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American Inventors Protection Act of 1999 (Reported in Senate)

Calendar No. 400

106th CONGRESS

1st Session

H. R. 1907

AN ACT

To amend title 35, United States Code, to provide enhanced protection for inventors and innovators, protect patent terms, reduce patent litigation, and for other purposes.

November 5, 1999

Reported with an amendment

HR 1907 RS

Calendar No. 400

106th CONGRESS

1st Session

H. R. 1907

IN THE SENATE OF THE UNITED STATES

August 4, 1999

Received

October 8, 1999

Read twice and referred to the Committee on the Judiciary

November 5, 1999

Reported by Mr. HATCH, with an amendment

[Strike out all after the enacting clause and insert the part printed in italic]

AN ACT

To amend title 35, United States Code, to provide enhanced protection for inventors and innovators, protect patent terms, reduce patent litigation, and for other purposes.

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,

[Struck out->] `SECTION 1. SHORT TITLE.` [<-Struck out]

This Act may be cited as the `American Inventors Protection Act of 1999'.

[Struck out->] `SEC. 2. TABLE OF CONTENTS.` [<-Struck out]

The table of contents is as follows:

Sec. 1. Short title.

Sec. 2. Table of contents.

[Struck out->] `TITLE I--INVENTORS' RIGHTS` [<-Struck out]

Sec. 101. Short title.

Sec. 102. Invention promotion services.

Sec. 103. Effective date.

[Struck out->] `TITLE II--FIRST INVENTOR DEFENSE` [<-Struck out]

Sec. 201. Short title.

Sec. 202. Defense to patent infringement based on earlier inventor.

Sec. 203. Effective date and applicability.

[Struck out->] `TITLE III--PATENT TERM GUARANTEE` [<-Struck out]

Sec. 301. Short title.

Sec. 302. Patent term guarantee authority.

Sec. 303. Continued examination of patent applications.

Sec. 304. Technical clarification.

Sec. 305. Effective date.

[Struck out->] `TITLE IV--UNITED STATES PUBLICATION OF PATENT APPLICATIONS PUBLISHED ABROAD` [<-Struck out]

Sec. 401. Short title.

Sec. 402. Publication.

Sec. 403. Time for claiming benefit of earlier filing date.

Sec. 404. Provisional rights.

Sec. 405. Prior art effect of published applications.

Sec. 406. Cost recovery for publication.

Sec. 407. Conforming amendments.

Sec. 408. Effective date.

[Struck out->] `TITLE V--OPTIONAL INTER PARTES REEXAMINATION PROCEDURE` [<-Struck out]

Sec. 501. Short title.

Sec. 502. Ex parte reexamination of patents.

Sec. 503. Definitions.

Sec. 504. Optional inter partes reexamination procedures.

Sec. 505. Conforming amendments.

Sec. 506. Report to Congress.

Sec. 507. Estoppel effect of reexamination.

Sec. 508. Effective date.

[Struck out->] `TITLE VI--PATENT AND TRADEMARK OFFICE` [<-Struck out]

Sec. 601. Short title.

[Struck out->] `Subtitle A--United States Patent and Trademark Office` [<-Struck out]

Sec. 611. Establishment of Patent and Trademark Office.

Sec. 612. Powers and duties.

Sec. 613. Organization and management.

Sec. 614. Public Advisory Committees.

Sec. 615. Patent and Trademark Office funding.

Sec. 616. Conforming amendments.

Sec. 617. Trademark Trial and Appeal Board.

Sec. 618. Board of Patent Appeals and Interferences.

Sec. 619. Annual report of Director.

Sec. 620. Suspension or exclusion from practice.

Sec. 621. Pay of Director and Deputy Director.

Sec. 622. Study on Alternative Fee Structures.

[Struck out->] `Subtitle B--Effective Date; Technical Amendments` [<-Struck out]

Sec. 631. Effective date.

Sec. 632. Technical and conforming amendments.

[Struck out->] `Subtitle C--Miscellaneous Provisions` [<-Struck out]

Sec. 641. References.

Sec. 642. Exercise of authorities.

Sec. 643. Savings provisions.

Sec. 644. Transfer of assets.

Sec. 645. Delegation and assignment.

Sec. 646. Authority of Director of the Office of Management and Budget with respect to functions transferred.

Sec. 647. Certain vesting of functions considered transfers.

Sec. 648. Availability of existing funds.

Sec. 649. Definitions.

[Struck out->] `TITLE VII--MISCELLANEOUS PATENT PROVISIONS` [<-Struck out]

Sec. 701. Provisional applications.

Sec. 702. International applications.

Sec. 703. Certain limitations on damages for patent infringement not applicable.

Sec. 704. Electronic filing and publications.

Sec. 705. Study and report on biological deposits in support of biotechnology patents.

Sec. 706. Prior invention.

Sec. 707. Prior art exclusion for certain commonly assigned patents.

[Struck out->] `TITLE I--INVENTORS' RIGHTS` [<-Struck out]

[Struck out->] `SEC. 101. SHORT TITLE.` [<-Struck out]

This title may be cited as the `Inventors' Rights Act'.

[Struck out->] `SEC. 102. INVENTION PROMOTION SERVICES.` [<-Struck out]

Part I of title 35, United States Code, is amended by adding after chapter 4 the following chapter:

[Struck out->] `CHAPTER 5--INVENTION PROMOTION SERVICES [<-Struck out]

[Struck out->] `Sec. [<-Struck out]

`51. Definitions.

`52. Contracting requirements.

`53. Standard provisions for cover notice.

`54. Reports to customer required.

`55. Mandatory contract terms.

`56. Remedies.

`57. Records of complaints.

`58. Fraudulent representation by an invention promoter.

`59. Rule of construction.

[Struck out->] `Sec. 51. Definitions [<-Struck out]

`For purposes of this chapter--

   `(1) the term `contract for invention promotion services' means a contract by which an invention promoter undertakes invention promotion services for a customer;

   `(2) the term `customer' means any person, firm, partnership, corporation, or other entity who enters into a financial relationship or a contract with an invention promoter for invention promotion services;

   `(3) the term `invention promoter' means any person, firm, partnership, corporation, or other entity who offers to perform or performs for, or on behalf of, a customer any act described under paragraph (4), but does not include--

`(A) any department or agency of the Federal Government or of a State or local government;

   `(B) any nonprofit, charitable, scientific, or educational organization, qualified under applicable State law or described under section 170(b)(1)(A) of the Internal Revenue Code of 1986;

   `(C) any person duly registered with, and in good standing before, the United States Patent and Trademark Office acting within the scope of that person's registration to practice before the Patent and Trademark Office, except when that person performs any act described in subparagraph (B) or (C) of paragraph (4); or

   `(D) any person or entity involved in the evaluation to determine commercial potential of, or offering to license or sell, a utility patent or a previously filed nonprovisional utility patent application; and

   `(4) the term `invention promotion services' means, with respect to an invention by a customer, any act involved in--

   `(A) evaluating the invention to determine its protectability as some form of intellectual property, other than evaluation by a person licensed by a State to practice law who is acting solely within the scope of that person's professional license;

   `(B) evaluating the invention to determine its commercial potential by any person for purposes other than providing venture capital; or

   `(C) marketing, brokering, offering to license or sell, or promoting the invention or a product or service in which the invention is incorporated or used, except that the display only of an invention at a trade show or exhibit shall not be considered to be invention promotion services.

[Struck out->] `Sec. 52. Contracting requirements [<-Struck out]

   `(a) IN GENERAL- (1) Every contract for invention promotion services shall be in writing and shall be subject to the provisions of this chapter. A copy of the signed written contract shall be given to the customer at the time the customer enters into the contract.

   `(2) If a contract is entered into for the benefit of a third party, the identity and address of such party shall be disclosed by such party's agent and such party shall be considered a customer for purposes of this chapter.

`(b) REQUIREMENTS OF INVENTION PROMOTER- The invention promoter shall--

   `(1) state in a written document, at the time a customer enters into a contract for invention promotion services, whether the usual business practice of the invention promoter is to--

`(A) seek more than 1 contract in connection with an invention; or

   `(B) seek to perform services in connection with an invention in 1 or more phases, with the performance of each phase covered in 1 or more subsequent contracts; and

   `(2) supply to the customer a copy of the written document together with a written summary of the usual business practices of the invention promoter, including--

`(A) the usual business terms of contracts; and

   `(B) the approximate amount of the usual fees or other consideration that may be required from the customer for each of the services provided by the invention promoter.

   `(c) RIGHT OF CUSTOMER TO CANCEL CONTRACT- (1) Notwithstanding any contractual provision to the contrary, a customer shall have the right to terminate a contract for invention promotion services by sending a written letter to the invention promoter stating the customer's intent to cancel the contract. The letter of termination must be deposited with the United States Postal Service on or before 5 business days after the date upon which the customer or the invention promoter executes the contract, whichever is later.

   `(2) Delivery of a promissory note, check, bill of exchange, or negotiable instrument of any kind to the invention promoter or to a third party for the benefit of the invention promoter, without regard to the date or dates appearing in such instrument, shall be deemed payment received by the invention promoter on the date received for purposes of this section.

[Struck out->] `Sec. 53. Standard provisions for cover notice [<-Struck out]

   `(a) CONTENTS- Every contract for invention promotion services shall have a conspicuous and legible cover sheet attached with the following notice imprinted in boldface type of not less than 12-point size:

   `YOU HAVE THE RIGHT TO TERMINATE THIS CONTRACT. TO TERMINATE THIS CONTRACT, YOU MUST SEND A WRITTEN LETTER TO THE COMPANY STATING YOUR INTENT TO CANCEL THIS CONTRACT.

   `THE LETTER OF TERMINATION MUST BE DEPOSITED WITH THE UNITED STATES POSTAL SERVICE ON OR BEFORE FIVE (5) BUSINESS DAYS AFTER THE DATE ON WHICH YOU OR THE COMPANY EXECUTE THE CONTRACT, WHICHEVER IS LATER.

   `THE TOTAL NUMBER OF INVENTIONS EVALUATED BY THE INVENTION PROMOTER FOR COMMERCIAL POTENTIAL IN THE PAST FIVE (5) YEARS IS XXXXX. OF THAT NUMBER, XXXXX RECEIVED POSITIVE EVALUATIONS AND XXXXX RECEIVED NEGATIVE EVALUATIONS.

   `IF YOU ASSIGN EVEN A PARTIAL INTEREST IN THE INVENTION TO THE INVENTION PROMOTER, THE INVENTION PROMOTER MAY HAVE THE RIGHT TO SELL OR DISPOSE OF THE INVENTION WITHOUT YOUR CONSENT AND MAY NOT HAVE TO SHARE THE PROFITS WITH YOU.

   `THE TOTAL NUMBER OF CUSTOMERS WHO HAVE CONTRACTED WITH THE INVENTION PROMOTER IN THE PAST FIVE (5) YEARS IS XXXXX. THE TOTAL NUMBER OF CUSTOMERS KNOWN BY THIS INVENTION PROMOTER TO HAVE RECEIVED, BY VIRTUE OF THIS INVENTION PROMOTER'S PERFORMANCE, AN AMOUNT OF MONEY IN EXCESS OF THE AMOUNT PAID BY THE CUSTOMER TO THIS INVENTION PROMOTER IS XXXXXXX. AS A RESULT OF THE EFFORTS OF THIS INVENTION PROMOTER, XXXXX NUMBER OF CUSTOMERS HAVE RECEIVED LICENSE AGREEMENTS FOR THEIR INVENTIONS.

   `THE OFFICERS OF THIS INVENTION PROMOTER HAVE COLLECTIVELY OR INDIVIDUALLY BEEN AFFILIATED IN THE LAST TEN (10) YEARS WITH THE FOLLOWING INVENTION PROMOTION COMPANIES: (LIST THE NAMES AND ADDRESSES OF ALL PREVIOUS INVENTION PROMOTION COMPANIES WITH WHICH THE PRINCIPAL OFFICERS HAVE BEEN AFFILIATED AS OWNERS, AGENTS, OR EMPLOYEES). YOU ARE ENCOURAGED TO CHECK WITH THE UNITED STATES PATENT AND TRADEMARK OFFICE, THE FEDERAL TRADE COMMISSION, YOUR STATE ATTORNEY GENERAL'S OFFICE, AND THE BETTER BUSINESS BUREAU FOR ANY COMPLAINTS FILED AGAINST ANY OF THESE COMPANIES WHICH RESULTED IN REGULATORY SANCTIONS OR OTHER CORRECTIVE ACTIONS.

   `YOU ARE ENCOURAGED TO CONSULT WITH AN ATTORNEY OF YOUR OWN CHOOSING BEFORE SIGNING THIS CONTRACT. BY PROCEEDING WITHOUT THE ADVICE OF AN ATTORNEY REGISTERED TO PRACTICE BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE, YOU COULD LOSE ANY RIGHTS YOU MIGHT HAVE IN YOUR IDEA OR INVENTION.'.

   `(b) OTHER REQUIREMENTS FOR COVER NOTICE- The cover notice shall contain the items required under subsection (a) and the name, primary office address, and local office address of the invention promoter, and may contain no other matter.

   `(c) DISCLOSURE OF CERTAIN CUSTOMERS NOT REQUIRED- The requirement in the notice set forth in subsection (a) to include the `TOTAL NUMBER OF CUSTOMERS WHO HAVE CONTRACTED WITH THE INVENTION PROMOTER IN THE PAST FIVE (5) YEARS' need not include information with respect to customers who have purchased trade show services, research, advertising, or other nonmarketing services from the invention promoter, nor with respect to customers who have defaulted in their payment to the invention promoter.

[Struck out->] `Sec. 54. Reports to customer required [<-Struck out]

   `With respect to every contract for invention promotion services, the invention promoter shall deliver to the customer at the address specified in the contract, at least once every 3 months throughout the term of the contract, a written report that identifies the contract and includes--

   `(1) a full, clear, and concise description of the services performed to the date of the report and of the services yet to be performed and names of all persons who it is known will perform the services; and

   `(2) the name and address of each person, firm, corporation, or other entity to whom the subject matter of the contract has been disclosed, the reason for each such disclosure, the nature of the disclosure, and complete and accurate summaries of all responses received as a result of those disclosures.

