[House Report 107-18]
[From the U.S. Government Publishing Office]
107th Congress Report
HOUSE OF REPRESENTATIVES
1st Session 107-18
======================================================================
INTELLECTUAL PROPERTY AND HIGH TECHNOLOGY TECHNICAL AMENDMENTS ACT OF
2001
_______
March 12, 2001.--Committed to the Committee of the Whole House on the
State of the Union and ordered to be printed
_______
Mr. Sensenbrenner, from the Committee on the Judiciary, submitted the
following
R E P O R T
[To accompany S. 320]
[Including cost estimate of the Congressional Budget Office]
The Committee on the Judiciary, to whom was referred the
bill (S. 320) to make technical corrections in patent,
copyright, and trademark laws, having considered the same,
report favorably thereon with an amendment and recommend that
the bill as amended do pass.
CONTENTS
Page
The Amendment.................................................... 1
Purpose and Summary.............................................. 9
Background and Need for the Legislation.......................... 10
Committee Consideration.......................................... 11
Committee Oversight Findings..................................... 11
Performance Goals and Objectives................................. 11
New Budget Authority and Tax Expenditures........................ 11
Congressional Budget Office Cost Estimate........................ 11
Constitutional Authority Statement............................... 12
Section-by-Section Analysis and Discussion....................... 12
Changes in Existing Law Made by the Bill, as Reported............ 18
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 and High
Technology Technical Amendments Act of 2001''.
SEC. 2. OFFICERS AND EMPLOYEES.
(a) Renaming of Officers.--(1)(A) Except as provided in
subparagraph (B), title 35, United States Code, other than section
210(d), is amended--
(i) by striking ``Director'' each place it appears and
inserting ``Commissioner''; and
(ii) by striking ``Director's'' each place it appears and
inserting ``Commissioner's''.
(B) Section 3(b)(5) of title 35, United States Code, is amended by
striking ``Director'' the first place it appears and inserting
``Commissioner''.
(C) Section 3(a) of title 35, United States Code, is amended in the
subsection heading, by striking ``Director'' and inserting
``Commissioner''.
(D) Section 3(b)(1) of title 35, United States Code, is amended in
the paragraph heading, by striking ``director'' and inserting
``commissioner''.
(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)(A) Title 35, United States Code, other than subsection (f) of
section 3, is amended by striking ``Commissioner for Patents'' each
place it appears and inserting ``Assistant Commissioner for Patents''.
(B) Title 35, United States Code, other than subsection (f) of
section 3, is amended by striking ``Commissioner for Trademarks'' each
place it appears and inserting ``Assistant Commissioner for
Trademarks''.
(C) Section 3(b)(2) of title 35, United States Code, is amended--
(i) in the paragraph heading, by striking ``Commissioners''
and inserting ``Assistant commissioners'';
(ii) in subparagraph (A), in the last sentence--
(I) by striking ``a Commissioner'' and inserting
``an Assistant Commissioner''; and
(II) by striking ``the Commissioner'' and inserting
``the Assistant Commissioner'';
(iii) in subparagraph (B)--
(I) by striking ``Commissioners'' each place it
appears and inserting ``Assistant Commissioners'';
(II) by striking ``Commissioners' '' each place it
appears and inserting ``Assistant Commissioners' '';
and
(iv) in subparagraph (C), by striking ``Commissioners'' and
inserting ``Assistant Commissioners''.
(D) Section 3(f) of title 35, United States Code, is amended in
subparagraphs (A) and (B) of paragraph (2)--
(i) by striking ``the Commissioner'' each place it appears
and inserting ``the Assistant Commissioner''; and
(ii) by striking ``a Commissioner'' each place it appears
and inserting ``an Assistant Commissioner''.
(E) Section 13 of title 35, United States Code, is amended--
(i) by striking ``Commissioner of'' each place it appears
and inserting ``Assistant Commissioner for''; and
(ii) by striking ``Commissioners'' and inserting
``Assistant Commissioners''.
(F) Chapter 17 of title 35, United States Code, is amended by
striking ``Commissioner of Patents'' each place it appears and
inserting ``Assistant Commissioner for Patents''.
(G) Section 297 of title 35, United States Code, is amended by
striking ``Commissioner of Patents'' each place it appears and
inserting ``Commissioner''.
(4) 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.''.
(5) 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.''
and inserting
``Deputy Under Secretary of Commerce for Intellectual
Property and Deputy Commissioner of the United States Patent
and Trademark Office.''.
(6)(A) Sections 303 and 304 of title 35, United States Code, are
each amended in the section headings by striking ``Director'' and
inserting ``Commissioner''.
(B) The items relating to sections 303 and 304 in the table of
sections for chapter 30 of title 35, United States Code, are each
amended by striking ``Director'' and inserting ``Commissioner''.
(7)(A) Sections 312 and 313 of title 35, United States Code, are
each amended in the section headings by striking ``Director'' and
inserting ``Commissioner''.
(B) The items relating to sections 312 and 313 in the table of
sections for chapter 31 of title 35, United States Code, are each
amended by striking ``Director'' and inserting ``Commissioner''.
(8) Section 17(b) of the Trademark Act of 1946 (15 U.S.C. 1067) is
amended by striking ``Commissioner for Patents, the Commissioner for
Trademarks'' and inserting ``Assistant Commissioner for Patents, the
Assistant Commissioner for Trademarks''.
(b) Additional Clerical Amendments.--
(1) The following provisions of law are amended by striking
``Director'' each place it appears and inserting
``Commissioner''.
(A) Section 9(p)(1)(B) of the Small Business Act
(15 U.S.C. 638(p)(1)(B).
(B) Section 19 of the Tennessee Valley Authority
Act of 1933 (16 U.S.C. 831r).
(C) Section 182(b)(2)(A) of the Trade Act of 1974
(19 U.S.C. 2242(b)(2)(A)).
(D) Section 302(b)(2)(D) of the Trade Act of 1974
(19 U.S.C. 2412(b)(2)(D)).
(E) Section 702(d) of the Federal Food, Drug, and
Cosmetic Act (21 U.S.C. 372(d)).
(F) Section 1295(a)(4)(B) of title 28, United
States Code.
(G) Section 1744 of title 28, United States Code.
(H) Section 151 of the Atomic Energy Act of 1954
(42 U.S.C. 2181).
(I) Section 152 of the Atomic Energy Act of 1954
(42 U.S.C. 2182).
(J) Section 305 of the National Aeronautics and
Space Act of 1958 (42 U.S.C. 2457).
(K) Section 12(a) of the Solar Heating and Cooling
Demonstration Act of 1974 (42 U.S.C. 5510(a)), the last
place such term appears.
(L) Section 10(i) of the Trading with the enemy Act
(50 U.S.C. App. 10(i)).
(M) Sections 4203, 4506, 4606, and 4804(d)(2) of
the Intellectual Property and Communications Omnibus
Reform Act of 1999, as enacted by section 1000(a)(9) of
Public Law 106-113.
(2) The item relating to section 1744 in the table of
sections for chapter 115 of title 28, United States Code, is
amended by striking ``generally'' and inserting ``,
generally''.
(c) 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. CLARIFICATION OF 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) in subsection (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.--
(1) Appeal to the board of patent appeals and
interferences.--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''.
(2) Proceeding on appeal.--Section 143 of title 35, United
States Code, is amended by amending the third sentence to read
as follows: ``In an ex parte case or any reexamination case,
the Commissioner shall submit to the court in writing the
grounds for the decision of the Patent and Trademark Office,
addressing all the issues involved in the appeal. The court
shall, before hearing an appeal, give notice of the time and
place of the hearing to the Commissioner and the parties in the
appeal.''.
(c) Clerical Amendments.--
(1) Section 4604(a) 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 ``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. 4. PATENT AND TRADEMARK EFFICIENCY ACT AMENDMENTS.
(a) Deputy Commissioner.--
(1) 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,''.
(2) 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--
(1) in subsection (i), by inserting ``, privileged,'' after
``personnel''; and
(2) 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) 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. 5. 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. 6. 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 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 be
effective as of 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 Commissioner. 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 amendment made by section 4505 shall apply to the
prior-filed application in determining the filing date in the United
States of the application.''.
SEC. 7. 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 (d)(2) and (f),
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) Section 371(b) is amended by adding at the end a
period.
(21) Section 371(d) is amended by adding at the end a
period.
(22) 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. 8. 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) Additional Technical Amendments.--The Trademark Act of 1946 is
further amended as follows:
(1) Section 1(d)(1) (15 U.S.C. 1051(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 1(e) (15 U.S.C. 1051(e)) is amended to read as
follows:
``(e) If the applicant is not domiciled in the United States the
applicant may designate, by a document filed in the United States
Patent and Trademark Office, the name and address of a 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, or if the registrant does
not designate by a document filed in the United States Patent and
Trademark Office the name and address of a 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 on the
Commissioner.''.
(3) Section 8(f) (15 U.S.C. 1058(f)) is amended to read as
follows:
``(f) If the registrant is not domiciled in the United States, the
registrant may designate, by a document filed in the United States
Patent and Trademark Office, the name and address of a 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, or if the registrant does
not designate by a document filed in the United States Patent and
Trademark Office the name and address of a 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 on the
Commissioner.''.
(4) Section 9(c) (15 U.S.C. 1059(c)) is amended to read as
follows:
``(c) If the registrant is not domiciled in the United States the
registrant may designate, by a document filed in the United States
Patent and Trademark Office, the name and address of a 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, or if the registrant does
not designate by a document filed in the United States Patent and
Trademark Office the name and address of a 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 on the
Commissioner.''.
(5) Subsections (a) and (b) of section 10 (15 U.S.C.
1060(a) and (b)) are amended to read as follows:
``(a)(1) 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.
``(2) 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.
``(3) 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 United States Patent and Trademark
Office, the record shall be prima facie evidence of execution.
``(4) 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 United States
Patent and Trademark Office within 3 months after the date of the
assignment or prior to the subsequent purchase.
``(5) The United States Patent and Trademark Office shall maintain
a record of information on assignments, in such form as may be
prescribed by the Commissioner.
