates that any such
effects would be less than $500,000 in any year. Because the
bill would affect direct spending and receipts, pay-as-you-go
procedures would apply.
H.R. 1907 contains no intergovernmental mandates as defined
in the Unfunded Mandates Reform Act (UMRA) and would not impose
costs on state, local, or tribal governments. H.R. 1907 would
create new private-sector mandates by placing requirements on
companies that market inventions and by creating new fees for
PTO services. New PTO fees are private-sector mandates because
the federal government controls the patent system and no
reasonable alternatives to the patent system exist. CBO
estimates that the total costs of the private-sector mandates
in H.R. 1907 would be below the statutory threshold established
in UMRA ($100 million in 1996, adjusted for inflation).
DESCRIPTION OF THE BILL'S MAJOR PROVISIONS
Title I would require invention marketing companies that
evaluate the market potential of inventions to include
standardized disclosures in contracts between the companies and
the inventors. It would establish civil remedies for inventors
who have been injured by violations of this title. Finally,
title I would establish a new federal crime for providing false
or misleading information to inventors and would impose fines
of up to $10,000 for each offense.
Title II would allow an inventor who has used an invention
at least one year before it is patented by another party to
continue using the invention without infringing on the new
patent. This provision (also known as the ``first inventor
defense'') would protect companies that choose to protect their
inventions through trade secrets laws instead of patent
protection and companies in sectors that until recently were
denied patents.
Title III would extend the term of a patent for up to 10
years for administrative delays by PTO or by successful
appellate reviews. In addition, the title would provide
extensions for every day beyond three years that PTO took to
issue a patent. Finally, this title would provide unlimited
extensions for delays experienced as a result of interference
and secrecy orders.
Title IV would require the PTO to publish patent
applications within 18 months of filing regardless of whether a
patent has been granted and would authorize the PTO to charge a
fee to cover the cost of early publication. Applications that
are only for domestic use, subject to secrecy orders, or no
longer pending would not be published. Under this title,
following the grant of a patent, an inventor would be entitled
to a reasonable royalty from anyone who used, sold, or imported
the invention during the period from the time of publication
until the patent was granted. Finally, title IV would authorize
the PTO to raise existing fees or establish a new fee to offset
the cost of publishing patent applications.Title V would allow
third parties to request that PTO reexamine other pertinent
patents and printed materials that the examiner might not have
uncovered during the course of the original patent examination.
The title also would give the requestor the opportunity to file
comments on each response by the patent owner. It would allow
either the patent holder or the requestor to appeal the
decision of the patent examiner to the Board of Patent Appeals
and Interference (BPAI) and to appeal the decision of the BPAI
to the Court of Appeals for the Federal Circuit. Title V would
require a fee to be submitted with each third-party request for
a patent reexamination and would authorize the PTO to collect a
fee from the patent owner if the owner does not respond in a
timely manner to a request for information pertinent to the
reexamination.Title VI would make the PTO an independent agency
within the Department of Commerce. It would retain the same
name and would be subject to the policy guidance of the
Department of Commerce but would exercise more control
regarding its operations and administration. This title also
would establish an advisory committee for patents and one for
trademarks.Title VII would change the procedure to apply for
patents so as to effectively eliminate the requirement to pay
fees for those applications that are later abandoned. H.R. 1907
also would require the PTO and the General Accounting Office
(GAO) to complete a number of studies for the Congress. In
addition, H.R. 1907 would make a number of other changes to
patent law that would not significantly affect the federal
budget.
ESTIMATED COST TO THE FEDERAL GOVERNMENT
The estimated budgetary impact of H.R. 1907 is shown in
Table 1. The costs of this legislation fall within budget
function 370 (commerce and housing credit).
Table 1. Estimated Budgetary Impact of H.R. 1907
[By fiscal year, in millions of dollars]
----------------------------------------------------------------------------------------------------------------
1999 2000 2001 2002 2003 2004
----------------------------------------------------------------------------------------------------------------
CHANGES IN SPENDING SUBJECT TO APPROPRIATION
Changes in PTO Fees
Estimated Authorization Level \1\....................... 0 3 -25 -27 -28 -30
Estimated Outlays....................................... 0 3 -25 -27 -28 -30
Changes in PTO Spending
Estimated Authorization Level........................... 0 13 38 37 38 40
Estimated Outlays....................................... 0 8 28 34 36 39
Changes in Net PTO Spending
Estimated Authorization Level \1\....................... 0 16 13 10 10 10
Estimated Outlays....................................... 0 11 3 7 8 8
----------------------------------------------------------------------------------------------------------------
BASIS OF ESTIMATE
For the purposes of this estimate, CBO assumes that H.R.
1907 will be enacted by the end of fiscal year 1999. Estimated
outlays are based on historical spending patterns for the PTO
and information provided by the agency.
Spending Subject to Appropriation
In general, most or all of PTO's spending is offset by the
fees that it collects. In some years (for example, 1998 and
1999), the agency's cash collections have exceeded its
expenditures. CBO estimates that net PTO spending under H.R.
1907 would be $37 million higher than under current law over
the 2000-2004 period--additional spending of $145 million less
additional collections of $108 million, assuming the necessary
appropriation action.
Under current law, the PTO cannot collect or spend any user
fees without prior approval in an appropriation act. Although
H.R. 1907 would establish the PTO as a government corporation,
the agency would still need to receive such approval in
appropriation acts to collect or spend any of the user fees.
CBO assumes that over time the PTO would be authorized to spend
all of the fees that the agency collects.
Changes in PTO Fees. Table 2 shows the estimated fee
collections under H.R. 1907 as compared to projected fee
collections under current law. H.R. 1907 would require the PTO
to collect some additional user fees, which CBO estimates would
total $108 million over five years.
Table 2. Estimated PTO Fees
[Outlays in millions of dollars, by fiscal Year]
----------------------------------------------------------------------------------------------------------------
1999 2000 2001 2002 2003 2004
----------------------------------------------------------------------------------------------------------------
Fees Under Current Law.............................. -912 -984 -1,053 -1,127 -1,206 -1,290
Proposed Changes \1\................................ 0 3 -25 -27 -28 -30
Fees Under H.R. 1097................................ -912 -981 -1,078 -1,154 -1,234 -1,320
----------------------------------------------------------------------------------------------------------------
Note: Fee collections are recorded as negative outlays.
\1\ Would require appropriation action.
Publication Fees. H.R. 1907 would authorize the PTO to
raise existing fees or establish a new fee to offset the cost
of publishing certain patent applications. (The agency has
authority under current law to charge fees to offset costs of
processing applications.) Because the PTO would not be allowed
to collect or spend the additional fees without approval in
appropriation acts, any collections would reduce discretionary
spending. Based on information from the PTO, CBO estimates that
the PTO would collect an additional $89 million in publication
fees over the 2000-2004 period. The PTO would incur some
initial costs that would not be recovered by fees, and CBO
expects a lag between the time the PTO collects and spends the
fees. As a result, CBO estimates that the agency would spend
about $81 million on publications over the same period.
Reexamination Fee. H.R. 1907 would ease restrictions on
reexamination proceedings initiated by third parties, thus
causing an increase in the number of proceedings. Based on
information from the PTO, CBO estimates enacting H.R. 1907
would nearly double the number of reexamination requests,
resulting in additional fee collections of about $36 million
over the 2000-2004 period. Because CBO expects a lag between
the time the PTO collects and spends the fees, CBO estimates
that the bill would increase PTO's spending on reexaminations
by about $31 million over the 2000-2004 period.
Penalty Fee. The bill also would authorize the PTO to
collect a new penalty fee if a patent owner does not respond to
a request for information pertinent to the reexamination. CBO
expects that any receipts from this new fee would not be
significant.
Provisional Application Fee. The bill would effectively
waive the fee for provisional applications that later are
abandoned. Based on information from the PTO, CBO estimates
enacting H.R. 1907 would cause PTO to forgo about $17 million
over the 2000-2004 period.
Changes in PTO Spending. CBO estimates that the PTO would
spend $146 million more over the 2000-2004 period than under
current law. Based on information from the agency, CBO
estimates that extending the term of delayed patents would
increase PTO's spending for administrative costs by about $33
million over the 2000-2004 period, without having any
corresponding effect on fee collections. Most of the remaining
increase in spending under H.R. 1907--an estimated $112 million
over the 2000-2004 period, primarily for publishing
applications and conducting reexamination proceedings--would be
more than offset by increased fee collections over that same
period.
Establishing the Patent and Trademark Office as an
independent agency within the Department of Commerce would
result in a number of efficiencies and savings, primarily for
procurement and administration, that CBO expects would be
roughly offset by expenditures for new requirements in the bill
and for salary increases.
Other Discretionary Costs. CBO estimates that the study
required by the bill would cost GAO less than $500,000 in
fiscal year 2004. Because H.R. 1907 would establish a new
federal crime, CBO anticipates that the U.S. government would
be able to pursue cases that it otherwise would be unable to
prosecute. Based on information from DOJ, however, we do not
expect the government to pursue many additional cases. Thus,
CBO estimates that implementing the bill would not have a
significant impact on the cost of federal law enforcement
activity. Implementing the bill also could increase costs to
the federal courts if more civil suits are filed by private
parties, but we do not expect many additional cases.
Direct Spending
Criminal Fines. Enacting H.R. 1907 could increase
governmental receipts (i.e., revenues) from fines, but we
estimate that any such increase would be less than $500,000
annually. Criminal fines are deposited as revenues in the Crime
Victims Fund and spent in subsequent years. Thus, any change in
direct spending from the fund would match the increase in
revenues (with a lag of one or more years).
Royalty Payments. Enacting H.R. 1907 could increase
payments of royalties for use of an invention between the time
the application was published and the patent was granted.
However, CBO has no basis for estimating the timing or
magnitude of such payments.
PAY-AS-YOU-GO CONSIDERATIONS
The Balanced Budget and Emergency Deficit Control Act sets
up pay-as-you-go procedures for legislation affecting direct
spending or receipts. CBO estimates that enacting H.R. 1907
would increase receipts from criminal fines and spending of
those receipts by less than $500,000 each year.
ESTIMATED IMPACT ON STATE, LOCAL, AND TRIBAL GOVERNMENTS
H.R. 1907 contains no intergovernmental mandates as defined
in UMRA and would not impose costs on state, local, or tribal
governments.
ESTIMATED IMPACT ON THE PRIVATE SECTOR
H.R. 1907 would create new private-sector mandates by
placing requirements on invention marketing companies, by
increasing existing Patent and Trademark Office fees, and by
creating some new fees for PTO services. PTO fee increases and
new fees are private-sector mandates because the federal
government controls the patent system and no reasonable
alternatives to the patent system exist. CBO estimates that the
total costs of the private-sector mandates in H.R. 1907 would
be below the threshold established in UMRA ($100 million in
1996, adjusted for inflation).
Title I of H.R. 1907 would protect inventors by regulating
their contractual agreements with invention marketers. Through
an extensive cover notice and various provisions within each
contract, marketers of inventions would be required to identify
their services, fees, business history, and the contractual and
legal rights of inventors. They would also be required to give
customers a written statement similar to the cover notice
before signing contracts, and to make quarterly progress
reports once contracts have been signed. Because these
requirements affect content of contracts rather than invention
marketers' day to day operations and because of the small size
of the invention marketing industry, CBO expects that the total
costs of the this mandate to the private sector would be small.
H.R. 1907 contains provisions that would authorize new fees
and increase existing ones. The bill would allow the PTO to
increase its fee for the publication of patent applications.
Title V would create a new fee for delayed responses to PTO
inquiries by patent owners in reexamination proceedings. CBO
estimates that, in fiscal years 2001 through 2004, the PTO
would collect an additional $20 million dollars per year in
publication fees from patent applications. Collections from the
delayed response fee would not be significant.
ESTIMATE PREPARED BY:
Federal Costs: Mark Hadley (226-2860)
Impact on the Private Sector: John Harris (226-2649)
ESTIMATE APPROVED BY:
Robert A. Sunshine
Deputy Assistant Director for Budget Analysis
Constitutional Authority Statement
Pursuant to rule XI, clause 2(1)(4) of the Rules of the
House of Representatives, the Committee finds the authority for
this legislation in Article I, clause 8, section 8 of the
Constitution.
Section-by-Section Analysis
Sec. 1. Short Title. Section 1 sets forth the short title
of H.R. 1907: the ``American Inventors Protection Act of
1999.''
Sec. 2. Table of Contents. Section 2 enumerates the table
of contents of H.R. 1907.
Title I--Inventors' Rights
Generally. Title I would create a new chapter five in title
35 of the United States Code, designed to curb the deceptive
practices of certain invention promotion companies. Many of
these companies advertise on television and in magazines that
inventors may call a toll-free number for assistance in
marketing their inventions. They are sent an invention
evaluation form, which they are asked to complete to allow the
promoter to provide expert analysis of the market potential of
their inventions. The inventors return the form with
descriptions of the inventions, which become the basis for
contacts by salespeople at the promotion companies. The next
step is usually a ``professional''-appearing product research
report which contains nothing more than boilerplate information
stating that the invention has outstanding market potential and
fills an important need in the field. The promotion companies
attempt to convince the inventor to buy their marketing
services, normally on a sliding scale in which the promoter
will ask for a front-end payment of up to $10,000 and a
percentage of resulting profits, or a reduced front-end payment
of $6,000 or $8,000 with commensurately larger royalties on
profits. Once paid under such a scenario, a promoter will
typically and only forward information to a list of companies
that never respond.
This title addresses these problems by requiring: (1) that
contracts between marketing companies and inventors contain
standardized disclosures, including the number of inventions
evaluated by the promoter during the previous five years, the
type of evaluation received, the number that received a profit,
and contractual terms prescribing payment conditions and
termination rights; and (2) that promotion companies submit
quarterly reports to their client inventors, describing their
efforts on behalf of the inventors.
Remedies against companies for failing to comply under new
chapter five include private civil actions for the greater of
actual damages or statutory damages in the amount of $5,000,
the possibility of treble damages, and costs and attorneys'
fees. Criminal penalties of up to $10,000 are also provided.
Sec. 101. Short title. Title I may be cited as the ``
Inventors' Rights Act.''
Sec. 102. Invention promotion services. This section adds a
new chapter 5 to Part I of title 35, United States Code,
consisting of Sec. Sec. 51 through 59. Legitimate invention
assistance and development organizations can be of great
assistance to novice inventors by providing information on how
to protect an invention, how to develop it, how to obtain
financing to manufacture it, or how to license or sell the
invention. While many invention developers are legitimate, the
unscrupulous ones take advantage of untutored inventors, asking
for large sums of money up front for which they provide no real
service in return. This new section provides a much needed tool
for independent inventors to use if they are a victim of the
predatory practices of an unscrupulous invention promoter.
New Sec. 51 of title 35 defines the terms used in the
chapter. The terms used in the chapter are defined broadly in
order to ensure that organizations that would prey upon
inventors cannot escape the reach of the chapter merely by
using titles and business descriptions artfully. Paragraph (3),
however, excepts from the definition of ``invention promoter''
departments and agencies of the Federal, state, and local
governments; any nonprofit, charitable, scientific, or
educational organizations qualified under applicable State laws
or described under Sec. 170(b)(1)(A) of the Internal Revenue
Code of 1986; or any person registered and in good standing
with the PTO who is acting within the scope of his or her
registration to practice before the agency.
The Committee is in agreement that the exclusion provided
for in Sec. 51(3)(c) does not totally exempt patent attorneys
from regulation under the act. The exception provides that any
person registered to practice before the PTO is exempt from
regulation when acting within the scope of that person's
registration to practice before the agency. However, the
Committee recognizes that registered patent attorneys and
agents may provide services which fall outside the scope of
their registration to practice before the PTO and within the
definition of invention development services. Whenever a
registered patent attorney or agent engages in conduct
described in Sec. 51(4)(B) and (C), she will be subject to the
provisions of this act.
Section 51(4) defines the term ``invention promotion
services'' to mean, with respect to an invention by a customer,
any act involved in 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 within the scope of the license; evaluating the
invention to determine its commercial potential by any person
for purposes other than providing venture capital; or
marketing, brokering, licensing, selling, or promoting the
invention or a product or service in which the invention is
incorporated or used, except that the display only of an
invention at a trade show or exhibit shall not be considered to
be invention development services.
New Sec. 52(a) requires that contracts for invention
promotion services be in writing and that a copy of the signed
contract be provided to the customer at the time she enters
into the contract. In the event the contract is entered into on
behalf of a third party, that third party must be identified
and will be treated as a customer under the provisions of the
chapter that apply.
Section 52(b) requires invention promoters to provide to
customers, at the time a contract is entered into, a written
document stating whether the promoter customarily seeks more
than one contract in connection with an invention and seeks to
perform services in connection with an invention in one or more
phases, using one or more contracts governing the performance
at each phase. In addition, invention promoters must provide
the customer with a copy of the written contract together with
a summary, in writing, describing the promoter's usual business
practices, including the customary terms in contracts and the
approximate amount of the usual fees or other consideration
that the customer will be charged for each service provided by
the invention promoter.
Section 52(c) provides the customer with the right to
terminate a contract for invention promotion services by
sending a letter to the invention promoter stating the
customer's intent to cancel. This right may not be waived in
the contract for invention development services. To execute the
right to terminate, the customer must send the letter within
five business days after both the customer and the invention
promoter execute the invention development contract. It is the
intention of the Congress to provide the customer a ``cooling
off'' period during which the customer can effectively change
his or her mind. The delivery of a promissory note, check, bill
of exchange, or other negotiable instrument to the invention
developer or a third party for the benefit of the invention
developer is deemed payment received by the invention promoter
on the date received, even though the date(s) in such
instruments differ from the date of receipt.
New Sec. 53(a) of title 35 requires that every contract for
invention promotion services include a cover sheet with a
notice set forth in legible, bold-face type of not less than
12-point size, explaining the right of termination; giving
information regarding the number of inventions evaluated by the
invention promoter and stating the number of those evaluated
positively and the number negatively; advising the customer
that assigning rights to the invention promoter may permit sale
or other disposal of the invention by the latter without
sharing the profits; advising the customer of the number of
customers who have contracted for services with the invention
promoter in the prior five years and how many of them have
earned more than the cost of the services due to the
performance of the invention promoter; informing the customer
of the invention promotion companies with which the invention
promoter's officer have been affiliated in the previous 10
years to enable the customer to evaluate the reputations of
these companies; and encouraging the customer to consult an
attorney before entering in the contract and advising that
rights can be lost if an inventor proceeds without the advice
of an attorney registered by the PTO.
Section 53(b) requires that the cover notice, in addition
to the obligatory text, include the name, primary office
address, and local office address of the invention promoter.
This section also prohibits inclusion of other matter.
Section 53(c) allows the invention promoter to delete from
the total number of customers who have contracted with the
promoter (as required to be given in Sec. 53(a)) those
customers who have purchased trade show services, research,
advertising, or other non-marketing services from the invention
promoter. The invention promoter also need not include those
who have defaulted in their payments under invention promotion
contracts.
Section 54 of title 35 requires the invention promoter to
provide each customer who has contracted for invention
promotion services a written report at least once every three
months during the term of the contract. The report must
describe fully, clearly, and concisely the services performed
by the invention promoter on behalf of the customer during the
report period and the services to be performed, giving the
names of the persons who the invention promoter knows will
perform those services. The report must include the name and
address of each person, firm, corporation, or other entity to
whom the invention that is the subject matter of the contract
has been disclosed, the reason for the disclosure, and the
nature of the disclosure. Where more than one person has been
contacted in a particular corporation or entity, it will
suffice to include the name and address of one of the people
contacted and of the corporation or entity. Complete and
accurate summaries of all responses received as a result of the
disclosure must be provided. The purpose of this section is to
ensure that the customer is kept fully informed of the services
being performed on her behalf and the results of those services
so that the customer may take appropriate action if they are
not receiving the service required under the contract.
New Sec. 55(a) requires that all contracts for invention
promotion services include, in bold-face type of not less than
12-point size: the terms and conditions of payment and the
contract termination rights required by Sec. 52; a statement
making it clear that the customer may avoid entering into the
contract by not making the initial payment to the invention
promoter; a complete, clear, and concise description of the
specific acts and services that the invention promoter is to
perform for customer; a clear statement indicating whether the
invention promoter is going to construct, sell, or distribute
any prototypes, models, or devices embodying the customer's
invention and, if so, how many; the full name and principal
place of business promoter and, to the extent known at the time
the contract is entered into, the name and principal place of
business of any parent, subsidiary, agent, independent
contractor, and any affiliated company or person who will
perform any service or act that the invention promoter has
undertaken to perform for the customer; a statement of any
estimation or projection of customer earnings resulting from
the invention that has been given orally or in writing by the
invention promoter or anyone on behalf of the invention
promoter, and a full description of the data on which that
estimation or projection was based; the name and address of the
organization or person who is to be the custodian of all the
records and correspondence related to the contracted-for
invention promotion services and an unequivocal statement
acknowledging that the invention promoter is required to
maintain all such records and correspondence for the customer
for at least two years following the expiration of the
invention promotion services contract; and a statement of the
time schedule for performance of the invention promotion
services with an estimated date by which the performance of
services is expected to be completed. It is the intent of this
legislation that the invention developer ensure that all
material information be provided to the customer so that the
customer can make an informed decision in entering into any
contract for promotion services.
Section 55(b) makes it clear that, if the invention
promoter has discretion regarding the nature of the specific
acts and services the invention promoter is to perform for the
customer, as those acts and services are described in the
contract, the invention promoter will be deemed to be a
fiduciary with all corresponding obligations with respect to
the customer.
Section 55(c) requires that, within seven days of written
notice to the invention promoter or the custodian of records
and correspondence identified in the contract for invention
promotion services, such custodian must make available to the
customer or her representative for review and copying all
records and correspondence related to the invention promotion
contract. The review and copying shall take place on the
invention promoter's premises during normal business hours and
any fees for copying shall be reasonable.
Section 56(a) authorizes the customer to declare void any
contract for invention promotion services that does not conform
to the requirements of chapter 5 of Part I of title 35, United
States Code. In addition, this section authorizes the customer
to void any contract entered into in reliance upon any material
false, fraudulent, or misleading information, representation,
notice, or advertisement of the invention promoter. The
contract shall also be voidable where it provides for obtaining
a utility, design, or plant patent unless the contract
specifies that the filing will be done by an agent or attorney
registered to practice before the PTO. Finally, Sec. 56(a)
makes void and unenforceable any waiver by a customer of any
provision required by chapter 5.
Section 56(b) establishes a civil cause of action against
any invention promoter who injures a customer through a
violation of any of the obligations of chapter 5 or through any
material false or fraudulent statement, representation, or
omission of material fact by the invention promoter, or any
person acting on behalf of the invention promoter, or through
failure of the invention promoter to make all the disclosures
required under the chapter. In such a civil action, the
customer may recover from the invention promoter, or any
officers, directors, or partners of such promoter, reasonable
costs, attorneys' fees, and the greater of $5,000 or the amount
of actual damages sustained by the customer. Subsection (b)(2)
authorizes the court to increase damages to an amount not to
exceed three times the amount awarded as statutory or actual
damages in egregious cases which will be dependent on whether
regulatory sanctions or other corrective action has been taken
as a result of previous complaints against the invention
promoter.
Section 56(c) establishes a rebuttable presumption of
injury in the event of any substantial violation of chapter 5
by an invention promoter or of execution of an invention
promotion services contract by a customer in reliance on any
false or fraudulent statements, representations, or material
omissions by the invention promoter or any person acting on
behalf of the invention promoter.
Section 57(a) requires the Director of the PTO to retain
all complaints submitted to the PTO regarding invention
promoters, together with any responses by invention promoters
to those complaints, and to make such complaints and responses
available to the public.
Section 57(b) authorizes the Director to request from
Federal and State agencies copies of any complaints relating to
invention promotion services they have received and to include
those complaints in the records maintained by the PTO regarding
invention promotion services.
Section 58 provides that knowingly making false or
misleading statements or representations to a customer,
omitting any material fact in a communication with a customer
or failing to make all the disclosures required by chapter 5 is
a misdemeanor and authorizes a fine of not more than $10,000
for each such offense.
Section 59 makes it clear that the provisions of chapter 5
are not to be construed to affect any other obligation, right,
or remedy that is provided under any other Federal or State
law.
Sec. 103. Effective date. This section provides that the
effective date of chapter 5 will be 60 days after the date of
enactment of this Act.
Title II--First Inventor Defense
Generally. Title II strikes an equitable balance between
the interests of U.S.inventors who have invented and
commercialized business methods and processes, many of which
until recently were not patentable, and later U.S. or foreign
inventors who have patented the processes. The title creates an
earlier-inventor defense for inventors who have reduced an
invention to practice in the U.S. at least one year before the
patent filing date of the later inventor and commercially used
the invention in the U.S. before the filing date. A party
entitled to the defense must not have derived the invention
from the patent owner. The bill protects the patent owner by
providing that a party who establishes an earlier-inventor
defense is not an earlier inventor for purposes of invalidating
the patent.
The title clarifies the interface between two key branches
of intellectual property law--patents and trade secrets. Patent
law serves the public interest by encouraging innovation and
investment in new technology, and may be thought of as
providing a right to exclude other parties from an invention in
return for the inventor making a public disclosure of the
invention. Trade secret law, however, also serves the public
interest by protecting investments in new technology. Trade
secrets have taken on a new importance with an increase in the
ability to patent all business methods and processes. It would
be administratively and economically impossible to expect any
inventor to apply for a patent on all business methods and
processes now deemed patentable. In order to protect inventors
and to encourage proper disclosure, this title is limited to
business methods and processes only.
The earlier-inventor defense is important to many small and
large businesses, including financial services and software
companies--any business that relies on innovative business
processes and methods. The defense does not apply to end
products. The 1998 opinion by the U.S. Court of Appeals for the
Federal Circuit in State Street Bank and Trust Co. v. Signature
Financial Group,\1\ which held that methods of doing business
are patentable, has added to the urgency of the issue.
Thousands of ``back office'' processes are now being patented.
In the past, many businesses that developed and used such
processes thought secrecy was the only protection available.
Under established law, these pre-existing processes do not now
qualify for patent protection because they have been in
commercial use.
---------------------------------------------------------------------------
\1\____F.3d____ (Fed. Cir. 1998) [hereinafter State Street].
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Sec. 201. Short title. Title II may be cited as the ``First
to Invent Act.''
Sec. 202. Defense to patent infringement based on earlier
inventor. In establishing the defense, subsection (a) of
Sec. 202 creates a new Sec. 273 of the Patent Act, which in
subsection (a) sets forth the following definitions:
(1) Lcommercially used and commercial use mean use of a
process or method in the United States in commerce or
the use of a process or method in the design, testing,
or production in the United States of a product or
service;
(2) Lcommercial use as applied to a nonprofit research
laboratory and nonprofit entities such as a university,
research center, or hospital intended to benefit the
public means that such entities may assert the defense
only based on continued use by and in the entities
themselves, but that the defense is inapplicable to
subsequent commercialization or use outside the
entities;
(3) Lprocess or method means processes as defined in
Sec. 100 (b) of the Patent Act and includes inventions
that were or could have been claimed in a patent in the
form of a process; and
(4) Leffective filing date means the earlier of the
actual filing date of the application for the patent or
the filing date of any earlier US, foreign, or
international application to which the subject matter
at issue is entitled under the Patent Act.
To be ``commercially used'' or in ``commercial use'' for
purposes of subsection (a), the use must be in connection with
an actual arm's-length sale or other arm's-length commercial
transfer of a product or service. The process or method that is
the subject matter of the defense may be an internal business
process or method, such as internal management software or a
preliminary or intermediate manufacturing procedure, which
contributes to the effectiveness of the business that is
producing the product or service transferred in an arm's-length
commercial transfer. Commercial use does not require the
subject matter at issue to be accessible to or otherwise known
to the public.
Subject matter that must undergo a premarketing regulatory
review period during which safety or efficacy is established
before commercial marketing or use is considered to be
commercially used and in commercial use during the regulatory
review period.
An invention is considered to be a process or method if it
is used in connection with the production of a useful end-
product or -service and is or could have been claimed in the
form of a business process or method in a patent. A software-
related invention, for example, that was claimed by the patent
draftsman as a programmed machine when the same invention could
have been protected with process or method patent claims is a
process or method for purposes of Sec. 273.
Subsection (b)(1) of proposed Sec. 273 establishes a
general defense against infringement under Sec. 271 of the
Patent Act. Specifically, a person will not be held liable with
respect to any subject matter that would otherwise infringe one
or more claims to a business process or method in another
party's patent if the person:
(1) Lacting in good faith, actually reduced the subject
matter to practice at least one year before the
effective filing date of the patent; and
(2) Lcommercially used the subject matter before the
effective filing date of the patent.
