[House Report 106-853]
[From the U.S. Government Publishing Office]



106th Congress                                                   Report
                        HOUSE OF REPRESENTATIVES
 2d Session                                                     106-853

======================================================================



 
         INTELLECTUAL PROPERTY TECHNICAL AMENDMENTS ACT OF 2000

                                _______
                                

 September 14, 2000.--Committed to the Committee of the Whole House on 
            the State of the Union and ordered to be printed

                                _______
                                

 Mr. Hyde, from the Committee on the Judiciary, submitted the following

                              R E P O R T

                        [To accompany H.R. 4870]

      [Including cost estimate of the Congressional Budget Office]

    The Committee on the Judiciary, to whom was referred the 
bill (H.R. 4870) making technical corrections in patent, 
copyright, and trademark laws, having considered the same, 
reports favorably thereon with an amendment and recommends that 
the bill as amended do pass.

                           TABLE OF CONTENTS

                                                                  

                                                                 Page
The Amendment..............................................           2
Purpose and Summary........................................           6
Background and Need for the Legislation....................           6
Hearings...................................................           7
Committee Consideration....................................           7
Committee Oversight Findings...............................           7
Committee on Government Reform Findings....................           7
New Budget Authority and Tax Expenditures..................           7
Congressional Budget Office Cost Estimate..................           7
Constitutional Authority Statement.........................           8
Section-by-Section Analysis and Discussion.................           8
Changes in Existing Law Made by the Bill, as Reported......          11
    The amendment is as follows:
    Strike all after the enacting clause and insert the 
following:

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Intellectual Property Technical 
Amendments Act of 2000''.

SEC. 2. OFFICERS AND EMPLOYEES.

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

SEC. 3. ADJUSTMENT OF TRADEMARK FEES.

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

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

    (a) Optional Inter Partes Reexamination Procedures.--Title 35, 
United States Code, is amended as follows:
            (1) Section 311 is amended--
                    (A) in subsection (a), by striking ``person'' and 
                inserting ``third-party requester''; and
                    (B) in subsection (c), by striking ``Unless the 
                requesting person is the owner of the patent, the'' and 
                inserting ``The''.
            (2) Section 312 is amended--
                    (A) in subsection (a), by striking the last 
                sentence; and
                    (B) by striking ``, if any''.
            (3) Section 314(b)(1) is amended--
                    (A) by striking ``(1) This'' and all that follows 
                through ``(2)'' and inserting ``(1)'';
                    (B) by striking ``the third-party requester shall 
                receive a copy'' and inserting ``the Office shall send 
                to the third-party requester a copy''; and
                    (C) by redesignating paragraph (3) as paragraph 
                (2).
            (4) Section 315(c) is amended by striking ``United States 
        Code,''.
            (5) Section 317 is amended--
                    (A) in subsection (a), by striking ``patent owner 
                nor the third-party requester, if any, nor privies of 
                either'' and inserting ``third-party requester nor its 
                privies'', and
                    (B) in subsection (b), by striking ``United States 
                Code,''.
    (b) Conforming Amendments.--Subsections (a), (b), and (c) of 
section 134 of title 35, United States Code, are each amended by 
striking ``administrative patent judge'' each place it appears and 
inserting ``primary examiner''.
    (c) Clerical Amendments.--
            (1) Section 4604(a) of the Intellectual Property and 
        Communications Omnibus Reform Act of 1999, is amended by 
        striking ``Part 3'' and inserting ``Part III''.
            (2) Section 4604(b) of that Act is amended by striking 
        ``title 25'' and inserting ``title 35''.
    (d) Effective Date.--The amendments made by sections 4605(c) and 
4605(e) of the Intellectual Property and Communications Omnibus Reform 
Act, as enacted by section 1000(a)(9) of Public Law 106-113, shall 
apply to any reexamination filed in the United States Patent and 
Trademark Office on or after the date of the enactment of Public Law 
106-113.

SEC. 5. PATENT AND TRADEMARK EFFICIENCY ACT AMENDMENTS.

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

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

    Section 154(d)(4)(A) of title 35, United States Code, as in effect 
on November 29, 2000, is amended--
            (1) by striking ``on which the Patent and Trademark Office 
        receives a copy of the'' and inserting ``of''; and
            (2) by striking ``international application'' the last 
        place it appears and inserting ``publication''.

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

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

``SEC. 4505. PRIOR ART EFFECT OF PUBLISHED APPLICATIONS.

    ``Section 102(e) of title 35, United States Code, is amended to 
read as follows:
    `` `(e) the invention was described in (1) an application for 
patent, published under section 122(b), by another filed in the United 
States before the invention by the applicant for patent or (2) a patent 
granted on an application for patent by another filed in the United 
States before the invention by the applicant for patent, except that an 
international application filed under the treaty defined in section 
351(a) shall have the effects for the purposes of this subsection of an 
application filed in the United States if and only if the international 
application designated the United States and was published under 
Article 21(2) of such treaty in the English language; or' ''.
            (2) Section 4507 is amended--
                    (A) in paragraph (1), by striking ``Section 11'' 
                and inserting ``Section 10'';
                    (B) in paragraph (2), by striking ``Section 12'' 
                and inserting ``Section 11''.
                    (C) in paragraph (3), by striking ``Section 13'' 
                and inserting ``Section 12'';
                    (D) in paragraph (4), by striking ``12 and 13'' and 
                inserting ``11 and 12'';
                    (E) in section 374 of title 35, United States Code, 
                as amended by paragraph (10), by striking ``confer the 
                same rights and shall have the same effect under this 
                title as an application for patent published'' and 
                inserting ``be deemed a publication''; and
                    (F) by adding at the end the following:
            ``(12) The item relating to section 374 in the table of 
        contents for chapter 37 of title 35, United States Code, is 
        amended to read as follows:

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

``SEC. 4508. EFFECTIVE DATE.

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

SEC. 8. MISCELLANEOUS CLERICAL AMENDMENTS.

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

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

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

``116. Inventors.''.
            (8) Section 154(b)(4) is amended by striking ``, United 
        States Code,''.
            (9) Section 156 is amended--
                    (A) in subsection (b)(3)(B), by striking 
                ``paragraphs'' and inserting ``paragraph'';
                    (B) in subsection (d)(2)(B)(i), by striking ``below 
                the office'' and inserting ``below the Office''; and
                    (C) in subsection (g)(6)(B)(iii), by striking 
                ``submittted'' and inserting ``submitted''.
            (10) The item relating to section 183 in the table of 
        contents for chapter 17 is amended by striking ``of'' and 
        inserting ``to''.
            (11) Section 185 is amended by striking the second period 
        at the end of the section.
            (12) Section 201(a) is amended--
                    (A) by striking ``United States Code,''; and
                    (B) by striking ``5, United States Code.'' and 
                inserting ``5.''.
            (13) Section 202 is amended--
                    (A) in subsection (b)(4), by striking ``last 
                paragraph of section 203(2)'' and inserting ``section 
                203(b)''; and
                    (B) in subsection (c)--
                            (i) in paragraph (4) by striking 
                        ``rights;'' and inserting ``rights,''; and
                            (ii) in paragraph (5) by striking ``of the 
                        United States Code''.
            (14) Section 203 is amended--
                    (A) in paragraph (2)--
                            (i) by striking ``(2)'' and inserting 
                        ``(b)'';
                            (ii) by striking the quotation marks and 
                        comma before ``as appropriate''; and
                            (iii) by striking ``paragraphs (a) and 
                        (c)'' and inserting ``paragraphs (1) and (3) of 
                        subsection (a)''; and
                    (B) in the first paragraph--
                            (i) by striking ``(a)'', ``(b)'', ``(c)'', 
                        and (d)'' and inserting ``(1)'', ``(2)'', 
                        ``(3)'', and (4)'', respectively; and
                            (ii) by striking ``(1.'' and inserting 
                        ``(a)''.
            (15) Section 209 is amended in subsections (a) and (f)(1), 
        by striking ``of the United States Code''.
            (16) Section 210 is amended--
                    (A) in subsection (a)--
                            (i) in paragraph (11), by striking ``5901'' 
                        and inserting ``5908''; and
                            (ii) in paragraph (20) by striking 
                        ``178(j)'' and inserting ``178j''; and
                    (B) in subsection (c)--
                            (i) by striking ``paragraph 202(c)(4)'' and 
                        inserting ``section 202(c)(4)''; and
                            (ii) by striking ``title..'' and inserting 
                        ``title.''.
            (17) The item relating to chapter 29 in the table of 
        chapters for part III is amended by inserting a comma after 
        ``Patent''.
            (18) The item relating to section 256 in the table of 
        contents for chapter 25 is amended to read as follows:

``256. Correction of named inventor.''.
            (19) Section 294 is amended--
                    (A) in subsection (b), by striking ``United States 
                Code,''; and
                    (B) in subsection (c), in the second sentence by 
                striking ``court to'' and inserting ``court of''.
            (20)(A) The item relating to section 374 in the table of 
        contents for chapter 37 is amended to read as follows:

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

SEC. 9. TECHNICAL CORRECTIONS IN TRADEMARK LAW.

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

                          Purpose and Summary

    The ``Intellectual Property Technical Amendments Act of 
2000,'' H.R. 4870, will remedy miscellaneous technical and 
clerical drafting errors currently set forth in the U.S. Code 
and will also clarify provisions of last year's American 
Inventor's Protection Act (AIPA).\1\ This bill aims to make 
these remedial changes in three primary areas: patent law, 
trademark law, and the organization of the U.S. Patent and 
Trademark Office (PTO). The bill contains no provisions 
regarding copyright law or relating to the U.S. Copyright 
Office.
---------------------------------------------------------------------------
    \1\ Intellectual Property and Communications Omnibus Reform Act of 
1999, S. 1948, P.L. No. 106-113 (Nov. 1999).
---------------------------------------------------------------------------
    Each provision was carefully scrutinized to ensure that it 
will not substantially change existing law, especially the 
AIPA, which contains carefully negotiated agreements developed 
by Members of Congress, high-technology companies, the patent 
and trademark bar, unions, and the independent inventor 
community.

                Background and Need for the Legislation

    In the mid-1990's, Congress investigated several proposals 
aimed at modernizing the Federal patent and trademark laws, 
harmonizing our laws with those of other developed nations, and 
transforming the U.S. Patent and Trademark Office into a more 
efficient agency. Several of these proposals passed as part of 
the AIPA.
    The bill makes certain technical and clarifying changes in 
the law to facilitate the implementation of the changes 
contained in the AIPA; in addition, the bill helps to empower 
inventors and other users of the PTO. These changes included in 
H.R. 4870 fall within the following areas:
         LPTO modernization. The bill establishes a 
        Chief Financial Officer within the agency, changes the 
        titles of certain key officers of the agency, clarifies 
        the authority of the Public Advisory Committee, and 
        makes other minor changes to PTO administrative 
        operations.
         LInter Partes Patent Reexamination. The bill 
        amends the statutory provisions for the optional inter 
        partes reexamination that is an alternative to 
        litigation while not altering its substantive 
        procedures.
         LEarly Publication of Patent Applications. The 
        bill amends the statutory procedures for the early 
        publication of foreign-filed patents so as to conform 
        with the procedures for accepting and processing 
        international applications.
         LTrademark Law. The bill provides for 
        technical and clerical amendments to the Trademark 
        Act.\2\
---------------------------------------------------------------------------
    \2\ The Trademark Act of 1946, July 5, 1946, 15 U.S.C. 
Sec. Sec. 1501 et seq.
---------------------------------------------------------------------------
    The bill is entirely consistent with Congress' efforts and 
goals to craft patent and trademark law reform through the 
AIPA.