``(b) An assignee not domiciled in the United States may designate
by a document filed in the United States Patent and Trademark Office
the name and address of a 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, or if the assignee does not designate by a document filed
in the United States Patent and Trademark Office the name and address
of a 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 Commissioner.''.
(6) Section 23(c) (15 U.S.C. 1091(c)) is amended by
striking the second comma after ``numeral''.
(7) Section 33(b)(8) (15 U.S.C. 1115(b)(8)) is amended by
aligning the text with paragraph (7).
(8) Section 34(d)(1)(A) (15 U.S.C. 1116(d)(1)(A)) is
amended by striking ``section 110'' and all that follows
through ``(36 U.S.C. 380)'' and inserting ``section 220506 of
title 36, United States Code,''.
(9) Section 34(d)(1)(B)(ii) (15 U.S.C. 1116(d)(1)(B)(ii))
is amended by striking ``section 110'' and all that follows
through ``(36 U.S.C. 380)'' and inserting ``section 220506 of
title 36, United States Code''.
(10) Section 34(d)(11) is amended by striking ``6621 of the
Internal Revenue Code of 1954'' and inserting ``6621(a)(2) of
the Internal Revenue Code of 1986''.
(11) Section 35(b) (15 U.S.C. 1117(b)) is amended--
(A) by striking ``section 110'' and all that
follows through ``(36 U.S.C. 380)'' and inserting
``section 220506 of title 36, United States Code,'';
and
(B) by striking ``6621 of the Internal Revenue Code
of 1954'' and inserting ``6621(a)(2) of the Internal
Revenue Code of 1986''.
(12) Section 44(e) (15 U.S.C. 1126(e)) is amended by
striking ``a certification'' and inserting ``a true copy, a
photocopy, a certification,''.
SEC. 9. PATENT AND TRADEMARK FEE CLERICAL AMENDMENT.
The Patent and Trademark Fee Fairness Act of 1999 (113 Stat. 1537-
546 et seq.), as enacted by section 1000(a)(9) of Public Law 106-113,
is amended in section 4203, by striking ``111(a)'' and inserting
``1113(a)''.
SEC. 10. COPYRIGHT RELATED CORRECTIONS TO 1999 OMNIBUS REFORM ACT.
Title I 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 1007 is amended--
(A) in paragraph (2), by striking ``paragraph (2)''
and inserting ``paragraph (2)(A)''; and
(B) in paragraph (3), by striking ``1005(e)'' and
inserting ``1005(d)''.
(2) Section 1006(b) is amended by striking
``119(b)(1)(B)(iii)'' and inserting ``119(b)(1)(B)(ii)''.
(3)(A) Section 1006(a) is amended--
(i) in paragraph (1), by adding ``and'' after the
semicolon;
(ii) by striking paragraph (2); and
(iii) by redesignating paragraph (3) as paragraph
(2).
(B) Section 1011(b)(2)(A) is amended to read as follows:
``(A) in paragraph (1), by striking `primary
transmission made by a superstation and embodying a
performance or display of a work' and inserting
`performance or display of a work embodied in a primary
transmission made by a superstation or by the Public
Broadcasting Service satellite feed';''.
SEC. 11. AMENDMENTS TO TITLE 17, UNITED STATES CODE.
Title 17, United States Code, is amended as follows:
(1) Section 119(a)(6) is amended by striking ``of
performance'' and inserting ``of a performance''.
(2)(A) The section heading for section 122 is amended by
striking ``rights; secondary'' and inserting ``rights:
Secondary''.
(B) The item relating to section 122 in the table of
contents for chapter 1 is amended to read as follows:
``122. Limitations on exclusive rights: Secondary transmissions by
satellite carriers within local markets.''.
(3)(A) The section heading for section 121 is amended by
striking ``reproduction'' and inserting ``Reproduction''.
(B) The item relating to section 121 in the table of
contents for chapter 1 is amended by striking ``reproduction''
and inserting ``Reproduction''.
(4)(A) Section 106 is amended by striking ``107 through
121'' and inserting ``107 through 122''.
(B) Section 501(a) is amended by striking ``106 through
121'' and inserting ``106 through 122''.
(C) Section 511(a) is amended by striking ``106 through
121'' and inserting ``106 through 122''.
(5) Section 101 is amended--
(A) by moving the definition of ``computer
program'' so that it appears after the definition of
``compilation''; and
(B) by moving the definition of ``registration'' so
that it appears after the definition of ``publicly''.
(6) Section 110(4)(B) is amended in the matter preceding
clause (i) by striking ``conditions;'' and inserting
``conditions:''.
(7) Section 118(b)(1) is amended in the second sentence by
striking ``to it''.
(8) Section 119(b)(1)(A) is amended--
(A) by striking ``transmitted'' and inserting
``retransmitted''; and
(B) by striking ``transmissions'' and inserting
``retransmissions''.
(9) Section 203(a)(2) is amended--
(A) in subparagraph (A)--
(i) by striking ``(A) the'' and inserting
``(A) The''; and
(ii) by striking the semicolon at the end
and inserting a period;
(B) in subparagraph (B)--
(i) by striking ``(B) the'' and inserting
``(B) The''; and
(ii) by striking the semicolon at the end
and inserting a period; and
(C) in subparagraph (C), by striking ``(C) the''
and inserting ``(C) The''.
(10) Section 304(c)(2) is amended--
(A) in subparagraph (A)--
(i) by striking ``(A) the'' and inserting
``(A) The''; and
(ii) by striking the semicolon at the end
and inserting a period;
(B) in subparagraph (B)--
(i) by striking ``(B) the'' and inserting
``(B) The''; and
(ii) by striking the semicolon at the end
and inserting a period; and
(C) in subparagraph (C), by striking ``(C) the''
and inserting ``(C) The''.
(11) The item relating to section 903 in the table of
contents for chapter 9 is amended by striking ``licensure'' and
inserting ``licensing''.
SEC. 12. OTHER COPYRIGHT RELATED TECHNICAL AMENDMENTS.
(a) Amendment to Title 18.--Section 2319(e)(2) of title 18, United
States Code, is amended by striking ``107 through 120'' and inserting
``107 through 122''.
(b) Standard Reference Data.--(1) Section 105(f) of Public Law 94-
553 is amended by striking ``section 290(e) of title 15'' and inserting
``section 6 of the Standard Reference Data Act (15 U.S.C. 290e)''.
(2) Section 6(a) of the Standard Reference Data Act (15 U.S.C.
290e) is amended by striking ``Notwithstanding'' and all that follows
through ``United States Code,'' and inserting ``Notwithstanding the
limitations under section 105 of title 17, United States Code,''.
Purpose and Summary
The purpose of S. 320, the ``Intellectual Property and High
Technology Technical Amendments Act of 2001,'' is to remedy
miscellaneous technical and clerical drafting errors in the
U.S. Code and the Intellectual Property and Communications
Omnibus Reform Act (IPCORA), and to clarify provisions in title
IV of IPCORA, the ``American Inventor's Protection Act''
(AIPA).\1\ This bill makes these remedial changes in four
primary areas: patent law, trademark law, copyright law, and
the organization of the U.S. Patent and Trademark Office (PTO).
---------------------------------------------------------------------------
\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
S. 320 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\
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\2\ The Trademark Act of 1946, July 5, 1946, 15 U.S.C. 1501 et seq.
---------------------------------------------------------------------------
S. 320 is entirely consistent with Congress' efforts and
goals to craft patent and trademark law reform through the
AIPA.
The United States Copyright Office periodically forwards to
Congress recommendations for technical corrections to title 17,
the Copyright Act. S. 320 implements many of those
recommendations. S.320 corrects errors in references, spelling,
and punctuation; conforms the table of contents with section
headings; restores the definitions in chapter 1 to alphabetical
order; deletes an expired paragraph; and creates continuity in
the grammatical style used throughout title 17. These are
necessary amendments which clarify U.S. Copyright law.
On February 14, 2001, the Senate passed S. 320 by a
recorded vote of 98-0. That same day, Representative Coble,
Chairman of the Subcommittee on Courts, the Internet and
Intellectual Property, and the Subcommittee Ranking Member, Mr.
Berman, introduced two related technical corrections bills in
the House: H.R. 614, the ``Copyright Technical Corrections Act
of 2001,'' and H.R.615, the ``Intellectual Property Technical
Amendments Act of 2001.'' In the 106th Congress, the House
passed virtually identical technical corrections bills under
suspension of the rules: H.R. 4870, the ``Intellectual Property
Technical Amendments Act of 2000,'' and, H.R. 5106, the
``Copyright Technical Corrections Act of 2000.'' The Senate
failed to pass these bills during the final days of the 106th
Congress.
Review of S.320 revealed the need to correct typos that
exist in the Senate-passed text. S. 320, as amended by the
Committee on the Judiciary, makes additional technical and
clerical changes.
Committee Consideration
On March 8, 2001, the Committee met in open session and
ordered favorably reported the bill S. 320, with an amendment
in the Nature of a Substitute, by voice vote, a quorum being
present.
Committee Oversight Findings
In compliance with clause 3(c)(1) of rule XIII 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.
Performance Goals and Objectives
S. 320 does not authorize funding; therefore, clase 3(c) of
rule XIII of the Rules of the House of Representatives is
inapplicable.
New Budget and Tax Expenditures
Clause 3(c)(2) of House rule XIII is inapplicable because
this legislation does not provide new budgetary authority or
increased tax expenditures.
Congressional Budget Office Cost Estimate
In compliance with clause 3(c)(3) of rule XIII of the Rules
of the House of Representatives, the Committee sets forth, with
respect to the bill, S. 320, the following estimate and
comparison prepared by the Director of the Congressional Budget
Office under section 402 of the Congressional Budget Act of
1974:
U.S. Congress,
Congressional Budget Office,
Washington, DC, March 12, 2001.
Hon. F. James Sensenbrenner, Jr., Chairman,
Committee on the Judiciary,
House of Representatives, Washington, DC.
Dear Mr. Chairman: The Congressional Budget Office has
prepared the enclosed cost estimate for S. 320, the
Intellectual Property and High Technology Technical Amendments
Act of 2001.