[Struck out->] `Sec. 55. Mandatory contract terms [<-Struck out]

   `(a) MANDATORY TERMS- Each contract for invention promotion services shall include in boldface type of not less than 12-point size--

`(1) the terms and conditions of payment and contract termination rights required under section 52;

   `(2) a statement that the customer may avoid entering into the contract by not making the initial payment to the invention promoter;

   `(3) a full, clear, and concise description of the specific acts or services that the invention promoter undertakes to perform for the customer;

   `(4) a statement as to whether the invention promoter undertakes to construct, sell, or distribute one or more prototypes, models, or devices embodying the invention of the customer;

   `(5) the full name and principal place of business of the invention promoter and the name and principal place of business of any parent, subsidiary, agent, independent contractor, and any affiliated company or person who it is known will perform any of the services or acts that the invention promoter undertakes to perform for the customer;

   `(6) if any oral or written representation of estimated or projected customer earnings is given by the invention promoter (or any agent, employee, officer, director, partner, or independent contractor of such invention promoter), a statement of that estimation or projection and a description of the data upon which such representation is based;

   `(7) the name and address of the custodian of all records and correspondence relating to the contracted for invention promotion services, and a statement that the invention promoter is required to maintain all records and correspondence relating to performance of the invention promotion services for such customer for a period of not less than 2 years after expiration of the term of such contract; and

   `(8) a statement setting forth a time schedule for performance of the invention promotion services, including an estimated date in which such performance is expected to be completed.

   `(b) INVENTION PROMOTER AS FIDUCIARY- To the extent that the description of the specific acts or services affords discretion to the invention promoter with respect to what specific acts or services shall be performed, the invention promoter shall be deemed a fiduciary.

   `(c) AVAILABILITY OF INFORMATION- Records and correspondence described under subsection (a)(7) shall be made available after 7 days written notice to the customer or the representative of the customer to review and copy at a reasonable cost on the invention promoter's premises during normal business hours.

[Struck out->] `Sec. 56. Remedies [<-Struck out]

   `(a) IN GENERAL- (1) Any contract for invention promotion services that does not comply with the applicable provisions of this chapter shall be voidable at the option of the customer.

   `(2) Any contract for invention promotion services entered into in reliance upon any material false, fraudulent, or misleading information, representation, notice, or advertisement of the invention promoter (or any agent, employee, officer, director, partner, or independent contractor of such invention promoter) shall be voidable at the option of the customer.

   `(3) Any waiver by the customer of any provision of this chapter shall be deemed contrary to public policy and shall be void and unenforceable.

   `(4) Any contract for invention promotion services which provides for filing for and obtaining utility, design, or plant patent protection shall be voidable at the option of the customer unless the invention promoter offers to perform or performs such act through a person duly registered to practice before, and in good standing with, the Patent and Trademark Office.

   `(b) CIVIL ACTION- (1) Any customer who is injured by a violation of this chapter by an invention promoter or by any material false or fraudulent statement or representation, or any omission of material fact, by an invention promoter (or any agent, employee, director, officer, partner, or independent contractor of such invention promoter) or by failure of an invention promoter to make all the disclosures required under this chapter, may recover in a civil action against the invention promoter (or the officers, directors, or partners of such invention promoter) in addition to reasonable costs and attorneys' fees, the greater of--

`(A) $5,000; or

`(B) the amount of actual damages sustained by the customer.

   `(2) Notwithstanding paragraph (1), the court may increase damages to not more than 3 times the amount awarded, taking into account past complaints made against the invention promoter that resulted in regulatory sanctions or other corrective actions based on those records compiled by the Director under section 57.

   `(c) REBUTTABLE PRESUMPTION OF INJURY- For purposes of this section, substantial violation of any provision of this chapter by an invention promoter or execution by the customer of a contract for invention promotion services in reliance on any material false or fraudulent statements or representations or omissions of material fact shall establish a rebuttable presumption of injury.

[Struck out->] `Sec. 57. Records of complaints [<-Struck out]

   `(a) RELEASE OF COMPLAINTS- The Director shall make all complaints received by the United States Patent and Trademark Office involving invention promoters publicly available, together with any response of the invention promoters.

   `(b) REQUEST FOR COMPLAINTS- The Director may request complaints relating to invention promotion services from any Federal or State agency and include such complaints in the records maintained under subsection (a), together with any response of the invention promoters.

[Struck out->] `Sec. 58. Fraudulent representation by an invention promoter [<-Struck out]

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

[Struck out->] `Sec. 59. Rule of construction [<-Struck out]

   `Except as expressly provided in this chapter, no provision of this chapter shall be construed to affect any obligation, right, or remedy provided under any other Federal or State law.'.

[Struck out->] `SEC. 103. EFFECTIVE DATE.` [<-Struck out]

   This title and the amendments made by this title shall take effect 60 days after the date of the enactment of this Act.

[Struck out->] `TITLE II--FIRST INVENTOR DEFENSE` [<-Struck out]

[Struck out->] `SEC. 201. SHORT TITLE.` [<-Struck out]

This title may be cited as the `First Inventor Defense Act'.

[Struck out->] `SEC. 202. DEFENSE TO PATENT INFRINGEMENT BASED ON EARLIER INVENTOR.` [<-Struck out]

(a) DEFENSE- Chapter 28 of title 35, United States Code, is amended by adding at the end the following new section:

[Struck out->] `Sec. 273. Defense to infringement based on earlier inventor [<-Struck out]

`(a) DEFINITIONS- For purposes of this section--

   `(1) the terms `commercially used' and `commercial use' mean use of a method in the United States, so long as such use is in connection with an internal commercial use or an actual arm's-length sale or other arm's-length commercial transfer of a useful end result, whether or not the subject matter at issue is accessible to or otherwise known to the public, except that the subject matter for which commercial marketing or use is subject to a premarketing regulatory review period during which the safety or efficacy of the subject matter is established, including any period specified in section 156(g), shall be deemed `commercially used' and in `commercial use' during such regulatory review period;

   `(2) in the case of activities performed by a nonprofit research laboratory, or nonprofit entity such as a university, research center, or hospital, a use for which the public is the intended beneficiary shall be considered to be a use described in paragraph (1), except that the use--

   `(A) may be asserted as a defense under this section only for continued use by and in the laboratory or nonprofit entity; and

   `(B) may not be asserted as a defense with respect to any subsequent commercialization or use outside such laboratory or nonprofit entity;

`(3) the term `method' means a method of doing or conducting business; and

   `(4) the `effective filing date' of a patent is the earlier of the actual filing date of the application for the patent or the filing date of any earlier United States, foreign, or international application to which the subject matter at issue is entitled under section 119, 120, or 365 of this title.

`(b) DEFENSE TO INFRINGEMENT- .

   `(1) IN GENERAL- It shall be a defense to an action for infringement under section 271 of this title with respect to any subject matter that would otherwise infringe one or more claims for a method in the patent being asserted against a person, if such person had, acting in good faith, actually reduced the subject matter to practice at least one year before the effective filing date of such patent, and commercially used the subject matter before the effective filing date of such patent.

   `(2) EXHAUSTION OF RIGHT- The sale or other disposition, of a useful end result produced by a patented method, by a person entitled to assert a defense under this section with respect to that useful end result shall exhaust the patent owner's rights under the patent to the extent such rights would have been exhausted had such sale or other disposition been made by the patent owner.

   `(3) LIMITATIONS AND QUALIFICATIONS OF DEFENSE- The defense to infringement under this section is subject to the following:

   `(A) PATENT- A person may not assert the defense under this section unless the invention for which the defense is asserted is for a method.

   `(B) DERIVATION- A person may not assert the defense under this section if the subject matter on which the defense is based was derived from the patentee or persons in privity with the patentee.

   `(C) NOT A GENERAL LICENSE- The defense asserted by a person under this section is not a general license under all claims of the patent at issue, but extends only to the specific subject matter claimed in the patent with respect to which the person can assert a defense under this chapter, except that the defense shall also extend to variations in the quantity or volume of use of the claimed subject matter, and to improvements in the claimed subject matter that do not infringe additional specifically claimed subject matter of the patent.

   `(4) BURDEN OF PROOF- A person asserting the defense under this section shall have the burden of establishing the defense by clear and convincing evidence.

   `(5) ABANDONMENT OF USE- A person who has abandoned commercial use of subject matter may not rely on activities performed before the date of such abandonment in establishing a defense under this section with respect to actions taken after the date of such abandonment.

   `(6) PERSONAL DEFENSE- The defense under this section may be asserted only by the person who performed the acts necessary to establish the defense and, except for any transfer to the patent owner, the right to assert the defense shall not be licensed or assigned or transferred to another person except as an ancillary and subordinate part of a good faith assignment or transfer for other reasons of the entire enterprise or line of business to which the defense relates.

   `(7) LIMITATION ON SITES- A defense under this section, when acquired as part of a good faith assignment or transfer of an entire enterprise or line of business to which the defense relates, may only be asserted for uses at sites where the subject matter that would otherwise infringe one or more of the claims is in use before the later of the effective filing date of the patent or the date of the assignment or transfer of such enterprise or line of business.

   `(8) UNSUCCESSFUL ASSERTION OF DEFENSE- If the defense under this section is pleaded by a person who is found to infringe the patent and who subsequently fails to demonstrate a reasonable basis for asserting the defense, the court shall find the case exceptional for the purpose of awarding attorney's fees under section 285 of this title.

   `(9) INVALIDITY- A patent shall not be deemed to be invalid under section 102 or 103 of this title solely because a defense is raised or established under this section.'.

   (b) CONFORMING AMENDMENT- The table of sections at the beginning of chapter 28 of title 35, United States Code, is amended by adding at the end the following new item:

`273. Defense to infringement based on earlier inventor.'.

[Struck out->] `SEC. 203. EFFECTIVE DATE AND APPLICABILITY.` [<-Struck out]

   This title and the amendments made by this title shall take effect on the date of the enactment of this Act, but shall not apply to any action for infringement that is pending on such date of the enactment or with respect to any subject matter for which an adjudication of infringement, including a consent judgment, has been made before such date of the enactment.

[Struck out->] `TITLE III--PATENT TERM GUARANTEE` [<-Struck out]

[Struck out->] `SEC. 301. SHORT TITLE.` [<-Struck out]

This title may be cited as the `Patent Term Guarantee Act'.

[Struck out->] `SEC. 302. PATENT TERM GUARANTEE AUTHORITY.` [<-Struck out]

(a) ADJUSTMENT OF PATENT TERM- Section 154(b) of title 35, United States Code, is amended to read as follows:

`(b) ADJUSTMENT OF PATENT TERM-

`(1) PATENT TERM GUARANTEES-

   `(A) GUARANTEE OF PROMPT PATENT AND TRADEMARK OFFICE RESPONSES- Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to--

   `(i) make a notification of the rejection of any claim for a patent or any objection or argument under section 132, or give or mail a written notice of allowance under section 151, within 14 months after the date on which the application was filed;

   `(ii) respond to a reply under section 132, or to an appeal taken under section 134, within 4 months after the date on which the reply was filed or the appeal was taken;

   `(iii) act on an application within 4 months after the date of a decision by the Board of Patent Appeals and Interferences under section 134 or 135 or a decision by a Federal court under section 141, 145, or 146 in a case in which allowable claims remain in the application; or

   `(iv) issue a patent within 4 months after the date on which the issue fee was paid under section 151 and all outstanding requirements were satisfied,

 the term of the patent shall be extended one day for each day after the end of the period specified in clause (i), (ii), (iii), or (iv), as the case may be, until the action described in such clause is taken.

   `(B) GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION PENDENCY- Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application in the United States, not including--

`(i) any time consumed by continued examination of the application requested by the applicant under section 132(b);

   `(ii) any time consumed by a proceeding under section 135(a), any time consumed by the imposition of an order pursuant to section 181, or any time consumed by appellate review by the Board of Patent Appeals and Interferences or by a  Federal court; or

   `(iii) any delay in the processing of the application by the Patent and Trademark Office requested by the applicant except as permitted by paragraph (3)(C),

 the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued.

   `(C) GUARANTEE OR ADJUSTMENTS FOR DELAYS DUE TO INTERFERENCES, SECRECY ORDERS, AND APPEALS- Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to--

`(i) a proceeding under section 135(a);

`(ii) the imposition of an order pursuant to section 181; or

   `(iii) appellate review by the Board of Patent Appeals and Interferences or by a Federal court in a case in which the patent was issued pursuant to a decision in the review reversing an adverse determination of patentability,

 the term of the patent shall be extended one day for each day of the pendency of the proceeding, order, or review, as the case may be.

`(2) LIMITATIONS-

   `(A) IN GENERAL- To the extent that periods of delay attributable to grounds specified in paragraph (1) overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed.

   `(B) DISCLAIMED TERM- No patent the term of which has been disclaimed beyond a specified date may be adjusted under this section beyond the expiration date specified in the disclaimer.

`(C) REDUCTION OF PERIOD OF ADJUSTMENT-

   `(i) The period of adjustment of the term of a patent under paragraph (1) shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application.

   `(ii) With respect to adjustments to patent term made under the authority of paragraph (1)(B), an applicant shall be deemed to have failed to engage in reasonable efforts to conclude processing or examination of an application for the cumulative total of any periods of time in excess of 3 months that are taken to respond to a notice from the Office making any rejection, objection, argument, or other request, measuring such 3-month period from the date the notice was given or mailed to the applicant.

   `(iii) The Director shall prescribe regulations establishing the circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application.

`(3) PROCEDURES FOR PATENT TERM ADJUSTMENT DETERMINATION-

   `(A) The Director shall prescribe regulations establishing procedures for the application for and determination of patent term adjustments under this subsection.

`(B) Under the procedures established under subparagraph (A), the Director shall--

   `(i) make a determination of the period of any patent term adjustment under this subsection, and shall transmit a notice of that determination with the written notice of allowance of the application under section 151; and

   `(ii) provide the applicant one opportunity to request reconsideration of any patent term adjustment determination made by the Director.

   `(C) The Director shall reinstate all or part of the cumulative period of time of an adjustment under paragraph (2)(C) if the applicant, prior to the issuance of the patent, makes a showing that, in spite of all due care, the applicant was unable to respond within the 3-month period, but in no case shall more than 3 additional months for each such response beyond the original 3-month period be reinstated.