Although not confined to the financial services industry,
the first inventor defense is of particular significance to
that industry, and the industry serves as a prime illustration
of the need for the defense. The State Street decision has
brought that industry abruptly to the forefront of cutting-edge
patent law protection for subject matter that previously had
been thought to be unpatentable. The State Street court came
down on the side of a very broad scope of subject matter that
qualifies for patent protection. State Street clarifies that
the characterization of subject matter as a method of doing
business does not render it unpatentable. One consequence is
that the ``back office'' processes and methods that are
fundamental to the delivery of many financial services, but
transparent to the end user of the services, are now fair game
for patent protection.
An example suffices to show the nature of the problem and
the fairness in the solution proposed by Sec. 273. From the end
user's perspective, a typical credit card transaction appears
simple and straightforward. A cardholder presents her card as
payment for goods or services, signs a charge slip, and goes on
her way. But that seemingly effortless transaction most often
requires the services of a number of third parties to interact
between the cardholder and the card-issuing financial
institution, both in real time and thereafter. When the card is
first presented, a third-party credit card processor, in
conjunction with communications companies, may provide real
time authorization services to the card issuer to verify that
the card is valid and not being offered for purchases beyond
its pre-approved credit limit. The processing of the actual
transaction may involve additional third parties such as
acquiring banks and credit card interchange networks that pass
the transaction along until it eventually reaches the card
issuer who closes the loop by obtaining payment form the
cardholder. Thus, a ``simple'' credit card transaction in most
cases would be impossible without the sale or transfer of
services between many third parties who utilize their own
proprietary systems to process the transaction and interact
with each other to pass the transaction along. Under proposed
Sec. 273, each of these third parties would be free to continue
their bona fide commercial operations without interference from
a subsequent inventor who obtains a patent claiming common
subject matter as her invention.
Accordingly, an ``arm's length commercial transfer of a
product or service'' under proposed Sec. 273 includes the use
of an invention for a process or method, the subject matter of
which may be directed to an information or data processing
system providing a financial service. These financial services
may embody business methods or processes incorporated into any
number of systems including, but not limited to, trading,
investment and liquidity management, securities custody and
reporting, balance reporting, funds transfer, ACH, ATM
processing, on-line banking, check processing, and compliance
and risk management. In each of these systems, multiple
processing and method steps are acting upon a customer's data
without its knowledge.
In the past, many of the financial institutions that
developed and used such systems did so in a climate where trade
secret protection was believed to be the only practical legal
protection available. Under established law, these pre-existing
systems do not now qualify for patent protection because they
have been in commercial use for some time, albeit in secret.
Such secret or ``concealed''use may not prevent another, later
inventor from obtaining patent protection that would bar the
earlier developer and user from continuing to use the business
processes and methods that are her earlier inventions and that
may have been in use for years or even decades. The definitions
for ``commercially used'' and ``commercial use'' incorporate
the requirement for use of the subject process or method in
connection with an actual arm's length sale or transfer. This
ensures that the protection afforded by the prior user defense
extends only to bona fide ongoing business practices without
imposing any thresholds or limits on the scale of the business
that qualifies for the defense.
Subsection (b)(2) states that the sale or other lawful
disposition of a product or service produced by a patented
process or method, by a person entitled to assert a Sec. 273
defense, exhausts the patent owner's rights with respect to
that product or service to the same extent such rights would
have been exhausted had the sale or other disposition been made
by the patent owner. For example, if a purchaser would have had
the right to resell a product if bought from the patent owner,
the purchaser has the same right if the product is purchased
from a person entitled to a Sec. 273 defense.
Subsection (b)(3) creates limitations and qualifications on
the use of the defense. First, a person may not assert the
defense unless the invention for which the defense is asserted
is for a business process or method, the exclusive purpose of
which is to produce a useful end product or service; that is,
the defense will not be available if the subject matter itself
is a useful end product or service that constitutes one or more
claims in the patent. Second, a person may not assert the
defense if the subject matter was derived from the patent owner
or persons in privity with the patent owner. Third, subsection
(b)(3) makes clear that the application of the defense does not
create a general license under all claims of the patent in
question--it extends only to the specific subject matter
claimed in the patent with respect to which the person can
assert the defense. At the same time, however, the defense does
extend to variations in the quantity or volume of use of the
claimed subject matter, and to improvements that do not
infringe additional specifically-claimed subject matter.
Subsection (b)(4) requires that the person asserting the
defense must assume the burden of proof in establishing it by
clear and convincing evidence. Subsection (b)(5) establishes
that the person who abandons the commercial use of subject
matter may not rely on activities performed before the date of
such abandonment in establishing the defense with respect to
actions taken after the date of abandonment. Such a person can
rely only on the date when commercial use of the subject matter
was resumed.
Subsection (b)(6) notes that the defense may only be
asserted by the person who performed the acts necessary to
establish the defense, and, except for transfer to the patent
owner, the right to assert the defense cannot be licensed,
assigned, or transferred to a third party 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. To illustrate, a person
is lawfully entitled to assert the defense as it relates to the
operation of a specific piece of machinery. The person owns
several other pieces of machinery that perform distinct
functions which, taken together, comprise the person's
business. That person may not transfer the defense as it
relates to the specific piece of machinery to a third party
unless the entire commercial establishment is transferred as
well.
Subsection (b)(7) limits the sites for which the defense
may be asserted when the defense has been transferred along
with the enterprise or line of business to which the defense
relates, as permitted by subsection (b)(6). Specifically, when
the enterprise or line of business to which the defense relates
has been transferred, the defense may be asserted only for uses
at those sites where the subject matter was used before the
later of the patent filing date or the date of transfer of the
enterprise or line of business. A site is a factory site or
other major facility in which an enterprise or line of business
has made a significant capital investment, and does not
include, for example, offsite locations for development of
software components or manufacture of parts or ingredients.
Subsection (b)(8) states that a person who fails to
demonstrate a reasonable basis for asserting the defense may be
held liable for attorneys fees under Sec. 285 of the Patent
Act.
Subsection (b)(9) specifies that the successful assertion
of the defense does not mean that the affected patent is
invalid. Paragraph (9) eliminates a point of uncertainty under
current law concerning the validity of patents, and strikes a
balance between the rights of a later inventor who obtains a
patent and an earlier inventor who continues to use its method
or process in the conduct of its business. Under current law,
although the matter has seldom been litigated, a party who
commercially used an invention in secrecy before the patent
filing date and invented the subject matter before the patent
owner's invention may argue that the patent is invalid under
Sec. 102 (g) of the Patent Act. Arguably, commercial use of an
invention in secrecy is not suppression or concealment of the
invention within the meaning of Sec. 102(g), and therefore the
party's earlier invention will invalidate the patent.\2\ The
bill provides that a party who a uses a process or business
method commercially in secrecy before the patent filing date
and establishes a Sec. 273 defense is not an earlier inventor
for purposes of invalidating the patent.
---------------------------------------------------------------------------
\2\ See Dunlop Holdings v. ________, ________ F.2d ________ (7th
Cir. 19____).
---------------------------------------------------------------------------
Sec. 203. Effective date and applicability. The effective
date for Title II is the date of enactment, except that the
title does not apply to any infringement action pending on the
date of enactment or to any subject matter for which an
adjudication of infringement, including a consent judgment, has
been made before the date of enactment.
Title III--Patent Term Guarantee
Generally. Title III amends the provisions in the Patent
Act that compensate patent applicants for certain reductions in
patent term that are not the fault of the applicant. The
provisions that were initially included only provided
adjustments for up to 10 years for secrecy orders,
interferences, and successful appeals. Not only are these
adjustments too short in some cases, but no adjustments were
provided for administrative delays caused by the PTO that were
beyond the control of the applicant. Accordingly, Title III
removes the 10-year caps from the existing provisions, adds a
new provision to compensate applicants fully for PTO-caused
administrative delays, and, for good measure, includes a new
provision guaranteeing diligent applicants at least a 17-year
term by extending the term of any patent not granted within
three years of filing. Thus, no patent applicant diligently
seeking to obtain a patent will receive a term of less than the
17 years as provided under the pre-GATT \3\ standard; in fact,
most will receive considerably more. Only those who purposely
manipulate the system to delay the issuance of their patents
will be penalized under Title III, a result that the Committee
believes entirely appropriate.
---------------------------------------------------------------------------
\3\ General Agreement on Tariffs and Trade, Pub. L. No. 103-465.
The framework for international trade since its inception in 1948, GATT
is now administered under the auspices of the World Trade Organization
(WTO) (see note 19, infra).
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Sec. 301. Short title. Title III may be cited as the
``Patent Term Guarantee Act.''
Sec. 302. Patent term guarantee authority. Section 302
amends Sec. 154(b) of the Patent Act covering term. First, new
subsection (b)(1)(A)(i)-(iv) guarantees day-for-day restoration
of term lost as a result of delay created by the PTO when the
agency fails to
(1) Lmake a notification of the rejection of any claim
for a patent or any objection or argument under
Sec. 132, or give or mail a written notice of allowance
under Sec. 151, within 14 months after the date on
which a non-provisional application was actually filed
in the PTO;
(2) Lrespond to a reply under Sec. 132, or to an appeal
taken under Sec. 134, within four months after the date
on which the reply was filed or the appeal was taken;
(3) Lact on an application within four months after the
date of a decision by the Board of Patent Appeals and
Interferences under Sec. 134 or Sec. 135 or a decision
by a Federal court under Sec. Sec. 141, 145, or 146 in
a case in which allowable claims remain in the
application; or
(4) Lissue a patent within four months after the date
on which the issue fee was paid under Sec. 151 and all
outstanding requirements were satisfied.
Further, subject to certain limitations, infra,
Sec. 154(b)(1)(B) guarantees a total application pendency of no
more than three years. Specifically, day-for-day restoration of
term is granted if the PTO has not issued a patent within three
years after ``the actual date of the application in the United
States.'' This language was intentionally selected to exclude
the filing date of an application under the Patent Cooperation
Treaty (PCT).\4\ Otherwise, an applicant could obtain up to a
30-month extension of a U.S. patent merely by filing under PCT,
rather than directly in the PTO, gaining an unfair advantage in
contrast to strictly domestic applicants. Any periods of time
---------------------------------------------------------------------------
\4\ See Herbert F. Schwartz, Patent Law & Practice (2d ed., Federal
Judicial Center,1995), note 72 at 22. The PCT is a multilateral treaty
among more than 50 nations that is designed to simplify the patenting
process when an applicant seeks a patent on the same invention in more
than one nation. See also 35 U.S.C.A. chs. 35-37 and PCT Applicant's
Guide (1992, rev. 1994).
(1) Lconsumed in the continued examination of the
application under Sec. 132(b) of the Patent Act as
---------------------------------------------------------------------------
added by Sec. 303 of this Act;
(2) Llost due to an interference under Sec. 135(a), a
secrecy order under Sec. 181, or appellate review by
the Board of Patent Appeals and Interferences or by a
Federal court (irrespective of the outcome); and
(3) Lincurred at the request of an applicant in excess
of the three months to respond to a notice from the
Office permitted by Sec. 154(b)(2)(C)(ii) unless
excused by a showing by the applicant under
Sec. 154(b)(3)(C) that in spite of all due care the
applicant could not respond within three months shall
not be considered a delay by the PTO and shall not be
counted for purposes of determining whether the patent
issued within three years from the actual filing date.
Day-for-day restoration is also granted under new
Sec. 154(b)(1)(C) for delays resulting from interferences,\5\
secrecy orders,\6\ and appeals by the Board of Patent Appeals
and Interferences or a Federal court in which a patent was
issued as a result of a decision reversing an adverse
determination of patentability.
---------------------------------------------------------------------------
\5\ 35 U.S.C. Sec. 135(a).
\6\ 35 U.S.C. Sec. 181.
---------------------------------------------------------------------------
Section 302 imposes limitations on restoration of term. In
general, pursuant to new Sec. 154(b)(2)(A)-(C) of the bill,
total adjustments granted for restorations under (b)(1) are
reduced as follows:
(A) LTo the extent that there are multiple grounds for
extending the term of a patent that may exist
simultaneously (e.g., delay due to a secrecy order
under Sec. 181 and administrative delay under
Sec. 154(b)(1)(A)), the term should not be extended for
each ground of delay but only for the actual number of
days that the issuance of a patent was delayed.
(B) LThe term of any patent which has been disclaimed
beyond a date certain may not receive an adjustment
beyond the expiration date specified in the disclaimer.
(C) LAdjustments shall be reduced by a period equal to
the time in which the applicant failed to engage in
reasonable efforts to conclude prosecution of the
application, based on regulations developed by the
Director, and an applicant shall be deemed to have
failed to engage in such reasonable efforts for any
periods of time in excess of three months that are
taken to respond to a notice from the Office making any
rejection or other request.
New Sec. 154(b)(3) sets forth the procedures for the
adjustment of patent terms. Paragraph (3)(A) empowers the
Director to establish regulations by which term extensions are
determined and contested. Paragraph (3)(B) requires the
Director to send a notice of any determination with the notice
of allowance and to give the applicant one opportunity to
request reconsideration of the determination. Paragraph (3)(C)
requires the Director to reinstate any time the applicant takes
to respond to a notice from the Office in excess of three
months that was deducted from any patent term extension that
would otherwise have been granted if the applicant can show
that he or she was, in spite of all due care, unable to respond
within three months. In no case shall more than an additional
three months be reinstated for each response. Paragraph (3)(D)
requires the Director to grant the patent after completion of
determining any patent term extension irrespective of whether
the applicant appeals.
New Sec. 154(b)(4) regulates appeals of term adjustment
determinations made by the Director. Paragraph (4)(A) requires
a dissatisfied applicant to seek remedy in the District Court
for the District of Columbia under the Administrative
Procedures Act \7\ within 180 days after the grant of the
patent. The Director shall alter the term of the patent to
reflect any final judgment. Paragraph (4)(B) precludes a third
party from challenging the determination of a patent term prior
to patent grant.
---------------------------------------------------------------------------
\7\ 5 U.S.C. Sec. Sec. 551-559, 701-706, 1305, 3105, 3344, 5372,
7521.
---------------------------------------------------------------------------
Section 302(b) makes certain conforming amendments to
Sec. 282 of the Patent Act and the appellate jurisdiction of
the U.S. Court of Appeals for the Federal Circuit.\8\
---------------------------------------------------------------------------
\8\ 28 U.S.C. Sec. 1295.
---------------------------------------------------------------------------
Sec. 303. Continued examination of patent applications.
Section 303 amends Sec. 132 of the Patent Act to permit an
applicant to request that an examiner continue the examination
(reexamine) an application following a notice of rejection by
the examiner. New Sec. 132(b) authorizes the Director to
prescribe regulations for the continued examination of an
application notwithstanding a ``final'' rejection, at the
request of the applicant. The Director may also establish
appropriate fees for continued examination proceedings, and
shall provide a 50% fee reduction for small entities which
qualify for preferential treatment under Sec. 41(h)(1) of the
Patent Act.
Section 304. Technical clarification. Section 304 of the
bill coordinates technical term adjustment provisions set forth
in Sec. 154(b) with those in Sec. 156(a) of the Patent Act.
Section 305. Effective date. The effective date for the
amendments in Sec. Sec. 302 and 304 is the date of enactment
and, with the exception of design applications (the terms of
which are not measured from filing), applies to any application
filed on or after that date. The amendments made by Sec. 303
take effect six months after date of enactment to allow the PTO
to prepare implementing regulations.
Title IV--United States Publication of Patent Applications Filed Abroad
Generally. Title IV provides for the publication of pending
patent applications which have a corresponding foreign
counterpart. Any pending U.S. application filed only in the
United States (e.g., one that does not have a foreign
counterpart) will not be published if the applicant so
requests. Thus, an applicant wishing to maintain her
application in confidence may do so merely by filing only in
the United States and requesting that the PTO not publish the
application. For those applicants who do file abroad or who
voluntarily publish their applications, provisional rights will
be available for assertion against any third party who uses the
claimed invention between publication and grant provided that
substantially similar claims are contained in both the
published application and granted patent. This change will
ensure that American inventors will be able to see the
technology that our foreign competition is seeking to patent
much earlier than is possible today.
Sec. 401. Short title. Title IV may be cited as the
``Publication of Foreign Filed Applications Act.''
Sec. 402. Publication. Amended Sec. 122 of the Patent Act
continues the general rule in subsection (a) that patent
applications will be maintained in confidence. Paragraph (1)(A)
of new subsection (b) creates a new exception to this general
rule by requiring publication of certain applications promptly
after the expiration of an 18-month period following the
earliest claimed U.S. or foreign filing date. Design patent
applications \9\ and provisional applications \10\ are not
subject to publication. The Director is authorized by
subparagraph (B) to determine what information concerning
published applications shall be made available to the public,
and, under subparagraph (C) any decision made in this regard is
final and not subject to review.
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\9\ 35 U.S.C. Sec. 171. Since design applications do not disclose
technology, inventors do not have a particular interest in having them
published. The bill as written therefore simplifies the proposed system
of publication to confine the requirement to those applications for
which there is a need for publication.
\10\ 35 U.S.C. Sec. 111(b). Pursuant to 35 U.S.C. Sec. 111(b)(5),
all provisional applications are abandoned 12 months after the date of
their filing; accordingly, they are not subject to the 18-month
publication requirement.
---------------------------------------------------------------------------
Subsection (b)(2) enumerates exceptions to the general rule
requiring publication. Subparagraph (A) precludes publication
of any application that is no longer pending at the 18th month
from filing. Subparagraph (B) bars publication of any
application that is the subject of a secrecy order until the
secrecy order is rescinded.
Pursuant to subparagraph (C)(i), any applicant who is not
filing overseas and does not wish her application to be
published can simply make a request and state that her
invention has not and will not be the subject of an application
filed in a foreign country that requires publication after 18
months. Subparagraph (C)(ii) clarifies that an applicant may
rescind this request at any time. Moreover, if an applicant has
requested that her application not be published in a foreign
country with a publication requirement, subparagraph (C)(iii)
imposes a duty on the applicant to notify the Director of this
fact. An unexcused failure to notify the Director will result
in the abandonment of the application. If an applicant either
rescinds a request that her application not be published or
notifies the Director that an application has been filed in an
early publication country or through the PCT, the U.S.
application will be published at 18 months pursuant to
subsection (b)(1).
Finally, under subparagraph (C)(v), where an applicant has
filed an application in a foreign country, either directly or
through the PCT, so that the application will be published 18
months from its earliest effective filing date, the applicant
may limit the scope of the publication by the PTO to the total
of the cumulative scope of the applications filed in all
foreign countries. Where the foreign application is identical
to the application filed in the United States or where an
application filed under the PCT is identical to the application
filed in the United States, the applicant may not limit the
extent to which the application filed in the United States is
published. However, where an applicant has limited the
description of an application filed in a foreign country,
either directly or through the PCT in comparison with the
application filed in the PTO, the applicant may restrict the
publication by the PTO to no more than the cumulative details
of what will be published in all of the foreign applications
and through the PCT. The applicant may restrict the extent of
publication of her U.S. application by submitting a redacted
copy of the application to the PTO eliminating only those
details that will not be published in any of the foreign
applications. Any description contained in at least one of the
foreign national or PCT filings may not be excluded from
publication in the corresponding U.S. patent application. To
ensure that any redacted copy of the U.S. application is
published in place of the original U.S. application, the
redacted copy must be received within 16 months from the
earliest effective filing date. Finally, if the published U.S.
application as redacted by the applicant does not enable a
person skilled in the art to make and use the claimed
invention, provisional rights under Sec. 154(d) shall not be
available.
Subsection (c) requires the Director to establish
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 without the express written
consent of the applicant.
Subsection (d) requires the Government Accounting Office
(GAO) to conduct a study of applicants who file only in the
United States during a three-year period beginning on the
effective date of Title IV. The study will focus on the
percentage of U.S. applicants who file only in the United
States versus those who file outside the United States; how
many domestic-only filers request not to be published; how many
who request not to be published later rescind that request; and
whether there is any correlation between the type of applicant
(e.g., small vs. large entity) and publication. The Comptroller
General must submit the findings of the study, once completed,
to the Committees on the Judiciary of the House and Senate.
Sec. 403. Time for claiming benefit of earlier filing date.
Section 119 of the Patent Act prescribes procedures to
implement the right to claim priority under Article 4 of the
Paris Convention for the Protection of Industrial Property.\11\
Under that Article, an applicant seeking protection in the
United States may claim the filing date of an application for
the same invention filed in another Convention country--
provided the subsequent application is filed in the United
States within 12 months of the earlier filing in the foreign
country.
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\11\ Mar. 20, 1883, as revised at Brussels, Dec. 14, 1900, 25 Stat.
1645, T.S. No. 579, and subsequently through 1967. The Paris Convention
contains a number of specific provisions relating directly to
industrial designs and other more general provisions which are also
applicable to industrial designs. The Convention has 99 member nations,
including the United States. See also Pierre Maugue, The International
Protection of Industrial Designs Under the International Conventions,
19 Univ. of Baltimore Law Review 393-396 (Nos. One/Two, Fall 1989/
Winter 1990).
---------------------------------------------------------------------------
Section 403 of Title IV amends Sec. 119(b) of the Patent
Act to authorize the Director to establish a cut-off date by
which the applicant must claim priority. This is to ensure that
the claim will be made early enough--generally not later than
the 16th month from the earliest effective filing date--so as
to permit an orderly publication schedule for pending
applications. As the PTO moves to electronic filing, it is
envisioned that this date could be moved closer to the 18th
month.
The amendment to Sec. 119(b) also gives the Director the
discretion to consider the failure of the applicant to file a
timely claim for priority to be a waiver of any such priority
claim. The Director is also authorized to establish procedures
(including the payment of a surcharge) to accept an
unintentionally delayed priority claim.
Section 403(b) of Title IV amends Sec. 120 of the Patent
Act in a similar way. This provision empowers the Director to:
establish a time by which the priority of an earlier filed
United States application must be claimed; consider the failure
to meet that time limit to be a waiver of the right to claim
such priority; and accept an unintentionally late claim of
priority subject to the payment of a surcharge.
Sec. 404. Provisional rights. Section 404 amends Sec. 154
of the Patent Act by adding a new subsection (d) to accord
provisional rights to obtain a reasonable royalty for
applicants whose applications are published under amended
Sec. 122(b) of the Patent Act, supra, or applications
designating the United States filed under the PCT. Generally,
this provision establishes the right of an applicant to obtain
a reasonable royalty from any person who, during the period
beginning on the date that his or her application is published
and ending on the date a patent is issued--
(1) Lmakes, uses, offers for sale, or sells the
invention in the United States, or imports such an
invention into the United States; or
(2) Lif the invention claimed is a process, makes,
uses, offers for sale, sells, or imports a product made
by that process in the United States; and
(3) Lhad actual notice of the published application
and, in the case of an application filed under the PCT
designating the United States that is published in a
language other than English, a translation of the
application into English.
The requirement of actual notice is critical. The mere fact
that the published application is included in a commercial
database where it might be found is insufficient. The published
applicant must give actual notice of the published application
to the accused infringer and explain what acts are regarded as
giving rise to provisional rights.
Another important limitation on the availability of
provisional royalties is that the claims in the published
application that are alleged to give rise to provisional rights
must also appear in the patent in substantially identical form.
To allow anything less than substantial identity would impose
an unacceptable burden on the public. If provisional rights
were available in the situation where the only valid claim
infringed first appeared in the granted patent, the public
would have no guidance as to the specific behavior to avoid
between publication and grant. Every person or company that
might be operating within the scope of the disclosure of the
published application would have to conduct her own private
examination to determine whether a published application
contained patentable subject matter that she should avoid. The
burden should be on the applicant to initially draft a schedule
of claims that gives adequate notice to the public of what she
is seeking to patent.
Amended Sec. 154(d)(3) imposes a six-year statute of
limitations from grant in which an action for reasonable
royalties must be brought.
Amended Sec. 154(d)(4) sets forth some additional rules
qualifying when an international application under the PCT will
give rise to provisional rights. The date that will give rise
to provisional rights for international applications will be
the date on which the PTO receives a copy of the application
published under the PCT in the English language; if the
application is published under the PCT in a language other than
English, then the date on which provisional rights will arise
will be the date on which the PTO receives a translation of the
international application in the English language. The Director
is empowered to require an applicant to provide a copy of the
international application and a translation of it.
New Sec. 154(b)(5) provides an additional benefit for
applicants who seek to obtain the benefits of early publication
to protect their early marketing of their inventions against
copiers. While early publication will permit an applicant to
obtain a reasonable royalty from copiers, the applicant cannot
enjoin such copiers. New Sec. 154(b)(5) addresses that problem.
When in the course of examination, an applicant receives a
communication from the PTO (an ``office action'') that one or
more claims of her published application are allowable, the
applicant is permitted to request the issuance of a patent
incorporating those claims. The applicant may continue to
prosecute the remaining still ``rejected'' claims as provided
in chapter 12 of the Patent Act. Any subsequently allowed
claims may be incorporated into the patent or issued as a
separate patent as determined by the Director. The Director is
also authorized to charge appropriate fees to cover the cost of
incorporating additional claims into the patent or issuing a
separate patent. Coupled with the possibility of provisional
rights from publication (and publication can be requested upon
filing) to the early grant of a patent on a single allowed
claim, Title IV greatly enhances the arsenal of rights
available to a small entity or independent inventor who markets
her invention quickly.
Sec. 405. Prior art effect of published applications.
Section 405 amends Sec. 102(e) of the Patent Act to treat an
application published by the PTO in the same fashion as a
patent published by the PTO. Accordingly, a published
application is given prior art effect as of its earliest
effective U.S. filing date against any subsequently filed U.S.
applications. As with patents, any foreign filing date to which
the published application is entitled will not be the effective
filing date of the U.S. published application for prior art
purposes. An exception to this general rule is made for
international applications designating the United States that
are published under Article 21(2)(a) of the PCT in the English
language. Such applications are given a prior art effect as of
their international filing date. The prior art effect accorded
to patents under Sec. 405 remain unchanged from present
Sec. 102(e) of the Patent Act.
Sec. 406. Cost recovery for publications. Section 406
authorizes the Director to recover the costs of early
publication required by the amendment made by Sec. 402 of this
Act by charging a separate publication fee after a notice of
allowance is given pursuant to Sec. 151 of the Patent Act.
Sec. 407. Conforming amendments. Section 407 consists of
various technical and conforming amendments to the Patent Act.
These include amending Sec. 181 of the Patent Act to clarify
that publication of pending applications does not apply to
applications under secrecy orders, and amending Sec. 284 of the
Patent Act to ensure that increased damages authorized under
Sec. 284 shall not apply to the reasonable royalties possible
under amended Sec. 154(d). In addition, Sec. 374 of the Patent
Act is amended to provide that the effect of the publication of
an international application designating the United States
shall be the same as the publication of an application
published under amended Sec. 122(b), except as its effect as
prior art is modified by amended Sec. 102(e) and its giving
rise to provisional rights is qualified by new Sec. 154(d).
Sec. 408. Effective date. Title IV shall take effect on the
date that is one year after the date of enactment and shall
apply to all applications filed under Sec. 111 of the Patent
Act on or after that date; and to all applications complying
with Sec. 371 of the Patent Act that resulted from
international applications filed on or after that date. The
provisional rights provided in amended Sec. 154(d) and the
prior art effect provided in amended Sec. 102(e) shall apply to
all applications pending on the date that is one year after the
date of enactment that are voluntarily published by their
applicants. Finally, Sec. 404 (provisional rights) shall apply
to international applications designating the United States
that are filed on or after the date that is one year after the
date of enactment.
Title V--Patent Litigation Reduction Act
Generally. Title V reduces expensive patent litigation in
U.S. district courts by allowing third-party requesters to
participate minimally in reexamination proceedings in the PTO.
Congress enacted legislation to authorize reexamination of
patents in the PTO in 1980, but reexamination has been used
infrequently since a third party who requests reexamination
cannot participate at all in the proceedings. Numerous
witnesses have suggested that the volume of lawsuits in
district courts will be reduced if third parties are given an
opportunity to make their case for patent invalidity in the
PTO. Title V encourages third parties to rely on reexamination
proceedings.
Title V allows third-party requesters to submit one written
comment each time the patent owner files a response to the PTO.
In addition, third-party requesters can appeal to the PTO Board
of Patent Appeals and Interferences and to the Court of Appeals
for the Federal Circuit from a PTO determination that a
reexamined patent is valid. To prevent harassment, third-party
requesters who participate in a reexamination proceeding are
estopped from raising in a subsequent court action or
reexamination any issue of patent validity that they raised or
could have raised during reexamination. Anyone who requests
reexamination must identify the real party in interest.