If you wish further details on this estimate, we will be
pleased to provide them. The CBO staff contact is Ken Johnson.
Sincerely,
Dan L. Crippen, Director.
Enclosure.
S. 320--Intellectual Property and High Technology Technical Amendments
Act of 2001.
S. 320 contains a number of minor corrections to current
patent and trademark law. The act also would make technical
changes to several sections of law related to copyrights.
CBO estimates that enacting S. 320 would have no
significant impact on the federal budget because its provisions
are all technical in nature. Because the act would not affect
direct spending or receipts, pay-as-you-go procedures would not
apply.
S. 320 contains no intergovernmental or private-sector
mandates as defined in the Unfunded Mandates Reform Act and
would impose no costs on state, local, or tribal governments.
The CBO staff contact for this estimate is Ken Johnson.
This estimate was approved by Robert A. Sunshine, Assistant
Director for Budget Analysis.
Constitutional Authority Statement
Pursuant to clause 3(d)(1) of the rule XIII of the Rules of
the House of Representatives, the Committee finds the authority
for this legislation in Article I, section 8, clause 8, of the
Constitution.
Section-by-Section Analysis and Discussion
Sec. 1. Short Title.
The act may be cited as the ``Intellectual Property and
High Technology Technical Amendments Act of 2001.''
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. This section merely renames the titles of
the PTO officers appropriately throughout the United States
Code and revises such references throughout Federal law,
Executive order, rule, regulation, and other specified
documents.
Sec. 3. Clarification of 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. 301 et seq.
---------------------------------------------------------------------------
Section 3 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. 4. 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 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 prohibited from
participating on the Public Advisory Committee. This subsection
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) 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. 5. 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. 6. 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, including changes to section 4507 of IPCORA. 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 certain patent
applications starting on November 29, 2000. The effective date
language relating to section 102(e) of the patent code relates
to when the amended version of the statute creates ``prior
art'' by virtue of the publication of a patent specification.
All currently pending applications for patent and all issued
U.S. patents, whenever filed, will be subject to any prior art
created by virtue of amended section 102(e) since the AIPA does
nothing to alter the controlling U.S. Supreme Court precedent
holding that a patent specification publication is
constructively deemed prior art from its U.S. filing date.\5\
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\5\ See Alexander Milburn v. Davis-Bournonville Co., 270 U.S. 390
(1926).
---------------------------------------------------------------------------
Sec. 7. 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. 8. Technical Corrections in Trademark Law.
The first paragraph clarifies the statutory text of the
Trademark Act as it relates to damages. In 1999, the ``Anti-
Cybersquatting Consumer Protection Act'' \6\ established
certain damages for willful violation of Sec. 43(c) of the
Trademark Act.\7\ The present language entitles a plaintiff to
damages, but it 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.
---------------------------------------------------------------------------
\6\ H.R.3194, P. L. 106-113 (Nov. 29, 1999).
\7\ 15 U.S.C. Sec. 1125(c).
---------------------------------------------------------------------------
The second paragraph provides for additional technical
amendments, including four strictly clerical changes, such as
the deletion of a comma and the realignment of a paragraph. The
bill also makes additional changes to the Trademark Act
regarding the designation of persons involved with the filing
procedures for receiving notice and process correspondence
relating to the trademark registration.
Sec. 9. Patent and Trademark Fee Clerical Amendment.
Section 9 corrects a clerical error pertaining to the
section of the law cited relating to the adjustment of
trademark fees and the consumer price index. The change to the
cited reference does not make a substantive change in trademark
law.
Sec. 10. Copyright Related Corrections to 1999 Omnibus Reform Act.
This section makes amendments to Title I of IPCORA.
Paragraph (1)(A) amends section 1007(2) by striking
``paragraph (2)'' and inserting ``paragraph (2)(A)''.
Paragraph (1)(B) amends section 1007(3) by striking
``1005(e)'' and inserting ``1005(d)''. In section 1007(3), the
amendment instructions require paragraph 12 to be added to
subsection 119(a) ``as amended by section 1005(e)''. The
reference to section 1005(e) is wrong. Section 1005(d) amended
subsection 119(a), whereas section 1005(e) amended subsection
119(d). Section 1005(d) amended subsection 119(a) by adding
paragraph 11. Section 1005(e) amended subsection 119(d) by
rewriting its paragraph 11. This amendment corrects this.
Paragraph (2) amends section 1006(b) by striking
``119(b)(1)(B)(iii)'' and inserting ``119(b)(1)(B)(ii)''.
Section 1006(b) amended section 119(b)(1)(B)(iii) by inserting
``or the Public Broadcasting Service satellite feed'' after
``network station''. Section 119(b)(1)(B)(ii), not (iii),
should have been amended. Section 119(b)(1)(B)(iii) contains no
reference to ``network station''. Section 119(b)(1)(B)(ii) does
contain that reference, and it is clear that section 1006(b)
was intended to amend section 119(b)(1)(B)(ii).
Paragraphs (3)(A) and (3)(B) amend section 1006(a)(2) by
repealing it, redesignating the paragraphs and changing the
language in section 1011(b). The amendment in section
1006(b)(2) amends section 119(a)(1) by inserting new wording so
that the text will read as follows, with the new wording
italicized: ``primary transmission made by a superstation or by
the Public Broadcasting Service satellite feed and embodying a
performance or display of a work''.
The amendment in section 1011(b)(2)(A) subsequently amends
the same language but does not take the first amendment into
account. It directs that section 119(a)(1) be amended to delete
``primary transmission made by a superstation and embodying a
performance or display of a work'' (ignoring the fact that ``or
by the Public Broadcasting Service satellite feed'' has been
inserted into the middle of that phrase). In lieu of that
phrase, it inserts ``performance or display of a work embodied
in a primary transmission made by a superstation'' (but without
taking into account the addition of ``or by the Public
Broadcasting Service satellite feed''). As a result, it is
unclear what is to be done with the phrase ``or by the Public
Broadcasting Service satellite feed''. Although the intent is
clear, the language of sections 1006(a)(2) and 1011(b)(2)(A)
does not necessarily accomplish the intended result. These
paragraphs clarify the ambiguity and achieve the intended
result.
Sec. 11. Amendments to Title 17, United States Code.
This section makes amendments to title 17, United States
Code.
Paragraph (1) amends section 119(a)(6) by striking ``of
performance'' and inserting ``of a performance''. Section
1011(b)(2) of IPCORA amended section 119(a)(6) so that
``performance or display of a work embodied in'' is inserted
after ``by a satellite carrier of''. The word ``a'' is missing
between these two phrases. This section inserts it before
``performance'' so that the language will read ``by a satellite
carrier of a performance or display of a work embodied in''.
Paragraph (2)(A) amends the section heading for section 122
by striking ``rights; secondary'' and inserting ``rights:
Secondary''. Section 1002(a) of IPCORA added section 122 to
title 17. The title of section 122 has editorial errors. To
make it consistent with the style used throughout title 17, the
title is changed to substitute a colon in lieu of the semicolon
and ``secondary'' is capitalized. Paragraph (2)(B) amends the
item relating to section 122 in the table of contents for
chapter 1 to make it consistent with the change made by
paragraph (2)(A).
Paragraph (3)(A) amends the section heading for section 121
by striking ``reproduction'' and inserting ``Reproduction''.
Paragraph 3(B) amends the item relating to section 121 in the
table of contents for chapter 1 by striking ``reproduction''
and inserting ``Reproduction''. This makes the heading for
section 121 and the table of contents for chapter 1 conform to
the editorial style used for the rest of the headings for title
17 by capitalizing ``reproduction''.
Paragraphs (4)(A), (4)(B), and (4)(C) amend cross
references to the limitations on exclusive rights in copyright
to include section 122. Throughout title 17, such references to
``121'' are changed to ``122''. Paragraph 4(A) amends section
106 by striking ``107 through 121'' and inserting ``107 through
122''. Paragraph (4)(B) amends section 501(a) by striking ``106
through 121'' and inserting ``106 through 122''. Paragraph
(4)(C) amends section 511(a) by striking ``106 through 121''
and inserting ``106 through 122''.
Paragraph (5)(A) amends section 101 by moving the
definition of ``computer program'' so that it appears after the
definition of ``compilation''. Paragraph (5)(B) amends section
101 by moving the definition of ``registration'' so that it
appears after the definition of ``publicly''. This amendment
ensures that the definitions appear in alphabetical order.
Paragraph (6) amends section 110(4)(B) in the matter
preceding clause (i) by striking ``conditions;'' and inserting
``conditions:''. A colon is the proper punctuation when a
phrase that introduces multiple subparts is worded to include
``the following''.
Paragraph (7) amends section 118(b)(1) in the second
sentence by striking ``to it''. This section was amended by the
Copyright Royalty Tribunal Reform Act of 1993 to substitute
``Librarian of Congress'' for references to the ``Copyright
Royalty Tribunal'' (CRT). As originally enacted by the
Copyright Act of 1976, the second sentence in subsection(b)
used the pronoun ``it'' to refer to the CRT. As amended in
1993, the sentence now states, ``The Librarian of Congress
shall proceed on the basis of the proposals submitted to it. .
. .'' This amendment corrects that reference.
Paragraphs (8)(A) and (B) amend section 119(b)(1)(A).
Paragraph (A) strikes ``transmitted'' and inserts
``retransmitted''. Paragraph (B) strikes ``transmissions'' and
inserts ``retransmissions''. These paragraphs correct two
drafting errors in section 119(b)(1)(A) when it was enacted by
the Satellite Home Viewer Act of 1988.
Paragraphs (9)(A), (B) and (C) amend section 203(a)(2).
Paragraph (9)(A)(i) amends subparagraph (A) by striking ``(A)
the'' and inserts ``(A) The''. Paragraph (9)(A)(ii) amends
subparagraph (A) by striking the semicolon at the end and
inserting a period. Paragraph (9)(B)(i) amends subparagraph (B)
by striking ``(B) the'' and inserting ``(B) The''. Paragraph
(9)(B)(ii) amends subparagraph (B) by striking the semicolon at
the end and inserting a period. Paragraph (9)(C) amends
subparagraph (C) by striking ``(C) the'' and inserting ``(C)
The''.