   `(D) The Director shall proceed to grant the patent after completion of the Director's determination of a patent term adjustment under the procedures established under this subsection, notwithstanding any appeal taken by the applicant of such determination.

`(4) APPEAL OF PATENT TERM ADJUSTMENT DETERMINATION-

   `(A) An applicant dissatisfied with a determination made by the Director under paragraph (3) shall have remedy by a civil action against the Director filed in the United States District Court for the District of Columbia within 180 days after the grant of the patent. Chapter 7 of title 5 shall apply to such action. Any final judgment resulting in a change to the period of adjustment of the patent term shall be served on the Director, and the Director shall thereafter alter the term of the patent to reflect such change.

   `(B) The determination of a patent term adjustment under this subsection shall not be subject to appeal or challenge by a third party prior to the grant of the patent.'.

(b) CONFORMING AMENDMENTS-

   (1) Section 282 of title 35, United States Code, is amended in the fourth paragraph by striking `156 of this title' and inserting `154(b) or 156 of this title'.

   (2) Section 1295(a)(4)(C) of title 28, United States Code, is amended by striking `145 or 146' and inserting `145, 146, or 154(b)'.

[Struck out->] `SEC. 303. CONTINUED EXAMINATION OF PATENT APPLICATIONS.` [<-Struck out]

Section 132 of title 35, United States Code, is amended--

(1) in the first sentence by striking `Whenever' and inserting `(a) Whenever'; and

(2) by adding at the end the following:

   `(b) The Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant. The Director 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.'.

[Struck out->] `SEC. 304. TECHNICAL CLARIFICATION.` [<-Struck out]

   Section 156(a) of title 35, United States Code, is amended in the matter preceding paragraph (1) by inserting `, which shall include any patent term adjustment granted under section 154(b),' after `the original expiration date of the patent'.

[Struck out->] `SEC. 305. EFFECTIVE DATE.` [<-Struck out]

   (a) SECTIONS 302 AND 304- The amendments made by sections 302 and 304 shall take effect on the date of the enactment of this Act and, except for a design patent application filed under chapter 16 of title 35, United States Code, shall apply to any application filed on or after the date of the enactment of this Act.

   (b) SECTION 303- The amendments made by section 303 shall take effect 6 months after the date of the enactment of this Act.

[Struck out->] `TITLE IV--UNITED STATES PUBLICATION OF PATENT APPLICATIONS PUBLISHED ABROAD` [<-Struck out]

[Struck out->] `SEC. 401. SHORT TITLE.` [<-Struck out]

This title may be referred to as the `Publication of Foreign Filed Applications Act'.

[Struck out->] `SEC. 402. PUBLICATION.` [<-Struck out]

(a) PUBLICATION- Section 122 of title 35, United States Code, is amended to read as follows:

[Struck out->] `Sec. 122. Confidential status of applications; publication of patent applications [<-Struck out]

   `(a) CONFIDENTIALITY- Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning any such application shall be given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.

`(b) UNITED STATES PUBLICATION OF APPLICATIONS PUBLISHED ABROAD-

   `(1) IN GENERAL- (A) Subject to paragraph (2), each application for patent, except applications for design patents filed under chapter 16 and provisional applications filed under section 111(b), shall be published, in accordance with procedures determined by the Director, promptly upon the expiration of a period of 18 months after the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.

   `(B) No information concerning published patent applications shall be made available to the public except as the Director determines.

   `(C) Pursuant to this title and notwithstanding any other provision of law, a determination by the Director to release or not to release information concerning a published patent application shall be final and nonreviewable.

`(2) EXCEPTIONS- (A) An application that is no longer pending shall not be published.

`(B) An application that is subject to a secrecy order under section 181 shall not be published.

   `(C)(i) If an applicant, upon filing, makes a request that an application not be published pursuant to paragraph (1), and states in such request that the invention disclosed in the application has not been the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, the application shall not be published as provided in paragraph (1).

`(ii) An applicant may rescind a request made under clause (i) at any time.

   `(iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the notice was unintentional.

   `(iv) If a notice is made pursuant to clause (iii), or the applicant rescinds a request pursuant to clause (ii), the Director shall publish the application on or as soon as is practical after the date that is specified in clause (i).

   `(v) If an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agreement, and such foreign filed applications corresponding to an application filed in the Patent and Trademark Office or the description of the invention in such foreign filed applications is less extensive than the application or description of the invention in the application filed in the Patent and Trademark Office, the applicant may submit a redacted copy of the application filed in the Patent and Trademark Office eliminating any part or description of the invention in such application that is not also contained in any of the corresponding applications filed in a foreign country. The Director may only publish the redacted copy of the application unless the redacted copy of the application is not received within 16 months after the earliest effective filing date for which a benefit is sought under this title. The provisions of section 154(d) shall not apply to a claim if the description of the invention published in the redacted application filed under this clause with respect to the claim does not enable a person skilled in the art to make and use the subject matter of the claim.

   `(c) PROTEST AND PRE-ISSUANCE OPPOSITION- The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.'.

(b) STUDY BY GAO-

   (1) IN GENERAL- The Comptroller General of the United States shall conduct a study of applicants for patents who file only in the United States during the 3-year period beginning on the effective date of this title.

(2) CONTENTS- The study conducted under paragraph (1) shall--

   (A) consider the number of such applicants for patent in relation to the number of applicants who file in the United States and outside the United States;

(B) examine how many domestic-only filers request at the time of filing not to be published;

(C) examine how many such filers rescind that request or later choose to file abroad; and

   (D) examine the manner of entity seeking an application and any correlation that may exist between such manner and publication of patent applications.

   (3) REPORT TO JUDICIARY COMMITTEES- The Comptroller General shall submit to the Committees on the Judiciary of the House of Representatives and the Senate the results of the study conducted under this subsection.

[Struck out->] `SEC. 403. TIME FOR CLAIMING BENEFIT OF EARLIER FILING DATE.` [<-Struck out]

(a) IN A FOREIGN COUNTRY- Section 119(b) of title 35, United States Code, is amended to read as follows:

   `(b)(1) No application for patent shall be entitled to this right of priority unless a claim, identifying the foreign application by specifying its application number, country, and the day, month, and year of its filing, is filed in the Patent and Trademark Office at such time during the pendency of the application as required by the Director.

   `(2) The Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed claim under this section.

   `(3) The Director may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers.'.

   (b) IN THE UNITED STATES- Section 120 of title 35, United States Code, is amended by adding at the end the following: `The Director may determine the time period during the pendency of the application within which an amendment containing the specific reference to the earlier filed application is submitted. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept unintentionally late submissions of amendments under this section.'.

[Struck out->] `SEC. 404. PROVISIONAL RIGHTS.` [<-Struck out]

Section 154 of title 35, United States Code, is amended--

(1) in the section caption by inserting `; provisional rights' after `patent'; and

(2) by adding at the end the following new subsection:

`(d) PROVISIONAL RIGHTS-

   `(1) IN GENERAL- In addition to other rights provided by this section, a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent pursuant to section 122(b), or in the case of an international application filed under the treaty defined in section 351(a) designating the United States under Article 21(2)(a) of such treaty, the date of publication of the application, and ending on the date the patent is issued--

   `(A)(i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States; or

   `(ii) if the invention as claimed in the published patent application is a process, uses, offers for sale, or sells in the United States or imports into the United States products made by that process as claimed in the published patent application; and

   `(B) had actual notice of the published patent application, and in a case in which the right arising under this paragraph is based upon an international application designating the United States that is published in a language other than English, a translation of the international application into the English language.

   `(2) RIGHT BASED ON SUBSTANTIALLY IDENTICAL INVENTIONS- The right under paragraph (1) to obtain a reasonable royalty shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.

   `(3) TIME LIMITATION ON OBTAINING A REASONABLE ROYALTY- The right under paragraph (1) to obtain a reasonable royalty shall be available only in an action brought not later than 6 years after the patent is issued. The right under paragraph (1) to obtain a reasonable royalty shall not be affected by the duration of the period described in paragraph (1).

`(4) REQUIREMENTS FOR INTERNATIONAL APPLICATIONS-

   `(A) EFFECTIVE DATE- The right under paragraph (1) to obtain a reasonable royalty based upon the publication under the treaty defined in section 351(a) of an international application designating the United States shall commence on the date on which the Patent and Trademark Office receives a copy of the publication under the treaty of the international application, or, if the publication under the treaty of the international application is in a language other than English, on the date on which the Patent and Trademark Office receives a translation of the international application in the English language.

   `(B) COPIES- The Director may require the applicant to provide a copy of the international application and a translation thereof.'.

[Struck out->] `SEC. 405. PRIOR ART EFFECT OF PUBLISHED APPLICATIONS.` [<-Struck out]

Section 102(e) of title 35, United States Code, is amended to read as follows:

`(e) the invention was described in--

   `(1)(A) an application for patent, published pursuant to section 122(b), by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effect under this subsection of a national application published under section 122(b) only if the international application designating the United States was published under Article 21(2)(a) of such treaty in the English language; or

   `(B) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes of this subsection based on the filing of an international application filed under the treaty defined in section 351(a); or'.

[Struck out->] `SEC. 406. COST RECOVERY FOR PUBLICATION.` [<-Struck out]

   The Director of the United States Patent and Trademark Office shall recover the cost of early publication required by the amendment made by section 402 by charging a separate publication fee after notice of allowance is given pursuant to section 151 of title 35, United States Code.

[Struck out->] `SEC. 407. CONFORMING AMENDMENTS.` [<-Struck out]

The following provisions of title 35, United States Code, are amended:

   (1) Section 11 is amended in paragraph 1 of subsection (a) by inserting `and published applications for patents' after `Patents'.

(2) Section 12 is amended--

(A) in the section caption by inserting `and applications' after `patents'; and

(B) by inserting `and published applications for patents' after `patents'.

(3) Section 13 is amended--

(A) in the section caption by inserting `and applications' after `patents'; and

(B) by inserting `and published applications for patents' after `patents'.

   (4) The item relating to section 122 in the table of sections for chapter 11 is amended by inserting `; publication of patent applications' after `applications'.

   (5) The item relating to section 154 in the table of sections for chapter 14 is amended by inserting `; provisional rights' after `patent'.

(6) Section 181 is amended--

(A) in the first undesignated paragraph--

(i) by inserting `by the publication of an application or' after `disclosure'; and

(ii) by inserting `the publication of the application or' after `withhold';

   (B) in the second undesignated paragraph by inserting `by the publication of an application or' after `disclosure of an invention';

(C) in the third undesignated paragraph--

(i) by inserting `by the publication of the application or' after `disclosure of the invention'; and

(ii) by inserting `the publication of the application or' after `withhold'; and

   (D) in the fourth undesignated paragraph by inserting `the publication of an application or' after `and' in the first sentence.

   (7) Section 252 is amended in the first undesignated paragraph by inserting `substantially' before `identical' each place it appears.

   (8) Section 284 is amended by adding at the end of the second undesignated paragraph the following: `Increased damages under this paragraph shall not apply to provisional rights under section 154(d) of this title.'.

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

[Struck out->] `Sec. 374. Publication of international application: effect [<-Struck out]

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

[Struck out->] `SEC. 408. EFFECTIVE DATE.` [<-Struck out]

   This title and the amendments made by this title, shall take effect on the date that is 1 year after the date of the enactment of this Act and shall apply to all applications filed under section 111 of title 35, United States Code, on or after that date, and all applications complying with section 371 of title 35, United States Code, that resulted from international applications filed on or after that date. The amendments made by sections 404 and 405 shall apply to any such application voluntarily published by the applicant under procedures established under this title that is pending on the date that is 1 year after the date of the enactment of this Act. The amendment made by section 404 shall also apply to international applications designating the United States that are filed on or after the date that is 1 year after the date of the enactment of this Act.

[Struck out->] `TITLE V--OPTIONAL INTER PARTES REEXAMINATION PROCEDURE` [<-Struck out]

[Struck out->] `SEC. 501. SHORT TITLE.` [<-Struck out]

This title may be cited as the `Optional Inter Partes Reexamination Procedure Act'.

[Struck out->] `SEC. 502. EX PARTE REEXAMINATION OF PATENTS.` [<-Struck out]

   Chapter 30 of title 35, United States Code, is amended in the title by inserting `EX PARTE' before `REEXAMINATION OF PATENTS'.

[Struck out->] `SEC. 503. DEFINITIONS.` [<-Struck out]

Section 100 of title 35, United States Code, is amended by adding at the end the following new subsection:

   `(e) The term `third-party requester' means a person requesting ex parte reexamination under section 302 or inter partes reexamination under section 311 who is not the patent owner.'.

[Struck out->] `SEC. 504. OPTIONAL INTER PARTES REEXAMINATION PROCEDURES.` [<-Struck out]

   (a) IN GENERAL- Part 3 of title 35, United Stats Code, is amended by adding after chapter 30 the following new chapter:

[Struck out->] `CHAPTER 31--OPTIONAL INTER PARTES REEXAMINATION PROCEDURES [<-Struck out]

[Struck out->] `Sec. [<-Struck out]

`311. Request for inter partes reexamination.

`312. Determination of issue by Director.

`313. Inter partes reexamination order by Director.

`314. Conduct of inter partes reexamination proceedings.

`315. Appeal.

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

`317. Inter partes reexamination prohibited.

`318. Stay of litigation.

[Struck out->] `Sec. 311. Request for inter partes reexamination [<-Struck out]

   `(a) IN GENERAL- Any person at any time may file a request for inter partes reexamination by the Office of a patent on the basis of any prior art cited under the provisions of section 301.

`(b) REQUIREMENTS- The request shall--

   `(1) be in writing, include the identity of the real party in interest, and be accompanied by payment of an inter partes reexamination fee established by the Director under section 41; and

   `(2) set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.

   `(c) COPY- Unless the requesting person is the owner of the patent, the Director promptly shall send a copy of the request to the owner of record of the patent.

[Struck out->] `Sec. 312. Determination of issue by Director [<-Struck out]

   `(a) REEXAMINATION- Not later than 3 months after the filing of a request for inter partes reexamination under section 311, the Director shall determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. On the Director's initiative, and 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 determination under subsection (a) shall be placed in the official file of the patent, and a copy shall be promptly given or mailed to the owner of record of the patent and to the third-party requester, if any.