Title V retains the requirement of current law that
reexamination cannot be commenced unless the PTO makes an
unappealable threshold determination that a ``substantial new
question'' is raised. As under current law, grounds for
reexamination are limited to earlier patents and printed
publications--grounds that are well-suited for consideration in
PTO proceedings.
Sec. 501. Short title. Title V may be cited as the ``Patent
Litigation Reduction Act.''
Sec. 502. Definitions. Section 502 amends Sec. 100 of the
Patent Act by defining ``third-party requester'' as a person
requesting reexamination under Sec. 302 who is not a patent
owner.
Sec. 503. Reexamination procedures. Under Sec. 301 of the
Patent Act, any person at any time may cite in writing prior
art to the PTO. This citation consists of patents or printed
publications which that person believes will bear on the
patentability of any claim of a particular patent. If the
person explains in writing the pertinency and manner of
applying such prior art to at least one claim of the patent,
the citation of such prior art and the explanation will become
a part of the official file of the patent.
Proposed Sec. 301, like current Sec. 301, governs the
citation of prior art having a bearing on a granted patent. It
does not afford any right to cite prior art having a bearing on
pending patent applications. Citations of prior art having a
bearing on published or other pending applications may be
regulated or prohibited by the Director, for example, under
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.\12\
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\12\ See Sec. 402 of H.R. 1907, supra.
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Section 503 of the bill deletes the last sentence of
current Sec. 301, which guarantees anonymity to the person
citing prior art, upon request. Under proposed Sec. 301, the
Director may require that the identity of the person citing
prior art, or the identity of the real party in interest on
whose behalf the prior art is cited, be publicly disclosed.
Section 503 amends Sec. 302 of the Patent Act by requiring
that any person who files a written request for reexamination
based on a citation of prior art must reveal the identity of
the real party in interest.
Proposed Sec. 303 of the Patent Act confers upon the
Commissioner the authority and responsibility to determine,
within three months after the filing of a request for
reexamination, whether a substantial new question affecting
patentability of any claim of the patent is raised by the
request. A decision in this regard is final and not subject to
judicial review. Section 503 of the bill retains these features
and leaves the authority and responsibility with the Director
(formerly known as Commissioner \13\).
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\13\ See Sec. 613 of H.R. 1907, infra.
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Proposed Sec. Sec. 304-305 of the Patent Act as amended by
Sec. 503 are substantially similar to Sec. Sec. 304-305 of
current law. Under proposed Sec. 304, if the Director
determines that a substantial new question of patentability
affecting a claim is raised, the determination shall include an
order for reexamination for resolution of the question. The
order may be accompanied by the initial PTO action on the
merits of reexamination conducted in accordance with Sec. 305.
Generally, under proposed Sec. 305 reexamination shall be
conducted according to the procedures set forth in
Sec. Sec. 132-133 of the Patent Act. The patent owner will be
permitted to propose any amendment to the patent and a new
claim or claims, with one exception: no proposed amended or new
claim enlarging the scope of the claims will be allowed.
Proposed Sec. 305 elaborates on procedure with regard to
third-party requesters who, for the first time, are permitted
to participate in reexamination proceedings. With the exception
of the 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 PTO to the
patent owner concerning reexamination. After each response by
the patent owner to an action on the merits by the PTO, the
third-party requester shall have one opportunity to file
written comments, but not to make oral arguments, addressing
issues raised by the PTO or in the patent owner's response. In
the absence of good cause, as under current law, the agency
must act in reexamination matters with special dispatch.
Proposed Sec. 306 prescribes the procedures for appeal of
an adverse PTO decision by the patent owner and the third-party
requester. Both the patent owner and the third-party requester
are entitled to appeal to the Patent Board of Appeals and
Interferences (Sec. 134 of the Patent Act) and to the U.S.
Court of Appeals for the Federal Circuit (Sec. Sec. 141-144);
either may also be a party to any appeal by the other. Neither
party is entitled to the alternative to a Federal Circuit
appeal that a patent owner has under current law--which is a
civil action under Sec. 145 of the Patent Act.
To deter unnecessary litigation, proposed Sec. 306 imposes
constraints on the third-party requester. In general, a third-
party requester who is granted a reexamination by the PTO may
not assert at a later time in any civil action in U.S. district
court \14\ the invalidity of any claim finally determined to be
patentable on any ground that the third-party requester raised
or could have raised during reexamination. At the same time,
the third-party requester may assert invalidity based on newly
discovered prior art unavailable at the time of the
reexamination. Prior art was unavailable at the time of the
reexamination if it was not known to the individuals who were
involved in the reexamination proceeding on behalf of the
third-party requester and the PTO.
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\14\ See 28 U.S.C. Sec. 1338.
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Title V creates a new Sec. 308 which sets forth certain
conditions by which reexamination is prohibited to prevent
harassment of a patent holder. In general, once an order for
reexamination has been issued, neither a third-party requester
nor the patent owner may file a subsequent request for
reexamination until a reexamination certificate is issued and
published, unless the Director orders otherwise. Further, if a
third-party requester asserts patent invalidity in a civil
action and a final decision is entered that the party failed to
prove the assertion of invalidity, or if a final decision in a
reexamination instituted by the requester is favorable to
patentability, after any appeals, that third-party requester
cannot thereafter request reexamination on the basis of issues
which were or which could have been raised. However, the third-
party requester may assert invalidity based on newly discovered
prior art unavailable at the time of the civil action or
reexamination. Prior art was unavailable at the time if it was
not known to the individuals who were involved in the civil
action or reexamination proceeding on behalf of the third-party
requester and the PTO.
Proposed Sec. 309 gives a patent owner the right, once
reexamination has been ordered, to obtain a stay of any pending
litigation involving an issue of patentability of any claims of
the patent that are the subject of the reexamination, unless
the court determines that the stay would not serve the
interests of justice.
Sec. 504. Conforming amendments. Section 504 makes the
following conforming amendments to the Patent Act:
A patent owner must pay a fee of $1,210 for each petition
in connection with an unintentionally delayed response by the
patent owner during a reexamination.
A patent applicant, any of whose claims has been twice
rejected; a patent owner in a reexamination proceeding; and a
third-party requester may all appeal final adverse decisions
from a primary examiner to the Board of Patent Appeals and
Interferences.
Proposed Sec. 141 states that either a patent owner or a
third-party requester in a reexamination proceeding may appeal
an adverse decision by the Board of Patent Appeals and
Interferences only to the U.S. Court of Appeals for the Federal
Circuit (and not to a U.S. district court).
The Director is required pursuant to Sec. 143 (proceedings
on appeal to the Federal Circuit) to submit to the court the
grounds for the PTO decision in any reexamination, as well as
in any ex parte case, addressing all the issues involved in the
appeal.
Sec. 505. Report to Congress. Five years after the
effective date of Title V, the Director must submit to Congress
a report evaluating whether the reexamination proceedings set
forth in the Title are inequitable to any of the parties in
interest and, if so, the report shall contain recommendations
for change to eliminate the inequity.
Sec. 506. Estoppel Effect of Reexamination. Section 506
estops any party who requests reexamination from challenging at
a later time, in any civil action, any fact determined during
the process of the reexamination. The estoppel arises after a
final decision in the reexamination or a final decision in any
appeals of the reexamination. If Sec. 506 is held to be
unenforceable, the enforcability of the rest of title V or the
Act is not affected.
Sec. 507. Effective date. Title V shall take effect on the
date that is one year after the date of enactment and shall
apply to all reexamination requests filed on or after such
date.
Title VI--Patent and Trademark Office
Generally. Title VI establishes the PTO as an agency of the
United States within the Department of Commerce. The Secretary
of Commerce gives policy direction to the agency, but the
agency itself is responsible for the management and
administration of operations and has independent control of
budget allocations and expenditures, personnel decisions and
processes, and procurement. The Committee intends that the
Office will conduct its patent and trademark operations without
micro-management by Department of Commerce officials, with the
exception of policy guidance of the Secretary. The agency is
headed by an Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark
Office, a Deputy, and a Commissioner of Patents and a
Commissioner of Trademarks. The agency is exempt from
government-wide personnel ceilings. A patent public advisory
committee and a trademark public advisory committee are
established to advise the Director on agency policies, goals,
performance, budget and user fees.
Sec. 601. Short title. Title VI 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 611 establishes the PTO as an agency of the United
States within the Department of Commerce and under the policy
direction of the Secretary of Commerce. The PTO is explicitly
responsible for decisions regarding the management and
administration of its operations and has independent control of
budget allocations and expenditures, personnel decisions and
processes, procurements, and other administrative and
management functions. Patent operations and trademark
operations are to be treated as separate operating units within
the Office.
The PTO shall maintain its principal office in the
metropolitan Washington, D.C., area, for the service of process
and papers and for the purpose of discharging its functions.
For purposes of venue in civil actions, the agency is deemed to
be a resident of the district in which its principal office is
located, except where otherwise provided by law. The PTO is
also permitted to establish satellite offices in such other
places in the United States as it considers necessary and
appropriate to conduct business.
Sec. 612. Powers and duties. Subject to the policy
direction of the Secretary of the Commerce, in general the PTO
will be responsible for granting and issuing patents, the
registration of trademarks, and the dissemination of patent and
trademark information to the public.
The PTO will also possess specific powers, which include:
(1) La requirement to adopt and use an Office seal for
judicial notice purposes and for authenticating
patents, trademark certificates and papers issued by
the Office;
(2) Lthe authority to establish regulations, not
inconsistent with law, that
(A) Lgovern the conduct of PTO proceedings
within the Office,
(B) Lshall be made after notice and opportunity
for full participation by interested public and
private parties,
(C) Lfacilitate and expedite the processing of
patent applications, particularly those which
can be processed electronically,
(D) Lgovern the recognition, conduct, and
qualifications of agents, attorneys, or other
persons representing applicants or others
before the PTO,
(E) Lrecognize the public interest in ensuring
that the patent system retain a reduced fee
structure for small entities, and
(F) Lprovide for the development of a
performance-based process for managing that
includes quantitative and qualitative measures,
standards for evaluating cost-effectiveness,
and consistency with principles of impartiality
and competitiveness;
(3) Lthe authority to acquire, construct, purchase,
lease, hold, manage, operate, improve, alter and
renovate any real, personal, or mixed property as it
considers necessary to discharge its functions;
(4) Lthe authority to make purchases of property,
contracts for construction, maintenance, or management
and operation of facilities, as well as to contract for
and purchase printing services without regard to those
federal laws which govern such proceedings;
(5) Lthe authority to use services, equipment,
personnel, facilities and equipment of other federal
entities, with their consent and on a reimbursable
basis;
(6) Lthe authority to use, with the consent of the
United States and the agency, government, or
international organization concerned, the services,
records, facilities or personnel of any State or local
government agency or foreign government or
international organization to perform functions on its
behalf;
(7) Lthe authority to retain and use all of its
revenues and receipts;
(8) La requirement to promote exports of goods and
services of the United States industries that rely on
intellectual property, this activity being undertaken
in coordination with the Under Secretary of Commerce
for International Trade;
(9) La requirement to advise the President, through
the Secretary of Commerce, on national and certain
international intellectual property policy issues;
(10) La requirement to advise Federal departments and
agencies of intellectual property policy in the United
States and intellectual property protection abroad;
(11) La requirement to provide guidance regarding
proposals offered by agencies to assist foreign
governments and international intergovernmental
organizations on matters of intellectual property
protection;
(12) Lthe authority to conduct programs, studies or
exchanges regarding domestic or international
intellectual property law and the effectiveness of
intellectual property protection domestically and
abroad;
(13) La requirement to advise the Secretary of Commerce
on any programs and studies relating to intellectual
property policy that the PTO may conduct or is
authorized to conduct, cooperatively with foreign
intellectual property offices and international
intergovernmental organizations; and
(14) Lthe authority to (A) coordinate with the
Department of State in conducting programs and studies
cooperatively with foreign intellectual property
offices and international intergovernmental
organizations, and (B) transfer, with the concurrence
of the Secretary of State, up to $100,000 in any year
to the Department of State to pay an international
intergovernmental organization for studies and programs
advancing international cooperation concerning patents,
trademarks, and other matters.
The specific powers set forth in new subsection (b) are
clarified in new subsection (c). The special payments of
paragraph (14)(B) are additional to other payments or
contributions and are not subject to any limitation imposed by
law. Nothing in subsection (b) derogates from the duties of the
Secretary of State or the United States Trade Representative as
set forth in Sec. 141 of the Trade Act of 1974 \15\, nor
derogates from the duties and functions of the Register of
Copyrights. The Director is required to consult with the
Administrator of General Services when exercising authority
under paragraphs (3) and (4)(A). Finally, nothing in Sec. 612
may 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 PTO.
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\15\ 19 U.S.C. Sec. 2171.
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Sec. 613. Organization and management. Section 613 details
the organization and management of the agency. The powers and
duties of the PTO shall be vested in the Director, who shall be
appointed by the President, by and with the consent of the
Senate. The Director performs two main functions. As Under
Secretary of Commerce for Intellectual Property, she serves as
the policy advisor to the Secretary of Commerce on intellectual
property issues. As Director, she is responsible for the
management and direction of the PTO. She shall consult with the
Public Advisory Committees, infra, on a regular basis regarding
operations of the agency and before submitting budgetary
proposals and fee or regulation changes. The Director shall
take an oath of office, and will maintain a program for
identifying national security positions and providing the
appropriate clearances. In addition to receiving a basic rate
of compensation as prescribed in 5 U.S.C. Sec. 5314, the
Director may receive a bonus of up to 50 percent of the
Director's annual rate of pay, based on an evaluation by the
Secretary of Commerce as defined in an annual performance
agreement developed between the two. Under no condition may the
Director's combined salary and bonus exceed the salary of the
President. The President may remove the Director from office,
but must provide notification, including an explanation of any
such removal, to both houses of Congress.
The Director shall appoint a Deputy Director to act in the
capacity of the Director if the Director is absent or
incapacitated. The Secretary of Commerce shall appoint two
Commissioners, one for Patents, the other for Trademarks. The
Commissioners will have five-year terms and may be reappointed
to new terms by the Secretary. Each Commissioner shall possess
a demonstrated experience in patent and trademark law,
respectively; and they shall be responsible for the management
and direction of the patent and trademark operations,
respectively. In addition to receiving a basic rate of
compensation under the Senior Executive Service \16\ and a
locality payment, the Commissioners may receive bonuses of up
to 50 percent of their annual basic rate of compensation based
on a performance evaluation by the Secretary, acting through
the Director. The Secretary may remove Commissioners for
misconduct or unsatisfactory performance.
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\16\ 28 U.S.C. Sec. 5382.
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The Director may also appoint other officers, agents, and
employees as she sees fit, and define their responsibilities
with equal discretion. The PTO is specifically not subject to
any administratively or statutorily imposed limits (full-time
equivalents, or ``FTEs'') on positions or personnel.
The PTO is charged with developing an incentive program to
retain senior (of the primary examiner grade or higher) patent
and trademark examiners eligible for retirement for the sole
purpose of training patent and trademark examiners.
The PTO will be subject to all provisions of title 5 of the
U.S. Code governing federal employees. All relevant labor
agreements which are in effect the day before enactment of
Title VI shall be adopted by the agency. All PTO employees as
of the day before the effective date of Title VI shall remain
officers and employees of the agency without a break in service
or changes in their accumulated leave or compensatory time
accounts. Other personnel of the Department of Commerce shall
be transferred to the PTO if a major function of their work is
reimbursed by the PTO, they spend at least half of their work
time in support of the PTO, or a transfer to the PTO would be
in the interest of the agency, as determined by the Secretary
of Commerce in consultation with the Director.
On or after the effective date of the Act, the President
shall appoint an individual to serve as Director until a
Director qualifies under subsection (a). The persons serving as
the Assistant Commissioner for Patents and the Assistant
Commissioner for Trademarks on the day before the effective
date of the Act may serve as the Commissioner for Patents and
the Commissioner for Trademarks, respectively, until a
respective Commissioner is appointed under subsection (b)(2).
Sec. 614. Public Advisory Committees. Section 614 provides
a new section 5 of the Patent Act which establishes a Patent
Public Advisory Committee and a Trademark Public Advisory
Committee. Each Committee has nine voting members with three-
year terms appointed by and serving at the pleasure of the
Secretary of Commerce. Initial appointments will be made within
three months of the effective date of the Act; and three of the
initial appointees will receive one-year terms, three will
receive two-year terms, and three will receive full terms.
Vacancies will be filled within three months. The Secretary
will also designate chairpersons for three-year terms.
The members of the Committees will be U.S. citizens and
will be chosen to represent the interests of users. The Patent
Public Advisory Committee shall have members who represent
small and large entity applicants in the United States in
proportion to the number of applications filed by the small and
large entity applicants. In no case shall the small entity
applicants be represented by less than 25 percent of the
members of the Patent Public Advisory Committee. The members of
both Committees shall include individuals with substantial
background and achievement in finance, management, labor
relations, science, technology, and office automation. Each
labor organization recognized by the PTO shall be represented
on the Committees by a non-voting member.
The Committees meet at the call of the chair to consider an
agenda established by the chair. Each Committee reviews the
policies, goals, performance, budget, and user fees that bear
on its area of concern and advises the Director on these
matters. Within 60 days of the end of a fiscal year, the
Committees prepare annual reports, transmit the reports to the
Secretary of Commerce, the President, and the Committees on the
Judiciary of the Congress, and publish the reports in the
Official Gazette of the PTO.
Members of the Committees are compensated at a defined
daily rate for meeting and travel days. Members are provided
access to PTO records and information other than personnel or
other privileged information including that concerning patent
applications. Members are special Government employees within
the meaning of Sec. 202 of title 18. The Federal Advisory
Committee Act shall not apply to the Committees. Finally,
Sec. 614 provides that Committee meetings shall be open to the
public unless by a majority vote the Committee meets in
executive session to consider personnel or other confidential
information.
Sec. 615. Patent and Trademark Office funding. Pursuant to
Sec. 42(c) of the Patent Act, fees available to the
Commissioner under Sec. 31 of the Trademark Act of 1946 \17\
may be used only for the processing of trademark registrations
and for other trademark-related activities, and to cover a
proportionate share of the administrative costs of the PTO. In
an effort to more tightly ``fence'' trademark funds for
trademark purposes, Sec. 615 amends this language such that all
(trademark) fees available to the Commissioner shall be used
for trademark registration and other trademark-related
purposes. In other words, the Commissioner may exercise no
discretion when spending funds; they must be earmarked for
trademark purposes.
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\17\ 15 U.S.C. Sec. 1051, et seq.
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Sec. 616. Conforming amendments. Technical conforming
amendments (repeals) to the Patent Act are set forth in
Sec. 616.
Sec. 617. Trademark Trial and Appeal Board. Section 617
amends Sec. 17 of the Trademark Act of 1946 by specifying that
the Director shall give notice to all affected parties and
shall direct a Trademark Trial and Appeal Board to determine
the respective rights of those parties before it in a relevant
proceeding. The section also invests the Director with the
power of appointing administrative trademark judges to the
Board. The Director, the Commissioner of Trademarks, the
Commissioner of Patents, and the administrative trademark
judges shall serve on the Board.
Sec. 618. Board of Patent Appeals and Interferences. Under
existing Sec. 7 of the Patent Act, the Commissioner, Deputy
Commissioner, Assistant Commissioners, and the examiners-in-
chief constitute the Board of Patent Appeals and Interferences.
Pursuant to Sec. 618 of Title VI, the Board is comprised of the
Director, the Commissioner for Patents, the Commissioner for
Trademarks, and the administrative patent judges. In addition,
the existing statute allows each appellant a hearing before
three members of the Board who are designated by the
Commissioner. Section 618 empowers the Director with this
authority.
Sec. 619. Annual report of Director. No later than 180 days
after the end of each fiscal year, the Director must provide a
report to Congress detailing funds received and expended by the
PTO, the purposes for which the funds were spent, the quality
and quantity of PTO work, the nature of training provided to
examiners, the evaluations of the Director and the
Commissioners by the Secretary of Commerce, the Director's and
Commissioners' compensation, and other information relating to
the agency.
Sec. 620. Suspension or exclusion from practice. Under
existing Sec. 32 of the Patent Act, the Commissioner (the
Director pursuant to Sec. 632 of this Act) has the authority,
after notice and a hearing, to suspend or exclude from further
practice before the PTO any person who is incompetent,
disreputable, indulges in gross misconduct or fraud, or is
noncompliant with PTO regulations. Section 620 permits the
Director to designate an attorney who is an officer or employee
of the PTO to conduct a hearing under Sec. 32.
Section 621. Pay of Director. Section 621 replaces the
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks with the Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent
and Trademark Office to receive pay at Level III of the
Executive Schedule.\18\
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\18\ 5 U.S.C. Sec. 5314.
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Subtitle B--Effective Date; Technical Amendments
Sec. 631. Effective date. The effective date of Title VI is
four months after the date of enactment.
Section 632. Technical and conforming amendments. Section
632 sets forth numerous technical and conforming amendments
related to Title VI.
Subtitle C--Miscellaneous Provisions
Sec. 641. References. Section 641 clarifies that any
reference to the transfer of a function from a department or
office to the head of such department or office means the head
of such department or office to which the function is
transferred. In addition, references in other federal materials
to the Commissioner of Patents and Trademarks refers, upon
enactment, to the Director of the United States Patent and
Trademark Office. Similarly, references to the Assistant
Commissioner for Patents is deemed to refer to the Commissioner
for Patents and references to the Assistant Commissioner for
Trademarks is deemed to refer to the Commissioner for
Trademarks.
Sec. 642. Exercise of authorities. Under Sec. 642, except
as otherwise provided by law, a federal official to whom a
function is transferred pursuant to Title VI may exercise all
authorities under any other provision of law that were
available regarding the performance of that function to the
official empowered to perform that function immediately before
the date of the transfer (of the function).
Sec. 643. Savings provisions. Relevant legal documents that
relate to a function which is transferred by Title VI, and
which are in effect on the date of such transfer, shall
continue in effect according to their terms unless later
modified or repealed in an appropriate manner. Applications or
proceedings concerning any benefit, service, or license pending
on the effective date of Title VI before an office transferred
shall not be affected, and shall continue thereafter, but may
later be modified or repealed in the appropriate manner.
Title VI will not affect suits commenced before the
effective date of passage. Suits or actions by or against the
Department of Commerce, its employees, or the Secretary shall
not abate by reason of enactment of Title VI. Suits against a
relevant government officer in her official capacity shall
continue post enactment, and if a function has transferred to
another officer by virtue of enactment, that other officer
shall substitute as the defendant. Finally, administrative and
judicial review procedures that apply to a function transferred
shall apply to the head of the relevant federal agency and
other officers to which the function is transferred.
Sec. 644. Transfer of assets. Section 644 states that all
available personnel, property, records, and funds related to a
function transferred pursuant to Title VI shall be made
available to the relevant official or head of the agency to
which the function transfers at such time or times as the
Director of the Office of Management and Budget (OMB) directs.
Sec. 645. Delegation and assignment. Section 645 allows an
official to whom a function is transferred under Title VI to
delegate that function to another officer or employee. The
official to whom the function was originally transferred
nonetheless remains responsible for the administration of the
function.
Sec. 646. Authority of Director of the Office of Management
and Budget with respect to functions transferred.
Pursuant to Sec. 646, if necessary the Director of OMB
shall make any determination of the functions transferred
pursuant to Title VI.
Sec. 647. Certain vesting of functions considered
transfers. Section 647 states that the vesting of a function in
a department or office pursuant to reestablishment of an office
shall be considered to be the transfer of that function.
Sec. 648. Availability of existing funds. Under Sec. 648,
existing appropriations and funds available for the performance
of functions and other activities terminated pursuant to Title
VI shall remain available (for the duration of their period of
availability) for necessary expenses in connection with the
termination and resolution of such functions and activities,
subject to the submission of a plan to House and Senate
appropriators in accordance with Public Law 105-277
(Departments of Commerce, Justice, and State, the Judiciary and
Related Agencies Appropriations Act, Fiscal Year 1999).
Sec. 649. Definitions. Function includes any duty,
obligation, power, authority, responsibility, right, privilege,
activity, or program.
Office includes any office, administration, agency, bureau,
institute, council, unit, organizational entity, or component
thereof.
Title VII--Miscellaneous Patent Provisions
Generally. Title VII consists of seven largely-unrelated
provisions that make needed clarifying and technical changes to
the Patent Act . Title VII also authorizes a study. The
provisions in Title VII take effect on the date of enactment
except where stated otherwise in certain sections.
Sec. 701. Provisional applications. Section 701 amends
Sec. 111(b)(5) of the Patent Act by permitting a provisional
application to be treated as a non-provisional application. The
applicant must make a request within 12 months after the filing
date of the provisional application for it to be treated as a
non-provisional application.
Section 701 also amends Sec. 119(e) of the Patent Act by
clarifying the treatment of a provisional application when its
last day of pendency falls on a weekend or a Federal holiday,
and by eliminating the requirement that a provisional
application must be co-pending with a non-provisional
application if the provisional application is to be relied on
in any PTO proceeding.
Sec. 702. International applications. Section 702 amends
Sec. 119(a) of the Patent Act to permit persons who filed an
application for patent first in a WTO \19\ member country to
claim the right of priority in a subsequent patent application
filed in the United States, even if such country does not yet
afford similar privileges on the basis of applications filed in
the United States. This amendment was made in conformity with
the requirements of Articles 1 and 2 of the TRIPS
Agreement.\20\ These Articles require that WTO member countries
apply the substantive provisions of the Paris Convention for
the Protection of Industrial Property to other WTO member
countries. As some WTO member countries are not yet members of
the Paris Convention, and as developing countries are permitted
periods of up to 10 years before complying with all provisions
of the TRIPS Agreement, they are not required to extend the
right of priority to other WTO member countries until such
time.
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\19\ World Trade Organization. The agreement establishing the WTO
is a multilateral instrument which creates a permanent organization to
oversee the implementation of the Uruguay Round Agreements, including
the GATT 1994, to provide a forum for multilateral trade negotiations
and to administer dispute settlements (see note 3, supra). Staff of the
House Comm. on Ways and Means, 104th Cong., 1st Sess., Overview and
Compilation of U.S. Trade Statutes 1040 (Comm. Print 1995).
\20\ Trade-Related Aspects of Intellectual Property Rights
Agreement; i.e., that component of GATT which addresses intellectual
property rights among the signatory members.
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Section 702 also adds subsection (f) to Sec. 119 of the
Patent Act to provide for the right of priority in the United
States on the basis of an application for a plant breeder's
right first filed in a WTO member country or in a UPOV \21\
Contracting Party. Many foreign countries provide only a sui
generis system of protection for plant varieties. Because
Sec. 119 presently addresses only patents and inventors'
certificates, applicants from those countries are technically
unable to base a priority claim on a foreign application for a
plant breeder's right when seeking plant patent or utility
protection for a plant variety in this country.
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\21\ International Convention for the Protection of New Varieties
of Plants. UPOV is administered by the World Intellectual Property
Organization (WIPO), which is charged with the administration of, and
activities concerning revisions to, the international intellectual
property treaties. UPOV has 40 members, and guarantees plant breeders
national treatment and right of priority in other countries that are
members of the treaty, along with certain other benefits. See M.A.
Leaffer, International Treaties on Intellectual Property at 47 (BNA, 2d
ed. 1997).
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Subsection (g) is added to Sec. 119 to define the terms
``WTO member country'' and ``UPOV Contracting Party.''
Sec. 703. Certain limitations on remedies for patent
infringement not applicable. Section 703 amends Sec. 287(c)(4)
of the Patent Act, which pertains to certain limitations on
remedies for patent infringement, to make it applicable to
applications filed on or after September 30, 1996.
Sec. 704. Electronic filing. Section 704 amends Sec. 22 of
the Patent Act to clarify that the PTO may receive information
in electronic form.
Sec. 705. Study and report on biologic deposits in support
of biotechnology patents. Section 705 charges the Comptroller
General, in consultation with the PTO Director, with conducting
a study and submitting a report to Congress no later than six
months after the date of enactment on the potential risks to
the U.S. biotechnological industry regarding biological
deposits in support of biotechnology patents. The study shall
include: an examination of the risk of export and of transfers
to third parties of biological deposits, and the risks posed by
the 18-month publication requirement of Title IV; an analysis
of comparative legal and regulatory regimes; and any related
recommendations. The PTO is then charged with considering these
recommendations when drafting regulations affecting biological
deposits.