                                Hearings

    There were no legislative hearings on H.R. 4870 during the 
106th Congress.

                        Committee Consideration

    On July 20, 2000, the Subcommittee on Courts and 
Intellectual Property met in open session and ordered reported 
the bill H.R. 4870 by voice vote, a quorum being present. On 
July 25, 2000, the committee met in open session and ordered 
reported favorably the bill H.R. 4870 with an amendment in the 
nature of a substitute 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. 4870, 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, August 4, 2000.
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. 4870, the 
Intellectual Property Technical Amendments Act of 2000.
    If you wish further details on this estimate, we will be 
pleased to provide them. The CBO staff contact is Kenneth 
Johnson, who can be reached at 226-2860.
            Sincerely,
                                  Dan L. Crippen, Director.

Enclosure

cc:
        Honorable John Conyers Jr.
        Ranking Democratic Member
H.R. 4870--Intellectual Property Technical Amendments Act of 2000.
    H.R. 4870 would make a number of minor corrections to 
current patent, copyright, and trademark law. CBO estimates 
that enacting H.R. 4870 would have no significant impact on the 
federal budget. Because the bill would not affect direct 
spending or receipts, pay-as-you-go procedures would not apply. 
H.R. 4870 contains no intergovernmental or private-sector 
mandates as defined in the Unfunded Mandates Reform Act (UMRA) 
and would impose no costs on state, local, or tribal 
governments.
    H.R. 4870 would add the Patent and Trademark Office (PTO) 
to the list of agencies that are authorized to have a Chief 
Financial Officer. The bill also would change the process that 
individuals can use to request that the PTO reexamine evidence 
related to a previous patent examination. In addition, the bill 
would make technical changes to law governing international 
patent applications. CBO estimates that these provisions would 
have a negligible impact on spending by the Patent and 
Trademark Office.
    The CBO staff contact is Kenneth Johnson, who can be 
reached at 226-2860. This estimate was approved by Robert A. 
Sunshine, 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, section 8 of the Constitution.

               Section-by-Section Analysis and Discussion

    Sec. 1. Short Title. The act may be cited as the 
``Intellectual Property Technical Amendments Act of 2000.''
    Sec. 2. Officers and Employees. The AIPA changed the titles 
of key officers of the PTO. Briefly, the head of the agency was 
given the title of Director (formerly ``Commissioner''). The 
chief officer for the patent operations was given the title of 
Managing Director for Patents (formerly ``Assistant 
Commissioner for Patents''). The chief officer for trademark 
operations was given the title of Managing Director for 
Trademarks (formerly ``Assistant Commissioner for 
Trademarks''). After review, the PTO has requested that these 
officer titles revert to their traditional names because the 
new titles may cause confusion, are contrary to our 
international efforts, and may upset case law on a variety of 
subjects.
    Section 3. Adjustment of Trademark Fees. The AIPA empowered 
the chief officer of the PTO to revise the fees associated with 
trademark services based on inflation. This section merely 
clarifies the title of the officer with this authority.
    Sec. 4. Optional Inter Partes Reexamination Procedure Act 
of 1999; Technical Amendments. Reexamination is an 
administrative proceeding in which a patent may be reviewed in 
light of new evidence affecting its patentability (``prior 
art'').\3\ Traditionally, reexamination operated only between 
the patent owner and the PTO (ex parte). As part of the AIPA, a 
new inter partes reexamination procedure was established to 
allow a third party also to challenge the validity of a patent 
or its claims through the introduction of new evidence. While 
this inter partes procedure is considered beneficial because it 
provides cost savings over court litigation, some critics were 
concerned it would be abused. As a result, reexamination 
through the inter partes mechanism was designed with certain 
limitations (e.g., estoppel provisions) which do not apply in 
ex parte reexamination under the Patent Act.
---------------------------------------------------------------------------
    \3\ 35 U.S.C. Sec. Sec. 301 et seq.
---------------------------------------------------------------------------
    Section 4 of the bill merely clarifies the Patent Act's 
inter partes reexamination section by stipulating that it will 
apply to the proper parties and operate as envisioned. For 
example, the term ``third-party requester'' is inserted in lieu 
of ``persons,'' since only a third party may invoke this inter 
partes reexamination. This is logical because a patent owner 
has more rights under ex parte reexamination and would not 
choose to use the inter partes procedures even if available.
    The bill, under paragraph (c), specifies that the effective 
date of these reexamination procedures shall apply to any 
reexamination on or after the date of the act's enactment.
    Sec. 5. Patent and Trademark Efficiency Act Amendments. The 
AIPA contained a title (the ``Patent and Trademark Efficiency 
Act'') to modernize the PTO by transforming it into a more 
autonomous and efficient agency. The first section of the bill 
clarifies the status and authority of the Deputy Director of 
the PTO under this reorganization.
    The first paragraph in this section clarifies that the 
Deputy Director may be a career or non-career appointee in the 
Senior Executive Service.
    The amendments made by the succeeding two paragraphs also 
conform the membership of the Trademark Trial and Appeal Board 
and the Board of Patent Appeals and Interferences to include 
the Deputy Director, as under current statute.
    Subsection (b) amends section 5, chapter 1, of title 35. 
The employees of the PTO are currently prohibited from having 
an ownership interest in patents.\4\ Members of the newly-
established Public Advisory Committee are currently considered 
employees of the Office. Currently, those individuals who 
possess the most thorough understanding of the patent system 
(for example, independent inventors) are likely to be 
prohibited from participating on the Public Advisory Committee 
by this restriction. This section eases this restriction on 
those serving on the Public Advisory Committee in light of the 
goals of the AIPA.
---------------------------------------------------------------------------
    \4\ 35 U.S.C. Sec. 4.
---------------------------------------------------------------------------
    Section (c) establishes the position of Chief Financial 
Officer within the PTO. The establishment of this position is 
consistent with Congress' past, and continuing, efforts to 
transform the PTO into an agency that practices sound financial 
management and employs modern techniques in its operations.
    Section (d) eliminates the need for a signature to be 
attested on a patent grant. This amendment removes one step of 
the agency's bureaucracy and allows the PTO to issue patents 
more expeditiously.
    Sec. 6. Domestic Publication of Foreign Filed Patent 
Applications Act of 1999 Amendments. The AIPA established the 
early publication of patent applications in the U.S. patent 
system for the first time along with certain conditions and new 
rights for inventors. One such right is a corresponding 
provisional right (e.g., a reasonable royalty) in patent 
infringement cases. These provisions will take effect 1 year 
after the AIPA's date of enactment. This section of the bill is 
technical in nature and clarifies the text regarding the 
statutory requirement for the effective date of international 
applications which may qualify for the provisional rights based 
on early publication.
    Sec. 7. Domestic Publication of Patent Applications 
Published Abroad. The AIPA established the early publication of 
patent applications, as described above. One consequence of 
early publication is its effect on the standard of novelty for 
a patent application. This section and the following paragraphs 
establish certain safeguards regarding the interplay of the 
early publication of patent applications and the review of 
novelty during the patent examination process. It is an 
especially important safeguard in light of the fact that the 
U.S. is a signatory of the Patent Cooperation Treaty, an 
international convention allowing for the multi-national 
application of patents in several languages.
    Subsection 1 contains a safeguard that the PTO will only 
rely on information published in English in patent applications 
as it makes the essential determination of novelty during the 
examination of a patent application. This limits the evidence 
from foreign applications that may be considered ``prior art'' 
and could affect patentability. This is an important safeguard 
for independent inventors and small American businesses who do 
not have access to expensive translation services and the 
foreign patent offices.
    Subsection 2 makes a series of technical and clerical 
amendments. The following section, subsection 3, clarifies the 
effective date of the new safeguard and ensures that it takes 
effect along with the other early publication provisions later 
this year. The AIPA established the early publication of patent 
applications starting on November 29, 2000.
    Sec. 8. Miscellaneous Clerical Amendments. The section 
contains a series of highly technical clerical amendments 
developed by the Office of Legislative Counsel upon its own 
initiative. These changes to the Patent Act are self-evident, 
and range from aligning paragraphs, deleting quotation marks, 
correcting the fonts of headings, and the like.
    Sec. 9. Technical Corrections in Trademark Law. The first 
section clarifies the statutory text of the Trademark Act as it 
relates to damages. Last year, the ``Anti-Cybersquatting 
Consumer Protection Act'' \5\ established certain damages for 
willful violation of Sec. 43(c) of the Trademark Act.\6\ The 
present language entitles a plaintiff to damages, but reads 
awkwardly. This bill makes a technical correction to the text 
and thereby removes the redundant text, without altering the 
substance of available trademark infringement remedies.
---------------------------------------------------------------------------
    \5\ H.R.3194, P. L. 106-113 (Nov. 29, 1999).
    \6\ 15 U.S.C. Sec. 1125(c).
---------------------------------------------------------------------------
    The second paragraph includes four strictly clerical 
changes, including the deletion of a comma and the realignment 
of a paragraph.

         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 I--UNITED STATES PATENT AND TRADEMARK OFFICE

Chap.                                                               Sec.
      Establishment, Officers and Employees, Functions.................1
     * * * * * * *
      Practice [before] Before Patent and Trademark Office............31
     * * * * * * *

     CHAPTER 1--ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS

           *       *       *       *       *       *       *


Sec. 2. Powers and duties

    (a)  * * *
    (b) Specific Powers.--The Office--
            (1)  * * *
            (2) may establish regulations, not inconsistent 
        with law, which--
                    (A) shall govern the conduct of proceedings 
                in the Office;
                    (B) shall be made in accordance with 
                section 553 of title 5[, United States Code];

           *       *       *       *       *       *       *

            (4)(A)  * * *
            (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[, United 
        States Code];

           *       *       *       *       *       *       *

            (6) may, when the [Director] Commissioner 
        determines that it is practicable, efficient, and cost-
        effective to do so, use, with the consent of the United 
        States and the agency, instrumentality, Patent and 
        Trademark Office, or international organization 
        concerned, the services, records, facilities, or 
        personnel of any State or local government agency or 
        instrumentality or foreign patent and trademark office 
        or international organization to perform functions on 
        its behalf;

           *       *       *       *       *       *       *

    (c) Clarification of Specific Powers.--(1)  * * *

           *       *       *       *       *       *       *

    (4) In exercising the [Director's] Commissioner's powers 
under paragraphs (3) and (4)(A) of subsection (b), the 
[Director] Commissioner shall consult with the Administrator of 
General Services.
    (5) In exercising the [Director's] Commissioner's powers 
and duties under this section, the [Director] Commissioner 
shall consult with the Register of Copyrights on all copyright 
and related matters.