   `(c) FINAL DECISION- A determination by the Director pursuant to subsection (a) shall be final and nonappealable. Upon a determination that no substantial new question of patentability has been raised, the Director may refund a portion of the inter partes reexamination fee required under section 311.

[Struck out->] `Sec. 313. Inter partes reexamination order by Director [<-Struck out]

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

[Struck out->] `Sec. 314. Conduct of inter partes reexamination proceedings [<-Struck out]

   `(a) IN GENERAL- Subject to subsection (b), reexamination shall be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133, except as provided for under this section. In any inter partes reexamination proceeding under this chapter, the patent owner shall be permitted to propose any amendment to the patent and a new claim or claims, except that no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted.

   `(b) RESPONSE- (1) This subsection shall apply to any inter partes reexamination proceeding in which the order for inter partes reexamination is based upon a request by a third-party requester.

   `(2) With the exception of the inter partes reexamination request, any document filed by either the patent owner or the third-party requester shall be served on the other party. In addition, the third-party requester shall receive a copy of any communication sent by the Office to the patent owner concerning the patent subject to the inter partes reexamination proceeding.

   `(3) Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office, the third-party requester shall have one opportunity to file written comments addressing issues raised by the action of the Office or the patent owner's response thereto, if those written comments are received by the Office within 30 days after the date of service of the patent owner's response.

   `(c) SPECIAL DISPATCH- Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.

[Struck out->] `Sec. 315. Appeal [<-Struck out]

`(a) PATENT OWNER- The patent owner involved in an inter partes reexamination proceeding under this chapter--

   `(1) may appeal under the provisions of section 134, and may appeal under the provisions of sections 141 through 144, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent; and

`(2) may be a party to any appeal taken by a third-party requester under subsection (b).

`(b) THIRD-PARTY REQUESTER- A third-party requester may--

   `(1) appeal under the provisions of section 134 with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent; or

   `(2) be a party to any appeal taken by the patent owner under the provisions of section 134, subject to subsection (c).

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

[Struck out->] `Sec. 316. Certificate of patentability, unpatentability, and claim cancellation [<-Struck out]

   `(a) IN GENERAL- In an inter partes reexamination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.

   `(b) AMENDED OR NEW CLAIM- Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes reexamination proceeding shall have the same effect as that specified in section 252 of this title for reissued patents on the right of any person who made, purchased, or used within the 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.

[Struck out->] `Sec. 317. Inter partes reexamination prohibited [<-Struck out]

   `(a) ORDER FOR REEXAMINATION- Notwithstanding any provision of this chapter, once an order for inter partes reexamination of a patent has been issued under section 313, neither the patent owner nor the third-party requester, if any, nor privies of either, may file a subsequent request for inter partes reexamination of the patent until an inter partes reexamination certificate is issued and published under section 316, unless authorized by the Director.

   `(b) FINAL DECISION- Once a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28 that the party has not sustained its burden of proving the invalidity of any patent claim in suit or if a final decision in an inter partes reexamination proceeding instituted by a third-party requester is favorable to the patentability of any original or proposed amended or new claim of the patent then neither that party nor its privies may thereafter request inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action or inter partes reexamination proceeding, and an inter partes reexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.

[Struck out->] `Sec. 318. Stay of litigation [<-Struck out]

   `Once an order for inter partes reexamination of a patent has been issued under section 313, the patent owner may obtain a stay of any pending litigation which involves an issue of patentability of any claims of the patent which are the subject of the inter partes reexamination order, unless the court before which such litigation is pending determines that a stay would not serve the interests of justice.'.

   (b) CONFORMING AMENDMENTS- The table of chapters for part III of title 35, United States Code, is amended by striking the item relating to chapter 30 and inserting the following:

[Struck out->] 301 [<-Struck out]

[Struck out->] 311'. [<-Struck out]

[Struck out->] `SEC. 505. CONFORMING AMENDMENTS.` [<-Struck out]

   (a) PATENT FEES; PATENT SEARCH SYSTEMS- Section 41(a)(7) of title 35, United States Code, is amended to read as follows:

   `(7) On filing each petition for the revival of an unintentionally abandoned application for a patent, for the unintentionally delayed payment of the fee for issuing each patent, or for an unintentionally delayed response by the patent owner in any reexamination proceeding, $1,210, unless the petition is filed under section 133 or 151 of this title, in which case the fee shall be $110.'.

   (b) APPEAL TO THE BOARD OF PATENT APPEALS AND INTERFERENCES- Section 134 of title 35, United States Code, is amended to read as follows:

[Struck out->] `Sec. 134. Appeal to the Board of Patent Appeals and Interferences [<-Struck out]

   `(a) PATENT APPLICANT- An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.

   `(b) PATENT OWNER- A patent owner in any reexamination proceeding may appeal from the final rejection of any claim by the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.

   `(c) THIRD-PARTY- A third-party requester in an inter partes proceeding may appeal to the Board of Patent Appeals and Interferences from the final decision of the primary examiner favorable to the patentability of any original or proposed amended or new claim of a patent, having once paid the fee for such appeal. The third-party requester may not appeal the decision of the Board of Patent Appeals and Interferences.'.

   (c) APPEAL TO COURT OF APPEALS FOR THE FEDERAL CIRCUIT- Section 141 of title 35, United States Code, is amended by adding the following after the second sentence: `A patent owner in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board of Patent Appeals and Interferences under section 134 may appeal the decision only to the United States Court of Appeals for the Federal Circuit.'.

   (d) PROCEEDINGS ON APPEAL- Section 143 of title 35, United States Code, is amended by amending the third sentence to read as follows: `In any reexamination cases, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal.'.

   (e) CIVIL ACTION TO OBTAIN PATENT- Section 145 of title 35, United States Code, is amended in the first sentence by inserting `(a)' after `section 134'.

[Struck out->] `SEC. 506. REPORT TO CONGRESS.` [<-Struck out]

   Not later than 5 years after the effective date of this title, the Director of the United States Patent and Trademark Office shall submit to the Congress a report evaluating whether the inter partes reexamination proceedings established under the amendments made by this title are inequitable to any of the parties in interest and, if so, the report shall contain recommendations for changes to the amendments made by this title to remove such inequity.

[Struck out->] `SEC. 507. ESTOPPEL EFFECT OF REEXAMINATION.` [<-Struck out]

   Any party who requests an inter partes reexamination under section 311 of title 35, United States Code, is estopped from challenging at a later time, in any civil action, any fact determined during the process of such reexamination, except with respect to a fact determination later proved to be erroneous based on information unavailable at the time of the inter partes reexamination decision. If this section is held to be unenforceable, the enforceability of the rest of this title or of this Act shall not be denied as a result.

[Struck out->] `SEC. 508. EFFECTIVE DATE.` [<-Struck out]

   This title and the amendments made by this title shall take effect on the date that is 1 year after the date of the enactment of this Act and shall apply to inter partes reexamination requests filed on or after such date.

[Struck out->] `TITLE VI--PATENT AND TRADEMARK OFFICE` [<-Struck out]

[Struck out->] `SEC. 601. SHORT TITLE.` [<-Struck out]

This title may be cited as the `Patent and Trademark Office Efficiency Act'.

[Struck out->] `Subtitle A--United States Patent and Trademark Office` [<-Struck out]

[Struck out->] `SEC. 611. ESTABLISHMENT OF PATENT AND TRADEMARK OFFICE.` [<-Struck out]

Section 1 of title 35, United States Code, is amended to read as follows:

[Struck out->] `Sec. 1. Establishment [<-Struck out]

   `(a) ESTABLISHMENT- The United States Patent and Trademark Office is established as an agency of the United States, within the Department of Commerce. In carrying out its functions, the United States Patent and Trademark Office shall be subject to the policy direction of the Secretary of Commerce, but otherwise shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise independent control of its budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions in accordance with this title and applicable provisions of law. Those operations designed to grant and issue patents and those operations which are designed to facilitate the registration of trademarks shall be treated as separate operating units within the Office.

   `(b) OFFICES- The United States Patent and Trademark Office shall maintain its principal office in the metropolitan Washington, DC, area, for the service of process and papers and for the purpose of carrying out its functions. The United States Patent and Trademark Office shall be deemed, for purposes of venue in civil actions, to be a resident of the district in which its principal office is located, except where jurisdiction is otherwise provided by law. The United States Patent and Trademark Office may establish satellite offices in such other places in the United States as it considers necessary and appropriate in the conduct of its business.

   `(c) REFERENCE- For purposes of this title, the United States Patent and Trademark Office shall also be referred to as the `Office' and the `Patent and Trademark Office'.'.

[Struck out->] `SEC. 612. POWERS AND DUTIES.` [<-Struck out]

Section 2 of title 35, United States Code, is amended to read as follows:

[Struck out->] `Sec. 2. Powers and duties [<-Struck out]

   `(a) IN GENERAL- The United States Patent and Trademark Office, subject to the policy direction of the Secretary of Commerce--

`(1) shall be responsible for the granting and issuing of patents and the registration of trademarks; and

`(2) shall be responsible for disseminating to the public information with respect to patents and trademarks.

`(b) SPECIFIC POWERS- The Office--

   `(1) shall adopt and use a seal of the Office, which shall be judicially noticed and with which letters patent, certificates of trademark registrations, and papers issued by the Office shall be authenticated;

`(2) may establish regulations, not inconsistent with law, which--

`(A) shall govern the conduct of proceedings in the Office;

`(B) shall be made in accordance with section 553 of title 5;

   `(C) shall facilitate and expedite the processing of patent applications, particularly those which can be filed, stored, processed, searched, and retrieved electronically, subject to the provisions of section 122 relating to the confidential status of applications;

   `(D) may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office, and may require them, before being recognized as representatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office;

   `(E) shall recognize the public interest in continuing to safeguard broad access to the United States patent system through the reduced fee structure for small entities under section 41(h)(1) of this title; and

   `(F) provide for the development of a performance-based process that includes quantitative and qualitative measures and standards for evaluating cost-effectiveness and is consistent with the principles of impartiality and competitiveness;

   `(3) may acquire, construct, purchase, lease, hold, manage, operate, improve, alter, and renovate any real, personal, or mixed property, or any interest therein, as it considers necessary to carry out its functions;

   `(4)(A) may make such purchases, contracts for the construction, maintenance, or management and operation of facilities, and contracts for supplies or services, without regard to the provisions of the Federal Property and Administrative Services Act of 1949 (40 U.S.C. 471 et seq.), the Public Buildings Act (40 U.S.C. 601 et seq.), and the Stewart B. McKinney Homeless Assistance Act (42 U.S.C. 11301 et seq.); and

   `(B) may enter into and perform such purchases and contracts for printing services, including the process of composition, platemaking, presswork, silk screen processes, binding, microform, and the products of such processes, as it considers necessary to carry out the functions of the Office, without regard to sections 501 through 517 and 1101 through 1123 of title 44, United States Code;

   `(5) may use, with their consent, services, equipment, personnel, and facilities of other departments, agencies, and instrumentalities of the Federal Government, on a reimbursable basis, and cooperate with such other departments, agencies, and instrumentalities in the establishment and use of services, equipment, and facilities of the Office;

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

   `(7) may retain and use all of its revenues and receipts, including revenues from the sale, lease, or disposal of any real, personal, or mixed property, or any interest therein, of the Office;

   `(8) shall advise the President, through the Secretary of Commerce, on national and certain international intellectual property policy issues;

   `(9) shall advise Federal departments and agencies on matters of intellectual property policy in the United States and intellectual property protection in other countries;

   `(10) shall provide guidance, as appropriate, with respect to proposals by agencies to assist foreign governments and international intergovernmental organizations on matters of intellectual property protection;

   `(11) may conduct programs, studies, or exchanges of items or services regarding domestic and international intellectual property law and the effectiveness of intellectual property protection domestically and throughout the world;

   `(12)(A) shall advise the Secretary of Commerce on programs and studies relating to intellectual property policy that are conducted, or authorized to be conducted, cooperatively with foreign intellectual property offices and international intergovernmental organizations; and

`(B) may conduct programs and studies described in subparagraph (A); and

   `(13)(A) in coordination with the Department of State, may conduct programs and studies cooperatively with foreign intellectual property offices and international intergovernmental organizations; and

   `(B) with the concurrence of the Secretary of State, may authorize the transfer of not to exceed $100,000 in any year to the Department of State for the purpose of making special payments to international intergovernmental organizations for studies and programs for advancing international cooperation concerning patents, trademarks, and other matters.

   `(c) CLARIFICATION OF SPECIFIC POWERS- (1) The special payments under subsection (b)(13)(B) shall be in addition to any other payments or contributions to international organizations described in subsection (b)(13)(B) and shall not be subject to any limitations imposed by law on the amounts of such other payments or contributions by the United States Government.

   `(2) Nothing in subsection (b) shall derogate from the duties of the Secretary of State or from the duties of the United States Trade Representative as set forth in section 141 of the Trade Act of 1974 (19 U.S.C. 2171).

   `(3) Nothing in subsection (b) shall derogate from the duties and functions of the Register of Copyrights or otherwise alter current authorities relating to copyright matters.

   `(4) In exercising the Director's powers under paragraphs (3) and (4)(A) of subsection (b), the Director shall consult with the Administrator of General Services.

   `(d) CONSTRUCTION- Nothing in this section shall be construed to nullify, void, cancel, or interrupt any pending request-for-proposal let or contract issued by the General Services Administration for the specific purpose of relocating or leasing space to the United States Patent and Trademark Office.'.

[Struck out->] `SEC. 613. ORGANIZATION AND MANAGEMENT.` [<-Struck out]

Section 3 of title 35, United States Code, is amended to read as follows:

[Struck out->] `Sec. 3. Officers and employees [<-Struck out]

`(a) UNDER SECRETARY AND DIRECTOR-

   `(1) IN GENERAL- The powers and duties of the United States Patent and Trademark Office shall be vested in an Under Secretary of Commerce  for Intellectual Property and Director of the United States Patent and Trademark Office (in this title referred to as the `Director'), who shall be a citizen of the United States and who shall be appointed by the President, by and with the advice and consent of the Senate. The Director shall be a person who has a professional background and experience in patent or trademark law.