Paragraphs (10)(A), (B) and (C) amend section 304(c)(2).
Paragraph (10)(A)(i) amends subparagraph (A) by striking ``(A)
the'' and inserting ``(A) The''. Paragraph (10)(A)(ii) amends
subparagraph (A) by striking the semicolon at the end and
inserting a period. Paragraph (10)(B)(i) amends subparagraph
(B) by striking ``(B) the'' and inserting ``(B) The''.
Paragraph (10)(B)(ii) amends subparagraph (B) by striking the
semicolon at the end and inserting a period. Paragraph (10)(C)
amends subparagraph (C) by striking ``(C) the'' and inserting
``(C) The''. The addition of subparagraph (C) to sections
203(a)(2) and 304(c)(2) resulted in inconsistent punctuation
and this amendment makes the punctuation in sections 203(a)(2)
and 304(c)(2) internally consistent.
Paragraph (11) amends the item relating to section 903 in
the table of contents for chapter 9 by striking ``licensure''
and inserting ``licensing''. As originally enacted in 1984, the
table of contents for chapter 9 and the text each had a
different heading for section 903. The heading in the text was
the same as it is now, which is ``Ownership, transfer,
licensing, and recordation''. The heading in the table of
contents was, ``Ownership and transfer.''. In 1997, a technical
amendment changed the heading in the table of sections to its
present form, which is, ``Ownership, transfer, licensure, and
recordation.''. The 1997 amendment did not change the heading
in the text to make it the same. This amendment makes both the
table of contents and the heading in the text the same.
Paragraph (12) amends section 109 by striking subsection
(e). Section 803 of the Computer Software Rental Amendments Act
of 1990 amended section 109 of title 17 by adding subsection
(e). According to section 804(c) the amendments made by section
803 shall not apply to public performances or displays that
occur on or after October 1, 1995. Therefore, section 109 is
expired.
Sec. 12. Other Copyright Related Technical Amendments.
This section makes other technical and conforming
amendments. Paragraph (a) amends title 18, section 2319(e)(2)
by striking ``107 through 120'' and inserting ``107 through
122''. Paragraph (b)(1) and (2) correct an incorrect reference
to an uncodified title. It is incorrect to directly cite to an
uncodified title.
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] Assistant 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] an Assistant Commissioner to
subsequent terms of 5 years as long as the
performance of the Assistant Commissioner as
set forth in the performance agreement in
subparagraph (B) is satisfactory.
(B) Salary and performance agreement.--The
Assistant 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 Assistant 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
Assistant Commissioners may receive a bonus in
an amount of up to, but not in excess of, 50
percent of the Assistant Commissioners' annual
rate of basic pay, based upon an evaluation by
the Secretary of Commerce, acting through the
[Director] Commissioner, of the Assistant
Commissioners' performance as defined in an
annual performance agreement between the
Assistant 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
Assistant Commissioners and the Secretary.
Payment of a bonus under this subparagraph may
be made to the Assistant Commissioners only to
the extent that such payment does not cause the
Assistant 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 Assistant 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 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 Assistant Commissioner
for Patents until the date on which [a] an 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 Assistant Commissioner
for Trademarks until the date on which [a] an 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].
* * * * * * *
(i) Open Meetings.--The meetings of each Advisory Committee
shall be open to the public, except that each Advisory
Committee may by majority vote meet in executive session when
considering personnel, priviledged, or other confidential
information.
(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] Assistant
Commissioner for Patents and the [Commissioner of] Assistant
Commissioner for Trademarks by the Secretary of Commerce, the
compensation of the Assistant 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 shall submit to the court in writing the
grounds for the decision of the Patent and Trademark Office,
addressing all the issues involved in the appeal.] In an ex
parte case or any reexamination case, the Commissioner shall
submit to the court in writing the grounds for the decision of
the Patent and Trademark Office, addressing all the issues
involved in the appeal. The court shall, before hearing an
appeal, give notice of the time and place of the hearing to the
Commissioner and the parties 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's] 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.
* * * * * * *
(d) Provisional Rights.--
(1) * * *
* * * * * * *
(4) Requirements for international applications.--
(A) Effective date.--The right under
paragraph (1) to obtain a reasonable royalty
based upon the publication under the treaty
defined in section 351(a) of an international
application designating the United States shall
commence on the date [on which the Patent and
Trademark Office receives a copy of the] of
publication under the treaty of the
international application, or, if the
publication under the treaty of the
international application is in a language
other than English, on the date on which the
Patent and Trademark Office receives a
translation of the [international application]
publication in the English language.
* * * * * * *
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. 181. Secrecy of certain inventions and withholding of patent
Whenever publication or disclosure by the publication of an
application or by the grant of a patent on an invention in
which the Government has a property interest might, in the
opinion of the head of the interested Government agency, be
detrimental to the national security, the [Commissioner of
Patents] Assistant Commissioner for Patents upon being so
notified shall order that the invention be kept secret and
shall withhold the publication of the application or the grant
of a patent therefor under the conditions set forth
hereinafter.
Whenever the publication or disclosure of an invention by
the publication of an application or by the granting of a
patent, in which the Government does not have a property
interest, might, in the opinion of the [Commissioner of
Patents] Assistant Commissioner for Patents, be detrimental to
the national security, he shall make the application for patent
in which such invention is disclosed available for inspection
to the Atomic Energy Commission, the Secretary of Defense, and
the chief officer of any other department or agency of the
Government designated by the President as a defense agency of
the United States.
Each individual to whom the application is disclosed shall
sign a dated acknowledgment thereof, which acknowledgment shall
be entered in the file of the application. If, in the opinion
of the Atomic Energy Commission, the Secretary of a Defense
Department, or the chief officer of another department or
agency so designated, the publication or disclosure of the
invention by the publication of the application or by the
granting of a patent therefor would be detrimental to the
national security, the Atomic Energy Commission, the Secretary
of a Defense Department, or such other chief officer shall
notify the [Commissioner of Patents] Assistant Commissioner for
Patents and the [Commissioner of Patents] Assistant
Commissioner for Patents shall order that the invention be kept
secret and shall withhold the publication of the application or
the grant of a patent for such period as the national interest
requires, and notify the applicant thereof. Upon proper showing
by the head of the department or agency who caused the secrecy
order to be issued that the examination of the application
might jeopardize the national interest, the [Commissioner of
Patents] Assistant Commissioner for Patents shall thereupon
maintain the application in a sealed condition and notify the
applicant thereof. The owner of an application which has been
placed under a secrecy order shall have a right to appeal from
the order to the Secretary of Commerce under rules prescribed
by him.
An invention shall not be ordered kept secret and the
publication of an application or the grant of a patent withheld
for a period of more than one year. The [Commissioner of
Patents] Assistant Commissioner for Patents shall renew the
order at the end thereof, or at the end of any renewal period,
for additional periods of one year upon notification by the
head of the department or the chief officer of the agency who
caused the order to be issued that an affirmative determination
has been made that the national interest continues so to
require. An order in effect, or issued, during a time when the
United States is at war, shall remain in effect for the
duration of hostilities and one year following cessation of
hostilities. An order in effect, or issued, during a national
emergency declared by the President shall remain in effect for
the duration of the national emergency and six months
thereafter. The [Commissioner of Patents] Assistant
Commissioner for Patents may rescind any order upon
notification by the heads of the departments and the chief
officers of the agencies who caused the order to be issued that
the publication or disclosure of the invention is no longer
deemed detrimental to the national security.
Sec. 182. Abandonment of invention for unauthorized disclosure
The invention disclosed in an application for patent
subject to an order made pursuant to section 181 of this title
may be held abandoned upon its being established by the
[Commissioner of Patents] Assistant Commissioner for Patents
that in violation of said order the invention has been
published or disclosed or that an application for a patent
therefor has been filed in a foreign country by the inventor,
his successors, assigns, or legal representatives, or anyone in
privity with him or them, without the consent of the
[Commissioner of Patents] Assistant Commissioner for Patents.
The abandonment shall be held to have occurred as of the time
of violation. The consent of the [Commissioner of Patents]
Assistant Commissioner for Patents shall not be given without
the concurrence of the heads of the departments and the chief
officers of the agencies who caused the order to be issued. A
holding of abandonment shall constitute forfeiture by the
applicant, his successors, assigns, or legal representatives,
or anyone in privity with him or them, of all claims against
the United States based upon such invention.
* * * * * * *
Sec. 184. Filing of application in foreign country
Except when authorized by a license obtained from the
[Commissioner of Patents] Assistant Commissioner for Patents a
person shall not file or cause or authorize to be filed in any
foreign country prior to six months after filing in the United
States an application for patent or for the registration of a
utility model, industrial design, or model in respect of an
invention made in this country. A license shall not be granted
with respect to an invention subject to an order issued by the
[Commissioner of Patents] Assistant Commissioner for Patents
pursuant to section 181 of this title without the concurrence
of the head of the departments and the chief officers of the
agencies who caused the order to be issued. The license may be
granted retroactively where an application has been filed
abroad through error and without deceptive intent and the
application does not disclose an invention within the scope of
section 181 of this title.
The term ``application'' when used in this chapter includes
applications and any modifications, amendments, or supplements
thereto, or divisions thereof.
The scope of a license shall permit subsequent
modifications, amendments, and supplements containing
additional subject matter if the application upon which the
request for the license is based is not, or was not, required
to be made available for inspection under section 181 of this
title and if such modifications, amendments, and supplements do
not change the general nature of the invention in a manner
which would require such application to be made available for
inspection under such section 181. In any case in which a
license is not, or was not, required in order to file an
application in any foreign country, such subsequent
modifications, amendments, and supplements may be made, without
a license, to the application filed in the foreign country if
the United States application was not required to be made
available for inspection under section 181 and if such
modifications, amendments, and supplements do not, or did not,
change the general nature of the invention in a manner which
would require the United States application to have been made
available for inspection under such section 181.