           *       *       *       *       *       *       *


Sec. 3. Officers and employees

    (a) Under Secretary and [Director] Commissioner.--
            (1) In general.--The powers and duties of the 
        United States Patent and Trademark Office shall be 
        vested in an Under Secretary of Commerce for 
        Intellectual Property and [Director] Commissioner of 
        the United States Patent and Trademark Office (in this 
        title referred to as the ``[Director] Commissioner''), 
        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] 
        Commissioner shall be a person who has a professional 
        background and experience in patent or trademark law.
            (2) Duties.--
                    (A) In general.--The [Director] 
                Commissioner shall be responsible for providing 
                policy direction and management supervision for 
                the Office and for the issuance of patents and 
                the registration of trademarks. The [Director] 
                Commissioner shall perform these duties in a 
                fair, impartial, and equitable manner.
                    (B) Consulting with the public advisory 
                committees.--The [Director] Commissioner shall 
                consult with the Patent Public Advisory 
                Committee established in section 5 on a regular 
                basis on matters relating to the patent 
                operations of the Office, shall consult with 
                the Trademark Public Advisory Committee 
                established in section 5 on a regular basis on 
                matters relating to the trademark operations of 
                the Office, and shall consult with the 
                respective Public Advisory Committee before 
                submitting budgetary proposals to the Office of 
                Management and Budget or changing or proposing 
                to change patent or trademark user fees or 
                patent or trademark regulations which are 
                subject to the requirement to provide notice 
                and opportunity for public comment under 
                section 553 of title 5, [United States Code,] 
                as the case may be.
            (3) Oath.--The [Director] Commissioner shall, 
        before taking office, take an oath to discharge 
        faithfully the duties of the Office.
            (4) Removal.--The [Director] Commissioner 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] 
        Commissioner.--The Secretary of Commerce, upon 
        nomination by the [Director] Commissioner, shall 
        appoint a Deputy Under Secretary of Commerce for 
        Intellectual Property and Deputy [Director] 
        Commissioner of the United States Patent and Trademark 
        Office who shall be vested with the authority to act in 
        the capacity of the [Director] Commissioner in the 
        event of the absence or incapacity of the [Director] 
        Commissioner. The Deputy [Director] Commissioner 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] Assistant Commissioner for Patents and 
                a [Commissioner for Trademarks] Assistant 
                Commissioner for Trademarks, without regard to 
                chapter 33, 51, or 53 of title 5[, United 
                States Code]. The [Commissioner for Patents] 
                Assistant 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] Assistant 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] Assistant 
                Commissioner for Patents and the [Commissioner 
                for Trademarks] Assistant 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[, United States Code]. 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[, United States Code]. 
                In addition, the Commissioners may receive a 
                bonus in an amount of up to, but not in excess 
                of, 50 percent of the Commissioners' annual 
                rate of basic pay, based upon an evaluation by 
                the Secretary of Commerce, acting through the 
                [Director] Commissioner, of the Commissioners' 
                performance as defined in an annual performance 
                agreement between the Commissioners and the 
                Secretary. The annual performance agreements 
                shall incorporate measurable organization and 
                individual goals in key operational areas as 
                delineated in an annual performance plan agreed 
                to by the Commissioners and the Secretary. 
                Payment of a bonus under this subparagraph may 
                be made to the Commissioners only to the extent 
                that such payment does not cause the 
                Commissioners' total aggregate compensation in 
                a calendar year to equal or exceed the amount 
                of the salary of the Vice President under 
                section 104 of title 3[, United States Code].
                    (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), without regard to the 
                provisions of title 5[, United States Code]. 
                The Secretary shall provide notification of any 
                such removal to both Houses of Congress.
            (3) Other officers and employees.--The [Director] 
        Commissioner shall--
                    (A) appoint such officers, employees 
                (including attorneys), and agents of the Office 
                as the [Director] Commissioner 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] Commissioner 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.

           *       *       *       *       *       *       *

            (5) National security positions.--The [Director] 
        Commissioner, in consultation with the [Director] 
        Commissioner of the Office of Personnel Management, 
        shall maintain a program for identifying national 
        security positions and providing for appropriate 
        security clearances, in order to maintain the secrecy 
        of certain inventions, as described in section 181, and 
        to prevent disclosure of sensitive and strategic 
        information in the interest of national security.
    (c) Continued Applicability of Title 5[, United States 
Code].--Officers and employees of the Office shall be subject 
to the provisions of title 5, [United States Code,] relating to 
Federal employees.

           *       *       *       *       *       *       *

    (e) Carryover of Personnel.--
            (1)  * * *
            (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)  * * *

           *       *       *       *       *       *       *

                    (C) such transfer would be in the interest 
                of the Office, as determined by the Secretary 
                of Commerce in consultation with the [Director] 
                Commissioner.
        Any transfer under this paragraph shall be effective as 
        of the same effective date as referred to in paragraph 
        (1), and shall be made without a break in service.
    (f) Transition Provisions.--
            (1) Interim appointment of [Director] 
        Commissioner.--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] Commissioner until the date on which a 
        [Director] Commissioner 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] Assistant Commissioner for Patents until the 
        date on which a [Commissioner for Patents] Assistant 
        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] Assistant Commissioner for Trademarks is 
        appointed under subsection (b).

           *       *       *       *       *       *       *


Sec. 5. Patent and Trademark Office Public Advisory Committees

    (a)  * * *

           *       *       *       *       *       *       *

    (d) Duties.--Each Advisory Committee shall--
            (1) review the policies, goals, performance, 
        budget, and user fees of the United States Patent and 
        Trademark Office with respect to patents, in the case 
        of the Patent Public Advisory Committee, and with 
        respect to Trademarks, in the case of the Trademark 
        Public Advisory Committee, and advise the [Director] 
        Commissioner on these matters;

           *       *       *       *       *       *       *

    (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[, 
United States Code]. 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[, United States Code].

           *       *       *       *       *       *       *

    (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[, United States Code].

           *       *       *       *       *       *       *

    (j) Inapplicability of Patent Prohibition.--Section 4 shall 
not apply to voting members of the Advisory Committees.

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] Commissioner, the 
Deputy Commissioner, the [Commissioner for Patents] Assistant 
Commissioner for Patents, the [Commissioner for Trademarks] 
Assistant 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] 
Commissioner.
    (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 three members of the 
Board, who shall be designated by the [Director] Commissioner. 
Only the Board of Patent Appeals and Interferences may grant 
rehearings.

Sec. 7. Library

    The [Director] Commissioner 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. 8. Classification of patents

    The [Director] Commissioner 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. 9. Certified copies of records

    The [Director] Commissioner 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. 10. Publications

    (a) The [Director] Commissioner may publish in printed, 
typewritten, or electronic form, the following:

           *       *       *       *       *       *       *

    (b) The [Director] Commissioner 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. 11. Exchange of copies of patents with foreign countries

    The [Director] Commissioner may exchange copies of 
specifications and drawings of United States patents for those 
of foreign countries. The [Director] Commissioner shall not 
enter into an agreement to provide such copies of 
specifications and drawings of United States patents and 
applications to a foreign country, other than a NAFTA country 
or a WTO member country, without the express authorization of 
the Secretary of Commerce. For purposes of this section, the 
terms `NAFTA country' and `WTO member country' have the 
meanings given those terms in section 104(b).

Sec. 12. Copies of patents for public libraries

    The [Director] Commissioner may supply printed copies of 
specifications and drawings of 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. 13. Annual report to Congress

    The [Director] Commissioner shall report to the Congress, 
not later than 180 days after the end of each fiscal year, the 
moneys received and expended by the Office, the purposes for 
which the moneys were spent, the quality and quantity of the 
work of the Office, the nature of training provided to 
examiners, the evaluation of the Commissioner of Patents and 
the Commissioner of Trademarks by the Secretary of Commerce, 
the compensation of the Commissioners, and other information 
relating to the Office.

       CHAPTER 2--PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE

Sec.
[21.    Day for taking action falling on Saturday, Sunday, or holiday.]
21.    Filing date and day for taking action.
     * * * * * * *

Sec. 21. Filing date and day for taking action

    (a) The [Director] Commissioner 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 [Director] Commissioner.

           *       *       *       *       *       *       *


Sec. 22. Printing of papers filed

    The [Director] Commissioner may require papers filed in the 
Patent and Trademark Office to be printed, typewritten, or on 
an electronic medium.

Sec. 23. Testimony in Patent and Trademark Office cases

    The [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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. 32. Suspension or exclusion from practice

    The [Director] Commissioner 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 2(b)(2)(D) 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] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner shall charge the following 
fees:
            (1)  * * *

           *       *       *       *       *       *       *

            (8) For petitions for 1-month extensions of time to 
        take actions required by the [Director] Commissioner in 
        an application--
                    (A)  * * *

           *       *       *       *       *       *       *

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 [Director] Commissioner.
    (b) The [Director] Commissioner shall charge the following 
fees for maintaining in force all patents based on applications 
filed on or after December 12, 1980:
            (1)  * * *

           *       *       *       *       *       *       *

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 
[Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner to have been unintentional, or at 
any time after the six-month grace period if the delay is shown 
to the satisfaction of the [Director] Commissioner to have been 
unavoidable. The [Director] Commissioner 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 
[Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner shall charge 
the following fees for the following services:
            (1)  * * *

           *       *       *       *       *       *       *

    (e) The [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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 [Director] 
Commissioner.

           *       *       *       *       *       *       *

    (i)(1) The [Director] Commissioner shall maintain, for use 
by the public, paper, microform, or electronic collections of 
United States patents, foreign patent documents, and United 
States trademark registrations arranged to permit search for 
and retrieval of information. The [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner shall also publish 
such report in the Federal Register. The [Director] 
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 [Director] Commissioner.
    (b) All fees paid to the [Director] Commissioner 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 [Director] Commissioner 
shall be collected by and shall be available to the [Director] 
Commissioner to carry out the activities of the Patent and 
Trademark Office. All fees available to the [Director] 
Commissioner under section 31 of the Trademark Act of 1946 
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 [Director] Commissioner may refund any fee paid by 
mistake or any amount paid in excess of that required.

           *       *       *       *       *       *       *


      PART II--PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

           *       *       *       *       *       *       *


Chap.                                                               Sec.
      Patentability of Inventions....................................100
     * * * * * * *
      Examination of Applications...................................131]
      Examination of Application.....................................131
     * * * * * * *

                CHAPTER 10--PATENTABILITY OF INVENTIONS

           *       *       *       *       *       *       *


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 [Director] Commissioner, 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.
     * * * * * * *
[116.    Joint inventors.]
116.    Inventors.
     * * * * * * *

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 [Director] Commissioner.

           *       *       *       *       *       *       *

            (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 [Director] 
        Commissioner.
            (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 [Director] 
        Commissioner 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 [Director] Commissioner. 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 
        [Director] Commissioner.
            (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 [Director] Commissioner that the delay in 
        submitting the fee was unavoidable or unintentional.

           *       *       *       *       *       *       *

            (5) Abandonment.--Notwithstanding the absence of a 
        claim, upon timely request and as prescribed by the 
        [Director] Commissioner, a provisional application may 
        be treated as an application filed under subsection 
        (a). Subject to section 119(e)(3) of this title, if no 
        such request is made, the provisional application shall 
        be regarded as abandoned 12 months after the filing 
        date of such application and shall not be subject to 
        revival after such 12-month period.
            (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 
        [Director] Commissioner, 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 [Director] Commissioner 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 [Director] Commissioner 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 
[Director] Commissioner may require the applicant to furnish 
specimens or ingredients for the purpose of inspection or 
experiment.