`(2) DUTIES-

   `(A) IN GENERAL- The Director shall be responsible for providing policy direction and management supervision for the Office and for the issuance of patents and the registration of trademarks. The Director shall perform these duties in a fair, impartial, and equitable manner.

   `(B) CONSULTING WITH THE PUBLIC ADVISORY COMMITTEES- The Director shall consult with the Patent Public Advisory Committee established in section 5 on a regular basis on matters relating to the patent operations of the Office, shall consult with the Trademark Public Advisory Committee established in section 5 on a regular basis on matters relating to the trademark operations of the Office, and shall consult with the respective Public Advisory Committee before submitting budgetary proposals to the Office of Management and Budget or changing or proposing to change patent or trademark user fees or patent or trademark regulations which are subject to the requirement to provide notice and opportunity for public comment pursuant to section 553 of title 5, as the case may be.

`(3) OATH- The Director shall, before taking office, take an oath to discharge faithfully the duties of the Office.

   `(4) REMOVAL- The Director may be removed from office by the President. The President shall provide notification of any such removal to both Houses of Congress.

`(b) OFFICERS AND EMPLOYEES OF THE OFFICE-

   `(1) DEPUTY UNDER SECRETARY AND DEPUTY DIRECTOR- The Secretary of Commerce, upon nomination by the Director, shall appoint a Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office who shall be vested with the authority to act in the capacity of the Director in the event of the absence or incapacity of the Director. The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law.

`(2) COMMISSIONERS-

   `(A) APPOINTMENT AND DUTIES- The Secretary of Commerce shall appoint a Commissioner for Patents and a Commissioner for Trademarks, without regard to chapter 33, 51, or 53 of title 5. The Commissioner for Patents shall be a citizen of the United States with demonstrated management ability and professional background and experience in patent law and serve for a term of 5 years. The Commissioner for Trademarks shall be a citizen of the United States with demonstrated management ability and professional background and experience in trademark law and serve for a term of 5 years. The Commissioner for Patents and the Commissioner for Trademarks shall serve as the chief operating officers for the operations of the Office relating to patents and trademarks, respectively, and shall be responsible for the management and direction of all aspects of the activities of the Office that affect the administration of patent and trademark operations, respectively. The Secretary may reappoint a Commissioner to subsequent terms of 5 years as long as the performance of the Commissioner as set forth in the performance agreement in subparagraph (B) is satisfactory.

   `(B) SALARY AND PERFORMANCE AGREEMENT- The Commissioners shall be paid an annual rate of basic pay not to exceed the maximum rate of basic pay for the Senior Executive Service established under section 5382 of title 5, including any applicable locality-based comparability payment that may be authorized under section 5304(h)(2)(C) of title 5. The compensation of the Commissioners shall be considered, for purposes of section 207(c)(2)(A) of title 18, to be the equivalent of that described under clause (ii) of section 207(c)(2)(A) of title 18. In addition, the Commissioners may receive a bonus in an amount of up to, but not in excess of, 50 percent of the Commissioner's annual rate of basic pay, based upon an evaluation by the Secretary of Commerce, acting through the Director, of the Commissioners' performance as defined in an annual performance agreement between the Commissioners and the Secretary. The annual performance agreements shall incorporate measurable organization and individual goals in key operational areas as delineated in an annual performance plan agreed to by the Commissioners and the Secretary. Payment of a bonus under this subparagraph may be made to the Commissioners only to the extent that such payment does not cause the Commissioners' total aggregate compensation in a calendar year to equal or exceed the amount of the salary of the Vice President under section 104 of title 3, United States Code.

   `(C) REMOVAL- The Commissioners may be removed from office by the Secretary for misconduct or nonsatisfactory performance under the performance agreement described in subparagraph (B), without regard to the provisions of title 5. The Secretary shall provide notification of any such removal to both Houses of Congress.

`(3) OTHER OFFICERS AND EMPLOYEES- The Director shall--

   `(A) appoint such officers, employees (including attorneys), and agents of the Office as the Director considers necessary to carry out the functions of the Office; and

   `(B) define the title, authority, and duties of such officers and employees and delegate to them such of the powers vested in the Office as the Director may determine.

 The Office shall not be subject to any administratively or statutorily imposed limitation on positions or personnel, and no positions or personnel of the Office shall be taken into account for purposes of applying any such limitation.

   `(4) TRAINING OF EXAMINERS- The Office shall submit to the Congress a proposal to provide an incentive program to retain as employees patent and trademark examiners of the primary examiner grade or higher who are eligible for retirement, for the sole purpose of training patent and trademark examiners.

   `(c) CONTINUED APPLICABILITY OF TITLE 5- Officers and employees of the Office shall be subject to the provisions of title 5 relating to Federal employees.

   `(d) ADOPTION OF EXISTING LABOR AGREEMENTS- The Office shall adopt all labor agreements which are in effect, as of the day before the effective date of the Patent and Trademark Office Efficiency Act, with respect to such Office (as then in effect).

`(e) CARRYOVER OF PERSONNEL-

   `(1) FROM PTO- Effective as of the effective date of the Patent and Trademark Office Efficiency Act, all officers and employees of the Patent and Trademark Office on the day before such effective date shall become officers and employees of the Office, without a break in service.

   `(2) OTHER PERSONNEL- Any individual who, on the day before the effective date of the Patent and Trademark Office Efficiency Act, is an officer or employee of the Department of Commerce (other than an officer or employee under paragraph (1)) shall be transferred to the Office, as necessary to carry out the purposes of this Act, if--

   `(A) such individual serves in a position for which a major function is the performance of work reimbursed by the Patent and Trademark Office, as determined by the Secretary of Commerce;

   `(B) such individual serves in a position that performed work in support of the Patent and Trademark Office during at least half of the incumbent's work time, as determined by the Secretary of Commerce; or

   `(C) such transfer would be in the interest of the Office, as determined by the Secretary of Commerce in consultation with the Director.

 Any transfer under this paragraph shall be effective as of the same effective date as referred to in paragraph (1), and shall be made without a break in service.

`(f) TRANSITION PROVISIONS-

   `(1) INTERIM APPOINTMENT OF DIRECTOR- On or after the effective date of the Patent and Trademark Office Efficiency Act, the President shall appoint an individual to serve as the Director until the date on which a Director qualifies under subsection (a). The President shall not make more than one such appointment under this subsection.

   `(2) CONTINUATION IN OFFICE OF CERTAIN OFFICERS- (A) The individual serving as the Assistant Commissioner for Patents on the day before the effective date of the Patent and Trademark Office Efficiency Act may serve as the Commissioner for Patents until the date on which a Commissioner for Patents is appointed under subsection (b).

   `(B) The individual serving as the Assistant Commissioner for Trademarks on the day before the effective date of the Patent and Trademark Office Efficiency Act may serve as the Commissioner for Trademarks until the date on which a Commissioner for Trademarks is appointed under subsection (b).'.

[Struck out->] `SEC. 614. PUBLIC ADVISORY COMMITTEES.` [<-Struck out]

Chapter 1 of part I of title 35, United States Code, is amended by inserting after section 4 the following:

[Struck out->] `Sec. 5. Patent and Trademark Office Public Advisory Committees [<-Struck out]

`(a) ESTABLISHMENT OF PUBLIC ADVISORY COMMITTEES-

   `(1) APPOINTMENT- The United States Patent and Trademark Office shall have a Patent Public Advisory Committee and a Trademark Public Advisory Committee, each of which shall have nine voting members who shall be appointed by the Secretary of Commerce and serve at the pleasure of the Secretary of Commerce. Members of each Public Advisory Committee shall be appointed for a term of 3 years, except that of the members first appointed, three shall be appointed for a term of 1 year, and three shall be appointed for a term of 2 years. In making appointments to each Committee, the Secretary of Commerce shall consider the risk of loss of competitive advantage in international commerce or other harm to United States companies as a result of such appointments.

   `(2) CHAIR- The Secretary shall designate a chair of each Advisory Committee, whose term as chair shall be for 3 years.

   `(3) TIMING OF APPOINTMENTS- Initial appointments to each Advisory Committee shall be made within 3 months after the effective date of the Patent and Trademark Office Efficiency Act. Vacancies shall be filled within 3 months after they occur.

`(b) BASIS FOR APPOINTMENTS- Members of each Advisory Committee--

   `(1) shall be citizens of the United States who shall be chosen so as to represent the interests of diverse users of the United States Patent and Trademark Office with respect to patents, in the case of the Patent Public Advisory Committee, and with respect to trademarks, in the case of the Trademark Public Advisory Committee;

   `(2) shall include members who represent small and large entity applicants located in the United States in proportion to the number of applications filed by such applicants, but in no case shall members who represent small entity patent applicants, including small business concerns, independent inventors, and nonprofit organizations, constitute less than 25 percent of the members of the Patent Public Advisory Committee, and such members shall include at least one independent inventor; and

   `(3) shall include individuals with substantial background and achievement in finance, management, labor relations, science, technology, and office automation.

 In addition to the voting members, each Advisory Committee shall include a representative of each labor organization recognized by the United States Patent and Trademark Office. Such representatives shall be nonvoting members of the Advisory Committee to which they are appointed.

`(c) MEETINGS- Each Advisory Committee shall meet at the call of the chair to consider an agenda set by the chair.

`(d) DUTIES- Each Advisory Committee shall--

   `(1) review the policies, goals, performance, budget, and user fees of the United States Patent and Trademark Office with respect to patents, in the case of the Patent Public Advisory Committee, and with respect to Trademarks, in the case of the Trademark Public Advisory Committee, and advise the Director on these matters;

`(2) within 60 days after the end of each fiscal year--

`(A) prepare an annual report on the matters referred to in paragraph (1);

   `(B) transmit the report to the Secretary of Commerce, the President, and the Committees on the Judiciary of the Senate and the House of Representatives; and

`(C) publish the report in the Official Gazette of the United States Patent and Trademark Office.

   `(e) COMPENSATION- Each member of each Advisory Committee shall be compensated for each day (including travel time) during which such member is attending meetings or conferences of that Advisory Committee or otherwise engaged in the business of that Advisory Committee, at the rate which is the daily equivalent of the annual rate of basic pay in effect for level III of the Executive Schedule under section 5314 of title 5. While away from such member's home or regular place of business such member shall be allowed travel expenses, including per diem in lieu of subsistence, as authorized by section 5703 of title 5, United States Code.

   `(f) ACCESS TO INFORMATION- Members of each Advisory Committee shall be provided access to records and information in the United States Patent and Trademark Office, except for personnel or other privileged information and information concerning patent applications required to be kept in confidence by section 122.

   `(g) APPLICABILITY OF CERTAIN ETHICS LAWS- Members of each Advisory Committee shall be special Government employees within the meaning of section 202 of title 18, United States Code.

   `(h) INAPPLICABILITY OF FEDERAL ADVISORY COMMITTEE ACT- The Federal Advisory Committee Act (5 U.S.C. App.) shall not apply to each Advisory Committee.

   `(i) OPEN MEETINGS- The meetings of each Advisory Committee shall be open to the public, except that each Advisory Committee may by majority vote meet in executive session when considering personnel or other confidential information.'.

[Struck out->] `SEC. 615. PATENT AND TRADEMARK OFFICE FUNDING.` [<-Struck out]

Section 42(c) of title 35, United States Code, is amended in the second sentence--

(1) by striking `Fees available' and inserting `All fees available'; and

(2) by striking `may' and inserting `shall'.

[Struck out->] `SEC. 616. CONFORMING AMENDMENTS.` [<-Struck out]

(a) DUTIES- Chapter 1 of title 35, United States Code, is amended by striking section 6.

   (b) REGULATIONS FOR AGENTS AND ATTORNEYS- Section 31 of title 35, United States Code, and the item relating to such section in the table of sections for chapter 3 of title 35, United States Code, are repealed.

   (c) SUSPENSION OR EXCLUSION FROM PRACTICE- Section 32 of title 35, United States Code, is amended by striking `31' and inserting `2(b)(2)(D)'.

[Struck out->] `SEC. 617. TRADEMARK TRIAL AND APPEAL BOARD.` [<-Struck out]

   Section 17 of the Act of July 5, 1946 (commonly referred to as the `Trademark Act of 1946') (15 U.S.C. 1067) is amended to read as follows:

   `SEC. 17. (a) In every case of interference, opposition to registration, application to register as a lawful concurrent user, or application to cancel the registration of a mark, the Director shall give notice to all parties and shall direct a Trademark Trial and Appeal Board to determine and decide the respective rights of registration.

   `(b) The Trademark Trial and Appeal Board shall include the Director, the Commissioner for Patents, the Commissioner for Trademarks, and administrative trademark judges who are appointed by the Director.'.

[Struck out->] `SEC. 618. BOARD OF PATENT APPEALS AND INTERFERENCES.` [<-Struck out]

Chapter 1 of title 35, United States Code, is amended--

(1) by striking section 7 and redesignating sections 8 through 14 as sections 7 through 13, respectively; and

(2) by inserting after section 5 the following:

[Struck out->] `Sec. 6. Board of Patent Appeals and Interferences [<-Struck out]

   `(a) ESTABLISHMENT AND COMPOSITION- There shall be in the United States Patent and Trademark Office a Board of Patent Appeals and Interferences. The Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Board. The administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Director.

   `(b) DUTIES- The Board of Patent Appeals and Interferences shall, on written appeal of an applicant, review adverse decisions of examiners upon applications for patents and shall determine priority and patentability of invention in interferences declared under section 135(a). Each appeal and interference shall be heard by at least 3 members of the Board, who shall be designated by the Director. Only the Board of Patent Appeals and Interferences may grant rehearings.'.

[Struck out->] `SEC. 619. ANNUAL REPORT OF DIRECTOR.` [<-Struck out]

   Section 13 of title 35, United States Code, as redesignated by section 618 of this Act, is amended to read as follows:

[Struck out->] `Sec. 13. Annual report to Congress [<-Struck out]

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

[Struck out->] `SEC. 620. SUSPENSION OR EXCLUSION FROM PRACTICE.` [<-Struck out]

   Section 32 of title 35, United States Code, is amended by inserting before the last sentence the following: `The Director shall have the discretion to designate any attorney who is an officer or employee of the United States Patent and Trademark Office to conduct the hearing required by this section.'.