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. Licensing federally owned inventions
(a) * * *
* * * * * * *
(d) Terms and Conditions.--Any licenses granted under
section 207(a)(2) shall contain such terms and conditions as
the granting agency considers appropriate, and shall include
provisions--
(1) * * *
(2) requiring periodic reporting on utilization of
the invention, and utilization efforts, by the
licensee, but only to the extent necessary to enable
the Federal agency to determine whether the terms of
the license are being complied with, except that any
such report 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]; and
* * * * * * *
(f ) Plan.--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 or marketing of the
invention, except that any such plan 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].
* * * * * * *
(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.
* * * * * * *
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.
* * * * * * *
Sec. 297. Improper and deceptive invention promotion
(a) * * *
(b) Civil Action.--(1) * * *
(2) Notwithstanding paragraph (1), in a case where the
customer sustains the burden of proof, and the court finds,
that the invention promoter intentionally misrepresented or
omitted a material fact to such customer, or willfully failed
to disclose such information as required under subsection (a),
with the purpose of deceiving that customer, the court may
increase damages to not more than three times the amount
awarded, taking into account past complaints made against the
invention promoter that resulted in regulatory sanctions or
other corrective actions based on those records compiled by the
Commissioner [of Patents] under subsection (d).
* * * * * * *
(d) Records of Complaints.--
(1) Release of complaints.--The Commissioner [of
Patents] shall make all complaints received by the
Patent and Trademark Office involving invention
promoters publicly available, together with any
response of the invention promoters. The Commissioner
[of Patents] shall notify the invention promoter of a
complaint and provide a reasonable opportunity to reply
prior to making such complaint publicly available.
(2) Request for complaints.--The Commissioner [of
Patents] may request complaints relating to invention
promotion services from any Federal or State agency and
include such complaints in the records maintained under
paragraph (1), together with any response of the
invention promoters.
CHAPTER 30--PRIOR ART CITATIONS TO OFFICE AND EX PARTE REEXAMINATION OF
PATENTS
Sec.
301. Citation of prior art.
* * * * * * *
303. Determination of issue by [Director] Commissioner.
304. Reexamination order by [Director] Commissioner.
* * * * * * *
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) * * *
(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.
* * * * * * *
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.]
(e) If the applicant is not domiciled in the United States
the applicant may designate, by a document filed in the United
States Patent and Trademark Office, the name and address of a
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, or if the registrant
does not designate by a document filed in the United States
Patent and Trademark Office the name and address of a 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 on the 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.]
(f) If the registrant is not domiciled in the United
States, the registrant may designate, by a document filed in
the United States Patent and Trademark Office, the name and
address of a 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, or if the
registrant does not designate by a document filed in the United
States Patent and Trademark Office the name and address of a
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 on the 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.]
(c) If the registrant is not domiciled in the United States
the registrant may designate, by a document filed in the United
States Patent and Trademark Office, the name and address of a
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, or if the registrant
does not designate by a document filed in the United States
Patent and Trademark Office the name and address of a 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 on the 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.
[(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.]
(a)(1) 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.
(2) 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.
(3) 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 United States
Patent and Trademark Office, the record shall be prima facie
evidence of execution.
(4) 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 United States Patent and Trademark Office within 3 months
after the date of the assignment or prior to the subsequent
purchase.
(5) The United States Patent and Trademark Office shall
maintain a record of information on assignments, in such form
as may be prescribed by the Commissioner.
(b) An assignee not domiciled in the United States may
designate by a document filed in the United States Patent and
Trademark Office the name and address of a 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, or if the assignee does not designate by a
document filed in the United States Patent and Trademark Office
the name and address of a 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 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]
Assistant Commissioner for Patents, the Assistant 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)(A) In the case of a civil action arising under
section 32(1)(a) of this Act (15 U.S.C. 1114) 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)] section 220506 of title 36, United States Code, with
respect to a violation that consists of using a counterfeit
mark in connection with the sale, offering for sale, or
distribution of goods or services, the court may, upon ex parte
application, grant an order under subsection (a) of this
section pursuant to this subsection providing for the seizure
of goods and counterfeit marks involved in such violation and
the means of making such marks, and records documenting the
manufacture, sale, or receipt of things involved in such
violation.
(B) As used in this subsection the term ``counterfeit
mark'' means--
(i) * * *
(ii) a spurious designation that is identical with,
or substantially indistinguishable from, a designation
as to which the remedies of this Act are made available
by reason of [section 110 of the Act entitled ``An Act
to incorporate the United States Olympic Association'',
approved September 21, 1950 (36 U.S.C. 380)] section
220506 of title 36, United States Code;
but such term does not include any mark or designation used on
or in connection with goods or services of which the
manufacture or producer was, at the time of the manufacture or
production in question authorized to use the mark or
designation for the type of goods or services so manufactured
or produced, by the holder of the right to use such mark or
designation.
* * * * * * *
(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] 6621(a)(2) of the Internal Revenue Code of 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)] section 220506 of title 36,
United States Code, 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] 6621(a)(2) of the
Internal Revenue Code of 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, a certification]
Commissioner, a true copy, a photocopy, 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.]
Deputy Under Secretary of Commerce for Intellectual
Property and Deputy Commissioner of the United States
Patent and Trademark Office.
* * * * * * *
----------
SECTION 9 OF THE SMALL BUSINESS ACT
Sec. 9. (a) * * *
* * * * * * *
(p) STTR Policy Directive.--
(1) Issuance.--The Administrator shall issue a
policy directive for the general conduct of the STTR
programs within the Federal Government. Such policy
directive shall be issued after consultation with--
(A) the heads of each of the Federal
agencies required by subsection (n) to
establish an STTR program;
(B) the Under Secretary of Commerce for
Intellectual Property and [Director]
Commissioner of the United States Patent and
Trademark Office; and
* * * * * * *
----------
SECTION 19 OF THE TENNESSEE VALLEY AUTHORITY ACT OF 1933
Sec. 19. The Corporation, as an instrumentality and agency
of the Government of the United States for the purpose of
executing its constitutional powers, shall have access to the
United States Patent and Trademark Office for the purpose of
studying, ascertaining, and copying all methods, formula, and
scientific information (not including access to pending
applications for patents) necessary to enable the Corporation
to use and employ the most efficacious and economical process
for the production of fixed nitrogen, or any essential
ingredient of fertilizer, or any method of improving and
cheapening the production of hydroelectric power, and any owner
of a patent whose patent rights may have been thus in any way
copied, used, infringed, or employed by the exercise of this
authority by the Corporation shall have as the exclusive remedy
a cause of action against the Corporation to be instituted and
prosecuted on the equity side of the appropriate district court
of the United States, for the recovery of reasonable
compensation for such infringement. The Under Secretary of
Commerce for Intellectual Property and [Director] Commissioner
of the United States Patent and Trademark Office shall furnish
to the Corporation, at its request and without payment of fees,
copies of documents on file in his office: Provided, That the
benefits of this section shall not apply to any art, machine,
method of manufacture, or composition of matter, discovered or
invented by such employee during the time of his employment or
service with the Corporation or with the Government of the
United States.
----------
TRADE ACT OF 1974
* * * * * * *
TITLE I--NEGOTIATING AND OTHER AUTHORITY
* * * * * * *
CHAPTER 8--IDENTIFICATION OF MARKET BARRIERS AND CERTAIN UNFAIR TRADE
ACTIONS
* * * * * * *
SEC. 182. IDENTIFICATION OF COUNTRIES THAT DENY ADEQUATE PROTECTION, OR
MARKET ACCESS, FOR INTELLECTUAL PROPERTY RIGHTS.
(a) * * *
(b) Special Rules for Identifications.--
(1) * * *
(2) In identifying priority foreign countries under
subsection (a)(2), the Trade Representative shall--
(A) consult with the Register of
Copyrights, the Under Secretary of Commerce for
Intellectual Property and [Director]
Commissioner of the United States Patent and
Trademark Office, other appropriate officers of
the Federal Government, and
* * * * * * *
TITLE III--RELIEF FROM UNFAIR TRADE PRACTICES
CHAPTER 1--ENFORCEMENT OF UNITED STATES RIGHTS UNDER TRADE AGREEMENTS
AND RESPONSE TO CERTAIN FOREIGN TRADE PRACTICES
* * * * * * *
SEC. 302. INITIATION OF INVESTIGATIONS.
(a) * * *
(b) Initiation of Investigation by Means Other Than
Petition.--
(1) * * *
(2)(A) * * *
* * * * * * *
(D) The Trade Representative shall, from time to
time, consult with the Register of Copyrights, the
Under Secretary of Commerce for Intellectual Property
and [Director] Commissioner of the United States Patent
and Trademark Office, and other appropriate officers of
the Federal Government, during any investigation
initiated under this chapter by reason of subparagraph
(A).
* * * * * * *
----------
SECTION 702 OF THE FEDERAL FOOD, DRUG AND COSMETIC ACT
examinations and investigations
Sec. 702. (a) * * *
* * * * * * *
(d) The Secretary is authorized and directed, upon request
from the Under Secretary of Commerce for Intellectual Property
and [Director] Commissioner of the United States Patent and
Trademark Office, to furnish full and complete information with
respect to such questions relating to drugs as the [Director]
Commissioner may submit concerning any patent application. The
Secretary is further authorized, upon receipt of any such
request, to conduct or cause to be conducted, such research as
may be required.
* * * * * * *
----------
TITLE 28, UNITED STATES CODE
* * * * * * *
PART IV--JURISDICTION AND VENUE
* * * * * * *
CHAPTER 83--COURTS OF APPEALS
* * * * * * *
Sec. 1295. Jurisdiction of the United States Court of Appeals for the
Federal Circuit
(a) The United States Court of Appeals for the Federal
Circuit shall have exclusive jurisdiction--
(1) * * *
* * * * * * *
(4) of an appeal from a decision of--
(A) * * *
(B) the Under Secretary of Commerce for
Intellectual Property and [Director]
Commissioner of the United States Patent and
Trademark Office or the Trademark Trial and
Appeal Board with respect to applications for
registration of marks and other proceedings as
provided in section 21 of the Trademark Act of
1946 (15 U.S.C. 1071); or
* * * * * * *
PART V--PROCEDURE
* * * * * * *
CHAPTER 115--EVIDENCE; DOCUMENTARY
Sec.