           *       *       *       *       *       *       *


Sec. 116. Inventors

    When an invention is made by two or more persons jointly, 
they shall apply for patent jointly and each make the required 
oath, except as otherwise provided in this title. Inventors may 
apply for a patent jointly even though (1) they did not 
physically work together or at the same time, (2) each did not 
make the same type or amount of contribution, or (3) each did 
not make a contribution to the subject matter of every claim of 
the patent.
    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 [Director] Commissioner, 
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 [Director] Commissioner 
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 [Director] 
Commissioner may grant a patent to such inventor upon such 
notice to him as the [Director] Commissioner deems sufficient, 
and on compliance with such regulations as he prescribes.

Sec. 119. Benefit of earlier filing date; right of priority

    (a)  * * *
    (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 [Director] 
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 [Director] Commissioner may 
require a translation of the papers filed if not in the English 
language and such other information as he deems necessary.

           *       *       *       *       *       *       *


Sec. 121. Divisional applications

    If two or more independent and distinct inventions are 
claimed in one application, the [Director] Commissioner 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 
[Director] Commissioner may dispense with signing and execution 
by the inventor. The validity of a patent shall not be 
questioned for failure of the [Director] Commissioner 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 
[Director] Commissioner.

                 CHAPTER 12--EXAMINATION OF APPLICATION

           *       *       *       *       *       *       *


Sec. 131. Examination of application

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

Sec. 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 [Director] 
Commissioner in such action, the application shall be regarded 
as abandoned by the parties thereto, unless it be shown to the 
satisfaction of the [Director] Commissioner that such delay was 
unavoidable.

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 [administrative patent judge] primary examiner 
to the Board of Patent Appeals and Interferences, having once 
paid the fee for such appeal.
    (b) Patent Owner.--A patent owner in any reexamination 
proceeding may appeal from the final rejection of any claim by 
the [administrative patent judge] primary examiner to the Board 
of Patent Appeals and Interferences, having once paid the fee 
for such appeal.
    (c) Third-Party.--A third-party requester in an inter 
partes proceeding may appeal to the Board of Patent Appeals and 
Interferences from the final decision of the [administrative 
patent judge] primary examiner favorable to the patentability 
of any original or proposed amended or new claim of a patent, 
having once paid the fee for such appeal. The third-party 
requester may not appeal the decision of the Board of Patent 
Appeals and Interferences.

Sec. 135. Interferences

    (a) Whenever an application is made for a patent which, in 
the opinion of the [Director] Commissioner, would interfere 
with any pending application, or with any unexpired patent, an 
interference may be declared and the [Director] Commissioner 
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 [Director] Commissioner 
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 [Director] 
Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 
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 [Director] Commissioner 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 [Director] Commissioner, 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 [Director] 
Commissioner 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 in any reexamination 
proceeding dissatisfied with the final decision in an appeal to 
the Board of Patent Appeals and Interferences under section 134 
may appeal the decision only to the United States Court of 
Appeals for the Federal Circuit. 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 [Director] Commissioner 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 [Director] Commissioner, within such time after 
the date of the decision from which the appeal is taken as the 
[Director] Commissioner 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 [Director] Commissioner 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 [Director] 
Commissioner forward the original or certified copies of such 
documents during pendency of the appeal. In any reexamination 
case, the [Director] 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. The court shall, before hearing an appeal, give notice 
of the time and place of the hearing to the [Director] 
Commissioner 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 [Director] 
Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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 
[Director] Commissioner 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 [Director] 
Commissioner 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

    If it appears that applicant is entitled to a patent under 
the law, a written notice of allowance of the application shall 
be given or mailed to the applicant. The notice shall specify a 
sum, constituting the issue fee or a portion thereof, which 
shall be paid within three months thereafter.
    Upon payment of this sum the patent shall issue, but if 
payment is not timely made, the application shall be regarded 
as abandoned.
    Any remaining balance of the issue fee shall be paid within 
three months from the sending of a notice thereof and, if not 
paid, the patent shall lapse at the termination of this three-
month period. In calculating the amount of a remaining balance, 
charges for a page or less may be disregarded.
    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 [Director] Commissioner 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 [Director] Commissioner or have his 
signature placed thereon [and attested by an officer of the 
Patent and Trademark Office designated by the Director,] and 
shall be recorded in the Patent and Trademark Office.

Sec. 154. Contents and term of patent

    (a)  * * *

           *       *       *       *       *       *       *

    (b) Adjustment of Patent Term.--
            (1)  * * *

           *       *       *       *       *       *       *

            (2) Limitations.--
                    (A)  * * *

           *       *       *       *       *       *       *

                    (C) Reduction of period of adjustment.--
                            (i)  * * *

           *       *       *       *       *       *       *

                            (iii) The [Director] Commissioner 
                        shall prescribe regulations 
                        establishing the circumstances that 
                        constitute a failure of an applicant to 
                        engage in reasonable efforts to 
                        conclude processing or examination of 
                        an application.
            (3) Procedures for patent term adjustment 
        determination.--
                    (A) The [Director] Commissioner shall 
                prescribe regulations establishing procedures 
                for the application for and determination of 
                patent term adjustments under this subsection.
                    (B) Under the procedures established under 
                subparagraph (A), the [Director] Commissioner 
                shall--
                            (i) make a determination of the 
                        period of any patent term adjustment 
                        under this subsection, and shall 
                        transmit a notice of that determination 
                        with the written notice of allowance of 
                        the application under section 151; and
                            (ii) provide the applicant one 
                        opportunity to request reconsideration 
                        of any patent term adjustment 
                        determination made by the [Director] 
                        Commissioner.
                    (C) The [Director] Commissioner shall 
                reinstate all or part of the cumulative period 
                of time of an adjustment under paragraph (2)(C) 
                if the applicant, prior to the issuance of the 
                patent, makes a showing that, in spite of all 
                due care, the applicant was unable to respond 
                within the 3-month period, but in no case shall 
                more than three additional months for each such 
                response beyond the original 3-month period be 
                reinstated.
                    (D) The [Director] Commissioner shall 
                proceed to grant the patent after completion of 
                the [Director] Commissioner's determination of 
                a patent term adjustment under the procedures 
                established under this subsection, 
                notwithstanding any appeal taken by the 
                applicant of such determination.
            (4) Appeal of patent term adjustment 
        determination.--
                    (A) An applicant dissatisfied with a 
                determination made by the [Director] 
                Commissioner under paragraph (3) shall have 
                remedy by a civil action against the [Director] 
                Commissioner filed in the United States 
                District Court for the District of Columbia 
                within 180 days after the grant of the patent. 
                Chapter 7 of title 5[, United States Code,] 
                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] Commissioner, and the 
                [Director] Commissioner shall thereafter alter 
                the term of the patent to reflect such change.

           *       *       *       *       *       *       *


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 [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 
of the number of any patent so extended. On receipt of such 
notice, the [Director] Commissioner 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)  * * *

           *       *       *       *       *       *       *

    (b) Except as provided in subsection (d)(5)(F), the rights 
derived from any patent the term of which is extended under 
this section shall during the period during which the term of 
the patent is extended--
            (1)  * * *

           *       *       *       *       *       *       *

            (3) in the case of a patent which claims a method 
        of manufacturing a product, be limited to the method of 
        manufacturing as used to make--
                    (A) the approved product, or
                    (B) the product if it has been subject to a 
                regulatory review period described in 
                [paragraphs] paragraph (1), (4), or (5) of 
                subsection (g).
As used in this subsection, the term ``product'' includes an 
approved product.

           *       *       *       *       *       *       *

    (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 [Director] Commissioner. 
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 [Director] 
        Commissioner 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 [Director] Commissioner 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 
        [Director] Commissioner 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 
[Director] Commissioner shall notify--
            (i)  * * *

           *       *       *       *       *       *       *

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 [Director] 
Commissioner, 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 [Director] Commissioner of the 
determination, and shall publish in the Federal Register a 
notice of such determination.
    (B)(i) If a petition is submitted to the Secretary making 
the determination under subparagraph (A), not later than 180 
days after the publication of the determination under 
subparagraph (A), upon which it may reasonably be determined 
that the applicant did not act with due diligence during the 
applicable regulatory review period, the Secretary making the 
determination shall, in accordance with regulations promulgated 
by such Secretary, determine if the applicant acted with due 
diligence during the applicable regulatory review period. The 
Secretary making the determination shall make such 
determination not later than 90 days after the receipt of such 
a petition. For a drug product, device, or additive subject to 
the Federal Food, Drug, and Cosmetic Act or the Public Health 
Service Act, the Secretary may not delegate the authority to 
make the determination prescribed by this clause to an office 
below the Office of the [Director] Commissioner of Food and 
Drugs. For a product subject to the Virus-Serum-Toxin Act, the 
Secretary of Agriculture may not delegate the authority to make 
the determination prescribed by this clause to an office below 
the [office] Office of the Assistant Secretary for Marketing 
and Inspection Services.
    (ii) The Secretary making a determination under clause (i) 
shall notify the [Director] Commissioner 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 [Director] 
Commissioner 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 [Director] Commissioner.
    (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 [Director] Commissioner 
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 [Director] 
        Commissioner to determine under subsection (a)(1), (2), 
        and (3) the eligibility of a patent for extension;

           *       *       *       *       *       *       *

            (v) such patent or other information as the 
        [Director] Commissioner may require.
    (B) If the [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner solely on 
the basis of the representations contained in the application 
for the extension. If the [Director] Commissioner 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 [Director] 
Commissioner 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 [Director] Commissioner 
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.

           *       *       *       *       *       *       *

    (g) For purposes of this section, the term ``regulatory 
review period'' has the following meanings:
            (1)  * * *

           *       *       *       *       *       *       *

            (6) A period determined under any of the preceding 
        paragraphs is subject to the following limitations:
                    (A)  * * *
                    (B) If the patent involved was issued 
                before the date of the enactment of this 
                section and--
                            (i)  * * *

           *       *       *       *       *       *       *

                            (iii) no clinical investigation 
                        described in paragraph (3) was begun or 
                        product development protocol described 
                        in such paragraph was [submittted] 
                        submitted,
                before such date for the approved product the 
                period of extension determined on the basis of 
                the regulatory review period determined under 
                any such paragraph may not exceed five years.
    (h) The [Director] Commissioner may establish such fees as 
the [Director] Commissioner 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 
[Director] Commissioner 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 [Director] 
        Commissioner;
            (3) waives the right to receive a patent on the 
        invention within such period as may be prescribed by 
        the [Director] Commissioner; and
            (4) pays application, publication, and other 
        processing fees established by the [Director] 
        Commissioner.
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 [Director] Commissioner 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 [Director] Commissioner 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 
[Director] Commissioner, 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 [Director] Commissioner 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.
     * * * * * * *
183.    Right [of] to compensation.
     * * * * * * *

Sec. 185. Patent barred for filing without license

    Notwithstanding any other provisions of law any person, and 
his successors, assigns, or legal representatives, shall not 
receive a United States patent for an invention if that person, 
or his successors, assigns, or legal representatives shall, 
without procuring the license prescribed in section 184 of this 
title, have made, or consented to or assisted another's making, 
application in a foreign country for a patent or for the 
registration of a utility model, industrial design, or model in 
respect of the invention. A United States patent issued to such 
person, his successors, assigns, or legal representatives shall 
be invalid, unless the failure to procure such license was 
through error and without deceptive intent, and the patent does 
not disclose subject matter within the scope of section 181 of 
this title.[.]