Sec. 706. Prior invention. Section 706 amends Sec. 102(g)
of the Patent Act to make clear that an inventor who is
involved in a PTO interference proceeding by operation of
Sec. 104 is subject to the requirements of Sec. 102(g),
including the requirement that the invention was not abandoned,
suppressed, or concealed.
Sec. 707. Prior art exclusion for certain commonly assigned
patents. Section 707 amends Sec. 103 of the Patent Act, which
sets forth patentability conditions related to the
nonobviousness of subject matter. Section 103(c) of the current
statute states that subject matter developed by another person
which qualifies as prior art only under Sec. 102(f) or (g)
shall not preclude granting a patent on an invention with only
obvious differences where the subject matter and claimed
invention were, at the time the invention was made, owned by
the same person or subject to an obligation of assignment to
the same person. The bill amends Sec. 103(c) by adding a
reference to Sec. 102(e), which currently bars the granting of
a patent if the invention was described in another patent
granted on an application filed before the applicant's date of
invention. The effect of the amendment is to allow an applicant
to receive a patent when an invention with only obvious
differences from the applicant's invention was described in a
patent granted on an application filed before the applicant's
invention, provided the inventions are commonly owned or
subject to an obligation of assignment to the same person.
Changes in Existing Law Made by the Bill, as Reported
In compliance with clause 3(e) of rule XIII of the Rules of
the House of Representatives, changes in existing law made by
the bill, as reported, are shown as follows (existing law
proposed to be omitted is enclosed in black brackets, new
matter is printed in italics, existing law in which no change
is proposed is shown in roman):
TITLE 35, UNITED STATES CODE
Part Sec.
Patent and Trademark Office.....................................1]
1 Establishment, Officers and Employees, Functions..................
* * * * * * *
[PART I--PATENT AND TRADEMARK OFFICE]
PART I--UNITED STATES PATENT AND TRADEMARK OFFICE
Chap. Sec.
Establishment, Officers, Functions..............................1]
1 Establishment, Officers and Employees, Functions..................
* * * * * * *
[CHAPTER 1--ESTABLISHMENT, OFFICERS, FUNCTIONS
[Sec.
[1. Establishment.
[2. Seal.
[3. Officers and employees.
[4. Restrictions on officers and employees as to interest in patents.
[6. Duties of Commissioner.
[7. Board of Patent Appeals and Interferences.
[8. Library.
[9. Classification of patents.
[10. Certified copies of records.
[11. Publications.
[12. Exchange of copies of patents with foreign countries.
[13. Copies of patents for public libraries.
[14. Annual report to Congress.
[Sec. 1. Establishment
[The Patent and Trademark Office shall continue as an
office in the Department of Commerce, where records, books,
drawings, specifications, and other papers and things
pertaining to patents and to trademark registrations shall be
kept and preserved, except as otherwise provided by law.
[Sec. 2. Seal
[The Patent and Trademark Office shall have a seal with
which letters patent, certificates of trade-mark registrations,
and papers issued from the Office shall be authenticated.
[Sec. 3. Officers and employees
[(a) There shall be in the Patent and Trademark Office a
Commissioner of Patents and Trademarks, a Deputy Commissioner,
two Assistant Commissioners, and examiners-in-chief appointed
under section 7 of this title. The Deputy Commissioner, or, in
the event of a vacancy in that office, the Assistant
Commissioner senior in date of appointment shall fill the
office of Commissioner during a vacancy in that office until
the Commissioner is appointed and takes office. The
Commissioner of Patents and Trademarks, the Deputy
Commissioner, and the Assistant Commissioners shall be
appointed by the President, by and with the advice and consent
of the Senate. The Secretary of Commerce, upon the nomination
of the Commissioner, in accordance with law shall appoint all
other officers and employees.
[(b) The Secretary of Commerce may vest in himself the
functions of the Patent and Trademark Office and its officers
and employees specified in this title and may from time to time
authorize their performance by any other officer or employee.
[(c) The Secretary of Commerce is authorized to fix the per
annum rate of basic compensation of each examiner-in-chief in
the Patent and Trademark Office at not in excess of the maximum
scheduled rate provided for positions in grade 17 of the
General Schedule of the Classification Act of 1949, as amended.
[(d) The Commissioner of Patents and Trademarks shall be an
Assistant Secretary of Commerce and shall receive compensation
at the rate in effect for level III of the Executive Schedule
under section 5314 of title 5, United States Code.
[(e) The members of the Trademark Trial and Appeal Board of
the Patent and Trademark Office shall each be paid at a rate
not to exceed the maximum rate of basic pay payable for GS-16
of the General Schedule under section 5332 of title 5.]
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 Committee.
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.
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. 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 after notice and
opportunity for full participation by
interested public and private parties;
(C) shall facilitate and expedite the
processing of patent applications, particularly
those which can be filed, stored, processed,
searched, and retrieved electronically, subject
to the provisions of section 122 relating to
the confidential status of applications;
(D) may govern the recognition and conduct
of agents, attorneys, or other persons
representing applicants or other parties before
the Office, and may require them, before being
recognized as representatives of applicants or
other persons, to show that they are of good
moral character and reputation and are
possessed of the necessary qualifications to
render to applicants or other persons valuable
service, advice, and assistance in the
presentation or prosecution of their
applications or other business before the
Office;
(E) shall recognize the public interest in
continuing to safeguard broad access to the
United States patent system through the reduced
fee structure for small entities under section
41(b)(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, government, or international organization
concerned, the services, records, facilities, or
personnel of any State or local government agency or
instrumentality or foreign government or international
organization to perform functions on its behalf;
(10) shall advise Federal departments and agencies
on matters of intellectual property policy in the
United States and intellectual property protection in
other countries;
(11) 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;
(12) 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;
(13)(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
(14)(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 paragraph (14)(B) shall be in addition to any
other payments or contributions to international organizations
described in paragraph (14)(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. 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 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 the Director shall be
responsible for providing policy direction and
management supervision for the Office.
(2) Duties.--
(A) In general.--The Director shall be
responsible for the supervision and direction
of the Office, including the issuance of
patents and the registration of trademarks, and
shall perform these duties in a fair,
impartial, and equitable manner.
(B) Consulting with the 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, as the case may be.
(C) Security clearances.--The Director, in
consultation with the Director of the Office of
Personnel Management, shall maintain a program
for identifying national security positions and
providing for appropriate security clearances.
(3) Oath.--The Director shall, before taking
office, take an oath to discharge faithfully the duties
of the Office.
(4) Compensation.--In addition to the Director's
pay as prescribed in section 5314 of title 5, the
Director may receive a bonus in an amount up to, but
not in excess of, 50 percent of the Director's annual
rate of pay, based upon an evaluation by the Secretary
of Commerce of the Director's performance as defined in
an annual performance agreement between the Director
and the Secretary. The annual performance agreement
shall incorporate measurable organization and
individual goals in key operational areas as delineated
in an annual performance plan agreed to by the Director
and the Secretary and made public in the annual report
of the Director. Payment of a bonus under this
paragraph may be made to the Director only to the
extent that such payment does not cause the Director's
total aggregate compensation in a calendar year to
equal or exceed the amount of the salary of the
President under section 102 of title 3.
(5) 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 Director shall appoint a Deputy Under Secretary of
Commerce 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 Under Secretary and Deputy Director of the
United States Patent and Trademark Office 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. 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,
United States Code, 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, United States Code,
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 President under section
102 of title 3.
(C) Removal.--The Commissioners may be
removed from office by the Secretary for
misconduct or nonsatisfactory performance under
the performance agreement described in
subparagraph (B). 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 Patent and
Trademark Office shall develop an incentive program to
retain as employees patent and trademark examiners of
the primary examiner grade or higher who are eligible
for retirement, for the sole purpose of training patent
and trademark examiners.
(c) Continued Applicability of Title 5.--Officers and
employees of the Office shall be subject to the provisions of
title 5 relating to Federal employees.
(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.
(3) Accumulated leave.--The amount of sick and
annual leave and compensatory time accumulated under
title 5 before the effective date described in
paragraph (1), by those becoming officers or employees
of the Office pursuant to this subsection, are
obligations of the Office.
(f) Transition Provisions.--
(1) Interim appointment of director.--On or after
the effective date of the Patent and Trademark Office
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. 4. Restrictions on officers and employees as to interest in
patents
Officers and employees of the Patent and Trademark Office
shall be incapable, during the period of their appointments and
for one year thereafter, of applying for a patent and of
acquiring, directly or indirectly, except by inheritance or
bequest, any patent or any right or interest in any patent,
issued or to be issued by the Office. In patents applied for
thereafter they shall not be entitled to any priority date
earlier than one year after the termination of their
appointment.
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 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
members, 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
(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 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 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 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 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 information.
[Sec. 6. Duties of Commissioner
[(a) The Commissioner, under the direction of the Secretary
of Commerce, shall superintend or perform all duties required
by law respecting the granting and issuing of patents and the
registration of trademarks; shall have the authority to carry
on studies, programs, or exchanges of items or services
regarding domestic and international patent and trademark law
or the administration of the Patent and Trademark Office,
including programs to recognize, identify, assess and forecast
the technology of patented inventions and their utility to
industry; and shall have charge of property belonging to the
Patent and Trademark Office. He may, subject to the approval of
the Secretary of Commerce, establish regulations, not
inconsistent with law, for the conduct of proceedings in the
Patent and Trademark Office.
[(b) The Commissioner, under the direction of the Secretary
of Commerce, may, in coordination with the Department of State,
carry on programs and studies cooperatively with foreign patent
offices and international intergovernmental organizations, or
may authorize such programs and studies to be carried on, in
connection with the performance of duties stated in subsection
(a) of this section.
[(c) The Commissioner, under the direction of the Secretary
of Commerce, may, with the concurrence of the Secretary of
State, transfer funds appropriated to the Patent and Trademark
Office, 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 related matters. These special
payments may be in addition to any other payments or
contributions to the international organization and shall not
be subject to any limitations imposed by law on the amounts of
such other payments or contributions by the Government of the
United States.
[Sec. 7. Board of Patent Appeals and Interferences
[(a) The examiners-in-chief shall be persons of competent
legal knowledge and scientific ability, who shall be appointed
to the competitive service. The Commissioner, the Deputy
Director, the Assistant Commissioners, and the examiners-in-
chief shall constitute the Board of Patent Appeals and
Interferences.
[(b) 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) of this title. Each appeal and
interference shall be heard by at least three members of the
Board of Patent Appeals and Interferences, who shall be
designated by the Commissioner. Only the Board of Patent
Appeals and Interferences has the authority to grant
rehearings.
[(c) Whenever the Commissioner considers it necessary, in
order to keep current the work of the Board of Patent Appeals
and Interferences, the Commissioner may designate any patent
examiner of the primary examiner grade or higher, having the
requisite ability, to serve as examiner-in-chief for periods
not exceeding six months each. An examiner so designated shall
be qualified to act as a member of the Board of Patent Appeals
and Interferences. Not more than one of the members of the
Board of Patent Appeals and Interferences hearing an appeal or
determining an interference may be an examiner so designated.
The Secretary of Commerce is authorized to fix the pay of each
designated examiner-in-chief in the Patent and Trademark Office
at not to exceed the maximum rate of basic pay payable for
grade GS-16 of the General Schedule under section 5332 of title
5. The rate of basic pay of each individual designated
examiner-in-chief shall be adjusted, at the close of the period
for which that individual was designated to act as examiner-in-
chief, to the rate of basic pay which that individual would
have been receiving at the close of such period if such
designation had not been made.]
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. [8.] 7. Library
The [Commissioner] Director shall maintain a library of
scientific and other works and periodicals, both foreign and
domestic, in the Patent and Trademark Office to aid the
officers in the discharge of their duties.
Sec. [9.] 8. Classification of patents
The [Commissioner] Director may revise and maintain the
classification by subject matter of United States letters
patent, and such other patents and printed publications as may
be necessary or practicable, for the purpose of determining
with readiness and accuracy the novelty of inventions for which
applications for patent are filed.
Sec. [10.] 9. Certified copies of records
The [Commissioner] Director may furnish certified copies of
specifications and drawings of patents issued by the Patent and
Trademark Office, and of other records available either to the
public or to the person applying therefor.
Sec. [11.] 10. Publications
(a) The [Commissioner] Director may print, or cause to be
printed, the following:
1. Patents and published applications for patents,
including specifications and drawings, together with copies of
the same. The Patent and Trademark Office may print the
headings of the drawings for patents for the purpose of
photolithography.
2. Certificates of trade-mark registrations, including
statements and drawings, together with copies of the same.
3. The Official Gazette of the United States Patent and
Trademark Office.
4. Annual indexes of patents and patentees, and of trade-
marks and registrants.
5. Annual volumes of decisions in patent and trade-mark
cases.
6. Pamphlet copies of the patent laws and rules of
practice, laws and rules relating to trade-marks, and circulars
or other publications relating to the business of the Office.
(b) The [Commissioner] Director may exchange any of the
publications specified in items 3, 4, 5, and 6 of subsection
(a) of this section for publications desirable for the use of
the Patent and Trademark Office.
Sec. [12.] 11. Exchange of copies of patents and applications with
foreign countries
The [Commissioner] Director may exchange copies of
specifications and drawings of United States patents and
published applications for patents for those of foreign
countries.
Sec. [13.] 12. Copies of patents and applications for public libraries
The [Commissioner] Director may supply printed copies of
specifications and drawings of patents and published
applications for patents to public libraries in the United
States which shall maintain such copies for the use of the
public, at the rate for each year's issue established for this
purpose in section 41(d) of this title.
Sec. [14. Annual report to Congress
[The Commissioner shall report to Congress annually the
moneys received and expended, statistics concerning the work of
the Office, and other information relating to the Office as may
be useful to the Congress or the public.]
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 Director and the Commissioners by the Secretary of
Commerce, the Director's and the Commissioners' compensation,
and other information relating to the Office.
CHAPTER 2--PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE
* * * * * * *
Sec. 21. Filing date and day for taking action
(a) The [Commissioner] Director may by rule prescribe that
any paper or fee required to be filed in the Patent and
Trademark Office will be considered filed in the Office on the
date on which it was deposited with the United States Postal
Service or would have been deposited with the United States
Postal Service but for postal service interruptions or
emergencies designated by the [Commissioner] Director.
(b) When the day, or the last day, for taking any action or
paying any fee in the United States Patent and Trademark Office
falls on Saturday, Sunday, or a Federal holiday within the
District of Columbia, the action may be taken, or the fee paid,
on the next succeeding secular or business day.
Sec. 22. Printing of papers filed
The [Commissioner] Director may require papers filed in the
Patent and Trademark Office to be [printed or typewritten]
printed, typewritten, or on an electronic medium.
Sec. 23. Testimony in Patent and Trademark Office cases
The [Commissioner] Director may establish rules for taking
affidavits and depositions required in cases in the Patent and
Trademark Office. Any officer authorized by law to take
depositions to be used in the courts of the United States, or
of the State where he resides, may take such affidavits and
depositions.
* * * * * * *
Sec. 25. Declaration in lieu of oath
(a) The [Commissioner] Director may by rule prescribe that
any document to be filed in the Patent and Trademark Office and
which is required by any law, rule, or other regulation to be
under oath may be subscribed to by a written declaration in
such form as the [Commissioner] Director may prescribe, such
declaration to be in lieu of the oath otherwise required.
(b) Whenever such written declaration is used, the document
must warn the declarant that willful false statements and the
like are punishable by fine or imprisonment, or both (18 U.S.C.
1001).
Sec. 26. Effect of defective execution
Any document to be filed in the Patent and Trademark Office
and which is required by any law, rule, or other regulation to
be executed in a specified manner may be provisionally accepted
by the [Commissioner] Director despite a defective execution,
provided a properly executed document is submitted within such
time as may be prescribed.
CHAPTER 3--PRACTICE BEFORE PATENT AND TRADEMARK OFFICE
Sec.
[31. Regulations for agents and attorneys.]
32. Suspension or exclusion from practice.
33. Unauthorized representation as practitioner.
[Sec. 31. Regulations for agents and attorneys
[The Commissioner, subject to the approval of the Secretary
of Commerce, may prescribe regulations governing the
recognition and conduct of agents, attorneys, or other persons
representing applicants or other parties before the Patent and
Trademark 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.]
Sec. 32. Suspension or exclusion from practice
The [Commissioner] Director may, after notice and
opportunity for a hearing, suspend or exclude, either generally
or in any particular case, from further practice before the
Patent and Trademark Office, any person, agent, or attorney
shown to be incompetent or disreputable, or guilty of gross
misconduct, or who does not comply with the regulations
established under section 31 of this title, or who shall, by
word, circular, letter, or advertising, with intent to defraud
in any manner, deceive, mislead, or threaten any applicant or
prospective applicant, or other person having immediate or
prospective business before the Office. The reasons for any
such suspension or exclusion shall be duly recorded. 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. The United States District Court for the District of
Columbia, under such conditions and upon such proceedings as it
by its rules determines, may review the action of the
[Commissioner] Director upon the petition of the person so
refused recognition or so suspended or excluded.
* * * * * * *
CHAPTER 4--PATENT FEES; FUNDING; SEARCH SYSTEMS
* * * * * * *
Sec. 41. Patent fees; patent and trademark search systems
(a) The [Commissioner] Director shall charge the following
fees:
(1) * * *
* * * * * * *
[(7) On filing each petition for the revival of an
unintentionally abandoned application for a patent or
for the unintentionally delayed payment of the fee for
issuing each patent, $1,210, unless the petition is
filed under section 133 or 151 of this title, in which
case the fee shall be $110.]
(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.
(8) For petitions for 1-month extensions of time to
take actions required by the [Commissioner] Director in
an application--
(A) [On] on filing a first petition, $110;
* * * * * * *
For the purpose of computing fees, a multiple dependent claim
referred to in section 112 of this title or any claim depending
therefrom shall be considered as separate dependent claims in
accordance with the number of claims to which reference is
made. Errors in payment of the additional fees may be rectified
in accordance with regulations of the [Commissioner] Director.
(b) The [Commissioner] Director shall charge the following
fees for maintaining in force all patents based on applications
filed on or after December 12, 1980:
(1) 3 years and 6 months after grant, $940.
(2) 7 years and 6 months after grant, $1,900.
(3) 11 years and 6 months after grant, $2,910.
Unless payment of the applicable maintenance fee is received in
the Patent and Trademark Office on or before the date the fee
is due or within a grace period of 6 months thereafter, the
patent will expire as of the end of such grace period. The
[Commissioner] Director may require the payment of a surcharge
as a condition of accepting within such 6-month grace period
the payment of an applicable maintenance fee. No fee may be
established for maintaining a design or plant patent in force.
(c)(1) The [Commissioner] Director may accept the payment
of any maintenance fee required by subsection (b) of this
section which is made within twenty-four months after the six-
month grace period if the delay is shown to the satisfaction of
the [Commissioner] Director to have been unintentional, or at
any time after the six-month grace period if the delay is shown
to the satisfaction of the [Commissioner] Director to have been
unavoidable. The [Commissioner] Director may require the
payment of a surcharge as a condition of accepting payment of
any maintenance fee after the six-month grace period. If the
[Commissioner] Director accepts payment of a maintenance fee
after the six-month grace period, the patent shall be
considered as not having expired at the end of the grace
period.
* * * * * * *
(d) The [Commissioner] Director shall establish fees for
all other processing, services, or materials relating to
patents not specified in this section to recover the estimated
average cost to the Office of such processing, services, or
materials, except that the [Commissioner] Director shall charge
the following fees for the following services:
(1) * * *
* * * * * * *
(e) The [Commissioner] Director may waive the payment of
any fee for any service or material related to patents in
connection with an occasional or incidental request made by a
department or agency of the Government, or any officer thereof.
The [Commissioner] Director may provide any applicant issued a
notice under section 132 of this title with a copy of the
specifications and drawings for all patents referred to in that
notice without charge.
(f) The fees established in subsections (a) and (b) of this
section may be adjusted by the [Commissioner] Director on
October 1, 1992, and every year thereafter, to reflect any
fluctuations occurring during the previous 12 months in the
Consumer Price Index, as determined by the Secretary of Labor.
Changes of less than 1 per centum may be ignored.
(g) No fee established by the [Commissioner] Director under
this section shall take effect until at least 30 days after
notice of the fee has been published in the Federal Register
and in the Official Gazette of the Patent and Trademark Office.
(h)(1) Fees charged under subsection (a) or (b) shall be
reduced by 50 percent with respect to their application to any
small business concern as defined under section 3 of the Small
Business Act, and to any independent inventor or nonprofit
organization as defined in regulations issued by the
[Commissioner of Patents and Trademarks] Director.
* * * * * * *
(i)(1) The [Commissioner] Director shall maintain, for use
by the public, paper or microform collections of United States
patents, foreign patent documents, and United States trademark
registrations arranged to permit search for and retrieval of
information. The [Commissioner] Director may not impose fees
directly for the use of such collections, or for the use of the
public patent or trademark search rooms or libraries.
(2) The [Commissioner] Director shall provide for the full
deployment of the automated search systems of the Patent and
Trademark Office so that such systems are available for use by
the public, and shall assure full access by the public to, and
dissemination of, patent and trademark information, using a
variety of automated methods, including electronic bulletin
boards and remote access by users to mass storage and retrieval
systems.
(3) The [Commissioner] Director may establish reasonable
fees for access by the public to the automated search systems
of the Patent and Trademark Office. If such fees are
established, a limited amount of free access shall be made
available to users of the systems for purposes of education and
training. The [Commissioner] Director may waive the payment by
an individual of fees authorized by this subsection upon a
showing of need or hardship, and if such a waiver is in the
public interest.
(4) The [Commissioner] Director shall submit to the
Congress an annual report on the automated search systems of
the Patent and Trademark Office and the access by the public to
such systems. The [Commissioner] Director shall also publish
such report in the Federal Register. The Commissioner shall
provide an opportunity for the submission of comments by
interested persons on each such report.
Sec. 42. Patent and Trademark Office funding
(a) All fees for services performed by or materials
furnished by the Patent and Trademark Office will be payable to
the [Commissioner] Director.
(b) All fees paid to the [Commissioner] Director and all
appropriations for defraying the costs of the activities of the
Patent and Trademark Office will be credited to the Patent and
Trademark Office Appropriation Account in the Treasury of the
United States.
(c) To the extent and in the amounts provided in advance in
appropriations Acts, fees authorized in this title or any other
Act to be charged or established by the [Commissioner] Director
shall be collected by and shall be available to the
[Commissioner] Director to carry out the activities of the
Patent and Trademark Office. [Fees] All fees available to the
[Commissioner] Director under section 31 of the Trademark Act
of 1946 [may] shall be used only for the processing of
trademark registrations and for other activities, services, and
materials relating to trademarks and to cover a proportionate
share of the administrative costs of the Patent and Trademark
Office.
(d) The [Commissioner] Director may refund any fee paid by
mistake or any amount paid in excess of that required.
* * * * * * *
CHAPTER 5--INVENTION PROMOTION SERVICES
Sec.
51. Definitions.
52. Contracting requirements.
53. Standard provisions for cover notice.
54. Reports to customer required.
55. Mandatory contract terms.
56. Remedies.
57. Records of complaints.
58. Fraudulent representation by an invention promoter.
59. Rule of construction.
Sec. 51. Definitions
For purposes of this chapter--
(1) the term ``contract for invention promotion
services'' means a contract by which an invention
promoter undertakes invention promotion services for a
customer;
(2) the term ``customer'' means any person, firm,
partnership, corporation, or other entity who enters
into a financial relationship or a contract with an
invention promoter for invention promotion services;
(3) the term ``invention promoter'' means any
person, firm, partnership, corporation, or other entity
who offers to perform or performs for, or on behalf of,
a customer any act described under paragraph (4), but
does not include--
(A) any department or agency of the Federal
Government or of a State or local government;
(B) any nonprofit, charitable, scientific,
or educational organization, qualified under
applicable State law or described under section
170(b)(1)(A) of the Internal Revenue Code of
1986; or
(C) any person duly registered with, and in
good standing before, the United States Patent
and Trademark Office acting within the scope of
that person's registration to practice before
the Patent and Trademark Office, except when
that person performs any act described in
subparagraph (B) or (C) of paragraph (4); 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--
(1) state in a written document, at the time a
customer enters into a contract forinvention 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 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.
PART II--PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
* * * * * * *
CHAPTER 10--PATENTABILITY OF INVENTIONS
* * * * * * *
Sec. 100. Definitions
When used in this title unless the context otherwise
indicates--
(a) * * *
* * * * * * *
(e) The term ``third-party requester'' means a person
requesting reexamination under section 302 of this title who is
not the patent owner.
* * * * * * *
Sec. 102. Conditions for patentability; novelty and loss of right to
patent
A person shall be entitled to a patent unless--
(a) * * *
* * * * * * *
[(e) the invention was described in a patent granted on an
application for patent by another filed in the United States
before the invention thereof by the applicant for patent, or on
an international application by another who has fulfilled the
requirements of paragraphs (1), (2), and (4) of section 371(c)
of this title before the invention thereof by the applicant for
patent, or]
(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
* * * * * * *
[(g) before the applicant's invention thereof the invention
was made in this country by another who had not abandoned,
suppressed, or concealed it. In determining priority of
invention 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.]
(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. 103. Conditions for patentability; non-obvious subject matter
(a) * * *
* * * * * * *
(c) Subject matter developed by another person, which
qualifies as prior art only under [subsection (f) or (g)] one
or more of subsections (e), (f), and (g) of section 102 of this
title, shall not preclude patentability under this section
where the subject matter and the claimed invention were, at the
time the invention was made, owned by the same person or
subject to an obligation of assignment to the same person.
Sec. 104. Invention made abroad
(a) In General.--
(1) * * *
* * * * * * *
(3) Use of information.--To the extent that any
information in a NAFTA country or a WTO member country
concerning knowledge, use, or other activity relevant
to proving or disproving a date of invention has not
been made available for use in a proceeding in the
Patent and Trademark Office, a court, or any other
competent authority to the same extent as such
information could be made available in the United
States, the [Commissioner] Director, court, or such
other authority shall draw appropriate inferences, or
take other action permitted by statute, rule, or
regulation, in favor of the party that requested the
information in the proceeding.
* * * * * * *
CHAPTER 11--APPLICATION FOR PATENT
Sec.
111. Application.
* * * * * * *
122. Confidential status of applications; publication of patent
applications.
Sec. 111. Application
(a) In General.--
(1) Written application.--An application for patent
shall be made, or authorized to be made, by the
inventor, except as otherwise provided in this title,
in writing to the [Commissioner] Director.
* * * * * * *
(3) Fee and oath.--The application must be
accompanied by the fee required by law. The fee and
oath may be submitted after the specification and any
required drawing are submitted, within such period and
under such conditions, including the payment of a
surcharge, as may be prescribed by the [Commissioner]
Director.
(4) Failure to submit.--Upon failure to submit the
fee and oath within such prescribed period, the
application shall be regarded as abandoned, unless it
is shown to the satisfaction of the [Commissioner]
Director that the delay in submitting the fee and oath
was unavoidable or unintentional. The filing date of an
application shall be the date on which the
specification and any required drawing are received in
the Patent and Trademark Office.
(b) Provisional Application.--
(1) Authorization.--A provisional application for
patent shall be made or authorized to be made by the
inventor, except as otherwise provided in this title,
in writing to the [Commissioner] Director. Such
application shall include--
(A) * * *
* * * * * * *
(3) Fee.--(A) The application must be accompanied
by the fee required by law.
(B) The fee may be submitted after the
specification and any required drawing are submitted,
within such period and under such conditions, including
the payment of a surcharge, as may be prescribed by the
[Commissioner] Director.
(C) Upon failure to submit the fee within such
prescribed period, the application shall be regarded as
abandoned, unless it is shown to the satisfaction of
the [Commissioner] Director that the delay in
submitting the fee was unavoidable or unintentional.
* * * * * * *
[(5) Abandonment.--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.]
(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.
(6) Other basis for provisional application.--
Subject to all the conditions in this subsection and
section 119(e) of this title, and as prescribed by the
[Commissioner] Director, an application for patent
filed under subsection (a) may be treated as a
provisional application for patent.
* * * * * * *
Sec. 113. Drawings
The applicant shall furnish a drawing where necessary for
the understanding of the subject matter sought to be patented.
When the nature of such subject matter admits of illustration
by a drawing and the applicant has not furnished such a
drawing, the [Commissioner] Director may require its submission
within a time period of not less than two months from the
sending of a notice thereof. Drawings submitted after the
filing date of the application may not be used (i) to overcome
any insufficiency of the specification due to lack of an
enabling disclosure or otherwise inadequate disclosure therein,
or (ii) to supplement the original disclosure thereof for the
purpose of interpretation of the scope of any claim.