1731. Treason.
* * * * * * *
1744. Copies of United States Patent and Trademark Office documents
[generally], generally.
* * * * * * *
* * * * * * *
Sec. 1744. Copies of United States Patent and Trademark Office
documents, generally
Copies of letters patent or of any records, books, papers,
or drawings belonging to the United States Patent and Trademark
Office and relating to patents, authenticated under the seal of
the United States Patent and Trademark Office and certified by
the Under Secretary of Commerce for Intellectual Property and
[Director] Commissioner of the United States Patent and
Trademark Office, or by another officer of the United States
Patent and Trademark Office authorized to do so by the
[Director] Commissioner, shall be admissible in evidence with
the same effect as the originals.
Any person making application and paying the required fee
may obtain such certified copies.
* * * * * * *
ATOMIC ENERGY ACT OF 1954
* * * * * * *
TITLE I--ATOMIC ENERGY
* * * * * * *
CHAPTER 13. PATENTS AND INVENTIONS
Sec. 151. Inventions Relating to Atomic Weapons, and Filing
of Reports.--
a. * * *
* * * * * * *
c. Any person who has made or hereafter makes any invention
or discovery useful in the production or utilization of special
nuclear material or atomic energy, shall file with the
Commission a report containing a complete description thereof
unless such invention or discovery is described in an
application for a patent filed with the Under Secretary of
Commerce for Intellectual Property and [Director] Commissioner
of the United States Patent and Trademark Office by such person
within the time required for the filing of such report. The
report covering any such invention or discovery shall be filed
on or before the one hundred and eightieth day after such
person first discovers or first has reason to believe that such
invention or discovery is useful in such production or
utilization.
d. The Under Secretary of Commerce for Intellectual
Property and [Director] Commissioner of the United States
Patent and Trademark Office shall notify the Commission of all
applications for patents heretofore or hereafter filed which,
in his opinion, disclose inventions or discoveries required to
be reported under subsection 151 c., and shall provide the
Commission access to all such applications.
* * * * * * *
Sec. 152. Inventions Made or Conceived During Commission
Contracts.--Any invention or discovery, useful in the
production or utilization of special nuclear material or atomic
energy, made or conceived in the course of or under any
contract, subcontract, or arrangement entered into with or for
the benefit of the Commission, regardless of whether the
contract, subcontract, or arrangement involved the expenditure
of funds by the Commission, shall be vested in, and be the
property of, the Commission, except that the Commission may
waive its claim to any such invention or discovery under such
circumstances as the Commission may deem appropriate,
consistent with the policy of this section. No patent for any
invention or discovery, useful in the production or utilization
of special nuclear material or atomic energy, shall be issued
unless the applicant files with the application, or within
thirty days after request therefor by the Under Secretary of
Commerce for Intellectual Property and [Director] Commissioner
of the United States Patent and Trademark Office (unless the
Commission advises the Under Secretary of Commerce for
Intellectual Property and [Director] Commissioner of the United
States Patent and Trademark Office that its rights have been
determined and that accordingly no statement is necessary) a
statement under oath setting forth the full facts surrounding
the making or conception of the invention or discovery
described in the application and whether the invention or
discovery was made or conceived in the course of or under any
contract, subcontract, or arrangement entered into with or for
the benefit of the Commission, regardless of whether the
contract, subcontract, or arrangement involved the expenditure
of funds by the Commission. The Under Secretary of Commerce for
Intellectual Property and [Director] Commissioner of the United
States Patent and Trademark Office shall as soon as the
application is otherwise in condition for allowance forward
copies of the application and the statement to the Commission.
The Under Secretary of Commerce for Intellectual Property
and [Director] Commissioner of the United States Patent and
Trademark Office may proceed with the application and issue the
patent to the applicant (if the invention or discovery is
otherwise patentable) unless the Commission, within 90 days
after receipt of copies of the application and statement,
directs the Under Secretary of Commerce for Intellectual
Property and [Director] Commissioner of the United States
Patent and Trademark Office to issue the patent to the
Commission (if the invention or discovery is otherwise
patentable) to be held by the Commission as the agent of and on
behalf of the United States.
If the Commission files such a direction with the Under
Secretary of Commerce for Intellectual Property and [Director]
Commissioner of the United States Patent and Trademark Office,
and if the applicant's statement claims, and the applicant
still believes, that the invention or discovery was not made or
conceived in the course of or under any contract, subcontract
or arrangement entered into with or for the benefit of the
Commission entitling the Commission to the title to the
application or the patent the applicant may, within 30 days
after notification of the filing of such a direction, request a
hearing before the Board of Patent Appeals and Interferences.
The Board shall have the power to hear and determine whether
the Commission was entitled to the direction filed with the
Under Secretary of Commerce for Intellectual Property and
[Director] Commissioner of the United States Patent and
Trademark Office. The Board shall follow the rules and
procedures established for interference cases and an appeal may
be taken by either the applicant or the Commission from the
final order of the Board to the United States Court of Appeals
for the Federal Circuit in accordance with the procedures
governing the appeals from the Board of Patent Appeals and
Interferences.
If the statement filed by the applicant should thereafter
be found to contain false material statements any notification
by the Commission that it has no objections to the issuance of
a patent to the applicant shall not be deemed in any respect to
constitute a waiver of the provisions of this section or of any
applicable civil or criminal statute, and the Commission may
have the title to the patent transferred to the Commission on
the records of the Under Secretary of Commerce for Intellectual
Property and [Director] Commissioner of the United States
Patent and Trademark Office in accordance with the provisions
of this section. A determination of rights by the Commission
pursuant to a contractual provision or other arrangement prior
to the request of the Under Secretary of Commerce for
Intellectual Property and [Director] Commissioner of the United
States Patent and Trademark Office for the statement, shall be
final in the absence of false material statements or
nondisclosure of material facts by the applicant.
* * * * * * *
----------
SECTION 305 OF THE NATIONAL AERONAUTICS AND SPACE ACT OF 1958
property rights in inventions
Sec. 305. (a) * * *
* * * * * * *
(c) No patent may be issued to any applicant other than the
Administrator for any invention which appears to the Under
Secretary of Commerce for Intellectual Property and [Director]
Commissioner of the United States Patent and Trademark Office
(hereafter in this section referred to as the ``[Director]
Commissioner'') to have significant utility in the conduct of
aeronautical and space activities unless the applicant files
with the [Director] Commissioner, with the application or
within thirty days after request therefor by the [Director]
Commissioner, a written statement executed under oath setting
forth the full facts concerning the circumstances under which
such invention was made and stating the relationship (if any)
of such invention to the performance of any work under any
contract of the Administration. Copies of each such statement
and the application to which it relates shall be transmitted
forthwith by the [Director] Commissioner to the Administrator.
(d) Upon any application as to which any such statement has
been transmitted to the Administrator, the [Director]
Commissioner may, if the invention is patentable, issue a
patent to the applicant unless the Administrator, within ninety
days after receipt of such application and statement, requests
that such patent be issued to him on behalf of the United
States. If, within such time, the Administrator files such a
request with the [Director] Commissioner, the [Director]
Commissioner shall transmit notice thereof to the applicant,
and shall issue such patent to the Administrator unless the
applicant within thirty days after receipt of such notice
requests a hearing before the Board of Patent Appeals and
Interferences on the question whether the Administrator is
entitled under this section to receive such patent. The Board
may hear and determine, in accordance with rules and procedures
established for interference cases, the question so presented,
and its determination shall be subject to appeal by the
applicant or by the Administrator to the United States Court of
Appeals for the Federal Circuit in accordance with procedures
governing appeals from decisions of the Board of Patent Appeals
and Interferences in other proceedings.
(e) Whenever any patent has been issued to any applicant in
conformity with subsection (d), and the Administrator
thereafter has reason to believe that the statement filed by
the applicant in connection therewith contained any false
representation of any material fact, the Administrator within
five years after the date of issuance of such patent may file
with the [Director] Commissioner a request for the transfer to
the Administrator of title to such patent on the records of the
[Director] Commissioner. Notice of any such request shall be
transmitted by the [Director] Commissioner to the owner of
record of such patent, and title, to such patent shall be so
transferred to the Administrator unless within thirty days
after receipt of such notice such owner of record requests a
hearing before the Board of Patent Appeals and Interferences on
the question whether any such false representation was
contained in such statement. Such question shall be heard and
determined, and determination thereof shall be subject to
review, in the manner prescribed by subsection (d) for
questions arising thereunder. No request made by the
Administrator under this subsection for the transfer of title
to any patent, and no prosecution for the violation of any
criminal statute, shall be barred by any failure of the
Administrator to make a request under subsection (d) for the
issuance of such patent to him, or by any notice previously
given by the Administrator stating that he had no objection to
the issuance of such patent to the applicant therefore.
* * * * * * *
----------
SECTION 12 OF THE SOLAR HEATING AND COOLING DEMONSTRATION ACT OF 1974
dissemination of information and other actions to promote practical use
of solar heating and cooling technologies
Sec. 12. (a) The Secretary shall take all possible steps to
assure that full and complete information with respect to the
demonstrations and other activities conducted under this Act is
made available to Federal, State, and local authorities, the
building industry and related segments of the economy, the
scientific and technical community, and the public at large,
both during and after the close of the programs under this Act,
with the objective of promoting and facilitating to the maximum
extent feasible the early and widespread practical use of solar
energy for the heating and cooling of buildings throughout the
United States. In accordance with regulations prescribed under
section 16 such information shall be disseminated on a
coordinated basis by the Secretary, the Administrator, the
Director of the National Bureau of Standards, the Director, the
Under Secretary of Commerce for Intellectual Property and
[Director] Commissioner of the United States Patent and
Trademark Office, and other appropriate Federal offices and
agencies.
* * * * * * *
----------
SECTION 10 OF THE TRADING WITH THE ENEMY ACT
Sec. 10. That nothing contained in this Act shall be held
to make unlawful any of the following Acts:
(a) * * *
* * * * * * *
(i) Whenever the publication of an invention by the
granting of a patent may, in the opinion of the President, be
detrimental to the public safety or defense, or may assist the
enemy or endanger the successful prosecution of the war, he may
order that the invention be kept secret and withhold the grant
of a patent until the end of the war: Provided, That the
invention disclosed in the application for said patent may be
held abandoned upon it being established before or by the Under
Secretary of Commerce for Intellectual Property and [Director]
Commissioner of the United States Patent and Trademark Office
that, in violation of said order, said invention has been
published or that an application for a patent therefor has been
filed in any other country, by the inventor or his assigns or
legal representatives, without the consent or approval of the
commissioner or under a license of the President.