           *       *       *       *       *       *       *


CHAPTER 18--PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE

           *       *       *       *       *       *       *


Sec. 201. Definitions

    As used in this chapter--
            (a) The term ``Federal agency'' means any executive 
        agency as defined in section 105 of title 5, [United 
        States Code,] and the military departments as defined 
        by section 102 of title [5, United States Code] 5.

           *       *       *       *       *       *       *


Sec. 202. Disposition of rights

    (a)  * * *
    (b)(1)  * * *

           *       *       *       *       *       *       *

    (4) If the contractor believes that a determination is 
contrary to the policies and objectives of this chapter or 
constitutes an abuse of discretion by the agency, the 
determination shall be subject to the [last paragraph of 
section 203(2)] section 203(b).
    (c) Each funding agreement with a small business firm or 
nonprofit organization shall contain appropriate provisions to 
effectuate the following:
            (1)  * * *

           *       *       *       *       *       *       *

            (4) With respect to any invention in which the 
        contractor elects rights, the Federal agency shall have 
        a nonexclusive, nontransferrable, irrevocable, paid-up 
        license to practice or have practiced for or on behalf 
        of the United States any subject invention throughout 
        the world: Provided, That the funding agreement may 
        provide for such additional [rights;] rights, including 
        the right to assign or have assigned foreign patent 
        rights in the subject invention, as are determined by 
        the agency as necessary for meeting the obligations of 
        the United States under any treaty, international 
        agreement, arrangement of cooperation, memorandum of 
        understanding, or similar arrangement, including 
        military agreement relating to weapons development and 
        production.
            (5) The right of the Federal agency to require 
        periodic reporting on the utilization or efforts at 
        obtaining utilization that are being made by the 
        contractor or his licensees or assignees: Provided, 
        That any such information as well as any information on 
        utilization or efforts at obtaining utilization 
        obtained as part of a proceeding under section 203 of 
        this chapter shall be treated by the Federal agency as 
        commercial and financial information obtained from a 
        person and privileged and confidential and not subject 
        to disclosure under section 552 of title 5 [of the 
        United States Code].

           *       *       *       *       *       *       *


Sec. 203. March-in rights

    [(1.] (a) With respect to any subject invention in which a 
small business firm or nonprofit organization has acquired 
title under this chapter, the Federal agency under whose 
funding agreement the subject invention was made shall have the 
right, in accordance with such procedures as are provided in 
regulations promulgated hereunder to require the contractor, an 
assignee or exclusive licensee of a subject invention to grant 
a nonexclusive, partially exclusive, or exclusive license in 
any field of use to a responsible applicant or applicants, upon 
terms that are reasonable under the circumstances, and if the 
contractor, assignee, or exclusive licensee refuses such 
request, to grant such a license itself, if the Federal agency 
determines that such--
            [(a)] (1) action is necessary because the 
        contractor or assignee has not taken, or is not 
        expected to take within a reasonable time, effective 
        steps to achieve practical application of the subject 
        invention in such field of use;
            [(b)] (2) action is necessary to alleviate health 
        or safety needs which are not reasonably satisfied by 
        the contractor, assignee, or their licensees;
            [(c)] (3) action is necessary to meet requirements 
        for public use specified by Federal regulations and 
        such requirements are not reasonably satisfied by the 
        contractor, assignee, or licensees; or
            [(d)] (4) action is necessary because the agreement 
        required by section 204 has not been obtained or waived 
        or because a licensee of the exclusive right to use or 
        sell any subject invention in the United States is in 
        breach of its agreement obtained pursuant to section 
        204.
    [(2)] (b) A determination pursuant to this section or 
section 202(b)(4) shall not be subject to the Contract Disputes 
Act (41 U.S.C. Sec. 601 et seq.). An administrative appeals 
procedure shall be established by regulations promulgated in 
accordance with section 206. Additionally, any contractor, 
inventor, assignee, or exclusive licensee adversely affected by 
a determination under this section may, at any time within 
sixty days after the determination is issued, file a petition 
in the United States Court of Federal Claims, which shall have 
jurisdiction to determine the appeal on the record and to 
affirm, reverse, remand or modify, [``,] as appropriate, the 
determination of the Federal agency. In cases described in 
paragraphs [(a) and (c)] (1) and (3) of subsection (a), the 
agency's determination shall be held in abeyance pending the 
exhaustion of appeals or petitions filed under the preceding 
sentence.

           *       *       *       *       *       *       *


Sec. 209. Restrictions on licensing of federally owned inventions

    (a) No Federal agency shall grant any license under a 
patent or patent application on a federally owned invention 
unless the person requesting the license has supplied the 
agency with a plan for development and/or marketing of the 
invention, except that any such plan may be treated by the 
Federal agency as commercial and financial information obtained 
from a person and privileged and confidential and not subject 
to disclosure under section 552 of title 5 [of the United 
States Code].

           *       *       *       *       *       *       *

    (f) Any grant of a license shall contain such terms and 
conditions as the Federal agency determines appropriate for the 
protection of the interests of the Federal Government and the 
public, including provisions for the following:
            (1) periodic reporting on the utilization or 
        efforts at obtaining utilization that are being made by 
        the licensee with particular reference to the plan 
        submitted: Provided, That any such information may be 
        treated by the Federal agency as commercial and 
        financial information obtained from a person and 
        privileged and confidential and not subject to 
        disclosure under section 552 of title 5 [of the United 
        States Code];

           *       *       *       *       *       *       *


Sec. 210. Precedence of chapter

    (a) This chapter shall take precedence over any other Act 
which would require a disposition of rights in subject 
inventions of small business firms or nonprofit organizations 
contractors in a manner that is inconsistent with this chapter, 
including but not necessarily limited to the following:
            (1)  * * *

           *       *       *       *       *       *       *

            (11) section 9 of the Federal Nonnuclear Energy 
        Research and Development Act of 1974 (42 U.S.C. [5901] 
        5908; 88 Stat. 1878);

           *       *       *       *       *       *       *

            (20) section 12 of the Native Latex 
        Commercialization and Economic Development Act of 1978 
        (7 U.S.C. [178(j)] 178j; 92 Stat. 2533); and

           *       *       *       *       *       *       *

    (c) Nothing in this chapter is intended to limit the 
authority of agencies to agree to the disposition of rights in 
inventions made in the performance of work under funding 
agreements with persons other than nonprofit organizations or 
small business firms in accordance with the Statement of 
Government Patent Policy issued on February 18, 1983, agency 
regulations, or other applicable regulations or to otherwise 
limit the authority of agencies to allow such persons to retain 
ownership of inventions except that all funding agreements, 
including those with other than small business firms and 
nonprofit organizations, shall include the requirements 
established in [paragraph] section 202(c)(4) and section 203 of 
this title.[.] Any disposition of rights in inventions made in 
accordance with the Statement or implementing regulations, 
including any disposition occurring before enactment of this 
section, are hereby authorized.
    (d) Nothing in this chapter shall be construed to require 
the disclosure of intelligence sources or methods or to 
otherwise affect the authority granted to the [Director] 
Commissioner of Central Intelligence by statute or Executive 
order for the protection of intelligence sources or methods.

           *       *       *       *       *       *       *


           PART III--PATENTS AND PROTECTION OF PATENT RIGHTS

Chap.                                                               Sec.
      Amendment and Correction of Patents............................251
     * * * * * * *
      Remedies for Infringement of Patent, and Other Actions.........281
     * * * * * * *

            CHAPTER 25--AMENDMENT AND CORRECTION OF PATENTS

Sec.
251.    Reissue of defective patents.
     * * * * * * *
[256.    Misjoinder of inventor.]
256.    Correction of named inventor.

Sec. 251. Reissue of defective patents

    Whenever any patent is, through error without any deceptive 
intention, 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 [Director] Commissioner 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 [Director] Commissioner 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.
    The provisions of this title relating to applications for 
patent shall be applicable to applications for reissue of a 
patent, except that application for reissue may be made and 
sworn to by the assignee of the entire interest if the 
application does not seek to enlarge the scope of the claims of 
the original patent.
    No reissued patent shall be granted enlarging the scope of 
the claims of the original patent unless applied for within two 
years from the grant 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 [Director] Commissioner 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 [Director] Commissioner 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 
[Director] Commissioner 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 [Director] Commissioner 
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 [Director] 
Commissioner shall issue a certificate accordingly.

           *       *       *       *       *       *       *


              CHAPTER 27--GOVERNMENT INTERESTS IN PATENTS

           *       *       *       *       *       *       *


Sec. 267. Time for taking action in Government applications

    Notwithstanding the provisions of sections 133 and 151 of 
this title, the [Director] Commissioner 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 [Director] Commissioner that the invention 
disclosed therein is important to the armament or defense of 
the United States.

           *       *       *       *       *       *       *


   CHAPTER 29--REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

           *       *       *       *       *       *       *


Sec. 282. Presumption of validity; defenses

    A patent shall be presumed valid. Each claim of a patent 
(whether in independent, dependent, or multiple dependent form) 
shall be presumed valid independently of the validity of other 
claims; dependent or multiple dependent claims shall be 
presumed valid even though dependent upon an invalid claim. 
Notwithstanding the preceding sentence, if a claim to a 
composition of matter is held invalid and that claim was the 
basis of a determination of nonobviousness under section 
103(b)(1), the process shall no longer be considered nonobvious 
solely on the basis of section 103(b)(1). The burden of 
establishing invalidity of a patent or any claim thereof shall 
rest on the party asserting such invalidity.
    The following shall be defenses in any action involving the 
validity or infringement of a patent and shall be pleaded:
            (1)  * * *

           *       *       *       *       *       *       *

            (4) Any other fact or act made a defense by this 
        title.
    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 154(b) or 156 of this title because of 
the material failure--
            (1) by the applicant for the extension, or
            (2) by the [Director] Commissioner,
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. 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 [Director] Commissioner, 
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 [Director] Commissioner. The [Director] 
Commissioner shall, on receipt of such notices, enter the same 
in the file of such patent.

           *       *       *       *       *       *       *


Sec. 294. Voluntary arbitration

    (a)  * * *
    (b) Arbitration of such disputes, awards by arbitrators and 
confirmation of awards shall be governed by title 9, [United 
States Code,] to the extent such title is not inconsistent with 
this section. In any such arbitration proceeding, the defenses 
provided for under section 282 of this title shall be 
considered by the arbitrator if raised by any party to the 
proceeding.
    (c) An award by an arbitrator shall be final and binding 
between the parties to the arbitration but shall have no force 
or effect on any other person. The parties to an arbitration 
may agree that in the event a patent which is the subject 
matter of an award is subsequently determined to be invalid or 
unenforceable in a judgment rendered by a court [to] of 
competent jurisdiction from which no appeal can or has been 
taken, such award may be modified by any court of competent 
jurisdiction upon application by any party to the arbitration. 
Any such modification shall govern the rights and obligations 
between such parties from the date of such modification.
    (d) When an award is made by an arbitrator, the patentee, 
his assignee or licensee shall give notice thereof in writing 
to the [Director] Commissioner. 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 [Director] Commissioner. The 
[Director] Commissioner 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 [Director] 
Commissioner, any party to the proceeding may provide such 
notice to the [Director] Commissioner.
    (e) The award shall be unenforceable until the notice 
required by subsection (d) is received by the [Director] 
Commissioner.