Sec. 114. Models, specimens
The [Commissioner] Director may require the applicant to
furnish a model of convenient size to exhibit advantageously
the several parts of his invention.
When the invention relates to a composition of matter, the
[Commissioner] Director may require the applicant to furnish
specimens or ingredients for the purpose of inspection or
experiment.
* * * * * * *
Sec. 116. Inventors
* * * * * * *
If a joint inventor refuses to join in an application for
patent or cannot be found or reached after diligent effort, the
application may be made by the other inventor on behalf of
himself and the omitted inventor. The [Commissioner] Director,
on proof of the pertinent facts and after such notice to the
omitted inventor as he prescribes, may grant a patent to the
inventor making the application, subject to the same rights
which the omitted inventor would have had if he had been
joined. The omitted inventor may subsequently join in the
application.
Whenever through error a person is named in an application
for patent as the inventor, or through error an inventor is not
named in an application, and such error arose without any
deceptive intention on his part, the [Commissioner] Director
may permit the application to be amended accordingly, under
such terms as he prescribes.
* * * * * * *
Sec. 118. Filing by other than inventor
Whenever an inventor refuses to execute an application for
patent, or cannot be found or reached after diligent effort, a
person to whom the inventor has assigned or agreed in writing
to assign the invention or who otherwise shows sufficient
proprietary interest in the matter justifying such action, may
make application for patent on behalf of and as agent for the
inventor on proof of the pertinent facts and a showing that
such action is necessary to preserve the rights of the parties
or to prevent irreparable damage; and the [Commissioner]
Director may grant a patent to such inventor upon such notice
to him as the [Commissioner] Director deems sufficient, and on
compliance with such regulations as he prescribes.
Sec. 119. Benefit of earlier filing date; right of priority
(a) An application for patent for an invention filed in
this country by any person who has, or whose legal
representatives or assigns have, previously regularly filed an
application for a patent for the same invention in a WTO member
country or in a foreign country which affords similar
privileges in the case of applications filed in such WTO member
country or the United States or to citizens of the United
States, shall have the same effect as the same application
would have if filed in this country on the date on which the
application for patent for the same invention was first filed
in such foreign country, if the application in this country is
filed within twelve months from the earliest date on which such
foreign application was filed; but no patent shall be granted
on any application for patent for an invention which had been
patented or described in a printed publication in any country
more than one year before the date of the actual filing of the
application in this country, or which had been in public use or
on sale in this country more than one year prior to such
filing.
[(b) No application for patent shall be entitled to this
right of priority unless a claim therefor and a certified copy
of the original foreign application, specification and drawings
upon which it is based are filed in the Patent and Trademark
Office before the patent is granted, or at such time during the
pendency of the application as required by the Commissioner not
earlier than six months after the filing of the application in
this country. Such certification shall be made by the patent
office of the foreign country in which filed and show the date
of the application and of the filing of the specification and
other papers. The Commissioner may require a translation of the
papers filed if not in the English language and such other
information as he deems necessary.]
(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.
(c) In like manner and subject to the same conditions and
requirements, the right provided in this section may be based
upon a subsequent regularly filed application in the same WTO
member country or foreign country instead of the first filed
foreign application, provided that any foreign application
filed prior to such subsequent application has been withdrawn,
abandoned, or otherwise disposed of, without having been laid
open to public inspection and without leaving any rights
outstanding, and has not served, nor thereafter shall serve, as
a basis for claiming a right of priority.
* * * * * * *
(e)(1) An application for patent filed under section 111(a)
or section 363 of this title for an invention disclosed in the
manner provided by the first paragraph of section 112 of this
title in a provisional application filed under section 111(b)
of this title, by an inventor or inventors named in the
provisional application, shall have the same effect, as to such
invention, as though filed on the date of the provisional
application filed under section 111(b) of this title, if the
application for patent filed under section 111(a) or section
363 of this title is filed not later than 12 months after the
date on which the provisional application was filed and if it
contains or is amended to contain a specific reference to the
provisional application.
(2) A provisional application filed under section 111(b) of
this title may not be relied upon in any proceeding in the
Patent and Trademark Office unless the fee set forth in
subparagraph (A) or (C) of section 41(a)(1) of this title has
been paid [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].
(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.
(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. 120. Benefit of earlier filing date in the United States
An application for patent for an invention disclosed in the
manner provided by the first paragraph of section 112 of this
title in an application previously filed in the United States,
or as provided by section 363 of this title, which is filed by
an inventor or inventors named in the previously filed
application shall have the same effect, as to such invention,
as though filed on the date of the prior application, if filed
before the patenting or abandonment of or termination of
proceedings on the first application or on an application
similarly entitled to the benefit of the filing date of the
first application and if it contains or is amended to contain a
specific reference to the earlier filed application. 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. 121. Divisional applications
If two or more independent and distinct inventions are
claimed in one application, the [Commissioner] Director may
require the application to be restricted to one of the
inventions. If the other invention is made the subject of a
divisional application which complies with the requirements of
section 120 of this title it shall be entitled to the benefit
of the filing date of the original application. A patent
issuing on an application with respect to which a requirement
for restriction under this section has been made, or on an
application filed as a result of such a requirement, shall not
be used as a reference either in the Patent and Trademark
Office or in the courts against a divisional application or
against the original application or any patent issued on either
of them, if the divisional application is filed before the
issuance of the patent on the other application. If a
divisional application is directed solely to subject matter
described and claimed in the original application as filed, the
[Commissioner] Director may dispense with signing and execution
by the inventor. The validity of a patent shall not be
questioned for failure of the [Commissioner] Director to
require the application to be restricted to one invention.
[Sec. 122. Confidential status of applications
[Applications for patents shall be kept in confidence by
the Patent and Trademark Office and no information concerning
the same given without authority of the applicant or owner
unless necessary to carry out the provisions of any Act of
Congress or in such special circumstances as may be determined
by the Commissioner.]
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 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.
CHAPTER 12--EXAMINATION OF APPLICATION
* * * * * * *
Sec. 131. Examination of application
The [Commissioner] Director shall cause an examination to
be made of the application and the alleged new invention; and
if on such examination it appears that the applicant is
entitled to a patent under the law, the [Commissioner] Director
shall issue a patent therefor.
Sec. 132. Notice of rejection; reexamination
(a) Whenever, on examination, any claim for a patent is
rejected, or any objection or requirement made, the
[Commissioner] Director shall notify the applicant thereof,
stating the reasons for such rejection, or objection or
requirement, together with such information and references as
may be useful in judging of the propriety of continuing the
prosecution of his application; and if after receiving such
notice, the applicant persists in his claim for a patent, with
or without amendment, the application shall be reexamined. No
amendment shall introduce new matter into the disclosure of the
invention.
(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. 133. Time for prosecuting application
Upon failure of the applicant to prosecute the application
within six months after any action therein, of which notice has
been given or mailed to the applicant, or within such shorter
time, not less than thirty days, as fixed by the [Commissioner]
Director in such action, the application shall be regarded as
abandoned by the parties thereto, unless it be shown to the
satisfaction of the [Commissioner] Director that such delay was
unavoidable.
[Sec. 134. Appeal to the Board of Patent Appeals and Interferences
[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.]
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 a 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 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.
Sec. 135. Interferences
(a) Whenever an application is made for a patent which, in
the opinion of the [Commissioner] Director, would interfere
with any pending application, or with any unexpired patent, an
interference may be declared and the [Commissioner] Director
shall give notice of such declaration to the applicants, or
applicant and patentee, as the case may be. The Board of Patent
Appeals and Interferences shall determine questions of priority
of the inventions and may determine questions of patentability.
Any final decision, if adverse to the claim of an applicant,
shall constitute the final refusal by the Patent and Trademark
Office of the claims involved, and the [Commissioner] Director
may issue a patent to the applicant who is adjudged the prior
inventor. A final judgment adverse to a patentee from which no
appeal or other review has been or can be taken or had shall
constitute cancellation of the claims involved in the patent,
and notice of such cancellation shall be endorsed on copies of
the patent distributed after such cancellation by the Patent
and Trademark Office.
* * * * * * *
(c) Any agreement or understanding between parties to an
interference, including any collateral agreements referred to
therein, made in connection with or in contemplation of the
termination of the interference, shall be in writing and a true
copy thereof filed in the Patent and Trademark Office before
the termination of the interference as between the said parties
to the agreement or understanding. If any party filing the same
so requests, the copy shall be kept separate from the file of
the interference, and made available only to Government
agencies on written request, or to any person on a showing of
good cause. Failure to file the copy of such agreement or
understanding shall render permanently unenforceable such
agreement or understanding and any patent of such parties
involved in the interference or any patent subsequently issued
on any application of such parties so involved. The
[Commissioner] Director may, however, on a showing of good
cause for failure to file within the time prescribed, permit
the filing of the agreement or understanding during the six-
month period subsequent to the termination of the interference
as between the parties to the agreement or understanding.
The [Commissioner] Director shall give notice to the
parties or their attorneys of record, a reasonable time prior
to said termination, of the filing requirement of this section.
If the [Commissioner] Director gives such notice at a later
time, irrespective of the right to file such agreement or
understanding within the six-month period on a showing of good
cause, the parties may file such agreement or understanding
within sixty days of the receipt of such notice.
Any discretionary action of the [Commissioner] Director
under this subsection shall be reviewable under section 10 of
the Administrative Procedure Act.
(d) Parties to a patent interference, within such time as
may be specified by the [Commissioner] Director by regulation,
may determine such contest or any aspect thereof by
arbitration. Such arbitration shall be governed by the
provisions of title 9 to the extent such title is not
inconsistent with this section. The parties shall give notice
of any arbitration award to the [Commissioner] Director, and
such award shall, as between the parties to the arbitration, be
dispositive of the issues to which it relates. The arbitration
award shall be unenforceable until such notice is given.
Nothing in this subsection shall preclude the [Commissioner]
Director from determining patentability of the invention
involved in the interference.
CHAPTER 13--REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS
* * * * * * *
Sec. 141. Appeal to Court of Appeals for the Federal Circuit
An applicant dissatisfied with the decision in an appeal to
the Board of Patent Appeals and Interferences under section 134
of this title may appeal the decision to the United States
Court of Appeals for the Federal Circuit. By filing such an
appeal the applicant waives his or her right to proceed under
section 145 of this title. A patent owner or third-party
requester in a 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. A
party to an interference dissatisfied with the decision of the
Board of Patent Appeals and Interferences on the interference
may appeal the decision to the United States Court of Appeals
for the Federal Circuit, but such appeal shall be dismissed if
any adverse party to such interference, within twenty days
after the appellant has filed notice of appeal in accordance
with section 142 of this title, files notice with the
[Commissioner] Director that the party elects to have all
further proceedings conducted as provided in section 146 of
this title. If the appellant does not, within thirty days after
the filing of such notice by the adverse party, file a civil
action under section 146, the decision appealed from shall
govern the further proceedings in the case.
Sec. 142. Notice of appeal
When an appeal is taken to the United States Court of
Appeals for the Federal Circuit, the appellant shall file in
the Patent and Trademark Office a written notice of appeal
directed to the [Commissioner] Director, within such time after
the date of the decision from which the appeal is taken as the
[Commissioner] Director prescribes, but in no case less than 60
days after that date.
Sec. 143. Proceedings on appeal
With respect to an appeal described in section 142 of this
title, the [Commissioner] Director shall transmit to the United
States Court of Appeals for the Federal Circuit a certified
list of the documents comprising the record in the Patent and
Trademark Office. The court may request that the [Commissioner]
Director forward the original or certified copies of such
documents during pendency of the appeal. [In an ex parte case,
the Commissioner shall submit to the court in writing the
grounds for the decision of the Patent and Trademark Office,
addressing all the issues involved in the appeal.] 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. The court shall, before hearing an appeal, give notice
of the time and place of the hearing to the [Commissioner]
Director and the parties in the appeal.
Sec. 144. Decision on appeal
The United States Court of Appeals for the Federal Circuit
shall review the decision from which an appeal is taken on the
record before the Patent and Trademark Office. Upon its
determination the court shall issue to the [Commissioner]
Director its mandate and opinion, which shall be entered of
record in the Patent and Trademark Office and shall govern the
further proceedings in the case.
Sec. 145. Civil action to obtain patent
An applicant dissatisfied with the decision of the Board of
Patent Appeals and Interferences in an appeal under section
134(a) of this title may, unless appeal has been taken to the
United States Court of Appeals for the Federal Circuit, have
remedy by civil action against the [Commissioner] Director in
the United States District Court for the District of Columbia
if commenced within such time after such decision, not less
than sixty days, as the [Commissioner] Director appoints. The
court may adjudge that such applicant is entitled to receive a
patent for his invention, as specified in any of his claims
involved in the decision of the Board of Patent Appeals and
Interferences, as the facts in the case may appear and such
adjudication shall authorize the [Commissioner] Director to
issue such patent on compliance with the requirements of law.
All the expenses of the proceedings shall be paid by the
applicant.
Sec. 146. Civil action in case of interference
Any party to an interference dissatisfied with the decision
of the Board of Patent Appeals and Interferences on the
interference, may have remedy by civil action, if commenced
within such time after such decision, not less than sixty days,
as the [Commissioner] Director appoints or as provided in
section 141 of this title, unless he has appealed to the United
States Court of Appeals for the Federal Circuit, and such
appeal is pending or has been decided. In such suits the record
in the Patent and Trademark Office shall be admitted on motion
of either party upon the terms and conditions as to costs,
expenses, and the further cross-examination of the witnesses as
the court imposes, without prejudice to the right of the
parties to take further testimony. The testimony and exhibits
of the record in the Patent and Trademark Office when admitted
shall have the same effect as if originally taken and produced
in the suit.
Such suit may be instituted against the party in interest
as shown by the records of the Patent and Trademark Office at
the time of the decision complained of, but any party in
interest may become a party to the action. If there be adverse
parties residing in a plurality of districts not embraced
within the same state, or an adverse party residing in a
foreign country, the United States District Court for the
District of Columbia shall have jurisdiction and may issue
summons against the adverse parties directed to the marshal of
any district in which any adverse party resides. Summons
against adverse parties residing in foreign countries may be
served by publication or otherwise as the court directs. The
[Commissioner] Director shall not be a necessary party but he
shall be notified of the filing of the suit by the clerk of the
court in which it is filed and shall have the right to
intervene. Judgment of the court in favor of the right of an
applicant to a patent shall authorize the [Commissioner]
Director to issue such patent on the filing in the Patent and
Trademark Office of a certified copy of the judgment and on
compliance with the requirements of law.
CHAPTER 14--ISSUE OF PATENT
Sec.
151. Issue of patent.
* * * * * * *
154. Contents and term of patent; provisional rights.
* * * * * * *
Sec. 151. Issue of patent
* * * * * * *
If any payment required by this section is not timely made,
but is submitted with the fee for delayed payment and the delay
in payment is shown to have been unavoidable, it may be
accepted by the [Commissioner] Director as though no
abandonment or lapse had ever occurred.
* * * * * * *
Sec. 153. How issued
Patents shall be issued in the name of the United States of
America, under the seal of the Patent and Trademark Office, and
shall be signed by the [Commissioner] Director or have his
signature placed thereon and attested by an officer of the
Patent and Trademark Office designated by the [Commissioner]
Director, and shall be recorded in the Patent and Trademark
Office.
Sec. 154. Contents and term of patent; provisional rights
(a) In General.--
(1) Contents.--Every patent shall contain a short
title of the invention and a grant to the patentee, his
heirs or assigns, of the right to exclude others from
making, using, offering for sale, or selling the
invention throughout the United States or importing the
invention into the United States, and, if the invention
is a process, of the right to exclude others from
using, offering for sale or selling throughout the
United States, or importing into the United States,
products made by that process, referring to the
specification for the particulars thereof.
(2) Term.--Subject to the payment of fees under
this title, such grant shall be for a term beginning on
the date on which the patent issues and ending 20 years
from the date on which the application for the patent
was filed in the United States or, if the application
contains a specific reference to an earlier filed
application or applications under section 120, 121, or
365(c) of this title, from the date on which the
earliest such application was filed.
(3) Priority.--Priority under section 119, 365(a),
or 365(b) of this title shall not be taken into account
in determining the term of a patent.
(4) Specification and drawing.--A copy of the
specification and drawing shall be annexed to the
patent and be a part of such patent.
[(b) Term Extension.--
[(1) Interference delay or secrecy orders.--If the
issue of an original patent is delayed due to a
proceeding under section 135(a) of this title, or
because the application for patent is placed under an
order pursuant to section 181 of this title, the term
of the patent shall be extended for the period of
delay, but in no case more than 5 years.
[(2) Extension for appellate review.--If the issue
of a patent is delayed due to appellate review by the
Board of Patent Appeals and Interferences or by a
Federal court and the patent is issued pursuant to a
decision in the review reversing an adverse
determination of patentability, the term of the patent
shall be extended for a period of time but in no case
more than 5 years. A patent shall not be eligible for
extension under this paragraph if it is subject to a
terminal disclaimer due to the issue of another patent
claiming subject matter that is not patentably distinct
from that under appellate review.
[(3) Limitations.--The period of extension referred
to in paragraph (2)--
[(A) shall include any period beginning on
the date on which an appeal is filed under
section 134 or 141 of this title, or on which
an action is commenced under section 145 of
this title, and ending on the date of a final
decision in favor of the applicant;
[(B) shall be reduced by any time
attributable to appellate review before the
expiration of 3 years from the filing date of
the application for patent; and
[(C) shall be reduced for the period of
time during which the applicant for patent did
not act with due diligence, as determined by
the Commissioner.
[(4) Length of extension.--The total duration of
all extensions of a patent under this subsection shall
not exceed 5 years.]
(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
(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 (2)(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.
* * * * * * *
(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.
(5) Issuance of patents on individual claims.--If
the Director in a notification to the applicant under
section 132 indicates that one or more claims of a
published application are allowable, the applicant may
request the issuance of a patent incorporating those
claims. The applicant may continue prosecution of the
remaining claims as provided in chapter 12 of this
title. Any subsequently allowed claims may be
incorporated into the patent or issued in a separate
patent, in accordance with regulations adopted by the
Director. The Director may establish appropriate fees
to cover the costs of incorporating any additional
claims into the patent or issuing a separate patent.
Sec. 155. Patent term extension
Notwithstanding the provisions of section 154, the term of
a patent which encompasses within its scope a composition of
matter or a process for using such composition shall be
extended if such composition or process has been subjected to a
regulatory review by the Federal Food and Drug Administration
pursuant to the Federal Food, Drug, and Cosmetic Act leading to
the publication of regulation permitting the interstate
distribution and sale of such composition or process and for
which there has thereafter been a stay of regulation of
approval imposed pursuant to section 409 of the Federal Food,
Drug, and Cosmetic Act which stay was in effect on January 1,
1981, by a length of time to be measured from the date such
stay of regulation of approval was imposed until such
proceedings are finally resolved and commercial marketing
permitted. The patentee, his heirs, successors or assigns shall
notify the [Commissioner of Patents and Trademarks] Director
within ninety days of the date of enactment of this section or
the date the stay of regulation of approval has been removed,
whichever is later, of the number of the patent to be extended
and the date the stay was imposed and the date commercial
marketing was permitted. On receipt of such notice, the
[Commissioner] Director shall promptly issue to the owner of
record of the patent a certificate of extension, under seal,
stating the fact and length of the extension and identifying
the composition of matter or process for using such composition
to which such extension is applicable. Such certificate shall
be recorded in the official file of each patent extended and
such certificate shall be considered as part of the original
patent, and an appropriate notice shall be published in the
Official Gazette of the Patent and Trademark Office.
Sec. 155A. Patent term restoration
(a) * * *
* * * * * * *
(c) The patentee of any patent described in subsection (a)
of this section shall, within ninety days after the date of
enactment of this section, notify the [Commissioner of Patents
and Trademarks] Director of the number of any patent so
extended. On receipt of such notice, the [Commissioner]
Director shall confirm such extension by placing a notice
thereof in the official file of such patent and publishing an
appropriate notice of such extension in the Official Gazette of
the Patent and Trademark Office.
Sec. 156. Extension of patent term
(a) The term of a patent which claims a product, a method
of using a product, or a method of manufacturing a product
shall be extended in accordance with this section from the
original expiration date of the patent, which shall include any
patent term adjustment granted under section 154(b), if--
(1) * * *
* * * * * * *
(d)(1) To obtain an extension of the term of a patent under
this section, the owner of record of the patent or its agent
shall submit an application to the [Commissioner] Director.
Except as provided in paragraph (5), such an application may
only be submitted within the sixty-day period beginning on the
date the product received permission under the provision of law
under which the applicable regulatory review period occurred
for commercial marketing or use. The application shall
contain--
(A) * * *
* * * * * * *
(C) information to enable the [Commissioner]
Director to determine under subsections (a) and (b) the
eligibility of a patent for extension and the rights
that will be derived from the extension and information
to enable the [Commissioner] Director and the Secretary
of Health and Human Services or the Secretary of
Agriculture to determine the period of the extension
under subsection (g);
* * * * * * *
(E) such patent or other information as the
[Commissioner] Director may require.
(2)(A) Within 60 days of the submittal of an application
for extension of the term of a patent under paragraph (1), the
[Commissioner] Director shall notify--
(i) * * *
* * * * * * *
(ii) the Secretary of Health and Human Services if
the patent claims any other drug product, a medical
device, or a food additive or color additive or a
method of using or manufacturing such a product,
device, or additive and if the product, device, and
additive are subject to the Federal Food, Drug, and
Cosmetic Act,
of the extension application and shall submit to the Secretary
who is so notified a copy of the application. Not later than 30
days after the receipt of an application from the
[Commissioner] Director, the Secretary receiving the
application shall review the dates contained in the application
pursuant to paragraph (1)(C) and determine the applicable
regulatory review period, shall notify the [Commissioner]
Director of the determination, and shall publish in the Federal
Register a notice of such determination.
(B)(i) * * *
(ii) The Secretary making a determination under clause (i)
shall notify the [Commissioner] Director of the determination
and shall publish in the Federal Register a notice of such
determination together with the factual and legal basis for
such determination. Any interested person may request, within
the 60-day period beginning on the publication of a
determination, the Secretary making the determination to hold
an informal hearing on the determination. If such a request is
made within such period, such Secretary shall hold such hearing
not later than 30 days after the date of the request, or at the
request of the person making the request, not later than 60
days after such date. The Secretary who is holding the hearing
shall provide notice of the hearing to the owner of the patent
involved and to any interested person and provide the owner and
any interested person an opportunity to participate in the
hearing. Within 30 days after the completion of the hearing,
such Secretary shall affirm or revise the determination which
was the subject of the hearing and shall notify the
[Commissioner] Director of any revision of the determination
and shall publish any such revision in the Federal Register.
* * * * * * *
(4) An application for the extension of the term of a
patent is subject to the disclosure requirements prescribed by
the [Commissioner] Director.
(5)(A) If the owner of record of the patent or its agent
reasonably expects that the applicable regulatory review period
described in paragraph (1)(B)(ii), (2)(B)(ii), (3)(B)(ii),
(4)(B)(ii), or (5)(B)(ii) of subsection (g) that began for a
product that is the subject of such patent may extend beyond
the expiration of the patent term in effect, the owner or its
agent may submit an application to the [Commissioner] Director
for an interim extension during the period beginning 6 months,
and ending 15 days, before such term is due to expire. The
application shall contain--
(i) * * *
* * * * * * *
(iii) information to enable the [Commissioner]
Director to determine under subsection (a)(1), (2), and
(3) the eligibility of a patent for extension;
* * * * * * *
(v) such patent or other information as the
[Commissioner] Director may require.
(B) If the [Commissioner] Director determines that, except
for permission to market or use the product commercially, the
patent would be eligible for an extension of the patent term
under this section, the [Commissioner] Director shall publish
in the Federal Register a notice of such determination,
including the identity of the product under regulatory review,
and shall issue to the applicant a certificate of interim
extension for a period of not more than 1 year.
* * * * * * *
(E) Any interim extension granted under this paragraph
shall terminate at the end of the 60-day period beginning on
the date on which the product involved receives permission for
commercial marketing or use, except that, if within that 60-day
period the applicant notifies the [Commissioner] Director of
such permission and submits any additional information under
paragraph (1) of this subsection not previously contained in
the application for interim extension, the patent shall be
further extended, in accordance with the provisions of this
section--
(i) * * *
* * * * * * *
(e)(1) A determination that a patent is eligible for
extension may be made by the [Commissioner] Director solely on
the basis of the representations contained in the application
for the extension. If the [Commissioner] Director determines
that a patent is eligible for extension under subsection (a)
and that the requirements of paragraphs (1) through (4) of
subsection (d) have been complied with, the [Commissioner]
Director shall issue to the applicant for the extension of the
term of the patent a certificate of extension, under seal, for
the period prescribed by subsection (c). Such certificate shall
be recorded in the official file of the patent and shall be
considered as part of the original patent.
(2) If the term of a patent for which an application has
been submitted under subsection (d)(1) would expire before a
certificate of extension is issued or denied under paragraph
(1) respecting the application, the [Commissioner] Director
shall extend, until such determination is made, the term of the
patent for periods of up to one year if he determines that the
patent is eligible for extension.
* * * * * * *
(h) The [Commissioner] Director may establish such fees as
the [Commissioner] Director determines appropriate to cover the
costs to the Office of receiving and acting upon applications
under this section.
Sec. 157. Statutory invention registration
(a) Notwithstanding any other provision of this title, the
[Commissioner] Director is authorized to publish a statutory
invention registration containing the specification and
drawings of a regularly filed application for a patent without
examination if the applicant--
(1) meets the requirements of section 112 of this
title;
(2) has complied with the requirements for
printing, as set forth in regulations of the
[Commissioner] Director;
(3) waives the right to receive a patent on the
invention within such period as may be prescribed by
the [Commissioner] Director; and
(4) pays application, publication, and other
processing fees established by the [Commissioner]
Director.
If an interference is declared with respect to such an
application, a statutory invention registration may not be
published unless the issue of priority of invention is finally
determined in favor of the applicant.
* * * * * * *
(c) A statutory invention registration published pursuant
to this section shall have all of the attributes specified for
patents in this title except those specified in section 183 and
sections 271 through 289 of this title. A statutory invention
registration shall not have any of the attributes specified for
patents in any other provision of law other than this title. A
statutory invention registration published pursuant to this
section shall give appropriate notice to the public, pursuant
to regulations which the [Commissioner] Director shall issue,
of the preceding provisions of this subsection. The invention
with respect to which a statutory invention certificate is
published is not a patented invention for purposes of section
292 of this title.
(d) The [Secretary of Commerce] Director shall report to
the Congress annually on the use of statutory invention
registrations. Such report shall include an assessment of the
degree to which agencies of the Federal Government are making
use of the statutory invention registration system, the degree
to which it aids the management of federally developed
technology, and an assessment of the cost savings to the
Federal Government of the use of such procedures.
CHAPTER 15--PLANT PATENTS
* * * * * * *
Sec. 164. Assistance of Department of Agriculture
The President may by Executive order direct the Secretary
of Agriculture, in accordance with the requests of the
[Commissioner] Director, for the purpose of carrying into
effect the provisions of this title with respect to plants (1)
to furnish available information of the Department of
Agriculture, (2) to conduct through the appropriate bureau or
division of the Department research upon special problems, or
(3) to detail to the [Commissioner] Director officers and
employees of the Department.
* * * * * * *
CHAPTER 17--SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN
FOREIGN COUNTRY
* * * * * * *
Sec. 181. Secrecy of certain inventions and withholding of patent
Whenever publication or disclosure by the publication of an
application or by the grant of a patent on an invention in
which the Government has a property interest might, in the
opinion of the head of the interested Government agency, be
detrimental to the national security, the [Commissioner]
Commissioner of Patents upon being so notified shall order that
the invention be kept secret and shall withhold the publication
of the application or the grant of a patent therefor under the
conditions set forth hereinafter.
Whenever the publication or disclosure of an invention by
the publication of an application or by the granting of a
patent, in which the Government does not have a property
interest, might, in the opinion of the [Commissioner]
Commissioner of Patents, be detrimental to the national
security, he shall make the application for patent in which
such invention is disclosed available for inspection to the
Atomic Energy Commission, the Secretary of Defense, and the
chief officer of any other department or agency of the
Government designated by the President as a defense agency of
the United States.