[Struck out->] `SEC. 621. PAY OF DIRECTOR AND DEPUTY DIRECTOR.` [<-Struck out]

(a) PAY OF DIRECTOR- Section 5314 of title 5, United States Code, is amended by striking:

`Assistant Secretary of Commerce and Commissioner of Patents and Trademarks.'.

and inserting:

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

   (b) PAY OF DEPUTY DIRECTOR- Section 5315 of title 5, United States Code, is amended by adding at the end the following:

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

[Struck out->] `SEC. 622. STUDY ON ALTERNATIVE FEE STRUCTURES.` [<-Struck out]

   The Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office shall conduct a study of alternative fee structures that could be adopted by the United States Patent and Trademark Office to encourage maximum participation by the inventor community in the United States. The Director shall submit to the Committees on the Judiciary of the House of Representatives and the Senate a report on the study not later than 1 year after the date of the enactment of this Act.

[Struck out->] `Subtitle B--Effective Date; Technical Amendments` [<-Struck out]

[Struck out->] `SEC. 631. EFFECTIVE DATE.` [<-Struck out]

   This title and the amendments made by this title shall take effect 4 months after the date of the enactment of this Act.

[Struck out->] `SEC. 632. TECHNICAL AND CONFORMING AMENDMENTS.` [<-Struck out]

(a) AMENDMENTS TO TITLE 35-

   (1) The item relating to part I in the table of parts for chapter 35, United States Code, is amended to read as follows:

[Struck out->] 1'. [<-Struck out]

(2) The heading for part I of title 35, United States Code, is amended to read as follows:

[Struck out->] `PART I--UNITED STATES PATENT AND TRADEMARK OFFICE'. [<-Struck out]

   (3) The table of chapters for part I of title 35, United States Code, is amended by amending the item relating to chapter 1 to read as follows:

[Struck out->] 1'. [<-Struck out]

(4) The table of sections for chapter 1 of title 35, United States Code, is amended to read as follows:

[Struck out->] `CHAPTER 1--ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS [<-Struck out]

`Sec.

` 1. Establishment.

` 2. Powers and duties.

` 3. Officers and employees.

` 4. Restrictions on officers and employees as to interest in patent s.

` 5. Patent and Trademark Office Public Advisory Committees.

` 6. Board of Patent Appeals and Interferences.

` 7. Library.

` 8. Classification of patents.

` 9. Certified copies of records.

`10. Publications.

`11. Exchange of copies of patents and applications with foreign countries.

`12. Copies of patents and applications for public libraries.

`13. Annual report to Congress.'.

   (5) Section 41(h) of title 35, United States Code, is amended by striking `Commissioner of Patents and Trademarks' and inserting `Director'.

   (6) Section 155 of title 35, United States Code, is amended by striking `Commissioner of Patents and Trademarks' and inserting `Director'.

   (7) Section 155A(c) of title 35, United States Code, is amended by striking `Commissioner of Patents and Trademarks' and inserting `Director'.

   (8) Section 302 of title 35, United States Code, is amended by striking `Commissioner of Patents' and inserting `Director'.

   (9) Section 303(b) of title 35, United States Code, is amended by striking `Commissioner's' and inserting `Director's'.

   (10)(A) Except as provided in subparagraph (B), title 35, United States Code, is amended by striking `Commissioner' each place it appears and inserting `Director'.

   (B) Chapter 17 of title 35, United States Code, is amended by striking `Commissioner' each place it appears and inserting `Commissioner of Patents'.

   (11) Section 157(d) of title 35, United States Code, is amended by striking `Secretary of Commerce' and inserting `Director'.

(12) Section 202(a) of title 35, United States Code, is amended--

(A) by striking `iv)' and inserting `(iv)'; and

(B) by striking the second period after `Department of Energy' at the end of the first sentence.

(b) OTHER PROVISIONS OF LAW-

   (1)(A) Section 45 of the Act of July 5, 1946 (commonly referred to as the `Trademark Act of 1946'; 15 U.S.C. 1127), is amended by striking `The term `Commissioner' means the Commissioner of Patents and Trademarks.' and inserting `The term `Director' means the Director of the United States Patent and Trademark Office.'.

   (B) The Act of July 5, 1946 (commonly referred to as the `Trademark Act of 1946'; 15 U.S.C. 1051 and following), except for section 17, as amended by section 617 of this Act, is amended by striking `Commissioner' each place it appears and inserting `Director'.

   (2) Section 500(e) of title 5, United States Code, is amended by striking `Patent Office' and inserting `United States Patent and Trademark Office'.

(3) Section 5102(c)(23) of title 5, United States Code, is amended to read as follows:

   `(23) administrative patent judges and designated administrative patent judges in the United States Patent and Trademark Office;'.

   (4) Section 5316 of title 5, United States Code (5 U.S.C. 5316) is amended by striking `Commissioner of Patents, Department of Commerce.', `Deputy Commissioner of Patents and Trademarks.', `Assistant Commissioner for Patents.', and `Assistant Commissioner for Trademarks.'.

(5) Section 9(p)(1)(B) of the Small Business Act (15 U.S.C. 638(p)(1)(B)) is amended to read as follows:

`(B) the Director of the United States Patent and Trademark Office; and'.

(6) Section 12 of the Act of February 14, 1903 (15 U.S.C. 1511) is amended--

(A) by striking `(d) Patent and Trademark Office;' and inserting:

`(4) United States Patent and Trademark Office'; and

   (B) by redesignating subsections (a), (b), (c), (e), (f), and (g) as paragraphs (1), (2), (3), (5), (6), and (7), respectively and indenting the paragraphs as so redesignated 2 ems to the right.

(7) Section 19 of the Tennessee Valley Authority Act of 1933 (16 U.S.C. 831r) is amended--

(A) by striking `Patent Office of the United States' and inserting `United States Patent and Trademark Office'; and

(B) by striking `Commissioner of Patents' and inserting `Director of the United States Patent and Trademark Office'.

   (8) Section 182(b)(2)(A) of the Trade Act of 1974 (19 U.S.C. 2242(b)(2)(A)) is amended by striking `Commissioner of Patents and Trademarks' and inserting `Director of the United States Patent and Trademark Office'.

   (9) Section 302(b)(2)(D) of the Trade Act of 1974 (19 U.S.C. 2412(b)(2)(D)) is amended by striking `Commissioner of Patents and Trademarks' and inserting `Director of the United States Patent and Trademark Office'.

   (10) The Act of April 12, 1892 (27 Stat. 395; 20 U.S.C. 91) is amended by striking `Patent Office' and inserting `United States Patent and Trademark Office'.

   (11) Sections 505(m) and 512(o) of the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 355(m) and 360b(o)) are each amended by striking `Patent and Trademark Office of the Department of Commerce' and inserting `United States Patent and Trademark Office'.

   (12) Section 702(d) of the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 372(d)) is amended by striking `Commissioner of Patents' and inserting `Director of the United States Patent and Trademark Office' and by striking `Commissioner' and inserting `Director'.

   (13) Section 105(e) of the Federal Alcohol Administration Act (27 U.S.C. 205(e)) is amended by striking `United States Patent Office' and inserting `United States Patent and Trademark Office'.

(14) Section 1295(a)(4) of title 28, United States Code, is amended--

(A) in subparagraph (A) by inserting `United States' before `Patent and Trademark'; and

   (B) in subparagraph (B) by striking `Commissioner of Patents and Trademarks' and inserting `Director of the United States Patent and Trademark Office'.

(15) Chapter 115 of title 28, United States Code, is amended--

   (A) in the item relating to section 1744 in the table of sections by striking `Patent Office' and inserting `United States Patent and Trademark Office';

(B) in section 1744--

   (i) by striking `Patent Office' each place it appears in the text and section heading and inserting `United States Patent and Trademark Office'; and

   (ii) by striking `Commissioner of Patents' and inserting `Director of the United States Patent and Trademark Office'; and

   (16) Section 1745 of title 28, United States Code, is amended by striking `United States Patent Office' and inserting `United States Patent and Trademark Office'.

   (17) Section 1928 of title 28, United States Code, is amended by striking `Patent Office' and inserting `United States Patent and Trademark Office'.

   (18) Section 151 of the Atomic Energy Act of 1954 (42 U.S.C. 2181) is amended in subsections c. and d. by striking `Commissioner of Patents' and inserting `Director of the United States Patent and Trademark Office'.

   (19) Section 152 of the Atomic Energy Act of 1954 (42 U.S.C. 2182) is amended by striking `Commissioner of Patents' each place it appears and inserting `Director of the United States Patent and Trademark Office'.

(20) Section 305 of the National Aeronautics and Space Act of 1958 (42 U.S.C. 2457) is amended--

   (A) in subsection (c) by striking `Commissioner of Patents' and inserting `Director of the United States Patent and Trademark Office (hereafter in this section referred to as the `Director')'; and

(B) by striking `Commissioner' each subsequent place it appears and inserting `Director'.

   (21) Section 12(a) of the Solar Heating and Cooling Demonstration Act of 1974 (42 U.S.C. 5510(a)) is amended by striking `Commissioner of the Patent Office' and inserting `Director of the United States Patent and Trademark Office'.

(22) Section 1111 of title 44, United States Code, is amended by striking `the Commissioner of Patents,'.

(23) Section 1114 of title 44, United States Code, is amended by striking `the Commissioner of Patents,'.

(24) Section 1123 of title 44, United States Code, is amended by striking `the Patent Office,'.

   (25) Sections 1337 and 1338 of title 44, United States Code, and the items relating to those sections in the table of contents for chapter 13 of such title, are repealed.

   (26) Section 10(i) of the Trading with the enemy Act (50 U.S.C. App. 10(i)) is amended by striking `Commissioner of Patents' and inserting `Director of the United States Patent and Trademark Office'.

[Struck out->] `Subtitle C--Miscellaneous Provisions` [<-Struck out]

[Struck out->] `SEC. 641. REFERENCES.` [<-Struck out]

   (a) IN GENERAL- Any reference in any other Federal law, Executive order, rule, regulation, or delegation of authority, or any document of or pertaining to a department or office from which a function is transferred by this title--

   (1) to the head of such department or office is deemed to refer to the head of the department or office to which such function is transferred; or

   (2) to such department or office is deemed to refer to the department or office to which such function is transferred.

   (b) SPECIFIC REFERENCES- Any reference in any other Federal law, Executive order, rule, regulation, or delegation of authority, or any document of or pertaining to the Patent and Trademark Office--

   (1) to the Commissioner of Patents and Trademarks is deemed to refer to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office;

(2) to the Assistant Commissioner for Patents is deemed to refer to the Commissioner for Patents; or

(3) to the Assistant Commissioner for Trademarks is deemed to refer to the Commissioner for Trademarks.

[Struck out->] `SEC. 642. EXERCISE OF AUTHORITIES.` [<-Struck out]

   Except as otherwise provided by law, a Federal official to whom a function is transferred by this title may, for purposes of performing the function, exercise all authorities under any other provision of law that were available with respect to the performance of that function to the official responsible for the performance of the function immediately before the effective date of the transfer of the function under this title.

[Struck out->] `SEC. 643. SAVINGS PROVISIONS.` [<-Struck out]

   (a) LEGAL DOCUMENTS- All orders, determinations, rules, regulations, permits, grants, loans, contracts, agreements, certificates, licenses, and privileges--

   (1) that have been issued, made, granted, or allowed to become effective by the President, the Secretary of Commerce, any officer or employee of any office transferred by this title, or any other Government official, or by a court of competent jurisdiction, in the performance of any function that is transferred by this title; and

   (2) that are in effect on the effective date of such transfer (or become effective after such date pursuant to their terms as in effect on such effective date), shall continue in effect according to their terms until modified, terminated, superseded, set aside, or revoked in accordance with law by the President, any other authorized official, a court of competent jurisdiction, or operation of law.

   (b) PROCEEDINGS- This title shall not affect any proceedings or any application for any benefits, service, license, permit, certificate, or financial assistance pending on the effective date of this title before an office transferred by this title, but such proceedings and applications shall be continued. Orders shall be issued in such proceedings, appeals shall be taken therefrom, and payments shall be made pursuant to such orders, as if this title had not been enacted, and orders issued in any such proceeding shall continue in effect until modified, terminated, superseded, or revoked by a duly authorized official, by a court of competent jurisdiction, or by operation of law. Nothing in this subsection shall be considered to prohibit the discontinuance or modification of any such proceeding under the same terms and conditions and to the same extent that such proceeding could have been discontinued or modified if this title had not been enacted.

   (c) SUITS- This title shall not affect suits commenced before the effective date of this title, and in all such suits, proceedings shall be had, appeals taken, and judgments rendered in the same manner and with the same effect as if this title had not been enacted.

   (d) NONABATEMENT OF ACTIONS- No suit, action, or other proceeding commenced by or against the Department of Commerce or the Secretary of Commerce, or by or against any individual in the official capacity of such individual as an officer or employee of an office transferred by this title, shall abate by reason of the enactment of this title.

   (e) CONTINUANCE OF SUITS- If any Government officer in the official capacity of such officer is party to a suit with respect to a function of the officer, and under this title such function is transferred to any other officer or office, then such suit shall be continued with the other officer or the head of such other office, as applicable, substituted or added as a party.

   (f) ADMINISTRATIVE PROCEDURE AND JUDICIAL REVIEW- Except as otherwise provided by this title, any statutory requirements relating to notice, hearings, action upon the record, or administrative or judicial review that apply to any function transferred by this title shall apply to the exercise of such function by the head of the Federal agency, and other officers of the agency, to which such function is transferred by this title.

[Struck out->] `SEC. 644. TRANSFER OF ASSETS.` [<-Struck out]

   Except as otherwise provided in this title, so much of the personnel, property, records, and unexpended balances of appropriations, allocations, and other funds employed, used, held, available, or to be made available in connection with a function transferred to an official or agency by this title shall be available to the official or the head of that agency, respectively, at such time or times as the Director of the Office of Management and Budget directs for use in connection with the functions transferred.