           *       *       *       *       *       *       *


CHAPTER 30--PRIOR ART CITATIONS TO OFFICE AND EX PARTE REEXAMINATION OF 
                                PATENTS

           *       *       *       *       *       *       *


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 [Director] 
Commissioner 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 [Director] Commissioner promptly will send a copy 
of the request to the owner of record of the patent.

Sec. 303. Determination of issue by [Director] Commissioner

    (a) Within three months following the filing of a request 
for reexamination under the provisions of section 302 of this 
title, the [Director] 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 [Director] 
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 [Director's] 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 [Director] 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 [Director] 
Commissioner may refund a portion of the reexamination fee 
required under section 302 of this title.

Sec. 304. Reexamination order by [Director] Commissioner

    If, in a determination made under the provisions of 
subsection 303(a) of this title, the [Director] 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. 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 [Director] Commissioner 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.
    (b) Any proposed amended or new claim determined to be 
patentable and incorporated into a patent following a 
reexamination proceeding will have the same effect as that 
specified in section 252 of this title for reissued patents on 
the right of any person who made, purchased, or used within the 
United States, or imported into the United States, anything 
patented by such proposed amended or new claim, or who made 
substantial preparation for the same, prior to issuance of a 
certificate under the provisions of subsection (a) of this 
section.

       CHAPTER 31--OPTIONAL INTER PARTES REEXAMINATION PROCEDURES

Sec.
311.    Request for inter partes reexamination.
312.    Determination of issue by [Director] Commissioner.
313.    Inter partes reexamination order by [Director] Commissioner.
     * * * * * * *

Sec. 311. Request for inter partes reexamination

    (a) In General.--Any [person] third-party requester at any 
time may file a request for inter partes reexamination by the 
Office of a patent on the basis of any prior art cited under 
the provisions of section 301.
    (b) Requirements.--The request shall--
            (1) be in writing, include the identity of the real 
        party in interest, and be accompanied by payment of an 
        inter partes reexamination fee established by the 
        [Director] Commissioner under section 41; and
            (2) set forth the pertinency and manner of applying 
        cited prior art to every claim for which reexamination 
        is requested.
            (c) Copy.--[Unless the requesting person is the 
        owner of the patent, the Director] The Commissioner 
        promptly shall send a copy of the request to the owner 
        of record of the patent.

Sec. 312. Determination of issue by [Director] Commissioner

    (a) Reexamination.--Not later than 3 months after the 
filing of a request for inter partes reexamination under 
section 311, the [Director] Commissioner shall determine 
whether a substantial new question of patentability affecting 
any claim of the patent concerned is raised by the request, 
with or without consideration of other patents or printed 
publications. [On the Director's initiative, and at 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] Commissioner's 
determination under subsection (a) shall be placed in the 
official file of the patent, and a copy shall be promptly given 
or mailed to the owner of record of the patent and to the 
third-party requester[, if any].
    (c) Final Decision.--A determination by the [Director] 
Commissioner under subsection (a) shall be final and non-
appealable. Upon a determination that no substantial new 
question of patentability has been raised, the [Director] 
Commissioner may refund a portion of the inter partes 
reexamination fee required under section 311.

Sec. 313. Inter partes reexamination order by [Director] Commissioner

    If, in a determination made under section 312(a), the 
[Director] Commissioner finds that a substantial new question 
of patentability affecting a claim of a patent is raised, the 
determination shall include an order for inter partes 
reexamination of the patent for resolution of the question. The 
order may be accompanied by the initial action of the Patent 
and Trademark Office on the merits of the inter partes 
reexamination conducted in accordance with section 314.

Sec. 314. Conduct of inter partes reexamination proceedings

    (a) In General.--Except as otherwise provided in this 
section, reexamination shall be conducted according to the 
procedures established for initial examination under the 
provisions of sections 132 and 133. In any inter partes 
reexamination proceeding under this chapter, the patent owner 
shall be permitted to propose any amendment to the patent and a 
new claim or claims, except that no proposed amended or new 
claim enlarging the scope of the claims of the patent shall be 
permitted.
    (b) Response.--(1) [This subsection shall apply to any 
inter partes reexamination proceeding in which the order for 
inter partes reexamination is based upon a request by a third-
party requester.
    [(2)] With the exception of the inter partes reexamination 
request, any document filed by either the patent owner or the 
third-party requester shall be served on the other party. In 
addition, [the third-party requester shall receive a copy] the 
Office shall send to the third-party requester a copy of any 
communication sent by the Office to the patent owner concerning 
the patent subject to the inter partes reexamination 
proceeding.
    [(3)] (2) 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] Commissioner for good cause, all inter partes 
reexamination proceedings under this section, including any 
appeal to the Board of Patent Appeals and Interferences, shall 
be conducted with special dispatch within the Office.

Sec. 315. Appeal

    (a)  * * *

           *       *       *       *       *       *       *

    (c) Civil Action.--A third-party requester whose request 
for an inter partes reexamination results in an order under 
section 313 is estopped from asserting at a later time, in any 
civil action arising in whole or in part under section 1338 of 
title 28, [United States Code,] the invalidity of any claim 
finally determined to be valid and patentable on any ground 
which the third-party requester raised or could have raised 
during the inter partes reexamination proceedings. This 
subsection does not prevent the assertion of invalidity based 
on newly discovered prior art unavailable to the third-party 
requester and the Patent and Trademark Office at the time of 
the inter partes reexamination proceedings.

Sec. 316. Certificate of patentability, unpatentability, and claim 
                    cancellation

    (a) In General.--In an inter partes reexamination 
proceeding under this chapter, when the time for appeal has 
expired or any appeal proceeding has terminated, the [Director] 
Commissioner shall issue and publish a certificate canceling 
any claim of the patent finally determined to be unpatentable, 
confirming any claim of the patent determined to be patentable, 
and incorporating in the patent any proposed amended or new 
claim determined to be patentable.
    (b) Amended or New Claim.--Any proposed amended or new 
claim determined to be patentable and incorporated into a 
patent following an inter partes reexamination proceeding shall 
have the same effect as that specified in section 252 of this 
title for reissued patents on the right of any person who made, 
purchased, or used within the United States, or imported into 
the United States, anything patented by such proposed amended 
or new claim, or who made substantial preparation therefor, 
prior to issuance of a certificate under the provisions of 
subsection (a) of this section.

Sec. 317. Inter partes reexamination prohibited

    (a) Order for Reexamination.--Notwithstanding any provision 
of this chapter, once an order for inter partes reexamination 
of a patent has been issued under section 313, neither the 
[patent owner nor the third-party requester, if any, nor 
privies of either] third-party requester nor its privies, may 
file a subsequent request for inter partes reexamination of the 
patent until an inter partes reexamination certificate is 
issued and published under section 316, unless authorized by 
the [Director] Commissioner.
    (b) Final Decision.--Once a final decision has been entered 
against a party in a civil action arising in whole or in part 
under section 1338 of title 28, [United States Code,] that the 
party has not sustained its burden of proving the invalidity of 
any patent claim in suit or if a final decision in an inter 
partes reexamination proceeding instituted by a third-party 
requester is favorable to the patentability of any original or 
proposed amended or new claim of the patent, then neither that 
party nor its privies may thereafter request an inter partes 
reexamination of any such patent claim on the basis of issues 
which that party or its privies raised or could have raised in 
such civil action or inter partes reexamination proceeding, and 
an inter partes reexamination requested by that party or its 
privies on the basis of such issues may not thereafter be 
maintained by the Office, notwithstanding any other provision 
of this chapter. This subsection does not prevent the assertion 
of invalidity based on newly discovered prior art unavailable 
to the third-party requester and the Patent and Trademark 
Office at the time of the inter partes reexamination 
proceedings.

           *       *       *       *       *       *       *


                   PART IV--PATENT COOPERATION TREATY

           *       *       *       *       *       *       *


                    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 [Director] Commissioner.

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 
[Director] Commissioner.

           *       *       *       *       *       *       *


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 [Director] Commissioner 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 
[Director] Commissioner 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 [Director] Commissioner, 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.
     * * * * * * *
[374.    Publication of international application: Effect.]
374.    Publication of international application.
     * * * * * * *

Sec. 371. National stage: Commencement

    (a)  * * *
    (b) Subject to subsection (f) of this section, the national 
stage shall commence with the expiration of the applicable time 
limit under article 22(1) or (2), or under article 39(1)(a) of 
the treaty.

           *       *       *       *       *       *       *

    (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 [Director] Commissioner. 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 
[Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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. 375. Patent issued on international application: Effect

    (a) A patent may be issued by the [Director] Commissioner 
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) A transmittal fee (see section 361(d))[;].
            (2) A search fee (see section 361(d))[;].
            (3) A supplemental search fee (to be paid when 
        required)[;].
            (4) A preliminary examination fee and any 
        additional fees (see section 362(b)).
            (5) Such other fees as established by the 
        [Director] Commissioner.
    (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 [Director] Commissioner. 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 [Director] Commissioner 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.
                              ----------                              


                          ACT OF JULY 5, 1946

        [Commonly referred to as the ``Trademark Act of 1946''.]

  AN ACT To provide for the registration and protection of trademarks 
used in commerce, to carry out the provisions of certain international 
conventions, and for other purposes.

           *       *       *       *       *       *       *


                    TITLE I--THE PRINCIPAL REGISTER

    Section 1. (a)(1) The owner of a trademark used in commerce 
may request registration of its trademark on the principal 
register hereby established by paying the prescribed fee and 
filing in the Patent and Trademark Office an application and a 
verified statement, in such form as may be prescribed by the 
[Director] Commissioner, and such number of specimens or 
facsimiles of the mark as used as may be required by the 
[Director] Commissioner.

           *       *       *       *       *       *       *

    (4) The applicant shall comply with such rules or 
regulations as may be prescribed by the [Director] 
Commissioner. The [Director] Commissioner shall promulgate 
rules prescribing the requirements for the application and for 
obtaining a filing date herein.
    (b)(1) A person who has a bona fide intention, under 
circumstances showing the good faith of such person, to use a 
trademark in commerce may request registration of its trademark 
on the principal register hereby established by paying the 
prescribed fee and filing in the Patent and Trademark Office an 
application and a verified statement, in such form as may be 
prescribed by the [Director] Commissioner.

           *       *       *       *       *       *       *

    (4) The applicant shall comply with such rules or 
regulations as may be prescribed by the [Director] 
Commissioner. The [Director] Commissioner shall promulgate 
rules prescribing the requirements for the application and for 
obtaining a filing date herein.