Each individual to whom the application is disclosed shall
sign a dated acknowledgment thereof, which acknowledgment shall
be entered in the file of the application. If, in the opinion
of the Atomic Energy Commission, the Secretary of a Defense
Department, or the chief officer of another department or
agency so designated, the publication or disclosure of the
invention by the publication of the application or by the
granting of a patent therefor would be detrimental to the
national security, the Atomic Energy Commission, the Secretary
of a Defense Department, or such other chief officer shall
notify the [Commissioner] Commissioner of Patents and the
[Commissioner] Commissioner of Patents shall order that the
invention be kept secret and shall withhold the publication of
the application or the grant of a patent for such period as the
national interest requires, and notify the applicant thereof.
Upon proper showing by the head of the department or agency who
caused the secrecy order to be issued that the examination of
the application might jeopardize the national interest, the
[Commissioner] Commissioner of Patents shall thereupon maintain
the application in a sealed condition and notify the applicant
thereof. The owner of an application which has been placed
under a secrecy order shall have a right to appeal from the
order to the [Secretary of Commerce under rules prescribed by
him] Director under rules prescribed by the Patent and
Trademark Office.
An invention shall not be ordered kept secret and the
publication of an application or the grant of a patent withheld
for a period of more than one year. The [Commissioner]
Commissioner of Patents shall renew the order at the end
thereof, or at the end of any renewal period, for additional
periods of one year upon notification by the head of the
department or the chief officer of the agency who caused the
order to be issued that an affirmative determination has been
made that the national interest continues so to require. An
order in effect, or issued, during a time when the United
States is at war, shall remain in effect for the duration of
hostilities and one year following cessation of hostilities. An
order in effect, or issued, during a national emergency
declared by the President shall remain in effect for the
duration of the national emergency and six months thereafter.
The [Commissioner] Commissioner of Patents may rescind any
order upon notification by the heads of the departments and the
chief officers of the agencies who caused the order to be
issued that the publication or disclosure of the invention is
no longer deemed detrimental to the national security.
Sec. 182. Abandonment of invention for unauthorized disclosure
The invention disclosed in an application for patent
subject to an order made pursuant to section 181 of this title
may be held abandoned upon its being established by the
[Commissioner] Commissioner of Patents that in violation of
said order the invention has been published or disclosed or
that an application for a patent therefor has been filed in a
foreign country by the inventor, his successors, assigns, or
legal representatives, or anyone in privity with him or them,
without the consent of the [Commissioner] Commissioner of
Patents. The abandonment shall be held to have occurred as of
the time of violation. The consent of the [Commissioner]
Commissioner of Patents shall not be given without the
concurrence of the heads of the departments and the chief
officers of the agencies who caused the order to be issued. A
holding of abandonment shall constitute forfeiture by the
applicant, his successors, assigns, or legal representatives,
or anyone in privity with him or them, of all claims against
the United States based upon such invention.
* * * * * * *
Sec. 184. Filing of application in foreign country
Except when authorized by a license obtained from the
[Commissioner] Commissioner of Patents a person shall not file
or cause or authorize to be filed in any foreign country prior
to six months after filing in the United States an application
for patent or for the registration of a utility model,
industrial design, or model in respect of an invention made in
this country. A license shall not be granted with respect to an
invention subject to an order issued by the [Commissioner]
Commissioner of Patents pursuant to section 181 of this title
without the concurrence of the head of the departments and the
chief officers of the agencies who caused the order to be
issued. The license may be granted retroactively where an
application has been filed abroad through error and without
deceptive intent and the application does not disclose an
invention within the scope of section 181 of this title.
* * * * * * *
Sec. 188. Rules and regulations, delegation of power
The Atomic Energy Commission, the Secretary of a defense
department, the chief officer of any other department or agency
of the Government designated by the President as a defense
agency of the United States, and the [Secretary of Commerce]
Patent and Trademark Office, may separately issue rules and
regulations to enable the respective department or agency to
carry out the provisions of this chapter, and may delegate any
power conferred by this chapter.
CHAPTER 18--PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE
* * * * * * *
Sec. 202. Disposition of rights
(a) Each nonprofit organization or small business firm may,
within a reasonable time after disclosure as required by
paragraph (c)(1) of this section, elect to retain title to any
subject invention: Provided, however, That a funding agreement
may provide otherwise (i) when the contractor is not located in
the United States or does not have a place of business located
in the United States or is subject to the control of a foreign
government, (ii) in exceptional circumstances when it is
determined by the agency that restriction or elimination of the
right to retain title to any subject invention will better
promote the policy and objectives of this chapter (iii) when it
is determined by a Government authority which is authorized by
statute or Executive order to conduct foreign intelligence or
counter-intelligence activities that the restriction or
elimination of the right to retain title to any subject
invention is necessary to protect the security of such
activities or, [iv)] (iv) when the funding agreement includes
the operation of a Government-owned, contractor-operated
facility of the Department of Energy primarily dedicated to
that Department's naval nuclear propulsion or weapons related
programs and all funding agreement limitations under this
subparagraph on the contractor's right to elect title to a
subject invention are limited to inventions occurring under the
above two programs of the Department of Energy.[.] The rights
of the nonprofit organization or small business firm shall be
subject to the provisions of paragraph (c) of this section and
the other provisions of this chapter.
* * * * * * *
PART III--PATENTS AND PROTECTION OF PATENT RIGHTS
CHAPTER 25--AMENDMENT AND CORRECTION OF PATENTS
* * * * * * *
Sec. 251. Reissue of defective patents
* * * * * * *
Whenever any patent is, through error without any deceptive
ntention, deemed wholly or partly inoperative or invalid, by
reason of a defective specification or drawing, or by reason of
the patentee claiming more or less than he had a right to claim
in the patent, the [Commissioner] Director shall, on the
surrender of such patent and the payment of the fee required by
law, reissue the patent for the invention disclosed in the
original patent, and in accordance with a new and amended
application, for the unexpired part of the term of the original
patent. No new matter shall be introduced into the application
for reissue.
The [Commissioner] Director may issue several reissued
patents for distinct and separate parts of the thing patented,
upon demand of the applicant, and upon payment of the required
fee for a reissue for each of such reissued patents.
* * * * * * *
Sec. 252. Effect of reissue
The surrender of the original patent shall take effect upon
the issue of the reissued patent, and every reissued patent
shall have the same effect and operation in law, on the trial
of actions for causes thereafter arising, as if the same had
been originally granted in such amended form, but in so far as
the claims of the original and reissued patents are
substantially identical, such surrender shall not affect any
action then pending nor abate any cause of action then
existing, and the reissued patent, to the extent that its
claims are substantially identical with the original patent,
shall constitute a continuation thereof and have effect
continuously from the date of the original patent.
* * * * * * *
Sec. 254. Certificate of correction of Patent and Trademark Office
mistake
Whenever a mistake in a patent, incurred through the fault
of the Patent and Trademark Office, is clearly disclosed by the
records of the Office, the [Commissioner] Director may issue a
certificate of correction stating the fact and nature of such
mistake, under seal, without charge, to be recorded in the
records of patents. A printed copy thereof shall be attached to
each printed copy of the patent, and such certificate shall be
considered as part of the original patent. Every such patent,
together with such certificate, shall have the same effect and
operation in law on the trial of actions for causes thereafter
arising as if the same had been originally issued in such
corrected form. The [Commissioner] Director may issue a
corrected patent without charge in lieu of and with like effect
as a certificate of correction.
Sec. 255. Certificate of correction of applicant's mistake
Whenever a mistake of a clerical or typographical nature,
or of minor character, which was not the fault of the Patent
and Trademark Office, appears in a patent and a showing has
been made that such mistake occurred in good faith, the
[Commissioner] Director may, upon payment of the required fee,
issue a certificate of correction, if the correction does not
involve such changes in the patent as would constitute new
matter or would require re-examination. Such patent, together
with the certificate, shall have the same effect and operation
in law on the trial of actions for causes thereafter arising as
if the same had been originally issued in such corrected form.
Sec. 256. Correction of named inventor
Whenever through error a person is named in an issued
patent as the inventor, or through error an inventor is not
named in an issued patent and such error arose without any
deceptive intention on his part, the [Commissioner] Director
may, on application of all the parties and assignees, with
proof of the facts and such other requirements as may be
imposed, issued a certificate correcting such error.
The error of omitting inventors or naming persons who are
not inventors shall not invalidate the patent in which such
error occurred if it can be corrected as provided in this
section. The court before which such matter is called in
question may order correction of the patent on notice and
hearing of all parties concerned and the [Commissioner]
Director shall issue a certificate accordingly.
* * * * * * *
CHAPTER 27--GOVERNMENT INTERESTS IN PATENTS
* * * * * * *
Notwithstanding the provisions of sections 133 and 151 of
this title, the [Commissioner] Director may extend the time for
taking any action to three years, when an application has
become the property of the United States and the head of the
appropriate department or agency of the Government has
certified to the [Commissioner] Director that the invention
disclosed therein is important to the armament or defense of
the United States.
CHAPTER 28--INFRINGEMENT OF PATENTS
Sec.
271. Infringement of patent.
272. Temporary presence in the United States.
273. Defense to infringement based on earlier inventor.
* * * * * * *
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 process or method in
the United States or the use of a process or method in
the design, testing, or production in the United States
of a product or service, so long as such use is in
connection with an actual arm's-length sale or other
arm's-length commercial transfer of a product or
service, 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 ``process or method'' means
``process'' as defined in section 100(b), and includes
any invention that produces a useful end product or
service which has been or could have been claimed in a
patent in the form of a process; 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 process or
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 product or service produced by a
patented process or method, by a person entitled to
assert a defense under this section with respect to
that product or service 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
process or method, the exclusive purpose of
which is to produce a useful end product or
service.
(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.
CHAPTER 29--REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS
* * * * * * *
Sec. 282. Presumption of validity; defenses
* * * * * * *
In actions involving the validity or infringement of a
patent the party asserting invalidity or noninfringement shall
give notice in the pleadings or otherwise in writing to the
adverse party at least thirty days before the trial, of the
country, number, date, and name of the patentee of any patent,
the title, date, and page numbers of any publication to be
relied upon as anticipation of the patent in suit or, except in
actions in the United States Court of Federal Claims, as
showing the state of the art, and the name and address of any
person who may be relied upon as the prior inventor or as
having prior knowledge of or as having previously used or
offered for sale the invention of the patent in suit. In the
absence of such notice proof of the said matters may not be
made at the trial except on such terms as the court requires.
Invalidity of the extension of a patent term or any portion
thereof under section [156 of this title] 154(b) or 156 of this
title because of the material failure--
(1) by the applicant for the extension, or
(2) by the [Commissioner] Director,
to comply with the requirements of such section shall be a
defense in any action involving the infringement of a patent
during the period of the extension of its term and shall be
pleaded. A due diligence determination under section 156(d)(2)
is not subject to review in such an action.
* * * * * * *
Sec. 284. Damages
Upon finding for the claimant the court shall award the
claimant damages adequate to compensate for the infringement,
but in no event less than a reasonable royalty for the use made
of the invention by the infringer, together with interest and
costs as fixed by the court.
When the damages are not found by a jury, the court shall
assess them. In either event the court may increase the damages
up to three times the amount found or assessed. Increased
damages under this paragraph shall not apply to provisional
rights under section 154(d) of this title.
* * * * * * *
Sec. 287. Limitation on damages and other remedies; marking and notice
(a) * * *
* * * * * * *
(c)(1) * * *
* * * * * * *
(4) This subsection shall not apply to any patent issued
[before the date of enactment of this subsection] based on an
application the earliest effective filing date of which is
prior to September 30, 1996.
* * * * * * *
Sec. 290. Notice of patent suits
The clerks of the courts of the United States, within one
month after the filing of an action under this title shall give
notice thereof in writing to the [Commissioner] Director,
setting forth so far as known the names and addresses of the
parties, name of the inventor, and the designating number of
the patent upon which the action has been brought. If any other
patent is subsequently included in the action he shall give
like notice thereof. Within one month after the decision is
rendered or a judgment issued the clerk of the court shall give
notice thereof to the [Commissioner] Director. The
[Commissioner] Director shall, on receipt of such notices,
enter the same in the file of such patent.
* * * * * * *
Sec. 294. Voluntary arbitration
(a) * * *
* * * * * * *
(d) When an award is made by an arbitrator, the patentee,
his assignee or licensee shall give notice thereof in writing
to the [Commissioner] Director. There shall be a separate
notice prepared for each patent involved in such proceeding.
Such notice shall set forth the names and addresses of the
parties, the name of the inventor, and the name of the patent
owner, shall designate the number of the patent, and shall
contain a copy of the award. If an award is modified by a
court, the party requesting such modification shall give notice
of such modification to the [Commissioner] Director. The
[Commissioner] Director shall, upon receipt of either notice,
enter the same in the record of the prosecution of such patent.
If the required notice is not filed with the [Commissioner]
Director, any party to the proceeding may provide such notice
to the [Commissioner] Director.
(e) The award shall be unenforceable until the notice
required by subsection (d) is received by the [Commissioner]
Director.
* * * * * * *
[CHAPTER 30--PRIOR ART CITATIONS TO OFFICE AND REEXAMINATION OF PATENTS
[Sec.
[301. Citation of prior art.
[302. Request for reexamination.
[303. Determination of issue by Commissioner.
[304. Reexamination order by Commissioner.
[305. Conduct of reexamination proceedings.
[306. Appeal.
[307. Certificate of patentability, unpatentability, and claim
cancellation.
[Sec. 301. Citation of prior art
[Any person at any time may cite to the Office in writing
prior art consisting of patents or printed publications which
that person believes to have a bearing on the patentability of
any claim of a particular patent. If the person explains in
writing the pertinency and manner of applying such prior art to
at least one claim of the patent, the citation of such prior
art and the explanation thereof will become a part of the
official file of the patent. At the written request of the
person citing the prior art, his or her identity will be
excluded from the patent file and kept confidential.
[Sec. 302. Request for reexamination
[Any person at any time may file a request for
reexamination by the Office of any claim of a patent on the
basis of any prior art cited under the provisions of section
301 of this title. The request must be in writing and must be
accompanied by payment of a reexamination fee established by
the Commissioner of Patents pursuant to the provisions of
section 41 of this title. The request must set forth the
pertinency and manner of applying cited prior art to every
claim for which reexamination is requested. Unless the
requesting person is the owner of the patent, the Commissioner
promptly will send a copy of the request to the owner of record
of the patent.
[Sec. 303. Determination of issue by Commissioner
[(a) Within three months following the filing of a request
for reexamination under the provisions of section 302 of this
title, the Commissioner will 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 his
own initiative, and any time, the Commissioner may determine
whether a substantial new question of patentability is raised
by patents and publications discovered by him or cited under
the provisions of section 301 of this title.
[(b) A record of the Commissioner's determination under
subsection (a) of this section will be placed in the official
file of the patent, and a copy promptly will be given or mailed
to the owner of record of the patent and to the person
requesting reexamination, if any.
[(c) A determination by the Commissioner pursuant to
subsection (a) of this section that no substantial new question
of patentability has been raised will be final and
nonappealable. Upon such a determination, the Commissioner may
refund a portion of the reexamination fee required under
section 302 of this title.
[Sec. 304. Reexamination order by Commissioner
[If, in a determination made under the provisions of
subsection 303(a) of this title, the Commissioner finds that a
substantial new question of patentability affecting any claim
of a patent is raised, the determination will include an order
for reexamination of the patent for resolution of the question.
The patent owner will be given a reasonable period, not less
than two months from the date a copy of the determination is
given or mailed to him, within which he may file a statement on
such question, including any amendment to his patent and new
claim or claims he may wish to propose, for consideration in
the reexamination. If the patent owner files such a statement,
he promptly will serve a copy of it on the person who has
requested reexamination under the provisions of section 302 of
this title. Within a period of two months from the date of
service, that person may file and have considered in the
reexamination a reply to any statement filed by the patent
owner. That person promptly will serve on the patent owner a
copy of any reply filed.
[Sec. 305. Conduct of reexamination proceedings
[After the times for filing the statement and reply
provided for by section 304 of this title have expired,
reexamination will be conducted according to the procedures
established for initial examination under the provisions of
sections 132 and 133 of this title. In any reexamination
proceeding under this chapter, the patent owner will be
permitted to propose any amendment to his patent and a new
claim or claims thereto, in order to distinguish the invention
as claimed from the prior art cited under the provisions of
section 301 of this title, or in response to a decision adverse
to the patentability of a claim of a patent. No proposed
amended or new claim enlarging the scope of a claim of the
patent will be permitted in a reexamination proceeding under
this chapter. All reexamination proceedings under this section,
including any appeal to the Board of Patent Appeals and
Interferences, will be conducted with special dispatch within
the Office.
[Sec. 306. Appeal
[The patent owner involved in a reexamination proceeding
under this chapter may appeal under the provisions of section
134 of this title, and may seek court review under the
provisions of sections 141 to 145 of this title, with respect
to any decision adverse to the patentability of any original or
proposed amended or new claim of the patent.]
CHAPTER 30--PRIOR ART CITATIONS TO OFFICE AND REEXAMINATION OF PATENTS
Sec.
301. Citation of prior art.
302. Request for reexamination.
303. Determination of issue by Director.
304. Reexamination order by Director.
305. Conduct of reexamination proceedings.
306. Appeal.
307. Certificate of patentability, unpatentability, and claim
cancellation.
308. Reexamination prohibited.
309. Stay of litigation.
Sec. 301. Citation of prior art
Any person at any time may cite to the Office in writing
prior art consisting of patents or printed publications which
that person believes to have a bearing on the patentability of
any claim of a particular patent. If the person explains in
writing the pertinency and manner of applying such prior art to
at least one claim of the patent, the citation of such prior
art and the explanation thereof will become a part of the
official file of the patent.
Sec. 302. Request for reexamination
(a) In General.--Any person at any time may file a request
for 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 a
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. 303. Determination of issue by Director
(a) Reexamination.--Not later than 3 months after the
filing of a request for reexamination under section 302, 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 reexamination fee required under section 302.
Sec. 304. Reexamination order by Director
If, in a determination made under section 303(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 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 reexamination conducted in accordance with section 305.
Sec. 305. Conduct of 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
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
reexamination proceeding in which the order for reexamination
is based upon a request by a third-party requester.
(2) With the exception of the 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 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 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. 306. Appeal
(a) Patent Owner.--The patent owner involved in a
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, and
may appeal under the provisions of sections 141 through
144, 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, subject to subsection (c).
(c) Civil Action.--A third-party requester whose request
for a reexamination results in an order under section 304 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 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 reexamination proceedings.
Sec. 307. Certificate of patentability, unpatentability, and claim
cancellation
(a) In a reexamination proceeding under this chapter, when
the time for appeal has expired or any appeal proceeding has
terminated, the [Commissioner] Director will 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.
* * * * * * *
Sec. 308. Reexamination prohibited
(a) Order for Reexamination.--Notwithstanding any provision
of this chapter, once an order for reexamination of a patent
has been issued under section 304, neither the patent owner nor
the third-party requester, if any, nor privies of either, may
file a subsequent request for reexamination of the patent until
a reexamination certificate is issued and published under
section 307, 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 a 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 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 reexamination
proceeding, and a 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 reexamination proceedings.
Sec. 309. Stay of litigation
Once an order for reexamination of a patent has been issued
under section 304, 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
reexamination order, unless the court before which such
litigation is pending determines that a stay would not serve
the interests of justice.
PART IV--PATENT COOPERATION TREATY
* * * * * * *
CHAPTER 35--DEFINITIONS
* * * * * * *
Sec. 351. Definitions
When used in this part unless the context otherwise
indicates--
(a) The term ``treaty'' means the Patent Co- operation
Treaty done at Washington, on June 19, 1970.
(b) The term ``Regulations'', when capitalized, means the
Regulations under the treaty, done at Washington on the same
date as the treaty. The term ``regulations'', when not
capitalized, means the regulations established by the
[Commissioner] Director under this title.
* * * * * * *
CHAPTER 36--INTERNATIONAL STAGE
* * * * * * *
Sec. 361. Receiving Office
(a) * * *
* * * * * * *
(d) The international fee, and the transmittal and search
fees prescribed under section 376(a) of this part, shall either
be paid on filing of an international application or within
such later time as may be fixed by the [Commissioner] Director.
Sec. 362. International Searching Authority and International
Preliminary Examining Authority
(a) * * *
(b) The handling fee, preliminary examination fee, and any
additional fees due for international preliminary examination
shall be paid within such time as may be fixed by the
[Commissioner] Director.
* * * * * * *
Sec. 364. International stage: Procedure
(a) * * *
(b) An applicant's failure to act within prescribed time
limits in connection with requirements pertaining to a pending
international application may be excused upon a showing
satisfactory to the [Commissioner] Director of unavoidable
delay, to the extent not precluded by the treaty and the
Regulations, and provided the conditions imposed by the treaty
and the Regulations regarding the excuse of such failure to act
are complied with.
Sec. 365. Right of priority; benefit of the filing date of a prior
application
(a) * * *
* * * * * * *
(c) In accordance with the conditions and requirements of
section 120 of this title, an international application
designating the United States shall be entitled to the benefit
of the filing date of a prior national application or a prior
international application designating the United States, and a
national application shall be entitled to the benefit of the
filing date of a prior international application designating
the United States. If any claim for the benefit of an earlier
filing date is based on a prior international application which
designated but did not originate in the United States, the
[Commissioner] Director may require the filing in the Patent
and Trademark Office of a certified copy of such application
together with a translation thereof into the English language,
if it was filed in another language.
* * * * * * *
Sec. 367. Actions of other authorities: Review
(a) Where a Receiving Office other than the Patent and
Trademark Office has refused to accord an international filing
date to an international application designating the United
States or where it has held such application to be withdrawn
either generally or as to the United States, the applicant may
request review of the matter by the [Commissioner] Director, on
compliance with the requirements of and within the time limits
specified by the treaty and the Regulations. Such review may
result in a determination that such application be considered
as pending in the national stage.
* * * * * * *
CHAPTER 37--NATIONAL STAGE
* * * * * * *
Sec. 371. National stage: Commencement
(a) * * *
* * * * * * *
(d) The requirements with respect to the national fee
referred to in subsection (c)(1), the translation referred to
in subsection (c)(2), and the oath or declaration referred to
in subsection (c)(4) of this section shall be complied with by
the date of the commencement of the national stage or by such
later time as may be fixed by the [Commissioner] Director. The
copy of the international application referred to in subsection
(c)(2) shall be submitted by the date of the commencement of
the national stage. Failure to comply with these requirements
shall be regarded as abandonment of the application by the
parties thereof, unless it be shown to the satisfaction of the
[Commissioner] Director that such failure to comply was
unavoidable. The payment of a surcharge may be required as a
condition of accepting the national fee referred to in
subsection (c)(1) or the oath or declaration referred to in
subsection (c)(4) of this section if these requirements are not
met by the date of the commencement of the national stage. The
requirements of subsection (c)(3) of this section shall be
complied with by the date of the commencement of the national
stage, and failure to do so shall be regarded as a cancellation
of the amendments to the claims in the international
application made under article 19 of the treaty. The
requirement of subsection (c)(5) shall be complied with at such
time as may be fixed by the [Commissioner] Director and failure
to do so shall be regarded as cancellation of the amendments
made under article 34(2)(b) of the treaty
* * * * * * *
Sec. 372. National stage: Requirements and procedure
(a) * * *
(b) In case of international applications designating but
not originating in, the United States--
(1) the [Commissioner] Director may cause to be
reexamined questions relating to form and contents of
the application in accordance with the requirements of
the treaty and the Regulations;
(2) the [Commissioner] Director may cause the
question of unity of invention to be reexamined under
section 121 of this title, within the scope of the
requirements of the treaty and the Regulations; and
(3) the [Commissioner] Director may require a
verification of the translation of the international
application or any other document pertaining to the
application if the application or other document was
filed in a language other than English.
* * * * * * *
[Sec. 374. Publication of international application: Effect
[The publication under the treaty of an international
application shall confer no rights and shall have no effect
under this title other than that of a printed publication.]
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. 375. Patent issued on international application: Effect
(a) A patent may be issued by the [Commissioner] Director
based on an international application designating the United
States, in accordance with the provisions of this title.
Subject to section 102(e) of this title, such patent shall have
the force and effect of a patent issued on a national
application filed under the provisions of chapter 11 of this
title.
* * * * * * *
Sec. 376. Fees
(a) The required payment of the international fee and the
handling fee, which amounts are specified in the Regulations,
shall be paid in United States currency. The Patent and
Trademark Office shall charge a national fee as provided in
section 41(a), and may also charge the following fees:
(1) * * *
* * * * * * *
(5) Such other fees as established by the
[Commissioner] Director.
(b) The amounts of fees specified in subsection (a) of this
section, except the international fee and the handling fee,
shall be prescribed by the [Commissioner] Director. He may
refund any sum paid by mistake or in excess of the fees so
specified, or if required under the treaty and the Regulations.
The [Commissioner] Director may also refund any part of the
search fee, the national fee, the preliminary examination fee,
and any additional fees, where he determines such refund to be
warranted.
----------
TITLE 28, UNITED STATES CODE
* * * * * * *
PART IV--JURISDICTION AND VENUE
* * * * * * *
CHAPTER 83--COURTS OF APPEALS
* * * * * * *
Sec. 1295. Jurisdiction of the United States Court of Appeals for the
Federal Circuit
(a) The United States Court of Appeals for the Federal
Circuit shall have exclusive jurisdiction--
(1) * * *
* * * * * * *
(4) of an appeal from a decision of--
(A) the Board of Patent Appeals and
Interferences of the United States Patent and
Trademark Office with respect to patent
applications and interferences, at the instance
of an applicant for a patent or any party to a
patent interference, and any such appeal shall
waive the right of such applicant or party to
proceed under section 145 or 146 of title 35;
(B) the [Commissioner of Patents and
Trademarks] Director of the United States
Patent and Trademark Office or the Trademark
Trial and Appeal Board with respect to
applications for registration of marks and
other proceedings as provided in section 21 of
the Trademark Act of 1946 (15 U.S.C. 1071); or
(C) a district court to which a case was
directed pursuant to section [145 or 146] 145,
146, or 154(b) of title 35;
* * * * * * *
PART V--PROCEDURE
* * * * * * *
CHAPTER 115--EVIDENCE; DOCUMENTARY
Sec.
1731. Handwriting.
* * * * * * *
1744. Copies of [Patent Office] United States Patent and Trademark
Office documents, generally.
* * * * * * *
Sec. 1744. Copies of [Patent Office] United States Patent and Trademark
Office documents, generally
Copies of letters patent or of any records, books, papers,
or drawings belonging to the [Patent Office] United States
Patent and Trademark Office and relating to patents,
authenticated under the seal of the [Patent Office] United
States Patent and Trademark Office and certified by the
[Commissioner of Patents] Director of the United States Patent
and Trademark Office, or by another officer of the [Patent
Office] United States Patent and Trademark Office authorized to
do so by the [Commissioner] Director, shall be admissible in
evidence with the same effect as the originals.
Any person making application and paying the required fee
may obtain such certified copies.
Sec. 1745. Copies of foreign patent documents
Copies of the specifications and drawings of foreign
letters patent, or applications for foreign letters patent, and
copies of excerpts of the official journals and other official
publications of foreign patent offices belonging to the [United
States Patent Office] United States Patent and Trademark
Office, certified in the manner provided by section 1744 of
this title are prima facie evidence of their contents and of
the dates indicated on their face.
* * * * * * *
CHAPTER 123--FEES AND COSTS
Sec. 1928. Patent infringement action; disclaimer not filed
Whenever a judgment is rendered for the plaintiff in any
patent infringement action involving a part of a patent and it
appears that the patentee, in his specifications, claimed to
be, but was not, the original and first inventor or discoverer
of any material or substantial part of the thing patented, no
costs shall be included in such judgment, unless the proper
disclaimer has been filed in the [Patent Office] United States
Patent and Trademark Office prior to the commencement of the
action.