[Struck out->] `SEC. 645. DELEGATION AND ASSIGNMENT.` [<-Struck out]

   Except as otherwise expressly prohibited by law or otherwise provided in this title, an official to whom functions are transferred under this title (including the head of any office to which functions are transferred under this title) may delegate any of the functions so transferred to such officers and employees of the office of the official as the official may designate, and may authorize successive redelegations of such functions as may be necessary or appropriate. No delegation of functions under this section or under any other provision of this title shall relieve the official to whom a function is transferred under this title of responsibility for the administration of the function.

[Struck out->] `SEC. 646. AUTHORITY OF DIRECTOR OF THE OFFICE OF MANAGEMENT AND BUDGET WITH RESPECT TO FUNCTIONS TRANSFERRED.` [<-Struck out]

   (a) DETERMINATIONS- If necessary, the Director of the Office of Management and Budget shall make any determination of the functions that are transferred under this title.

   (b) INCIDENTAL TRANSFERS- The Director of the Office of Management and Budget, at such time or times as the Director shall provide, may make such determinations as may be necessary with regard to the functions transferred by this title, and to make such additional incidental dispositions of personnel, assets, liabilities, grants, contracts, property, records, and unexpended balances of appropriations, authorizations, allocations, and other funds held, used, arising from, available to, or to be made available in connection with such functions, as may be necessary to carry out the provisions of this title. The Director shall provide for the termination of the affairs of all entities terminated by this title and for such further measures and dispositions as may be necessary to effectuate the purposes of this title.

[Struck out->] `SEC. 647. CERTAIN VESTING OF FUNCTIONS CONSIDERED TRANSFERS.` [<-Struck out]

   For purposes of this title, the vesting of a function in a department or office pursuant to reestablishment of an office shall be considered to be the transfer of the function.

[Struck out->] `SEC. 648. AVAILABILITY OF EXISTING FUNDS.` [<-Struck out]

   Existing appropriations and funds available for the performance of functions, programs, and activities terminated pursuant to this title shall remain available, for the duration of their period of availability, for necessary expenses in connection with the termination and resolution of such functions, programs, and activities, subject to the submission of a plan to the Committees on Appropriations of the House and Senate in accordance with the procedures set forth in section 605 of the Departments of Commerce, Justice, and State, the Judiciary, and Related Agencies Appropriations Act, 1999, as contained in Public Law 105-277.

[Struck out->] `SEC. 649. DEFINITIONS.` [<-Struck out]

For purposes of this title--

   (1) the term `function' includes any duty, obligation, power, authority, responsibility, right, privilege, activity, or program; and

   (2) the term `office' includes any office, administration, agency, bureau, institute, council, unit, organizational entity, or component thereof.

[Struck out->] `TITLE VII--MISCELLANEOUS PATENT PROVISIONS` [<-Struck out]

[Struck out->] `SEC. 701. PROVISIONAL APPLICATIONS.` [<-Struck out]

(a) ABANDONMENT- Section 111(b)(5) of title 35, United States Code, is amended to read as follows:

   `(5) ABANDONMENT- Notwithstanding the absence of a claim, upon timely request and as prescribed by the Commissioner, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title, if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival thereafter.'.

   (b) TECHNICAL AMENDMENT RELATING TO WEEKENDS AND HOLIDAYS- Section 119(e) of title 35, United States code, is amended by adding at the end the following:

   `(3) If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day.'.

   (c) ELIMINATION OF COPENDENCY REQUIREMENT- Section 119(e)(2) of title 35, United States Code, is amended by striking `and the provisional application was pending on the filing date of the application for patent under section 111(a) or section 363 of this title'.

   (d) EFFECTIVE DATE- The amendments made by this section shall take effect on the date of the enactment of this Act and shall apply to any provisional application filed on or after June 8, 1995, except that the amendments made by subsections (b) and (c) shall have no effect with respect to any patent which is the subject of litigation in an action commenced before such date of the enactment.

[Struck out->] `SEC. 702. INTERNATIONAL APPLICATIONS.` [<-Struck out]

Section 119 of title 35, United States Code, is amended--

(1) in subsection (a)--

(A) by inserting `in a WTO member country or' after `patent for the same invention'; and

(B) by inserting `such WTO member country or' after `first filed in';

(2) in subsection (c), by inserting `WTO member country or' after `application in the same'; and

(3) by adding at the end the following:

   `(f) Applications for plant breeder's rights filed in a WTO member country (or in a foreign UPOV Contracting Party) shall have the same effect for the purpose of the right of priority under subsections (a) through (c) of this section as applications for patent, subject to the same conditions and requirements of this section as apply to applications for patents.

`(g) As used in this section--

   `(1) the term `WTO member country' has the meaning given that term in section 2(10) of the Uruguay Round Agreements Act; and

   `(2) the term `UPOV Contracting Party' means a member of the International Convention for the Protection of New Varieties of Plants.'.

[Struck out->] `SEC. 703. CERTAIN LIMITATIONS ON DAMAGES FOR PATENT INFRINGEMENT NOT APPLICABLE.` [<-Struck out]

   Section 287(c)(4) of title 35, United States Code, is amended by striking `before the date of enactment of this subsection' and inserting `based on an application the earliest effective filing date of which is prior to September 30, 1996'.

[Struck out->] `SEC. 704. ELECTRONIC FILING AND PUBLICATIONS.` [<-Struck out]

   (a) PRINTING OF PAPERS FILED- Section 22 of title 35, United States Code, is amended by striking `printed or typewritten' and inserting `printed, typewritten, or on an electronic medium'.

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

`(a) The Director may publish in printed, typewritten, or electronic form, the following:'.

   (c) COPIES OF PATENTS FOR PUBLIC LIBRARIES- Section 13 of title 35, United States Code, is amended by striking `The Commissioner may supply printed copies of specifications and drawings of patents' and inserting `The Director may supply copies of specifications and drawings of patents in printed or electronic form'.

   (d) MAINTENANCE OF COLLECTIONS- Section 41(i)(1) of title 35, United States Code, is amended by striking `The Commissioner shall maintain, for use by the public, paper or microform' and inserting `The Director shall maintain, for use by the public, paper, microform, or electronic'.

[Struck out->] `SEC. 705. STUDY AND REPORT ON BIOLOGICAL DEPOSITS IN SUPPORT OF BIOTECHNOLOGY PATENTS.` [<-Struck out]

   (a) IN GENERAL- No later than 6 months after the date of the enactment of this Act, the Comptroller General of the United States, in consultation with the Director of the United States Patent and Trademark Office, shall conduct a study and submit a report to the Congress on the potential risks to the United States biotechnology industry relating to biological deposits in support of biotechnology patents.

(b) CONTENTS- The study conducted under this section shall include--

   (1) an examination of the risk of export and the risk of transfers to third parties of biological deposits, and the risks posed by the change to 18-month publication requirements made by this Act;

(2) an analysis of comparative legal and regulatory regimes; and

(3) any related recommendations.

   (c) CONSIDERATION OF REPORT- In drafting regulations affecting biological deposits (including any modification of title 37, Code of Federal Regulations, section 1.801 et seq.), the Patent and Trademark Office shall consider the recommendations of the study conducted under this section.

[Struck out->] `SEC. 706. PRIOR INVENTION.` [<-Struck out]

Section 102(g) of title 35, United States Code, is amended to read as follows:

   `(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.'.

[Struck out->] `SEC. 707. PRIOR ART EXCLUSION FOR CERTAIN COMMONLY ASSIGNED PATENTS.` [<-Struck out]

   (a) PRIOR ART EXCLUSION- Section 103(c) of title 35, United States Code, is amended by striking `subsection (f) or (g)' and inserting `one or more of subsections (e), (f), and (g)'.

   (b) EFFECTIVE DATE- The amendment made by subsection (a) shall apply to any application for patent filed on or after the date of the enactment of this Act.

SECTION 1. SHORT TITLE.

This Act may be cited as the `American Inventors Protection Act of 1999'.

SEC. 2. TABLE OF CONTENTS.

The table of contents is as follows:

Sec. 1. Short title.

Sec. 2. Table of contents.

TITLE I--INVENTORS' RIGHTS

Sec. 101. Short title.

Sec. 102. Integrity in invention promotion services.

Sec. 103. Effective date.

TITLE II--PATENT AND TRADEMARK FEE FAIRNESS

Sec. 201. Short title.

Sec. 202. Adjustment of patent fees.

Sec. 203. Adjustment of trademark fees.

Sec. 204. Study on alternative fee structures.

Sec. 205. Patent and Trademark Office funding.

Sec. 206. Effective date.

TITLE III--FIRST INVENTOR DEFENSE

Sec. 301. Short title.

Sec. 302. Defense to patent infringement based on earlier inventor.

Sec. 303. Study and report on business methods patents.

Sec. 304. Effective date and applicability.

TITLE IV--PATENT TERM GUARANTEE

Sec. 401. Short title.

Sec. 402. Patent term guarantee authority.

Sec. 403. Continued examination of patent applications.

Sec. 404. Technical clarification.

Sec. 405. Effective date.

TITLE V--DOMESTIC PUBLICATION OF PATENT APPLICATIONS PUBLISHED ABROAD

Sec. 501. Short title.

Sec. 502. Publication.

Sec. 503. Time for claiming benefit of earlier filing date.

Sec. 504. Provisional rights.

Sec. 505. Prior art effect of published applications.

Sec. 506. Cost recovery for publication.

Sec. 507. Conforming amendments.

Sec. 508. Effective date.

TITLE VI--OPTIONAL INTER PARTES REEXAMINATION PROCEDURE

Sec. 601. Short title.

Sec. 602. Ex parte reexamination of patents.

Sec. 603. Definitions.

Sec. 604. Optional inter partes reexamination procedures.

Sec. 605. Conforming amendments.

Sec. 606. Report to Congress.

Sec. 607. Estoppel effect of reexamination.

Sec. 608. Effective date.

TITLE VII--MISCELLANEOUS PATENT PROVISIONS

Sec. 701. Provisional applications.

Sec. 702. International applications.

Sec. 703. Certain limitations on damages for patent infringement not applicable.

Sec. 704. Electronic filing and publications.

Sec. 705. Study and report on biological deposits in support of biotechnology patents.

Sec. 706. Prior invention.

Sec. 707. Prior art exclusion for certain commonly assigned patents.

Sec. 708. Exchange of copies of patents with foreign countries.

Sec. 709. National security.

TITLE I--INVENTORS' RIGHTS

SEC. 101. SHORT TITLE.

This title may be cited as the `Inventors' Rights Act of 1999'.

SEC. 102. INTEGRITY IN INVENTION PROMOTION SERVICES.

(a) Chapter 29 of title 35, United States Code, is amended by adding at the end the following new section:

`Sec. 297. Improper and deceptive invention promotion

`(a) IN GENERAL- An invention promoter shall have a duty to disclose the following information to a customer in writing, prior to entering into a contract for invention promotion services:

`(1) the total number of inventions evaluated by the invention promoter for commercial potential in the past 5 years, as well as the number of those inventions that received positive evaluations, and the number of those inventions that received negative evaluations;

`(2) the total number of customers who have contracted with the invention promoter in the past 5 years, not including customers who have purchased trade show services, research, advertising, or other nonmarketing services from the invention promoter, or who have defaulted in their payment to the invention promoter;

`(3) the total number of customers known by the invention promoter to have received a net financial profit as a direct result of the invention promotion services provided by such invention promoter;

`(4) the total number of customers known by the invention promoter to have received license agreements for their inventions as a direct result of the invention promotion services provided by such invention promoter; and

`(5) the names and addresses of all previous invention promotion companies with which the invention promoter or its officers have collectively or individually been affiliated in the previous 10 years.

`(b) CIVIL ACTION- (1) Any customer who is found by a court to have been injured by any material false or fraudulent statement or representation, or any omission of material fact, by an invention promoter (or any agent, employee, director, officer, partner, or independent contractor of such invention promoter), or by the failure of an invention promoter to disclose such information as required under subsection (a), may recover in a civil action against the invention promoter (or the officers, directors, or partners of such invention promoter), in addition to reasonable costs and attorneys' fees--

`(A) the amount of actual damages incurred by the plaintiff; or

`(B) at the election of the plaintiff at any time before final judgment is rendered, statutory damages in a sum of not more than $5,000, as the court considers just.

`(2) Notwithstanding paragraph (1), in a case where the plaintiff 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 3 times the amount awarded, taking into account past complaints made against the invention promoter that resulted in regulatory sanctions or other corrective actions based on those records compiled by the Commissioner under subsection (d).

`(c) DEFINITIONS- For purposes of this section--

`(1) a `contract for invention promotion services' means a contract by which an invention promoter undertakes invention promotion services for a customer;

`(2) a `customer' is any person, firm, partnership, corporation or other entity who enters into a contract with an invention promoter for invention promotion services;

`(3) the term `invention promoter' means any person, firm, partnership, corporation, or other entity who offers to perform or performs invention promotion services for, or on behalf of, a customer, but does not include--

`(A) any department or agency of the Federal Government or of a State or local government;

`(B) any nonprofit, charitable, scientific, or educational organization, qualified under applicable State law or described under section 170(b)(1)(A) of the Internal Revenue Code of 1986;

`(C) any person or entity involved in the evaluation to determine commercial potential of, or offering to license or sell, a utility patent or a previously filed nonprovisional utility patent application;

`(D) any party participating in a transaction involving the sale of the stock or assets of a business; or

`(E) any party who directly engages in the business of retail sales of products or the distribution of products; and

`(4) the term `invention promotion services' means any act, where the customer is an individual, done for the purpose of procuring a firm, corporation, or other entity to develop and market products or services that include the invention.

`(d) RECORDS OF COMPLAINTS-

`(1) RELEASE OF COMPLAINTS- The Commissioner shall make all complaints received by the Patent and Trademark Office involving invention promoters publicly available, together with any response of the invention promoters.

`(2) REQUEST FOR COMPLAINTS- The Commissioner 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.'.

(b) CONFORMING AMENDMENT- The table of sections at the beginning of chapter 29 of title 35, United States Code, is amended by adding at the end the following new item:

`Sec. 297. Improper and deceptive invention promotion.'.

SEC. 103. EFFECTIVE DATE.

This title and the amendments made by this title shall take effect 60 days after the date of the enactment of this Act.