When an application whose patent is withheld as herein
provided and who faithfully obeys the order of the President
above referred to shall tender his invention to the Government
of the United States for its use, he shall, if he ultimately
receives a patent, have the right to sue for compensation in
the United States Claims Court, such right to compensation to
begin from the date of the use of the invention by the
Government.
----------
INTELLECTUAL PROPERTY AND COMMUNICATIONS OMNIBUS REFORM ACT OF 1999
* * * * * * *
TITLE I--SATELLITE HOME VIEWER IMPROVEMENT
* * * * * * *
SEC. 1006. PUBLIC BROADCASTING SERVICE SATELLITE FEED.
(a) Secondary Transmissions.--Section 119(a)(1) of title
17, United States Code, is amended--
(1) by striking the paragraph heading and inserting
``(1) Superstations and pbs satellite feed.--''; and
[(2) by inserting ``or by the Public Broadcasting
Service satellite feed'' after ``superstation''; and]
[(3)] (2) by adding at the end the following: ``In
the case of the Public Broadcasting Service satellite
feed, the statutory license shall be effective until
January 1, 2002.''.
(b) Royalty Fees.--Section [119(b)(1)(B)(iii)]
119(b)(1)(B)(ii) of title 17, United States Code, is amended by
inserting ``or the Public Broadcasting Service satellite feed''
after ``network station''.
* * * * * * *
SEC. 1007. APPLICATION OF FEDERAL COMMUNICATIONS COMMISSION
REGULATIONS.
Section 119(a) of title 17, United States Code, is
amended--
(1) * * *
(2) in paragraph [(2)] (2)(A), by inserting ``with
regard to secondary transmissions the satellite carrier
is in compliance with the rules, regulations, or
authorizations of the Federal Communications Commission
governing the carriage of television broadcast station
signals,'' after ``satellite carrier to the public for
private home viewing,''; and
(3) by adding at the end of such subsection (as
amended by section [1005(e)] 1005(d) of this Act) the
following new paragraph:
``(12) Statutory license contingent on compliance
with fcc rules and remedial steps.--Notwithstanding any
other provision of this section, the willful or
repeated secondary transmission to the public by a
satellite carrier of a primary transmission embodying a
performance or display of a work made by a broadcast
station licensed by the Federal Communications
Commission is actionable as an act of infringement
under section 501, and is fully subject to the remedies
provided by sections 502 through 506 and 509, if, at
the time of such transmission, the satellite carrier is
not in compliance with the rules, regulations, and
authorizations of the Federal Communications Commission
concerning the carriage of television broadcast station
signals.''.
* * * * * * *
SEC. 1011. TECHNICAL AMENDMENTS.
(a) * * *
(b) Technical Amendments Relating to Performance or
Displays Of Works.--
(1) * * *
(2) Section 119(a) of title 17, United States Code,
is amended--
[(A) in paragraph (1), by striking
``primary transmission made by a superstation
and embodying a performance or display of a
work'' and inserting ``performance or display
of a work embodied in a primary transmission
made by a superstation'';]
(A) in paragraph (1), by striking ``primary
transmission made by a superstation and
embodying a performance or display of a work''
and inserting ``performance or display of a
work embodied in a primary transmission made by
a superstation or by the Public Broadcasting
Service satellite feed'';
* * * * * * *
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)] 1113(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 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. 4506. COST RECOVERY FOR PUBLICATION.
The Under Secretary of Commerce for Intellectual Property
and [Director] Commissioner of the United States Patent and
Trademark Office shall recover the cost of early publication
required by the amendment made by section 4502 by charging a
separate publication fee after notice of allowance is given
under section 151 of title 35, United States Code.
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
be effective as of 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
Commissioner. 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 amendment made
by 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:
* * * * * * *
SEC. 4606. REPORT TO CONGRESS.
Not later than 5 years after the date of the enactment of
this Act, the Under Secretary of Commerce for Intellectual
Property and [Director] Commissioner of the United States
Patent and Trademark Office shall submit to the Congress a
report evaluating whether the inter partes reexamination
proceedings established under the amendments made by this
subtitle are inequitable to any of the parties in interest and,
if so, the report shall contain recommendations for changes to
the amendments made by this subtitle to remove such inequity.
* * * * * * *
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) Publications.--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''.
* * * * * * *
(d) Maintenance of Collections.--
(1) * * *
(2) Continuation of maintenance.--The Under
Secretary of Commerce for Intellectual Property and
[Director] Commissioner of the United States Patent and
Trademark Office shall not, pursuant to the amendment
made by paragraph (1), cease to maintain, for use by
the public, paper or microform collections of United
States patents, foreign patent documents, and United
States trademark registrations, except pursuant to
notice and opportunity for public comment and except
that the [Director] Commissioner shall first submit a
report to the Committees on the Judiciary of the Senate
and the House of Representatives detailing such plan,
including a description of the mechanisms in place to
ensure the integrity of such collections and the data
contained therein, as well as to ensure prompt public
access to the most current available information, and
certifying that the implementation of such plan will
not negatively impact the public.
----------
TITLE 17, UNITED STATES CODE
* * * * * * *
CHAPTER 1--SUBJECT MATTER AND SCOPE OF COPYRIGHT
Sec.
101. Definitions.
* * * * * * *
121. Limitations on exclusive rights: [reproduction] Reproduction for
blind or other people with disabilities.
[122. Limitations on exclusive rights; secondary transmissions by
satellite carriers within local market.]
122. Limitations on exclusive rights: Secondary transmissions by
satellite carriers within local markets.
Sec. 101. Definitions
Except as otherwise provided in this title, as used in this
title, the following terms and their variant forms mean the
following:
An ``anonymous work'' is a work on the copies or
phonorecords of which no natural person is identified
as author.
* * * * * * *
A ``compilation'' is a work formed by the
collection and assembling of preexisting materials or
of data that are selected, coordinated, or arranged in
such a way that the resulting work as a whole
constitutes an original work of authorship. The term
``compilation'' includes collective works.
A ``computer program'' is a set of statements or
instructions to be used directly or indirectly in a
computer in order to bring about a certain result.
* * * * * * *
To perform or display a work ``publicly'' means--
(1) * * *
* * * * * * *
``Registration'', for purposes of sections
205(c)(2), 405, 406, 410(d), 411, 412, and 506(e),
means a registration of a claim in the original or the
renewed and extended term of copyright.
* * * * * * *
Sec. 106. Exclusive rights in copyrighted works
Subject to sections 107 through [121] 122, the owner of
copyright under this title has the exclusive rights to do and
to authorize any of the following:
(1) * * *
* * * * * * *
Sec. 110. Limitations on exclusive rights: Exemption of certain
performances and displays
Notwithstanding the provisions of section 106, the
following are not infringements of copyright:
(1) * * *
* * * * * * *
(4) performance of a nondramatic literary or
musical work otherwise than in a transmission to the
public, without any purpose of direct or indirect
commercial advantage and without payment of any fee or
other compensation for the performance to any of its
performers, promoters, or organizers, if--
(A) * * *
(B) the proceeds, after deducting the
reasonable costs of producing the performance,
are used exclusively for educational,
religious, or charitable purposes and not for
private financial gain, except where the
copyright owner has served notice of objection
to the performance under the following
conditions[;]:
(i) * * *
* * * * * * *
Sec. 118. Scope of exclusive rights: Use of certain works in connection
with noncommercial broadcasting
(a) * * *
(b) Notwithstanding any provision of the antitrust laws,
any owners of copyright in published nondramatic musical works
and published pictorial, graphic, and sculptural works and any
public broadcasting entities, respectively, may negotiate and
agree upon the terms and rates of royalty payments and the
proportionate division of fees paid among various copyright
owners, and may designate common agents to negotiate, agree to,
pay, or receive payments.
(1) Any owner of copyright in a work specified in
this subsection or any public broadcasting entity may
submit to the Librarian of Congress proposed licenses
covering such activities with respect to such works.
The Librarian of Congress shall proceed on the basis of
the proposals submitted [to it] as well as any other
relevant information. The Librarian of Congress shall
permit any interested party to submit information
relevant to such proceedings.
* * * * * * *
Sec. 119. Limitations on exclusive rights: Secondary transmissions of
superstations and network stations for private home
viewing
(a) Secondary Transmissions by Satellite Carriers.--
(1) * * *
* * * * * * *
(6) Discrimination by a satellite carrier.--
Notwithstanding the provisions of paragraph (1), the
willful or repeated secondary transmission to the
public by a satellite carrier [of performance] of a
performance or display of a work embodied in a primary
transmission made by a superstation or a network
station is actionable as an act of infringement under
section 501, and is fully subject to the remedies
provided by sections 502 through 506 and 509, if the
satellite carrier unlawfully discriminates against a
distributor.
* * * * * * *
(b) Statutory License for Secondary Transmissions for
Private Home Viewing.--
(1) Deposits with the register of copyrights.--A
satellite carrier whose secondary transmissions are
subject to statutory licensing under subsection (a)
shall, on a semiannual basis, deposit with the Register
of Copyrights, in accordance with requirements that the
Register shall prescribe by regulation--
(A) a statement of account, covering the
preceding 6-month period, specifying the names
and locations of all superstations and network
stations whose signals were [transmitted]
retransmitted, at any time during that period,
to subscribers for private home viewing as
described in subsections (a)(1) and (a)(2), the
total number of subscribers that received such
[transmissions] retransmissions, and such other
data as the Register of Copyrights may from
time to time prescribe by regulation; and
* * * * * * *
Sec. 121. Limitations on exclusive rights: [reproduction] Reproduction
for blind or other people with disabilities
(a) * * *
* * * * * * *
Sec. 122. Limitations on exclusive [rights; secondary] rights:
Secondary transmissions by satellite carriers
within local markets
(a) * * *
* * * * * * *
CHAPTER 2--COPYRIGHT OWNERSHIP AND TRANSFER
* * * * * * *
Sec. 203. Termination of transfers and licenses granted by the author
(a) Conditions for Termination.--In the case of any work
other than a work made for hire, the exclusive or nonexclusive
grant of a transfer or license of copyright or of any right
under a copyright, executed by the author on or after January
1, 1978, otherwise than by will, is subject to termination
under the following conditions:
(1) * * *
(2) Where an author is dead, his or her termination
interest is owned, and may be exercised, as follows:
(A) [the] The widow or widower owns the
author's entire termination interest unless
there are any surviving children or
grandchildren of the author, in which case the
widow or widower owns one-half of the author's
interest[;].