* * * * * * *
----------
ACT OF JULY 5, 1946
(Commonly Referred to as the Trademark Act of 1946)
* * * * * * *
TITLE I--THE PRINCIPAL REGISTER
* * * * * * *
Section 1. (a) The owner of a trademark used in commerce
may apply to register his or her trademark under this Act on
the principal register hereby established:
(1) By filing in the Patent and Trademark Office--
(A) a written application, in such form as
may be prescribed by the [Commissioner]
Director, verified by the applicant, or by a
member of the firm or an officer of the
corporation or association applying, specifying
applicant's domicile and citizenship, the date
of applicant's first use of the mark, the date
of applicant's first use of the mark in
commerce, the goods in connection with which
the mark is used and the mode or manner in
which the mark is used in connection with such
goods, and including a statement to the effect
that the person making the verification
believes himself, or the firm, corporation, or
association in whose behalf he makes the
verification, to be the owner of the mark
sought to be registered, that the mark is in
use in commerce, and that no other person,
firm, corporation, or association, to the best
of his knowledge and belief, has the right to
use such mark in commerce either in the
identical form thereof or in such near
resemblance thereto as to be likely, when used
on or in connection with the goods of such
other person, to cause confusion, or to cause
mistake, or to deceive: Provided, That in the
case of every application claiming concurrent
use the applicant shall state exceptions to his
claim of exclusive use in which he shall
specify, to the extent of his knowledge, any
concurrent use by others, the goods in
connection with which and the areas in which
each concurrent use exists, the periods of each
use, and the goods and area for which the
applicant desires registration;
* * * * * * *
(C) such number of specimens or facsimiles
of the mark as used as may be required by the
[Commissioner] Director.
* * * * * * *
(3) By complying with such rules or regulations,
not inconsistent with law, as may be prescribed by the
[Commissioner] Director.
(b) A person who has a bona fide intention, under
circumstances showing the good faith of such person, to use a
trademark in commerce may apply to register the trademark under
this Act on the principal register hereby established:
(1) By filing in the Patent and Trademark Office--
(A) a written application, in such form as
may be prescribed by the [Commissioner]
Director, verified by the applicant, or by a
member of the firm or an officer of the
corporation or association applying, specifying
applicant's domicile and citizenship,
applicant's bona fide intention to use the mark
in commerce, the goods on or in connection with
which the applicant has a bona fide intention
to use the mark and the mode or manner in which
the mark is intended to be used on or in
connection with such goods, including a
statement to the effect that the person making
the verification believes himself or herself,
or the firm, corporation, or association in
whose behalf he or she makes the verification,
to be entitled to use the mark in commerce, and
that no other person, firm, corporation, or
association, to the best of his or her
knowledge and belief, has the right to use such
mark in commerce either in the identical form
of the mark or in such near resemblance to the
mark as to be likely, when used on or in
connection with the goods of such other person,
to cause confusion, or to cause mistake, or to
deceive; however, except for applications filed
pursuant to section 44, no mark shall be
registered until the applicant has met the
requirements of subsection (d) of this section;
and
* * * * * * *
(3) By complying with such rules or regulations,
not inconsistent with law, as may be prescribed by the
[Commissioner] Director.
* * * * * * *
(d)(1) Within six months after the date on which the notice
of allowance with respect to a mark is issued under section
13(b)(2) to an applicant under subsection (b) of this section,
the applicant shall file in the Patent and Trademark Office,
together with such number of specimens or facsimiles of the
mark as used in commerce as may be required by the
[Commissioner] Director and payment of the prescribed fee, a
verified statement that the mark is in use in commerce and
specifying the date of the applicant's first use of the mark in
commerce and, those goods or services specified in the notice
of allowance on or in connection with which the mark is used in
commerce. Subject to examination and acceptance of the
statement of use, the mark shall be registered in the Patent
and Trademark Office, a certificate of registration shall be
issued for those goods or services recited in the statement of
use for which the mark is entitled to registration, and notice
of registration shall be published in the Official Gazette of
the Patent and Trademark Office. Such examination may include
an examination of the factors set forth in subsections (a)
through (e) of section 2. The notice of registration shall
specify the goods or services for which the mark is registered.
(2) The [Commissioner] Director shall extend, for one
additional 6-month period, the time for filing the statement of
use under paragraph (1), upon written request of the applicant
before the expiration of the 6-month period provided in
paragraph (1). In addition to an extension under the preceding
sentence, the [Commissioner] Director may, upon a showing of
good cause by the applicant, further extend the time for filing
the statement of use under paragraph (1) for periods
aggregating not more than 24 months, pursuant to written
request of the applicant made before the expiration of the last
extension granted under this paragraph. Any request for an
extension under this paragraph shall be accompanied by a
verified statement that the applicant has a continued bona fide
intention to use the mark in commerce and specifying those
goods or services identified in the notice of allowance on or
in connection with which the applicant has a continued bona
fide intention to use the mark in commerce. Any request for an
extension under this paragraph shall be accompanied by payment
of the prescribed fee. The [Commissioner] Director shall issue
regulations setting forth guidelines for determining what
constitutes good cause for purposes of this paragraph.
(3) The [Commissioner] Director shall notify any applicant
who files a statement of use of the acceptance or refusal
thereof and, if the statement of use is refused, the reasons
for the refusal. An applicant may amend the statement of use.
* * * * * * *
(e) If the applicant is not domiciled in the United State
he shall designate by a written document filed in the Patent
and Trademark Office the name and address of some person
resident in the United States on whom may be served notices or
process in proceedings affecting the mark. Such notices or
process may be served upon the person so designated by leaving
with him or mailing to him a copy thereof at the address
specified in the last designation so filed. If the person so
designated cannot be found at the address given in the last
designation, such notice or process may be served upon the
[Commissioner] Director.
Sec. 2. No trademark by which the goods of the applicant
may be distinguished from the goods of others shall be refused
registration on the principal register on account of its nature
unless it--
(a) * * *
* * * * * * *
(d) Consists of or comprises a mark which so resembles a
mark registered in the Patent and Trademark Office, or a mark
or trade name previously used in the United States by another
and not abandoned, as to be likely, when used on or in
connection with the goods of the applicant, to cause confusion,
or to cause mistake, or to deceive: Provided, That if the
[Commissioner] Director determines that confusion, mistake, or
deception is not likely to result from the continued use by
more than one person of the same or similar marks under
conditions and limitations as to the mode or place of use of
the marks or the goods on or in connection with which such
marks are used, concurrent registrations may be issued to such
persons when they have become entitled to use such marks as a
result of their concurrent lawful use in commerce prior to (1)
the earliest of the filing dates of the applications pending or
of any registration issued under this Act; (2) July 5, 1947, in
the case of registrations previously issued under the Act of
March 3, 1881, or February 20, 1905, and continuing in full
force and effect on that date; or (3) July 5, 1947, in the case
of applications filed under the Act of February 20, 1905, and
registered after July 5, 1947. Use prior to the filing date of
any pending application or a registration shall not be required
when the owner of such application or registration consents to
the grant of a concurrent registration to the applicant.
Concurrent registrations may also be issued by the
[Commissioner] Director when a court of competent jurisdiction
has finally determined that more than one person is entitled to
use the same or similar marks in commerce. In issuing
concurrent registrations, the [Commissioner] Director shall
prescribe conditions and limitations as to the mode or place of
use of the mark or the goods on or in connection with which
such mark is registered to the respective persons.
* * * * * * *
(f) Except as expressly excluded in subsections (a), (b),
(c), (d), (e)(3), and (e)(5) of this section, nothing herein
shall prevent the registration of a mark used by the applicant
which has become distinctive of the applicant's goods in
commerce. The [Commissioner] Director may accept as prima facie
evidence that the mark has become distinctive, as used on or in
connection with the applicant's goods in commerce, proof of
substantially exclusive and continuous use thereof as a mark by
the applicant in commerce for the five years before the date on
which the claim of distinctiveness is made. Nothing in this
section shall prevent the registration of a mark which, when
used on or in connection with the goods of the applicant, is
primarily geographically deceptively misdescriptive of them,
and which became distinctive of the applicant's goods in
commerce before the date of the enactment of the North American
Free Trade Agreement Implementation Act.
* * * * * * *
Sec. 6. (a) The [Commissioner] Director may require the
applicant to disclaim an unregistrable component of a mark
otherwise registrable. An applicant may voluntarily disclaim a
component of a mark sought to be registered.
* * * * * * *
Sec. 7. (a) Certificates of registration of marks
registered upon the principal register shall be issued in the
name of the United States of America, under the seal of the
Patent and Trademark Office, and shall be signed by the
[Commissioner] Director or have his signature placed thereon,
and a record thereof shall be kept in the Patent Office. The
registration shall reproduce the mark, and state that the mark
is registered on the principal register under this Act, the
date of the first use of the mark, the date of the first use of
the mark in commerce, the particular goods or services for
which it is registered, the number and date of the
registration, the term thereof, the date on which the
application for registration was received in the Patent and
Trademark Office, and any conditions and limitations that may
be imposed in the registration.
* * * * * * *
(d) A certificate of registration of a mark may be issued
to the assignee of the applicant, but the assignment must first
be recorded in the Patent and Trademark Office. In case of
change of ownership the [Commissioner] Director shall, at the
request of the owner and upon a proper showing and the payment
of the prescribed fee, issue to such assignee a new certificate
of registration of the said mark in the name of such assignee,
and for the unexpired part of the original period.
(e) Upon application of the registrant the [Commissioner]
Director may permit any registration to be surrendered for
cancelation, and upon cancelation appropriate entry shall be
made in the records of the Patent and Trademark Office. Upon
application of the registrant and payment of the prescribed
fee, the [Commissioner] Director for good cause may permit any
registration to be amended or to be disclaimed in part:
Provided, That the amendment or disclaimer does not alter
materially the character of the mark. Appropriate entry shall
be made in the records of the Patent and Trademark Office and
upon the certificate of registration or, if said certificate is
lost or destroyed, upon a certified copy thereof.
(f) Copies of any records, books, papers, or drawings
belonging to the Patent and Trademark Office relating to marks,
and, copies of registrations, when authenticated by the seal of
the Patent and Trademark Office and certified by the
[Commissioner] Director, or in his name by an employee of the
Office duly designated by the [Commissioner] Director, shall be
evidence in all cases wherein the originals would be evidence;
and any person making application therefore and paying the
prescribed fee shall have such copies.
(g) Whenever a material mistake in a registration, incurred
through the fault of the Patent and Trademark Office, is
clearly disclosed by the records of the Office a certificate
stating the fact and nature of such mistake shall be issued
without charge and recorded and a printed copy thereof shall be
attached to each printed copy of the registration and such
corrected registration shall thereafter have the same effect as
if the same had been originally issued in such corrected form,
or in the discretion of the [Commissioner] Director a new
certificate of registration may be issued without charge. All
certificates of correction heretofore issued in accordance with
the rules of the Patent and Trademark Office and the
registrations to which they are attached shall have the same
force and effect as if such certificates and their issue had
been specifically authorized by statute.
(h) Whenever a mistake has been made in a registration and
a showing has been made that such mistake occurred in good
faith through the fault of the applicant, the [Commissioner]
Director is authorized to issue a certificate of correction or,
in his discretion, a new certificate upon the payment of the
prescribed fee: Provided, That the correction does not involve
such changes in the registration as to require republication of
the mark.
Sec. 8. (a) Each certificate of registration shall remain
in force for ten years: Provided, That the registration of any
mark under the provisions of this Act shall be canceled by the
[Commissioner] Director at the end of six years following its
date, unless within one year next preceding the expiration of
such six years the registrant shall file in the Patent and
Trademark Office an affidavit setting forth those goods or
services recited in the registration on or in connection with
which the mark is in use in commerce and attaching to the
affidavit a specimen or facsimile showing current use of the
mark, or showing that any nonuse is due to special
circumstances which excuse such nonuse and is not due to any
intention to abandon the mark. Special notice of the
requirement for such affidavit shall be attached to each
certificate of registration.
(b) Any registration published under the provisions of
subsection (c) of section 12 of this Act shall be canceled by
the [Commissioner] Director at the end of six years after the
date of such publication unless within one year next preceding
the expiration of such six years the registrant shall file in
the Patent and Trademark Office an affidavit showing that said
mark is in use in commerce or showing that its nonuse is due to
special circumstances which excuse such nonuse and is not due
to any intention to abandon the mark.
(c) The [Commissioner] Director shall notify any registrant
who files either of the above-prescribed affidavits of his
acceptance or refusal thereof and, if a refusal, the reasons
therefore.
Sec. 9. (a) * * *
(b) If the [Commissioner] Director refuses to renew the
registration, he shall notify the registrant of his refusal and
the reasons therefor.
* * * * * * *
Sec. 12. (a) Upon the filing of an application for
registration and payment of the prescribed fee, the
[Commissioner] Director shall refer the application to the
examiner in charge of the registration of marks, who shall
cause an examination to be made and, if on such examination it
shall appear that the applicant is entitled to registration, or
would be entitled to registration upon the acceptance of the
statement of use required by section 1(d) of this Act, the
[Commissioner] Director shall cause the mark to be published in
the Official Gazette of the Patent and Trademark Office:
Provided, That in the case of an applicant claiming concurrent
use, or in the case of an application to be placed in an
interference as provided for in section 16 of this Act, the
mark, if otherwise registrable, may be published subject to the
determination of the rights of the parties to such proceedings.
(b) If the applicant is found not entitled to registration,
the examiner shall advise the applicant thereof and of the
reasons therefor. The applicant shall have a period of six
months in which to reply or amend his application, which shall
then be reexamined. This procedure may be repeated until (1)
the examiner finally refuses registration of the mark or (2)
the applicant fails for a period of six months to reply or
amend or appeal, whereupon the application shall be deemed to
have been abandoned, unless it can be shown to the satisfaction
of the [Commissioner] Director that the delay in responding was
unavoidable, whereupon such time may be extended.
(c) A registrant of a mark registered under the provisions
of the Act of March 3, 1881, or the Act of February 20, 1905,
may, at any time prior to the expiration of the registration
thereof, upon the payment of the prescribed fee file with the
[Commissioner] Director an affidavit setting forth those goods
stated in the registration on which said mark is in use in
commerce and that the registrant claims the benefits of this
Act for said mark. The [Commissioner] Director shall publish
notice thereof with a reproduction of said mark in the Official
Gazette, and notify the registrant of such publication and of
the requirement for the affidavit of use or nonuse as provided
for in subsection (b) of section 8 of this Act. Marks published
under this subsection shall not be subject to the provisions of
section 13 of this Act.
Sec. 13. (a) Any person who believes that he would be
damaged by the registration of a mark upon the principal
register may, upon payment of the prescribed fee, file an
opposition in the Patent and Trademark Office, stating the
grounds therefor, within thirty days after the publication
under subsection (a) of section 12 of this Act of the mark
sought to be registered. Upon written request prior to the
expiration of the thirty-day period, the time for filing
opposition shall be extended for an additional thirty days, and
further extensions of time for filing opposition may be granted
by the [Commissioner] Director for good cause when requested
prior to the expiration of an extension. The [Commissioner]
Director shall notify the applicant of each extension of the
time for filing opposition. An opposition may be amended under
such conditions as may be prescribed by the [Commissioner]
Director.
* * * * * * *
Sec. 15. Except on a ground for which application to cancel
may be filed at any time under paragraphs (3) and (5) of
section 14 of this Act, and except to the extent, if any, to
which the use of a mark registered on the principal register
infringes a valid right acquired under the law of any State or
Territory by use of a mark or trade name continuing from a date
prior to the date of registration under this Act of such
registered mark, the right of the registrant to use such
registered mark in commerce for the goods or services on or in
connection with which such registered mark has been in
continuous use for five consecutive years subsequent to the
date of such registration and is still in use in commerce,
shall be incontestable: Provided, That--
(1) there has been no final decision adverse to
registrant's claim of ownership of such mark for such
goods or services, or to registrant's right to register
the same or to keep the same on the register; and
* * * * * * *
(3) an affidavit is filed with the [Commissioner]
Director within one year after the expiration of any
such five-year period setting forth those goods or
services stated in the registration on or in connection
with which such mark has been in continuous use for
such five consecutive years and is still in use in
commerce, and the other matters specified in paragraphs
(1) and (2) of this section; and
(4) no incontestable right shall be acquired in a
mark which is the generic name for the goods or
services or a portion thereof, for which it is
registered.
Subject to the conditions above specified in this section,
the incontestable right with reference to a mark registered
under this Act shall apply to a mark registered under the Act
of March 3, 1881, or the Act of February 20, 1905, upon the
filing of the required affidavit with the [Commissioner]
Director within one year after the expiration of any period of
five consecutive years after the date of publication of a mark
under the provisions of subsection (c) of section 12 of this
Act.
The [Commissioner] Director shall notify any registrant who
files the above-prescribed affidavit of the filing thereof.
Sec. 16. Upon petition showing extraordinary circumstances,
the [Commissioner] Director may declare that an interference
exists when application is made for the registration of a mark
which so resembles a mark previously registered by another, or
for the registration of which another has previously made
application, as to be likely when used on or in connection with
the goods or services of the applicant to cause confusion or
mistake or to deceive. No interference shall be declared
between an application and the registration of a mark the right
to the use of which has become incontestable.
[Sec. 17. 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
Commissioner shall give notice to all parties and shall direct
a Trademark Trial and Appeal Boards, to determine and decide
the respective rights of registration.
[The Trademark Trial and Appeal Board shall include the
Commissioner, the Deputy Commissioner, the Assistant
Commissioners, and members appointed by the Commissioner.
Employees of the Patent and Trademark Office and other persons,
all of whom shall be competent in trademark law, shall be
eligible for appointment as members. Each case shall be heard
by at least three members of the Board, the members hearing
such case to be designated by the Commissioner.]
Sec. 17. (a) In every case of interference, opposition to
registration, application to register as a lawful concurrent
user, or application to cancel the registration of a mark, the
Director shall give notice to all parties and shall direct a
Trademark Trial and Appeal Board to determine and decide the
respective rights of registration.
(b) The Trademark Trial and Appeal Board shall include the
Director, the Commissioner for Patents, the Commissioner for
Trademarks, and administrative trademark judges who are
appointed by the Director.
Sec. 18. In such proceedings the [Commissioner] Director
may refuse to register the opposed mark, may cancel the
registration, in whole or in part, may modify the application
or registration by limiting the goods or services specified
therein, may otherwise restrict or rectify with respect to the
register the registration of a registered mark, may refuse to
register any or all of several interfering marks, or may
register the mark or marks for the person or persons entitled
thereto, as the rights of the parties hereunder may be
established in the proceedings; Provided, That in the case of
the registration of any mark based on concurrent use, the
[Commissioner] Director shall determine and fix the conditions
and limitations provided for in subsection (d) of section 2 of
this Act. However, no final judgment shall be entered in favor
of an applicant under section 1(b) before the mark is
registered, if such applicant cannot prevail without
establishing constructive use pursuant to section 7(c).
* * * * * * *
Sec. 21. (a)(1) An applicant for registration of a mark,
party to an interference proceeding, party to an opposition
proceeding, party to an application to register as a lawful
concurrent user, party to a cancellation proceeding, a
registrant who has filed an affidavit as provided in section 8,
or an applicant for renewal, who is dissatisfied with the
decision of the [Commissioner] Director or Trademark Trial and
Appeal Board, may appeal to the United States Court of Appeals
for the Federal Circuit thereby waiving his right to proceed
under subsection (b) of this section: Provided, That such
appeal shall be dismissed if any adverse party to the
proceeding, other than the [Commissioner] Director, shall,
within twenty days after the appellant has filed notice of
appeal according to paragraph (2) of this subsection, files
notice with the [Commissioner] Director that he elects to have
all further proceedings conducted as provided in subsection (b)
of this section. Thereupon the appellant shall have thirty days
thereafter within which to file a civil action under subsection
(b) of this section, in default of which the decision appealed
from shall govern the further proceedings in the case.
(2) When an appeal is taken to the United States Court of
Appeals for the Federal Circuit, the appellant shall file in
the Patent and Trademark Office a written notice of appeal
directed to the [Commissioner] Director, within such time after
the date of the decision from which the appeal is taken as the
[Commissioner] Director prescribes, but in no case less than 60
days after that date.
(3) The [Commissioner] Director shall transmit to the
United States Court of Appeals for the Federal Circuit a
certified list of the documents comprising the record in the
Patent and Trademark Office. The court may request that the
[Commissioner] Director forward the original or certified
copies of such documents during pendency of the appeal. In an
ex parte case, the [Commissioner] Director shall submit to that
court a brief explaining the grounds for the decision of the
Patent and Trademark Office, addressing all the issues involved
in the appeal. The court shall, before hearing an appeal give
notice of the time and place of the hearing to the
[Commissioner] Director and the parties in the appeal.
(4) The United States Court of Appeals for the Federal
Circuit shall review the decision from which the appeal is
taken on the record before the Patent and Trademark Office.
Upon its determination the court shall issue its mandate and
opinion to the [Commissioner] Director, which shall be entered
of record in the Patent and Trademark Office and shall govern
the further proceedings in the case. However, no final judgment
shall be entered in favor of an applicant under section 1(b)
before the mark is registered, if such applicant cannot prevail
without establishing constructive use pursuant to section 7(c).
(b)(1) Whenever a person authorized by subsection (a) of
this section to appeal to the United States Court of Appeals
for the Federal Circuit is dissatisfied with the decision of
the [Commissioner] Director or Trademark Trial and Appeal
Board, said person may, unless appeal has been taken to said
United States Court of Appeals for the Federal Circuit, have
remedy by a civil action if commenced within such time after
such decision, not less than sixty days, as the [Commissioner]
Director appoints or as provided in subsection (a) of this
section. The court may adjudge that an applicant is entitled to
a registration upon the application involved, that a
registration involved should be canceled, or such other matter
as the issues in the proceeding require, as the facts in the
case may appear. Such adjudication shall authorize the
[Commissioner] Director to take any necessary action, upon
compliance with the requirements of law. However, no final
judgment shall be entered in favor of an applicant under
section 1(b) before the mark is registered, if such applicant
cannot prevail without establishing constructive use pursuant
to section 7(c).
(2) The [Commissioner] Director shall not be made a party
to an inter partes proceeding under this subsection, but he
shall be notified of the filing of the complaint by the clerk
of the court in which it is filed and shall have the right to
intervene in the action.
(3) In any case where there is no adverse party, a copy of
the complaint shall be served on the [Commissioner] Director,
and, unless the court finds the expenses to be unreasonable,
all the expenses of the proceeding shall be paid by the party
bringing the case, whether the final decision is in favor of
such party or not. In suits brought hereunder, the record in
the Patent and Trademark Office shall be admitted on motion of
any party, upon such terms and conditions as to costs,
expenses, and the further cross-examination of the witnesses as
the court imposes, without prejudice to the right of any party
to take further testimony. The testimony and exhibits of the
record in the Patent and Trademark Office, when admitted, shall
have the same effect as if originally taken and produced in the
suit.
* * * * * * *
TITLE II--THE SUPPLEMENTAL REGISTER
Sec. 23. (a) In addition to the principal register, the
[Commissioner] Director shall keep a continuation of the
register provided in paragraph (b) of section 1 of the Act of
March 19, 1920, entitled ``An Act to give effect to certain
provisions of the convention for the protection of trademarks
and commercial names, made and signed in the city of Buenos
Aires, in the Argentine Republic, August 20, 1910, and for
other purposes'', to be called the supplemental register. All
marks capable of distinguishing applicant's goods or services
and not registrable on the principal register herein provided,
except those declared to be unregistrable under subsections
(a), (b), (c), (d), and (e)(3) of section 2 of this Act, which
are in lawful use in commerce by the owner thereof, on or in
connection with any goods or services may be registered on the
supplemental register upon the payment of the prescribed fee
and compliance with the provisions of subsections (a) and (e)
of section so far as they are applicable. Nothing in this
section shall prevent the registration on the supplemental
register of a mark, capable of distinguishing the applicant's
goods or services and not registrable on the principal register
under this Act, that is declared to be unregistrable under
section 2(e)(3), if such mark has been in lawful use in
commerce by the owner thereof, on or in connection with any
goods or services, since before the date of the enactment of
the North American Free Trade Agreement Implementation Act.
(b) Upon the filing of an application for registration on
the supplemental register and payment of the prescribed fee the
[Commissioner] Director shall refer the application to the
examiner in charge of the registration of marks, who shall
cause an examination to be made and if on such examination it
shall appear that the applicant is entitled to registration,
the registration shall be granted. If the applicant is found
not entitled to registration the provisions of subsection (b)
of section 12 of this Act shall apply.
* * * * * * *
Sec. 24. Marks for the supplemental register shall not be
published for or be subject to opposition, but shall be
published on registration in the Official Gazette of the Patent
and Trademark Office. Whenever any person believes that he is
or will be damaged by the registration of a mark on this
register he may at any time, upon payment of the prescribed fee
and the filing of a petition stating the ground therefor, apply
to the [Commissioner] Director to cancel such registration. The
[Commissioner] Director shall refer such application to the
Trademark Trial and Appeal Board, which shall give notice
thereof to the registrant. If it is found after a hearing
before the Board which that the registrant is not entitled to
registration, or that the mark has been abandoned, the
registration shall be canceled by the [Commissioner] Director.
However, no final judgment shall be entered in favor of an
applicant under section (1)(b) before the mark is registered,
if such applicant cannot prevail without establishing
constructive use pursuant to section 7(c).
* * * * * * *
TITLE IV--CLASSIFICATION
Sec. 30. The [Commissioner] Director may establish a
classification of goods and services, for convenience of Patent
and Trademark Office administration, but not to limit or extend
the applicant's or registrant's rights. The applicant may apply
to register a mark for any or all of the goods or services on
or in connection with which he or she is using or has a bona
fide intention to use the mark in commerce: Provided, That if
the [Commissioner] Director by regulation permits the filing of
an application for the registration of a mark for goods or
services which fall within a plurality of classes, a fee
equaling the sum of the fees for filing an application in each
class shall be paid, and the [Commissioner] Director may issue
a single certificate of registration for such mark.
* * * * * * *
TITLE V--FEES AND CHARGES
Sec. 31. (a) The [Commissioner] Director will establish
fees for the filing and processing of an application for the
registration of a trademark or other mark and for all other
services performed by and materials furnished by the Patent and
Trademark Office related to trademarks and other marks.
However, no fee for the filing or processing of an application
for the registration of a trademark or other mark or for the
renewal or assignment of a trademark or other mark will be
adjusted more than once every three years. No fee established
under this section will take effect prior to sixty days
following notice in the Federal Register.
(b) The [Commissioner] Director may waive the payment of
any fee for any service or material related to trademarks or
other marks in connection with an occasional request made by a
department or agency of the Government, or any officer thereof.
The Indian Arts and Crafts Board will not be charged any fee to
register Government trademarks of genuineness and quality for
Indian products or for products of particular Indian tribes and
groups.
* * * * * * *
Sec. 34. (a) * * *
* * * * * * *
(c) It shall be the duty of the clerks of such courts
within one month after the filing of any action, suit, or
proceeding involving a mark registered under the provisions of
this Act to give notice thereof in writing to the
[Commissioner] Director setting forth in order so far as known
the names and addresses of the litigants and the designating
number or numbers of the registration or registrations upon
which the action, suit, or proceeding has been brought, and in
the event any other registration be subsequently included in
the action, suit, or proceeding by amendment, answer, or other
pleading, the clerk shall give like notice thereof to the
[Commissioner] Director, and within one month after the
judgment is entered or an appeal is taken the clerk of the
court shall give notice thereof to the [Commissioner] Director,
and it shall be the duty of the [Commissioner] Director on
receipt of such notice forthwith to endorse the same upon the
file wrapper of the said registration or registrations and to
incorporate the same as a part of the contents of said file
wrapper.
* * * * * * *
Sec. 37. In any action involving a registered mark the
court may determine the right to registration, order the
cancelation of registrations, in whole or in part, restore
canceled registrations, and otherwise rectify the register with
respect to the registrations of any party to the action.
Decrees and orders shall be certified by the court to the
[Commissioner] Director, who shall make appropriate entry upon
the records of the Patent and Trademark Office, and shall be
controlled thereby.
* * * * * * *
Sec. 41. The [Commissioner] Director shall make rules and
regulations, not inconsistent with law, for the conduct of
proceedings in the Patent and Trademark Office under this Act.
* * * * * * *
TITLE VIX--INTERNATIONAL CONVENTIONS
Sec. 44. (a) The [Commissioner] Director shall keep a
register of all marks communicated to him by the international
bureaus provided for by the conventions for the protection of
industrial property, trademarks, trade and commercial names,
and the repression of unfair competition to which the United
States is or may become a party, and upon the payment of the
fees required by such conventions and the fees required in this
Act may place the marks so communicated upon such register.
This register shall show a facsimile of the mark or trade or
commercial name; the name, citizenship, and address of the
registrant; the number, date, and place of the first
registration of the mark, including the date on which
application for such registration was filed and granted and the
term of such registration; a list of goods or services to which
the mark is applied as shown by the registration in the country
of origin, and such other data as may be useful concerning the
mark. This register shall be a continuation of the register
provided in section 1(a) of the Act of March 19, 1920.
* * * * * * *
TITLE X--CONSTRUCTION AND DEFINITIONS
Sec. 45. In the construction of this Act, unless the
contrary is plainly apparent from the context--
The United States includes and embraces all territory which
is under its jurisdiction and control.