           *       *       *       *       *       *       *

    (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 [Director] 
Commissioner 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.] 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 [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner shall issue 
regulations setting forth guidelines for determining what 
constitutes good cause for purposes of this paragraph.
    (3) The [Director] Commissioner 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.
    (4) The failure to timely file a verified statement of use 
under paragraph (1) or an extension request under paragraph (2) 
shall result in abandonment of the application, unless it can 
be shown to the satisfaction of the [Director] Commissioner 
that the delay in responding was unintentional, in which case 
the time for filing may be extended, but for a period not to 
exceed the period specified in paragraphs (1) and (2) for 
filing a 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 
[Director] Commissioner.

              marks registrable on the principal register

    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 
[Director] Commissioner 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 [Director] 
Commissioner 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 [Director] Commissioner 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 [Director] Commissioner 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.
A mark which when used would cause dilution under section 43(c) 
may be refused registration only pursuant to a proceeding 
brought under section 13. A registration for a mark which when 
used would cause dilution under section 43(c) may be canceled 
pursuant to a proceeding brought under either section 14 or 
section 24.

           *       *       *       *       *       *       *

    Sec. 6. (a) The [Director] Commissioner 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.
    (b) No disclaimer, including those made under subsection 
(e) of section 7 of this Act, shall prejudice or affect the 
applicant's or registrant's rights then existing or thereafter 
arising in the disclaimed matter, or his right of registration 
on another application if the disclaimed matter be or shall 
have become distinctive of his goods or services.

                              certificates

    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 
[Director] Commissioner 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 [Director] Commissioner 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 [Director] 
Commissioner 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 [Director] Commissioner 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 [Director] 
Commissioner, or in his name by an employee of the Office duly 
designated by the [Director] Commissioner, 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 [Director] Commissioner 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 [Director] 
Commissioner 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.

                                duration

    Sec. 8. (a) Each registration shall remain in force for 10 
years, except that the registration of any mark shall be 
canceled by the [Director] Commissioner for failure to comply 
with the provisions of subsection (b) of this section, upon the 
expiration of the following time periods, as applicable:
            (1)  * * *

           *       *       *       *       *       *       *

    (b) During the 1-year period immediately preceding the end 
of the applicable time period set forth in subsection (a), the 
owner of the registration shall pay the prescribed fee and file 
in the Patent and Trademark Office--
            (1) 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 such number of specimens or facsimiles showing 
        current use of the mark as may be required by the 
        [Director] Commissioner; or
            (2) an affidavit setting forth those goods or 
        services recited in the registration on or in 
        connection with which the mark is not in use in 
        commerce and showing that any such nonuse is due to 
        special circumstances which excuse such nonuse and is 
        not due to any intention to abandon the mark.
    (c)(1) The owner of the registration may make the 
submissions required under this section within a grace period 
of 6 months after the end of the applicable time period set 
forth in subsection (a). Such submission is required to be 
accompanied by a surcharge prescribed by the [Director] 
Commissioner.
    (2) If any submission filed under this section is 
deficient, the deficiency may be corrected after the statutory 
time period and within the time prescribed after notification 
of the deficiency. Such submission is required to be 
accompanied by a surcharge prescribed by the [Director] 
Commissioner.
    (d) Special notice of the requirement for affidavits under 
this section shall be attached to each certificate of 
registration and notice of publication under section 12(c).
    (e) The [Director] Commissioner shall notify any owner who 
files 1 of the affidavits required by this section of the 
Commissioner's acceptance or refusal thereof and, in the case 
of a refusal, the reasons therefor.
    (f) If the registrant is not domiciled in the United 
States, the registrant 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 that person or mailing to that 
person 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 [Director] Commissioner.

                        renewal of registration

    Sec. 9. (a) Subject to the provisions of section 8, each 
registration may be renewed for periods of 10 years at the end 
of each successive 10-year period following the date of 
registration upon payment of the prescribed fee and the filing 
of a written application, in such form as may be prescribed by 
the [Director] Commissioner. Such application may be made at 
any time within 1 year before the end of each successive 10-
year period for which the registration was issued or renewed, 
or it may be made within a grace period of 6 months after the 
end of each successive 10-year period, upon payment of a fee 
and surcharge prescribed therefor. If any application filed 
under this section is deficient, the deficiency may be 
corrected within the time prescribed after notification of the 
deficiency, upon payment of a surcharge prescribed therefor.
    (b) If the [Director] Commissioner refuses to renew the 
registration, the [Director] Commissioner shall notify the 
registrant of the Commissioner's refusal and the reasons 
therefor.
    (c) If the registrant is not domiciled in the United 
States, the registrant 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 that person or mailing to that 
person 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 [Director] Commissioner.

                               assignment

    Sec. 10. (a) A registered mark or a mark for which an 
application to register has been filed shall be assignable with 
the good will of the business in which the mark is used, or 
with that part of the good will of the business connected with 
the use of and symbolized by the mark. Notwithstanding the 
preceding sentence, no application to register a mark under 
section 1(b) shall be assignable prior to the filing of an 
amendment under section 1(c) to bring the application into 
conformity with section 1(a) or the filing of the verified 
statement of use under section 1(d), except for an assignment 
to a successor to the business of the applicant, or portion 
thereof, to which the mark pertains, if that business is 
ongoing and existing. In any assignment authorized by this 
section, it shall not be necessary to include the good will of 
the business connected with the use of and symbolized by any 
other mark used in the business or by the name or style under 
which the business is conducted. Assignments shall be by 
instruments in writing duly executed. Acknowledgment shall be 
prima facie evidence of the execution of an assignment, and 
when the prescribed information reporting the assignment is 
recorded in the Patent and Trademark Office, the record shall 
be prima facie evidence of execution. An assignment shall be 
void against any subsequent purchaser for valuable 
consideration without notice, unless the prescribed information 
reporting the assignment is recorded in the Patent and 
Trademark Office within 3 months after the date of the 
subsequent purchase or prior to the subsequent purchase. The 
Patent and Trademark Office shall maintain a record of 
information on assignments, in such form as may be prescribed 
by the [Director] Commissioner.
    (b) An assignee not domiciled in the United States 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 that 
person or mailing to that person 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 
[Director] Commissioner.

           *       *       *       *       *       *       *


                              publication

    Sec. 12. (a) Upon the filing of an application for 
registration and payment of the prescribed fee, the [Director] 
Commissioner 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 
[Director] Commissioner 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 [Director] Commissioner that the delay in responding was 
unintentional, 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 
[Director] Commissioner 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 [Director] Commissioner 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.

                               opposition

    Sec. 13. (a) Any person who believes that he would be 
damaged by the registration of a mark upon the principal 
register, including as a result of dilution under section 
43(c), 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 [Director] Commissioner for good cause when requested 
prior to the expiration of an extension. The [Director] 
Commissioner 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 [Director] 
Commissioner.

           *       *       *       *       *       *       *

    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)  * * *

           *       *       *       *       *       *       *

            (3) an affidavit is filed with the [Director] 
        Commissioner 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 [Director] 
Commissioner 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 [Director] Commissioner shall notify any registrant who 
files the above-prescribed affidavit of the filing thereof.

                              interference

    Sec. 16. Upon petition showing extraordinary circumstances, 
the [Director] Commissioner 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. (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] Commissioner 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] Commissioner, the Deputy Commissioner, the 
Commissioner for Patents, the Commissioner for Trademarks, and 
administrative trademark judges who are appointed by the 
[Director] Commissioner.
    Sec. 18. In such proceedings the [Director] Commissioner 
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 
[Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner, shall, 
within twenty days after the appellant has filed notice of 
appeal according to paragraph (2) of this subsection, files 
notice with the [Director] Commissioner 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 [Director] Commissioner, within such time after 
the date of the decision from which the appeal is taken as the 
[Director] Commissioner prescribes, but in no case less than 60 
days after that date.
    (3) The [Director] Commissioner 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 
[Director] Commissioner forward the original or certified 
copies of such documents during pendency of the appeal. In an 
ex parte case, the [Director] Commissioner 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 [Director] 
Commissioner 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 [Director] Commissioner, 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 [Director] Commissioner 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 [Director] 
Commissioner 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 
[Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner, 
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 
[Director] Commissioner 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 1 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 
[Director] Commissioner 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.
    (c) For the purposes of registration on the supplemental 
register, a mark may consist of any trademark, symbol, label, 
package, configuration of goods, name, word, slogan, phrase, 
surname, geographical name, numeral,[,] device, any matter that 
as a whole is not functional, or any combination of any of the 
foregoing, but such mark must be capable of distinguishing the 
applicant's goods or services.

                              cancelation

    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, including as a result of dilution under section 
43(c), he may at any time, upon payment of the prescribed fee 
and the filing of a petition stating the ground therefor, apply 
to the [Director] Commissioner to cancel such registration. The 
[Director] Commissioner 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 [Director] Commissioner. 
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 [Director] Commissioner 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 [Director] Commissioner 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 [Director] Commissioner may issue 
a single certificate of registration for such mark.

                       TITLE V--FEES AND CHARGES

     Sec. 31. (a) The [Director] Commissioner shall 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. Fees 
established under this subsection may be adjusted by the 
[Director] Commissioner once each year to reflect, in the 
aggregate, any fluctuations during the preceding 12 months in 
the Consumer Price Index, as determined by the Secretary of 
Labor. Changes of less than 1 percent may be ignored. No fee 
established 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.
    (b) The [Director] Commissioner 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.

           *       *       *       *       *       *       *


                          TITLE VI--REMEDIES

           *       *       *       *       *       *       *


    Sec. 33. (a)  * * *
    (b) To extent that the right to use the registered mark has 
become incontestable under section 15, the registration shall 
be conclusive evidence of the validity of the registered mark 
and of the registration of the mark, of the registrant's 
ownership of the mark, and of the registrant's exclusive right 
to use the registered mark in commerce. Such conclusive 
evidence shall relate to the exclusive right to use the mark on 
or in connection with the goods or services specified in the 
affidavit filed under the provisions of section 15, or in the 
renewal application filed under the provisions of section 9 if 
the goods or services specified in the renewal are fewer in 
number, subject to any conditions or limitations in the 
registration or in such affidavit or renewal application. Such 
conclusive evidence of the right to use the registered mark 
shall be subject to proof of infringement as defined in section 
32, and shall be subject to the following defenses or defects:
    (1)  * * *

           *       *       *       *       *       *       *

    (8) That the mark is functional; or

           *       *       *       *       *       *       *

    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 [Director] 
Commissioner 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 [Director] 
Commissioner, 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 [Director] Commissioner, and it shall be 
the duty of the [Director] Commissioner 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.
    (d)(1)  * * *