(B) [the] The author's surviving children,
and the surviving children of any dead child of
the author, own the author's entire termination
interest unless there is a widow or widower, in
which case the ownership of one-half of the
author's interest is divided among them[;].
(C) [the] The rights of the author's
children and grandchildren are in all cases
divided among them and exercised on a per
stirpes basis according to the number of such
author's children represented; the share of the
children of a dead child in a termination
interest can be exercised only by the action of
a majority of them.
* * * * * * *
CHAPTER 3--DURATION OF COPYRIGHT
* * * * * * *
Sec. 304. Duration of copyright: Subsisting copyrights
(a) * * *
* * * * * * *
(c) Termination of Transfers and Licenses Covering Extended
Renewal Term.--In the case of any copyright subsisting in
either its first or renewal term on January 1, 1978, other than
a copyright in a work made for hire, the exclusive or
nonexclusive grant of a transfer or license of the renewal
copyright or any right under it, executed before January 1,
1978, by any of the persons designated by subsection (a)(1)(C)
of this section, otherwise than by will, is subject to
termination under the following conditions:
(1) * * *
(2) Where an author is dead, his or her termination
interest is owned, and may be exercised, as follows:
(A) [the] The widow or widower owns the
author's entire termination interest unless
there are any surviving children or
grandchildren of the author, in which case the
widow or widower owns one-half of the author's
interest[;].
(B) [the] The author's surviving children,
and the surviving children of any dead child of
the author, own the author's entire termination
interest unless there is a widow or widower, in
which case the ownership of one-half of the
author's interest is divided among them[;].
(C) [the] The rights of the author's
children and grandchildren are in all cases
divided among them and exercised on a per
stirpes basis according to the number of such
author's children represented; the share of the
children of a dead child in a termination
interest can be exercised only by the action of
a majority of them.
* * * * * * *
CHAPTER 5--COPYRIGHT INFRINGEMENT AND REMEDIES
* * * * * * *
Sec. 501. Infringement of copyright
(a) Anyone who violates any of the exclusive rights of the
copyright owner as provided by sections 106 through [121] 122
or of the author as provided in section 106A(a), or who imports
copies or phonorecords into the United States in violation of
section 602, is an infringer of the copyright or right of the
author, as the case may be. For purposes of this chapter (other
than section 506), any reference to copyright shall be deemed
to include the rights conferred by section 106A(a). As used in
this subsection, the term ``anyone'' includes any State, any
instrumentality of a State, and any officer or employee of a
State or instrumentality of a State acting in his or her
official capacity. Any State, and any such instrumentality,
officer, or employee, shall be subject to the provisions of
this title in the same manner and to the same extent as any
nongovernmental entity.
* * * * * * *
Sec. 511. Liability of States, instrumentalities of States, and State
officials for infringement of copyright
(a) In General.--Any State, any instrumentality of a State,
and any officer or employee of a State or instrumentality of a
State acting in his or her official capacity, shall not be
immune, under the Eleventh Amendment of the Constitution of the
United States or under any other doctrine of sovereign
immunity, from suit in Federal court by any person, including
any governmental or nongovernmental entity, for a violation of
any of the exclusive rights of a copyright owner provided by
sections 106 through [121] 122, for importing copies of
phonorecords in violation of section 602, or for any other
violation under this title.
* * * * * * *
CHAPTER 9--PROTECTION OF SEMICONDUCTOR CHIP PRODUCTS
Sec.
901. Definitions.
* * * * * * *
903. Ownership, transfer, [licensure] licensing, and recordation.
* * * * * * *
----------
SECTION 2319 OF TITLE 18, UNITED STATES CODE
Sec. 2319. Criminal infringement of a copyright
(a) * * *
* * * * * * *
(e) As used in this section--
(1) * * *
(2) the terms ``reproduction'' and ``distribution''
refer to the exclusive rights of a copyright owner
under clauses (1) and (3) respectively of section 106
(relating to exclusive rights in copyrighted works), as
limited by sections 107 through [120] 122, of title 17.
----------
SECTION 105 OF THE DESIGN PROTECTION ACT
Sec. 105. (a) * * *
* * * * * * *
(f) Subsection (a) of [section 290(e) of title 15] section
6 of the Standard Reference Data Act (15 U.S.C. 290e) is
amended by deleting the phrase ``section 8'' and inserting in
lieu thereof the phrase ``section 105''.
----------
SECTION 6 OF THE STANDARD REFERENCE DATA ACT
Sec. 6. (a) [Notwithstanding the limitations contained in
section 105 of title 17 of the United States Code,]
Notwithstanding the limitations under section 105 of title 17,
United States Code, the Secretary may secure copyright and
renewal thereof on behalf of the United States as author or
proprietor in all or any part of any standard reference data
which he prepares or makes available under this Act, and may
authorize the reproduction and publication thereof by others.
* * * * * * *
BUSINESS MEETING
THURSDAY, MARCH 8, 2001
House of Representatives,
Committee on the Judiciary,
Washington, DC.
The committee met, pursuant to notice, at 10 a.m., in Room
2141, Rayburn House Office Building, Hon. F. James
Sensenbrenner (chairman of the committee) presiding.
Pursuant to notice, I now call up the bill S.320, a bill to
make technical corrections in the patent, copyright, and
trademark laws, for purposes of markup, and move its favorable
recommendation to the House.
[S.320 follows:]
Chairman Sensenbrenner. Without objection, the bill will be
considered as read and open for amendment at any time, and I
recognize myself for 5 minutes.
On February 14th, the Senate passed S.320, the Intellectual
Property and High Technology Technical Amendments Act of 2001
by a recorded vote of 98 to nothing. It is nice to know they
have done something.
The same day, our distinguished colleague from North
Carolina, Mr. Coble, introduced, along with Ranking Member
Berman, two related technical corrections bills, H.R. 614 and
H.R. 615, which are nearly identical to two bills passed in the
106th Congress. Both of those were discharged from the
Subcommittee on Courts and Intellectual Property, passed by
this committee by voice vote, and by the House under suspension
of the rules.
The Senate was not able to pass these bills during the
final days of the 106th, and the bill before us is virtually
identical to both bills passed in the 106th Congress, and the
bills introduced in the 107th Congress, and I now recognize Mr.
Conyers.
Mr. Conyers. I would say that we're in support of this
measure again. I think that our ranking member of the
subcommittee, Mr. Berman, has examined it, and we are in
complete support of the measure.
I return any time.
Chairman Sensenbrenner. I thank the gentleman from
Michigan.
I now recognize the gentleman from North Carolina, for
purpose of offering a substitute.
Mr. Coble. I thank the chairman. Mr. Chairman, I have an
amendment at the desk.
Chairman Sensenbrenner. The clerk will report the
amendment.
The Clerk. Amendment to the amend--amendment in the nature
of the substitute to S.320 of the----
Mr. Coble. Mr. Chairman, I ask unanimous consent that the
amendment be considered as read.
Chairman Sensenbrenner. Without objection, and the
gentleman is recognized for 5 minutes.
[The amendment in the nature of a substitute to S.320
offered by Mr. Coble follows:]
Mr. Coble. Mr. Chairman, as you so correctly pointed out,
Mr. Berman and I have enlisted this several times, and the
committee-at-large is familiar with the issue.
S.320, the Intellectual Property and High Technology
Technical Amendments Act of 2001 makes noncontroversial
technical amendments to the patent trademark and copyright
laws.
In 1999, the Congress successfully passed landmark
legislation, the American Inventors' Protection Act, to
modernize our patent system and transform the Patent and
Trademark Office into a more autonomous and efficient agency.
At the same time, the act contained a small number of
clerical and other technical drafting errors. S.320 corrects
these errors and makes important clarifications. Periodically,
the United States Copyright Office forwards to Congress
recommendations for technical corrections to the copyright law.
S.320 makes these technical amendments to title 1 of the
Intellectual Property and Communications Omnibus Reform Act of
1999; title 17 of other copyright related technical amendments.
It corrects errors in references, spelling and punctuation,
conforms the Table of Contents with section headings, restores
the definition in Chapter 1 to alphabetical, deletes an expired
paragraph and creates continuity in grammatical style used
throughout title 17.
S.320 passed the Senate by a vote of 98 to nothing. It
makes necessary improvements to the patent, trademark and
copyright laws, and is noncontroversial, and I urge the members
to support S.320 and the amendment thereto.
Chairman Sensenbrenner. The gentleman from California?
Mr. Berman. Yes, thank you, Mr. Chairman. I think
everything that's been said about this measure--everything that
needs to be said has been said, and I'd urge its adoption.
Chairman Sensenbrenner. Having heard that, the question now
occurs on the amendment offered by Mr. Coble.
Those in favor will say aye.
Those opposed nay.
The ayes appear to have it. The ayes have it, and the
amendment in the nature of a substitute is adopted.
The question now occurs on the motion to report the bill
S.320 favorably, as amended.
All of those in favor will say aye.
Opposed, no.
The ayes have it. The motion to report favorably is
adopted.
Without objection, the bill will be reported favorably to
the House in the form of a single amendment in the nature of a
substitute, incorporating the amendments adopted here today.
Without objection, the chairman is authorized to move to go to
conference, pursuant to House rules. Also, without objection,
the staff is directed to make any technical and conforming
changes, and all members will be given 2 days, as provided by
House rules, in which to submit additional dissenting
supplemental or minority views.