* * * * * * *
[The term ``Commissioner'' means the Commissioner of
Patents and Trademarks.] The term ``Director'' means the
Director of the United States Patent and Trademark Office.
* * * * * * *
Sec. 47. (a) * * *
(b) In any case in which an appeal is pending before the
United States Court of Customs and Patent Appeals or any United
States Circuit Court of Appeals or the United States Court of
Appeals for the District of Columbia or the United States
Supreme Court at the effective date of this Act, the court, if
it be of the opinion that the provisions of this Act are
applicable to the subject matter of the appeal, may apply such
provision or may remand the case to the [Commissioner] Director
or to the district court for the taking of additional evidence
or a new trial or for reconsideration of the decision on the
record as made, as the appellate court may deem proper.
* * * * * * *
----------
TITLE 5, UNITED STATES CODE
PART I--THE AGENCIES GENERALLY
* * * * * * *
CHAPTER 5--ADMINISTRATIVE PROCEDURE
* * * * * * *
SUBCHAPTER I--GENERAL PROVISIONS
Sec. 500. Administrative practice; general provisions
(1) ``agency'' has the meaning given it by section
551 of this title; and
(a) For the purpose of this section--
* * * * * * *
(e) Subsections (b)-(d) of this section do not apply to
practice before the [Patent Office] United States Patent and
Trademark Office with respect to patent matters that continue
to be covered by chapter 3 (sections 31-33) of title 35.
* * * * * * *
CHAPTER 51--CLASSIFICATION
* * * * * * *
Sec. 5102. Definitions; application
(a) * * *
* * * * * * *
(c) This chapter does not apply to--
(1) * * *
* * * * * * *
[(23) examiners-in-chief and designated examiners-
in-chief in the Patent and Trademark Office, Department
of Commerce;]
(23) administrative patent judges and designated
administrative patent judges in the United States
Patent and Trademark Office;
* * * * * * *
CHAPTER 53--PAY RATES AND SYSTEMS
* * * * * * *
SUBCHAPTER II--EXECUTIVE SCHEDULE PAY RATES
* * * * * * *
Sec. 5314. Positions at level III
Level III of the Executive Schedule applies to the
following positions, for which the annual rate of basic pay
shall be the rate determined with respect to such level under
chapter 11 of title 2, as adjusted by section 5318 of this
title:
Solicitor General of the United States.
* * * * * * *
[Assistant Secretary of Commerce and Commissioner
of Patents and Trademarks.]
Under Secretary of Commerce and Director of the
United States Patent and Trademark Office.
* * * * * * *
Sec. 5316. Positions at level V
Level V of the Executive Schedule applies to the following
positions, for which the annual rate of basic pay shall be the
rate determined with respect to such level under chapter 11 of
title 2, as adjusted by section 5318 of this title:
Administrator, Bonneville Power Administration,
Department of the Interior.
* * * * * * *
[Commissioner of Patents, Department of Commerce.]
* * * * * * *
[Deputy Commissioner of Patents and Trademarks.]
[Assistant Commissioner of Patents.]
[Assistant Commissioner for Trademarks.]
* * * * * * *
----------
SECTION 9 OF THE SMALL BUSINESS ACT
* * * * * * *
Sec. 9. (a) * * *
* * * * * * *
(p) STTR Policy Directive.--
(1) Issuance.--The Administrator shall issue a
policy directive for the general conduct of the STTR
programs within the Federal Government. Such policy
directive shall be issued after consultation with--
(A) the heads of each of the Federal
agencies required by subsection (n) to
establish an STTR program;
[(B) the Commissioner of Patents and
Trademarks; and]
(B) the Director of the United States
Patent and Trademark Office; and
* * * * * * *
----------
SECTION 12 OF THE ACT OF FEBRUARY 14, 1903
CHAP. 552.--An Act To establish the Department of Commerce and Labor.
* * * * * * *
bureaus in department
Sec. 12. The following named bureaus, administrations,
services, offices, and programs of the public service, and all
that pertains thereto, shall be under the jurisdiction and
subject to the control of the Secretary of Commerce:
[(a)] (1) National Oceanic and Atmospheric Administration;
[(b)] (2) United States Travel Service;
[(c)] (3) National Institute of Standards and Technology;
[(d) Patent Office;]
[(e)] (4) Bureau of the Census;
[(f)] (5) United States Fire Administration
[(g)] (6) such other bureaus or other organizational units
as the Secretary of Commerce may from time to time establish in
accordance with the law.
* * * * * * *
----------
TENNESSEE VALLEY AUTHORITY ACT OF 1933
* * * * * * *
Sec. 19. The Corporation, as an instrumentality and agency
of the Government of the United States for the purpose of
executing its constitutional powers, shall have access to the
[Patent Office of the United States] United States Patent and
Trademark Office for the purpose of studying, ascertaining, and
copying all methods, formula, and scientific information (not
including access to pending applications for patents) necessary
to enable the Corporation to use and employ the most
efficacious and economical process for the production of fixed
nitrogen, or any essential ingredient of fertilizer, or any
method of improving and cheapening the production of
hydroelectric power, and any owner of a patent whose patent
rights may have been thus in any way copied, used, infringed,
or employed by the exercise of this authority by the
Corporation shall have as the exclusive remedy a cause of
action against the Corporation to be instituted and prosecuted
on the equity side of the appropriate district court of the
United States, for the recovery of reasonable compensation for
such infringement. The [Commissioner of Patents] Director of
the United States Patent and Trademark Office shall furnish to
the Corporation, at its request and without payment of fees,
copies of documents on file in his office: Provided, That the
benefits of this section shall not apply to any art, machine,
method of manufacture, or composition of matter, discovered or
invented by such employee during the time of his employment or
service with the Corporation or with the Government of the
United States.
* * * * * * *
----------
TRADE ACT OF 1974
* * * * * * *
TITLE I--NEGOTIATING AND OTHER AUTHORITY
* * * * * * *
Chapter 8--Identification of Market Barriers and Certain Unfair Trade
Practices
* * * * * * *
SEC. 182. IDENTIFICATION OF COUNTRIES THAT DENY ADEQUATE PROTECTION, OR
MARKET ACCESS, FOR INTELLECTUAL PROPERTY RIGHTS.
(a) * * *
* * * * * * *
(b) Special Rules for Identifications.--
(1) * * *
* * * * * * *
(2) In identifying priority foreign countries under
subsection (a)(2), the Trade Representative shall--
(A) consult with the Register of
Copyrights, the [Commissioner of Patents and
Trademarks] Director of the United States
Patent and Trademark Office, other appropriate
officers of the Federal Government, and
* * * * * * *
TITLE III--RELIEF FROM UNFAIR TRADE PRACTICES
* * * * * * *
CHAPTER 1--ENFORCEMENT OF UNITED STATES RIGHTS UNDER TRADE AGREEMENTS
AND RESPONSE TO CERTAIN FOREIGN TRADE PRACTICES
* * * * * * *
SEC. 302. INITIATION OF INVESTIGATIONS.
(a) * * *
* * * * * * *
(b) Initiation of Investigation by Means Other Than
Petition.--
(1) * * *
* * * * * * *
(2)(A) * * *
* * * * * * *
(D) The Trade Representative shall, from time to
time, consult with the Register of Copyrights, the
[Commissioner of Patents and Trademarks] Director of
the United States Patent and Trademark Office, and
other appropriate officers of the Federal Government,
during any investigation initiated under this chapter
by reason of subparagraph (A).
* * * * * * *
----------
ACT OF APRIL 12, 1892
[No. 8.] Joint resolution to encourage the establishment
and endowment of institutions of learning at the national
capital by defining the policy of the Government with reference
to the use of its literary and scientific collections by
students.
* * * * * * *
Resolved by the Senate and House of Representatives of the
United States of America, in Congress assembled, That the
facilities for research and illustration in the following and
any other Governmental collections now existing or hereafter to
be established in the city of Washington for the promotion of
knowledge shall be accessible, under such rules and
restrictions as the officers in charge of each collection may
prescribe, subject to such authority as is now or may hereafter
be permitted by law, to the scientific investigators and to
students of any institution of higher education now
incorporated or hereafter to be incorporated under the laws of
Congress or of the District of Columbia, to wit:
One. Of the Library of Congress.
Two. Of the National Museum.
Three. Of the [Patent Office] United States Patent and
Trademark Office.
* * * * * * *
----------
FEDERAL FOOD, DRUG, AND COSMETIC ACT
* * * * * * *
CHAPTER V--DRUGS AND DEVICES
* * * * * * *
Sec. 505. (a) * * *
* * * * * * *
(m) For purposes of this section, the term ``patent'' means
a patent issued by the [Patent and Trademark Office of the
Department of Commerce] United States Patent and Trademark
Office .
* * * * * * *
Sec. 512. (a)(1) * * *
* * * * * * *
(o) For purposes of this section, the term ``patent'' means
a patent issued by the [Patent and Trademark Office of the
Department of Commerce] United States Patent and Trademark
Office .
* * * * * * *
CHAPTER VII--GENERAL AUTHORITY
* * * * * * *
Sec. 702. (a) * * *
* * * * * * *
(d) The Secretary is authorized and directed, upon request
from the [Commissioner of Patents] Director of the United
States Patent and Trademark Office, to furnish full and
complete information with respect to such questions relating to
drugs as the [Commissioner] Director may submit concerning any
patent application. The Secretary is further authorized, upon
receipt of any such request, to conduct or cause to be
conducted, such research as may be required.
* * * * * * *
----------
SECTION 105 OF THE FEDERAL ALCOHOL ADMINISTRATION ACT
* * * * * * *
unfair competition and unlawful practices
Sec. 105. It shall be unlawful for any person engaged in
business as a distiller, brewer, rectifier, blender, or other
producer, or as an importer or wholesaler, of distilled
spirits, wine, or malt beverages, or as a bottler, or
warehouseman and bottler, of distilled spirits, directly or
indirectly or through an affiliate:
(a) * * *
* * * * * * *
(e) To sell or ship or deliver for sale or shipment, or
otherwise introduce in interstate or foreign commerce, or to
receive therein, or to remove from customs custody for
consumption, any distilled spirits, wine, or malt beverages in
bottles, unless such products are bottled, packaged, and
labeled in conformity with such regulations, to be prescribed
by the Secretary of the Treasury, with respect to packaging,
marking, branding, and labeling and size and fill of container
(1) as will prohibit deception of the consumer with respect to
such products or the quantity thereof and as will prohibit,
irrespective of falsity, such statements relating to age,
manufacturing processes, analyses, guarantees, and scientific
or irrelevant matters as the Secretary of the Treasury finds to
be likely to mislead the consumer; (2) as will provide the
consumer with adequate information as to the identity and
quality of the products, the alcoholic content thereof (except
that statements of, or statements likely to be considered as
statements of, alcoholic content of malt beverages are
prohibited unless required by State law and except that, in
case of wines, statements of alcoholic content shall be
required only for wines containing more than 14 per centum of
alcohol by volume), the net contents of the package, and the
manufacturer or bottler or importer of the product; (3) as will
require an accurate statement, in the case of distilled spirits
(other than cordials, liqueurs, and specialties) produced by
blending or rectification, if neutral spirits have been used in
the production thereof, informing the consumer of the
percentage of neutral spirits so used and of the name of the
commodity from which such neutral spirits have been distilled,
or in case of neutral spirits or of gin produced by a process
of continuous distillation, the name of the commodity from
which distilled; (4) as will prohibit statements on the label
that are disparaging of a competitor's products or are false,
misleading, obscene, or indecent; and (5) as will prevent
deception of the consumer by use of a trade or brand name that
is the name of any living individual of public prominence, or
existing private or public organization, or is a name that is
in simulation or is an abbreviation thereof, and as will
prevent the use of a graphic, pictorial, or emblematic
representation of any such individual or organization, if the
use of such name or representation is likely falsely to lead
the consumer to believe that the product has been indorsed,
made, or used by, or produced for, or under the supervision of,
or in accordance with the specifications of, such individual or
organization: Provided, That this clause shall not apply to the
use of the name of any person engaged in business as a
distiller, brewer, rectifier, blender, or other producer, or as
an importer, wholesaler, retailer, bottler, or warehouseman, of
distilled spirits, wine, or malt beverages, nor to the use by
any person of a trade or brand name used by him or his
predecessor in interest prior to August 29, 1935; including
regulations requiring, at time of release from customs custody,
certificates issued by foreign governments covering origin,
age, and identity of imported products: Provided further, That
nothing herein nor any decision, ruling, or regulation of any
Department of the Government shall deny the right of any person
to use any trade name or brand of foreign origin not presently
effectively registered in the [United States Patent Office]
United States Patent and Trademark Office which has been used
by such person or predecessors in the United States for a
period of at least five years last past, if the use of such
name or brand is qualified by the name of the locality in the
United States in which the product is produced, and, in the
case of the use of such name or brand on any label or in any
advertisement, if such qualification is as conspicuous as such
name or brand.
* * * * * * *
----------
ATOMIC ENERGY ACT OF 1954
* * * * * * *
TITLE I--ATOMIC ENERGY
* * * * * * *
CHAPTER 13. PATENTS AND INVENTIONS
Sec. 151. Inventions Relating to Atomic Weapons, and Filing
of Reports.--
a. * * *
* * * * * * *
c. Any person who has made or hereafter makes any invention
or discovery useful in the production or utilization of special
nuclear material or atomic energy, shall file with the
Commission a report containing a complete description thereof
unless such invention or discovery is described in an
application for a patent filed with the [Commissioner of
Patents] Director of the United States Patent and Trademark
Office by such person within the time required for the filing
of such report. The report covering any such invention or
discovery shall be filed on or before the one hundred and
eightieth day after such person first discovers or first has
reason to believe that such invention or discovery is useful in
such production or utilization.
d. The [Commissioner of Patents] Director of the United
States Patent and Trademark Office shall notify the Commission
of all applications for patents heretofore or hereafter filed
which, in his opinion, disclose inventions or discoveries
required to be reported under subsection 151 c., and shall
provide the Commission access to all such applications.
* * * * * * *
Sec. 152. Inventions Made or Conceived During Commission
Contracts.--Any invention or discovery, useful in the
production or utilization of special nuclear material or atomic
energy, made or conceived in the course of or under any
contract, subcontract, or arrangement entered into with or for
the benefit of the Commission, regardless of whether the
contract, subcontract, or arrangement involved the expenditure
of funds by the Commission, shall be vested in, and be the
property of, the Commission, except that the Commission may
waive its claim to any such invention or discovery under such
circumstances as the Commission may deem appropriate,
consistent with the policy of this section. No patent for any
invention or discovery, useful in the production or utilization
of special nuclear material or atomic energy, shall be issued
unless the applicant files with the application, or within
thirty days after request therefor by the [Commissioner of
Patents] Director of the United States Patent and Trademark
Office (unless the Commission advises the [Commissioner of
Patents] Director of the United States Patent and Trademark
Office that its rights have been determined and that
accordingly no statement is necessary) a statement under oath
setting forth the full facts surrounding the making or
conception of the invention or discovery described in the
application and whether the invention or discovery was made or
conceived in the course of or under any contract, subcontract,
or arrangement entered into with or for the benefit of the
Commission, regardless of whether the contract, subcontract, or
arrangement involved the expenditure of funds by the
Commission. The [Commissioner of Patents] Director of the
United States Patent and Trademark Office shall as soon as the
application is otherwise in condition for allowance forward
copies of the application and the statement to the Commission.
The [Commissioner of Patents] Director of the United States
Patent and Trademark Office may proceed with the application
and issue the patent to the applicant (if the invention or
discovery is otherwise patentable) unless the Commission,
within 90 days after receipt of copies of the application and
statement, directs the [Commissioner of Patents] Director of
the United States Patent and Trademark Office to issue the
patent to the Commission (if the invention or discovery is
otherwise patentable) to be held by the Commission as the agent
of and on behalf of the United States.
If the Commission files such a direction with the
[Commissioner of Patents] Director of the United States Patent
and Trademark Office, and if the applicant's statement claims,
and the applicant still believes, that the invention or
discovery was not made or conceived in the course of or under
any contract, subcontract or arrangement entered into with or
for the benefit of the Commission entitling the Commission to
the title to the application or the patent the applicant may,
within 30 days after notification of the filing of such a
direction, request a hearing before the Board of Patent Appeals
and Interferences. The Board shall have the power to hear and
determine whether the Commission was entitled to the direction
filed with the [Commissioner of Patents] Director of the United
States Patent and Trademark Office. The Board shall follow the
rules and procedures established for interference cases and an
appeal may be taken by either the applicant or the Commission
from the final order of the Board to the United States Court of
Appeals for the Federal Circuit in accordance with the
procedures governing the appeals from the Board of Patent
Appeals and Interferences.
If the statement filed by the applicant should thereafter
be found to contain false material statements any notification
by the Commission that it has no objections to the issuance of
a patent to the applicant shall not be deemed in any respect to
constitute a waiver of the provisions of this section or of any
applicable civil or criminal statute, and the Commission may
have the title to the patent transferred to the Commission on
the records of the [Commissioner of Patents] Director of the
United States Patent and Trademark Office in accordance with
the provisions of this section. A determination of rights by
the Commission pursuant to a contractual provision or other
arrangement prior to the request of the [Commissioner of
Patents] Director of the United States Patent and Trademark
Office for the statement, shall be final in the absence of
false material statements or nondisclosure of material facts by
the applicant.
* * * * * * *
----------
NATIONAL AERONAUTICS AND SPACE ACT OF 1958
* * * * * * *
TITLE III--MISCELLANEOUS
* * * * * * *
property rights in inventions
Sec. 305. (a) * * *
* * * * * * *
(c) No patent may be issued to any applicant other than the
Administrator for any invention which appears to the
[Commissioner of Patents] Director of the United States Patent
and Trademark Office (hereafter in this section referred to as
the ``Director'') to have significant utility in the conduct of
aeronautical and space activities unless the applicant files
with the [Commissioner] Director, with the application or
within thirty days after request therefor by the [Commissioner]
Director, a written statement executed under oath setting forth
the full facts concerning the circumstances under which such
invention was made and stating the relationship (if any) of
such invention to the performance of any work under any
contract of the Administration. Copies of each such statement
and the application to which it relates shall be transmitted
forthwith by the [Commissioner] Director to the Administrator.
(d) Upon any application as to which any such statement has
been transmitted to the Administrator, the [Commissioner]
Director[ may, if the invention is patentable, issue a patent
to the applicant unless the Administrator, within ninety days
after receipt of such application and statement, requests that
such patent be issued to him on behalf of the United States.
If, within such time, the Administrator files such a request
with the [Commissioner] Director, the [Commissioner] Director
shall transmit notice thereof to the applicant, and shall issue
such patent to the Administrator unless the applicant within
thirty days after receipt of such notice requests a hearing
before the Board of Patent Appeals and Interferences on the
question whether the Administrator is entitled under this
section to receive such patent. The Board may hear and
determine, in accordance with rules and procedures established
for interference cases, the question so presented, and its
determination shall be subject to appeal by the applicant or by
the Administrator to the United States Court of Appeals for the
Federal Circuit in accordance with procedures governing appeals
from decisions of the Board of Patent Appeals and Interferences
in other proceedings.
(e) Whenever any patent has been issued to any applicant in
conformity with subsection (d), and the Administrator
thereafter has reason to believe that the statement filed by
the applicant in connection therewith contained any false
representation of any material fact, the Administrator within
five years after the date of issuance of such patent may file
with the [Commissioner] Director a request for the transfer to
the Administrator of title to such patent on the records of the
[Commissioner] Director. Notice of any such request shall be
transmitted by the [Commissioner] Director to the owner of
record of such patent, and title, to such patent shall be so
transferred to the Administrator unless within thirty days
after receipt of such notice such owner of record requests a
hearing before the Board of Patent Appeals and Interferences on
the question whether any such false representation was
contained in such statement. Such question shall be heard and
determined, and determination thereof shall be subject to
review, in the manner prescribed by subsection (d) for
questions arising thereunder. No request made by the
Administrator under this subsection for the transfer of title
to any patent, and no prosecution for the violation of any
criminal statute, shall be barred by any failure of the
Administrator to make a request under subsection (d) for the
issuance of such patent to him, or by any notice previously
given by the Administrator stating that he had no objection to
the issuance of such patent to the applicant therefore.
* * * * * * *
----------
SECTION 12 OF THE SOLAR HEATING AND COOLING DEMONSTRATION ACT OF 1974
Sec. 12. (a) The Secretary shall take all possible steps to
assure that full and complete information with respect to the
demonstrations and other activities conducted under this Act is
made available to Federal, State, and local authorities, the
building industry and related segments of the economy, the
scientific and technical community, and the public at large,
both during and after the close of the programs under this Act,
with the objective of promoting and facilitating to the maximum
extent feasible the early and widespread practical use of solar
energy for the heating and cooling of buildings throughout the
United States. In accordance with regulations prescribed under
section 16 such information shall be disseminated on a
coordinated basis by the Secretary, the Administrator, the
Director of the National Bureau of Standards, the Director, the
[Commissioner of the Patent Office] Director of the United
States Patent and Trademark Office, and other appropriate
Federal offices and agencies.
* * * * * * *
----------
TITLE 44, UNITED STATES CODE
* * * * * * *
CHAPTER 11--EXECUTIVE AND JUDICIARY PRINTING AND BINDING
* * * * * * *
Sec. 1111. Annual reports: time for furnishing manuscript and proofs to
Public Printer
The appropriations made for printing and binding may not be
used for an annual report or the accompanying documents unless
the manuscript and proof is furnished to the Public Printer in
the following manner:
manuscript of the documents accompanying annual
reports on or before February 1, each year;
manuscript of the annual report on or before
February 15, each year;
complete revised proofs of the accompanying
documents on March 1, each year, and of the annual
reports on March 10, each year.
Annual reports and accompanying documents shall be printed,
made public, and available for distribution not later than
within the first five days after the assembling of each regular
session of Congress.
This section does not apply to the annual reports of the
Smithsonian Institution, [the Commissioner of Patents,] the
Comptroller of the Currency, or the Secretary of the Treasury.
* * * * * * *
Sec. 1114. Annual reports: number of copies for Congress
One thousand copies of the annual reports of the
departments to Congress shall be printed for the Senate, and
two thousand for the House of Representatives.
The usual number only of the reports of the Chief of
Engineers of the Army, [the Commissioner of Patents,] the
Commissioner of Internal Revenue, the report of the Chief
Signal Officer of the Department of the Army, and the Chief of
Ordnance shall be printed.
* * * * * * *
Sec. 1123. Binding materials; bookbinding for libraries
Binding for the departments of the Government shall be done
in plain sheep or cloth, except that record and account books
may be bound in Russia leather, sheep fleshers, and skivers,
when authorized by the head of a department. The libraries of
the several departments, the Library of Congress, the libraries
of the Surgeon General's Office, [the Patent Office,] and the
Naval Observatory may have books for the exclusive use of these
libraries bound in half Turkey, or material no more expensive.
* * * * * * *
CHAPTER 13--PARTICULAR REPORTS AND DOCUMENTS
Sec.
1301. Agriculture, Department of: report of Secretary.
* * * * * * *
[1337. Patent Office: publications authorized to be printed.]
[1338. Patent Office: limitations and conditions concerning printing and
lithographing.]
* * * * * * *
[Sec. 1337. Patent Office: publications authorized to be printed
[The Commissioner of Patents, upon the requisition of the
Secretary of Commerce may cause to be printed:
[1. Patents issued.--The patents for inventions and designs
issued by the Patent Office, including grants, specifications,
and drawings, together with copies of them, and of patents
already issued, in the number needed for the business of the
office.
[2. Trade-marks and labels.--The certificates of trade-
marks and labels registered in the Patent Office, including
descriptions and drawings, together with copies of them, and of
trade-marks and labels previously registered, in the numbers
needed for the business of the office.
[3. Official Gazette.--The Official Gazette of the United
States Patent Office in numbers sufficient to supply all who
subscribe for it at $5 a year; also for exchange for other
scientific publications desirable for the use of the Patent
Office; also to supply one copy to each Senator and
Representative in Congress; with one hundred additional copies,
together with weekly, monthly, and annual indexes. The ``usual
number'' of the Official Gazette may not be printed.
[4. Report of Commissioner of Patents.--The annual report
of the Commissioner of Patents, not exceeding five hundred in
number, for distribution by him; the annual report of the
Commissioner of Patents to Congress, without the list of
patents, not exceeding one thousand five hundred in number, for
distribution by him; and the annual report of the Commissioner
of Patents to Congress, with the list of patents, five hundred
copies for sale by him, if needed, and in addition the ``usual
number'' only shall be printed.
[5. Rules of practice, laws, etc.--Pamphlet copies of the
rules of practice, and of the patent laws, and pamphlet copies
of the laws and rules relating to trade-marks and labels, and
circulars relating to the business of the office, all in
numbers as needed for the business of the office. The ``usual
number'' may not be printed.
[6. Decisions of Commissioner and courts.--Annual volumes
of the decisions of the Commissioner of Patents and of the
United States courts in patent cases, not exceeding one
thousand five hundred in number, of which the usual number
shall be printed, and for this purpose a copy of each shall be
transmitted to Congress promptly when prepared.
[7. Indexes.--Indexes to patents relating to electricity,
and indexes to foreign patents, in the numbers needed for the
business of the office. The ``usual number'' may not be
printed.]
[Sec. 1338. Patent Office: limitations and conditions concerning
printing and lithographing
[Printing for the Patent Office making use of lithography
or photo-lithography, together with the plates, shall be
contracted for and performed under the direction of the
Commissioner of Patents, under limitations and conditions
prescribed by the Joint Committee on Printing, and other
printing for the Patent Office shall be done by the Public
Printer under limitations and conditions prescribed by the
Joint Committee on Printing. The entire work may be done at the
Government Printing Office when in the judgment of the Joint
Committee on Printing it is to the interest of the Government.]
* * * * * * *
----------
SECTION 10 OF THE TRADING WITH THE ENEMY ACT
Sec. 10. That nothing contained in this Act shall be held
to make unlawful any of the following Acts:
(a) * * *
* * * * * * *
(i) Whenever the publication of an invention by the
granting of a patent may, in the opinion of the President, be
detrimental to the public safety or defense, or may assist the
enemy or endanger the successful prosecution of the war, he may
order that the invention be kept secret and withhold the grant
of a patent until the end of the war: Provided, That the
invention disclosed in the application for said patent may be
held abandoned upon it being established before or by the
[Commissioner of Patents] Director of the United States Patent
and Trademark Office that, in violation of said order, said
invention has been published or that an application for a
patent therefor has been filed in any other country, by the
inventor or his assigns or legal representatives, without the
consent or approval of the commissioner or under a license of
the President.
* * * * * * *
----------
INSPECTOR GENERAL ACT OF 1978
Sec. 11. As used in this Act--
(1) the term ``head of the establishment'' means
the Secretary of Agriculture, Commerce, Defense,
Education, Energy, Health and Human Services, Housing
and Urban Development, the Interior, Labor, State,
Transportation, or the Treasury; the Attorney General;
the Administrator of the Agency for International
Development, Environmental Protection, General
Services, National Aeronautics and Space, or Small
Business, or Veterans' Affairs; the Director of the
Federal Emergency Management Agency, or the Office of
Personnel Management; the Chairman of the Nuclear
Regulatory Commission or the Railroad Retirement Board;
the Chairperson of the Thrift Depositor Protection
Oversight Board; the Chief Executive Officer of the
Corporation for National and Community Service; the
Administrator of the Community Development Financial
Institutions Fund; [and] the chief executive officer of
the Resolution Trust Corporation; [and] the Chairperson
of the Federal Deposit Insurance Corporation; [or] the
Commissioner of Social Security, Social Security
Administration; or the Director of the United States
Patent and Trademark Office; as the case may be;
(2) the term ``establishment'' means the Department
of Agriculture, Commerce, Defense, Education, Energy,
Health and Human Services, Housing and Urban
Development, the Interior, Justice, Labor, State,
Transportation, or the Treasury; the Agency for
International Development, the Community Development
Financial Institutions Fund, the Environmental
Protection Agency, the Federal Emergency Management
Agency, the General Services Administration, the
National Aeronautics and Space Administration, the
Nuclear Regulatory Commission, the Office of Personnel
Management, the Railroad Retirement Board, the
Resolution Trust Corporation, the Federal Deposit
Insurance Corporation, the Small Business
Administration, the Corporation for National and
Community Service, [or] the Veterans' Administration,
[or the Social Security Administration] the Social
Security Administration, or the United States Patent
and Trademark Office; as the case may be;
* * * * * * *