           *       *       *       *       *       *       *

    (11) A person who suffers damage by reason of a wrongful 
seizure under this subsection has a cause of action against the 
applicant for the order under which such seizure was made, and 
shall be entitled to recover such relief as may be appropriate, 
including damages for lost profits, cost of materials, loss of 
good will, and punitive damages in instances where the seizure 
was sought in bad faith, and, unless the court finds 
extenuating circumstances, to recover a reasonable attorney's 
fee. The court in its discretion may award prejudgment interest 
on relief recovered under this paragraph, at an annual interest 
rate established under section 6621 of the Internal Revenue 
Code of [1954] 1986, commencing on the date of service of the 
claimant's pleadings setting forth the claim under this 
paragraph and ending on the date such recovery is granted, or 
for such shorter time as the court deems appropriate.
  Sec. 35. (a) When a violation of any right of the registrant 
of a mark registered in the Patent and Trademark Office, [a 
violation under section 43(a), (c), or (d),] a violation under 
section 43(a) or (d), or a willful violation under section 
43(c), shall have been established in any civil action arising 
under this Act, the plaintiff shall be entitled, subject to the 
provisions of sections 29 and 32, and subject to the principles 
of equity, to recover (1) defendant's profits, (2) any damages 
sustained by the plaintiff, and (3) the costs of the action. 
The court shall assess such profits and damages or cause the 
same to be assessed under its direction. In assessing profits 
the plaintiff shall be required to prove defendant's sales 
only, defendant must prove all elements of cost or deduction 
claimed. In assessing damages the court may enter judgment, 
according to the circumstances of the case, for any sum above 
the amount found as actual damages, not exceeding three times 
such amount. If the court shall find that the amount of the 
recovery based on profits is either inadequate or excessive the 
court may in its discretion enter judgment for such sum as the 
court shall find to be just, according to the circumstances of 
the case. Such sum in either of the above circumstances shall 
constitute compensation and not a penalty. The court in 
exceptional cases may award reasonable attorney fees to the 
prevailing party.
    (b) In assessing damages under subsection (a), the court 
shall, unless the court finds extenuating circumstances, enter 
judgment for three times such profits or damages, whichever is 
greater, together with a reasonable attorney's fee in the case 
of any violation of section 32(1)(a) of this Act (15 U.S.C. 
1114(1)(a)) or section 110 of the Act entitled ``An Act to 
incorporate the United States Olympic Association'', approved 
September 21, 1950 (36 U.S.C. 380) that consists of 
intentionally using a mark or designation, knowing such mark or 
designation is a counterfeit mark (as defined in section 34(d) 
of this Act (15 U.S.C. 1116(d)), in connection with the sale, 
offering for sale, or distribution of goods or services. In 
such cases, the court may in its discretion award prejudgment 
interest on such amount at an annual interest rate established 
under such 6621 of the Internal Revenue Code of [1954] 1986, 
commencing on the date of the service of the claimant's 
pleadings setting forth the claim for such entry and ending on 
the date such entry is made, or for such shorter time as the 
court deems appropriate.

           *       *       *       *       *       *       *

    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 
[Director] Commissioner, who shall make appropriate entry upon 
the records of the Patent and Trademark Office, and shall be 
controlled thereby.

           *       *       *       *       *       *       *

    Sec. 41. The [Director] Commissioner 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 [Director] Commissioner 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.

           *       *       *       *       *       *       *

    (e) A mark duly registered in the country of origin of the 
foreign applicant may be registered on the principal register 
if eligible, otherwise on the supplemental register herein 
provided. Such applicant shall submit, within such time period 
as may be prescribed by the [Director] Commissioner, a 
certification or a certified copy of the registration in the 
country of origin of the applicant. The application must state 
the applicant's bona fide intention to use the mark in 
commerce, but use in commerce shall not be required prior to 
registration.

           *       *       *       *       *       *       *


                 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 ``[Director] Commissioner'' means the Under 
Secretary of Commerce for Intellectual Property and [Director] 
Commissioner of the United States Patent and Trademark Office.

           *       *       *       *       *       *       *


                  TITLE XI--REPEAL OF PREVIOUS ACTS

           *       *       *       *       *       *       *


    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 [Director] Commissioner 
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

           *       *       *       *       *       *       *


                  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.

           *       *       *       *       *       *       *

            [Under Secretary of Commerce for Intellectual 
        Property and Director of the United States Patent and 
        Trademark Office.]
            Under Secretary of Commerce for Intellectual 
        Property and Commissioner of the United States Patent 
        and Trademark Office.

           *       *       *       *       *       *       *


Sec. 5315. Positions at level IV

    Level IV 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:
            Deputy Administrator of General Services.

           *       *       *       *       *       *       *

            [Deputy Under Secretary of Commerce for 
        Intellectual Property and Deputy Director of the United 
        States Patent and Trademark Office.]

           *       *       *       *       *       *       *

                              ----------                              


  INTELLECTUAL PROPERY AND COMMUNICATIONS OMNIBUS REFORM ACT OF 1999

           *       *       *       *       *       *       *


                     TITLE IV--INVENTOR PROTECTION

           *       *       *       *       *       *       *


             Subtitle B--Patent and Trademark Fee Fairness

           *       *       *       *       *       *       *


SEC. 4203. ADJUSTMENT OF TRADEMARK FEES.

    Notwithstanding the second sentence of section 31(a) of the 
Trademark Act of 1946 (15 U.S.C. 111(a)), the Under Secretary 
of Commerce for Intellectual Property and [Director] 
Commissioner of the United States Patent and Trademark Office 
is authorized in fiscal year 2000 to adjust trademark fees 
without regard to fluctuations in the Consumer Price Index 
during the preceding 12 months.

           *       *       *       *       *       *       *


                   Subtitle D--Patent Term Guarantee

           *       *       *       *       *       *       *


SEC. 4402. PATENT TERM GUARANTEE AUTHORITY.

    (a)  * * *
    (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''.

           *       *       *       *       *       *       *


   Subtitle E--Domestic Publication of Patent Applications Published 
                                Abroad

           *       *       *       *       *       *       *


[SEC. 4505. PRIOR ART EFFECT OF PUBLISHED APPLICATIONS.

    [Section 102(e) of title 35, United States Code, is amended 
to read as follows:
    [``(e) The invention was described in--
            [``(1) an application for patent, published under 
        section 122(b), by another filed in the United States 
        before the invention by the applicant for patent, 
        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
            [``(2) a patent granted on an application for 
        patent by another filed in the United States before the 
        invention by the applicant for patent, except that 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. 4505. PRIOR ART EFFECT OF PUBLISHED APPLICATIONS.

    Section 102(e) of title 35, United States Code, is amended 
to read as follows:
    ``(e) the invention was described in (1) an application for 
patent, published under section 122(b), by another filed in the 
United States before the invention by the applicant for patent 
or (2) a patent granted on an application for patent by another 
filed in the United States before the invention by the 
applicant for patent, except that an international application 
filed under the treaty defined in section 351(a) shall have the 
effects for the purposes of this subsection of an application 
filed in the United States if and only if the international 
application designated the United States and was published 
under Article 21(2) of such treaty in the English language; 
or''.

           *       *       *       *       *       *       *


SEC. 4507. CONFORMING AMENDMENTS.

    The following provisions of title 35, United States Code, 
are amended:
            (1) Section [11] 10 is amended in paragraph 1 of 
        subsection (a) by inserting ``and published 
        applications for patents'' after ``Patents''.
            (2) Section [12] 11 is amended--
                    (A)  * * *

           *       *       *       *       *       *       *

            (3) Section [13] 12 is amended--
                    (A)  * * *

           *       *       *       *       *       *       *

            (4) The items relating to sections [12 and 13] 11 
        and 12 in the table of sections for chapter 1 are each 
        amended by inserting ``and applications'' after 
        ``patents''.

           *       *       *       *       *       *       *

            (10) Section 374 is amended to read as follows:

``Sec. 374. Publication of international application

    ``The publication under the treaty defined in section 
351(a) of this title, of an international application 
designating the United States shall [confer the same rights and 
shall have the same effect under this title as an application 
for patent published] be deemed a publication under section 
122(b), except as provided in sections 102(e) and 154(d) of 
this title.''.

           *       *       *       *       *       *       *

            (12) The item relating to section 374 in the table 
        of contents for chapter 37 of title 35, United States 
        Code, is amended to read as follows:

``374. Publication of international application.''.

           *       *       *       *       *       *       *


[SEC. 4508. EFFECTIVE DATE.

    [Sections 4502 through 4507, and the amendments made by 
such sections, 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 4504 and 4505 shall 
apply to any such application voluntarily published by the 
applicant under procedures established under this subtitle that 
is pending on the date that is 1 year after the date of the 
enactment of this Act. The amendment made by section 4504 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.]

SEC. 4508. EFFECTIVE DATE.

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

           *       *       *       *       *       *       *


       Subtitle F--Optional Inter Partes Reexamination Procedure

           *       *       *       *       *       *       *


SEC. 4604. OPTIONAL INTER PARTES REEXAMINATION PROCEDURES.

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

           *       *       *       *       *       *       *

    (b) Conforming Amendment.--The table of chapters for part 
III of [title 25] title 35, United States Code, is amended by 
striking the item relating to chapter 30 and inserting the 
following:

           *       *       *       *       *       *       *


                Subtitle G--Patent and Trademark Office

           *       *       *       *       *       *       *


            CHAPTER 2--EFFECTIVE DATE; TECHNICAL AMENDMENTS

           *       *       *       *       *       *       *


SEC. 4732. TECHNICAL AND CONFORMING AMENDMENTS.

    (a) Amendments to Title 35, United States Code.--
            (1)  * * *

           *       *       *       *       *       *       *

            (9)(A) Section 303 of title 35, United States Code, 
        is amended--
                    (i) in the section heading by striking 
                ``Commissioner'' and inserting ``Director''; 
                and
                    (ii) in subsection (b), by striking 
                ``Commissioner's'' and inserting 
                ``Director's''.

           *       *       *       *       *       *       *

            (10)(A) Except as provided in subparagraph (B), 
        title 35, United States Code, other than sections 1 
        through 6 (as amended by chapter 1 of this subtitle), 
        is amended by striking ``Commissioner'' each place it 
        appears and inserting ``Director''.

           *       *       *       *       *       *       *


              Subtitle H--Miscellaneous Patent Provisions

           *       *       *       *       *       *       *


SEC. 4802. INTERNATIONAL APPLICATIONS.

    Section 119 of title 35, United States Code, is amended as 
follows:
            (1) In subsection (a), insert ``or in a WTO member 
        country,'' after ``or to citizens of the United 
        States,''.

           *       *       *       *       *       *       *


SEC. 4804. ELECTRONIC FILING AND PUBLICATIONS.

    (a)  * * *
            (b) Publicationa.--Section [11(a)] 10(a) of title 
        35, United States Code, is amended by amending the 
        matter preceding paragraph 1 to read as follows:

           *       *       *       *       *       *       *

    (c) Copies of Patents for Public Libraries.--Section [13] 
12 of title 35, United States Code, is amended by striking 
``printed copies of specifications and drawings of patents'' 
and inserting ``copies of specifications and drawings of 
patents in printed or electronic form''.

           *       *       *       *       *       *       *

                              ----------                              


              SECTION 901 OF TITLE 31, UNITED STATES CODE

Sec. 901. Establishment of agency Chief Financial Officers

    (a)  * * *

           *       *       *       *       *       *       *

    (b)(1)  * * *

           *       *       *       *       *       *       *

    (2) The agencies referred to in subsection (a)(2) are the 
following:
            (A)  * * *

           *       *       *       *       *       *       *

                    (I) The United States Patent and Trademark 
                Office.

           *       *       *       *       *       *       *


                                  
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