TITLE II--PATENT AND TRADEMARK FEE FAIRNESS

SEC. 201. SHORT TITLE.

This title may be cited as the `Patent and Trademark Fee Fairness Act of 1999'.

SEC. 202. ADJUSTMENT OF PATENT FEES.

(a) ORIGINAL FILING FEE- Section 41(a)(1)(A) of title 35, United States Code, relating to the fee for filing an original patent application, is amended by striking `$760' and inserting `$690'.

(b) REISSUE FEE- Section 41(a)(4)(A) of title 35, United States Code, relating to the fee for filing for a reissue of a patent, is amended by striking `$760' and inserting `$690'.

(c) NATIONAL FEE FOR CERTAIN INTERNATIONAL APPLICATIONS- Section 41(a)(10) of title 35, United States Code, relating to the national fee for certain international applications, is amended by striking `$760' and inserting `$690'.

(d) MAINTENANCE FEES- Section 41(b)(1) of title 35, United States Code, relating to certain maintenance fees, is amended by striking `$940' and inserting `$830'.

SEC. 203. ADJUSTMENT OF TRADEMARK FEES.

Notwithstanding the second sentence of section 31(a) of the Trademark Act of 1946 (15 U.S.C. 111(a)), the Commissioner of Patents and Trademarks is authorized in fiscal year 2000 to adjust trademark fees without regard to fluctuations in the Consumer Price Index during the preceding 12 months.

SEC. 204. STUDY ON ALTERNATIVE FEE STRUCTURES.

The Commissioner of Patents and Trademarks shall conduct a study of alternative fee structures that could be adopted by the United States Patent and Trademark Office to encourage maximum participation by the inventor community in the United States. The Commissioner shall submit such study to the Committees on the Judiciary of the House of Representatives and the Senate not later than 1 year after the date of enactment of this Act.

SEC. 205. PATENT AND TRADEMARK OFFICE FUNDING.

Section 42(c) of title 35, United States Code, is amended in the second sentence--

(1) by striking `Fees available' and inserting `All fees available'; and

(2) by striking `may' and inserting `shall'.

SEC. 206. EFFECTIVE DATE.

(a) Except as provided in subsection (b), the amendments made by this title shall take effect on the date of the enactment of this Act.

(b) The amendments made by section 202 of this title shall take effect 30 days after the date of the enactment of this Act.

TITLE III--FIRST INVENTOR DEFENSE

SEC. 301. SHORT TITLE.

This title may be cited as the `First Inventor Defense Act of 1999'.

SEC. 302. DEFENSE TO PATENT INFRINGEMENT BASED ON EARLIER INVENTOR.

(a) DEFENSE- Chapter 28 of title 35, United States Code, is amended by adding at the end the following new section:

`Sec. 273. Defense to infringement based on earlier inventor

`(a) DEFINITIONS- For purposes of this section--

`(1) the terms `commercially used' and `commercial use' mean use of a method in the United States, so long as such use is in connection with an internal commercial use or an actual arm's-length sale or other arm's-length commercial transfer of a useful end result, whether or not the subject matter at issue is accessible to or otherwise known to the public, except that the subject matter for which commercial marketing or use is subject to a premarketing regulatory review period during which the safety or efficacy of the subject matter is established, including any period specified in section 156(g), shall be deemed `commercially used' and in `commercial use' during such regulatory review period;

`(2) in the case of activities performed by a nonprofit research laboratory, or nonprofit entity such as a university, research center, or hospital, a use for which the public is the intended beneficiary shall be considered to be a use described in paragraph (1), except that the use--

`(A) may be asserted as a defense under this section only for continued use by and in the laboratory or nonprofit entity; and

`(B) may not be asserted as a defense with respect to any subsequent commercialization or use outside such laboratory or nonprofit entity;

`(3) the term `method' means a method of doing or conducting business; and

`(4) the `effective filing date' of a patent is the earlier of the actual filing date of the application for the patent or the filing date of any earlier United States, foreign, or international application to which the subject matter at issue is entitled under section 199, 120, or 365 of this title.

`(b) Defense to Infringement-

`(1) IN GENERAL- It shall be a defense to an action for infringement under section 271 of this title with respect to any subject matter that would otherwise infringe one or more claims for a method in the patent being asserted against a person, if such person had, acting in good faith, actually reduced the subject matter to practice at least one year before the effective filing date of such patent, and commercially used the subject matter before the effective filing date of such patent.

`(2) EXHAUSTION OF RIGHT- The sale or other disposition of a useful end product produced by a patented method, by a person entitled to assert a defense under this section with respect to that useful end result shall exhaust the patent owner's rights under the patent to the extent such rights would have been exhausted had such sale or other disposition been made by the patent owner.

`(3) LIMITATIONS AND QUALIFICATIONS OF DEFENSE- The defense to infringement under this section is subject to the following:

`(A) PATENT- A person may not assert the defense under this section unless the invention for which the defense is asserted is for a method.

`(B) DERIVATION- A person may not assert the defense under this section if the subject matter on which the defense is based was derived from the patentee or persons in privity with the patentee.

`(C) NOT A GENERAL LICENSE- The defense asserted by a person under this section is not a general license under all claims of the patent at issue, but extends only to the specific subject matter claimed in the patent with respect to which the person can assert a defense under this chapter, except that the defense shall also extend to variations in the quantity or volume of use of the claimed subject matter, and to improvements in the claimed subject matter that do not infringe additional specifically claimed subject matter of the patent.

`(4) BURDEN OF PROOF- A person asserting the defense under this section shall have the burden of establishing the defense by clear and convincing evidence.

`(5) ABANDONMENT OF USE- A person who has abandoned commercial use of subject matter may not rely on activities performed before the date of such abandonment in establishing a defense under this section with respect to actions taken after the date of such abandonment.

`(6) PERSONAL DEFENSE- The defense under this section may be asserted only by the person who performed the acts necessary to establish the defense and, except for any transfer to the patent owner, the right to assert the defense shall not be licensed or assigned or transferred to another person except as an ancillary and subordinate part of a good faith assignment or transfer for other reasons of the entire enterprise or line of business to which the defense relates.

`(7) LIMITATION ON SITES- A defense under this section, when acquired as part of a good faith assignment or transfer of an entire enterprise or line of business to which the defense relates, may only be asserted for uses at sites where the subject matter that would otherwise infringe one or more of the claims is in use before the later of the effective filing date of the patent or the date of the assignment or transfer of such enterprise or line of business.

`(8) UNSUCCESSFUL ASSERTION OF DEFENSE- If the defense under this section is pleaded by a person who is found to infringe the patent and who subsequently fails to demonstrate a reasonable basis for asserting the defense, the court shall find the case exceptional for the purpose of awarding attorney's fees under section 285 of this title.

`(9) INVALIDITY- A patent shall not be deemed to be invalid under section 102 or 103 of this title solely because a defense is raised or established under this section.'.

(b) CONFORMING AMENDMENT- The table of sections at the beginning of chapter 28 of title 35, United States Code, is amended by adding at the end the following new item:

`273. Defense to infringement based on earlier inventor.'.

SEC. 303. STUDY AND REPORT ON BUSINESS METHODS PATENTS.

(a) IN GENERAL- No later than 120 days after the date of the enactment of this Act, the General Accounting Office, in consultation with the Patent and Trademark Office, shall conduct a study and submit a report to the Judiciary Committees of the Senate and House of Representatives on the effect on innovation, competition (foreign and domestic), and American businesses (including electronic commerce) of the quality of patents being issued on business methods by the Patent and Trademark Office.

(b) CONTENTS- The study conducted under this section shall include--

(1) an examination of the number of applications received for patents on methods of doing business, including recent trends and forecasts, and the number of patents granted based on such applications;

(2) an examination of the nature of the applicants filing for and receiving such business methods patents, including by industry sectors, the extent to which such applicants have filed for patent protection for such business methods in foreign countries, and the nature of the technologies or business models represented in such patents and patent applications;

(3) an evaluation of the database of patents, publications, and other information used by the Patent and Trademark Office to examine applications for patents on methods of doing business;

(4) an analysis of the types of skills needed by patent examiners to adequately examine applications for patents on business methods, whether there are a sufficient number of examiners handling these applications with the requisite skills, and what types of training, if any, may be called for to augment these skills;

(5) an analysis of the economic and competitive impact of patents issued on business methods on American businesses, particularly on businesses involved in electronic commerce, including the effect of such patents on companies' abilities to raise investment capital, compete in their relevant markets, and innovate in emerging markets and technologies; and

(6) the extent, outcome, and effects on American business, competition, and innovation of litigation surrounding approved business methods patents.

SEC. 304. EFFECTIVE DATE AND APPLICABILITY.

This title and the amendments made by this title shall take effect on the date of the enactment of this Act, but shall not apply to any action for infringement that is pending on such date of the enactment or with respect to any subject matter for which an adjudication of infringement, including a consent judgment, has been made before such date of enactment.

TITLE IV--PATENT TERM GUARANTEE

SEC. 401. SHORT TITLE.

This title may be cited as the `Patent Term Guarantee Act of 1999'.

SEC. 402. PATENT TERM GUARANTEE AUTHORITY.

(a) ADJUSTMENT OF PATENT TERM- Section 154(b) of title 35, United States Code, is amended to read as follows:

`(b) Adjustment of Patent Term-

`(1) Patent term guarantees-

`(A) GUARANTEE OF PROMPT PATENT AND TRADEMARK OFFICE RESPONSES- Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to--

`(i) provide at least 1 of the notifications under section 132 of this title or a notice of allowance under section 151 of this title not later than 14 months after--

`(I) the date on which an application was filed under section 111(a) of this title; or

`(II) the date on which an international application fulfilled the requirements of section 371 of this title;

`(ii) respond to a reply under section 132, or to an appeal taken under section 134, within 4 months after the date on which the reply was filed or the appeal was taken;

`(iii) act on an application within 4 months after the date of a decision by the Board of Patent Appeals and Interferences under section 134 or 135 or a decision by a Federal court under section 141, 145, or 146 in a case in which allowable claims remain in the application; or

`(iv) issue a patent within 4 months after the date on which the issue fee was paid under section 151 and all outstanding requirements were satisfied,

the term of the patent shall be extended one day for each day after the end of the period specified in clause (i), (ii), (iii), or (iv), as the case may be, until the action described in such clause is taken.

`(B) GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION PENDENCY- Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application in the United States, not including--

`(i) any time consumed by continued examination of the application requested by the applicant under section 132(b);

`(ii) any time consumed by a proceeding under section 135(a), any time consumed by the imposition of an order pursuant to section 181, or any time consumed by appellate review by the Board of Patent Appeals and Interferences or by a Federal court; or

`(iii) any delay in the processing of the application by the Patent and Trademark Office requested by the applicant except as permitted by paragraph (3)(C),

the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued.

`(C) GUARANTEE OR ADJUSTMENTS FOR DELAYS DUE TO INTERFERENCES, SECRECY ORDERS, AND APPEALS- Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to--

`(i) a proceeding under section 135(a);

`(ii) the imposition of an order pursuant to section 181; or

`(iii) appellate review by the Board of Patent Appeals and Interferences or by a Federal court in a case in which the patent was issued pursuant to a decision in the review reversing an adverse determination of patentability,

the term of the patent shall be extended one day for each day of the pendency of the proceeding, order, or review, as the case may be.

`(2) LIMITATIONS-

`(A) IN GENERAL- To the extent that periods of delay attributable to grounds specified in paragraph (1) overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed.

`(B) DISCLAIMED TERM- No patent the term of which has been disclaimed beyond a specified date may be adjusted under this section beyond the expiration date specified in the disclaimer.

`(C) REDUCTION OF PERIOD OF ADJUSTMENT-

`(i) The period of adjustment of the term of a patent under paragraph (1) shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application.

`(ii) With respect to adjustments to patent term made under the authority of paragraph (1)(B), an applicant shall be deemed to have failed to engage in reasonable efforts to conclude processing or examination of an application for the cumulative total of any periods of time in excess of 3 months that are taken to respond to a notice from the Office making any rejection, objection, argument, or other request, measuring such 3-month period from the date the notice was given or mailed to the applicant.

`(iii) The 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 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 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 Commissioner.

`(C) The 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 3 additional months for each such response beyond the original 3-month period be reinstated.

`(D) The Commissioner shall proceed to grant the patent after completion of the 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 Commissioner under paragraph (3) shall have remedy by a civil action against the 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 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 Commissioner, and the Commissioner shall thereafter alter the term of the patent to reflect such change.

`(B) The determination of a patent term adjustment under this subsection shall not be subject to appeal or challenge by a third party prior to the grant of the patent.'.

(b) Conforming Amendments-

(1) Section 282 of title 35, United States Code, is amended in the fourth paragraph by striking `156 of this title' and inserting `154(b) or 156 of this title'.

(2) Section 1295(a)(4)(C) of title 28, United States Code, is amended by striking `145 or 146' and inserting `145, 146, or 154(b)'.

SEC. 403. CONTINUED EXAMINATION OF PATENT APPLICATIONS.

Section 132 of title 35, United States Code, is amended--

(1) in the first sentence by striking `Whenever' and inserting `(a) Whenever'; and

(2) by adding at the end the following:

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

SEC. 404. TECHNICAL CLARIFICATION.

Section 156(a) of title 35, United States Code, is amended in the matter preceding paragraph (1) by inserting `, which shall include any patent term adjustment granted under section 154(b),' after `the original expiration date of the patent'.

SEC. 405. EFFECTIVE DATE.

(a) Amendments Made by Sections 402 and 404- The amendments made by sections 402 and 404 shall take effect on the date that is 6 months after the date of the enactment of this Act and, except for a design patent application filed under chapter 16 of title 35, United States Code, shall apply to any application filed on or after the date that is 6 months after the date of the enactment of this Act.

(b) Amendments Made by Section 403- The amendments made by section 403--

(1) shall take effect on the date that is 6 months after the date of the enactment of this Act, and shall apply to all applications filed under section 111(a) of title 35, United States Code, on or after June 8, 1995, and all applications complying with section 371 of title 35, United States Code, that resulted from international applications filed on or after June 8, 1995; and

(2) do not apply to applications for design patents under chapter 16 of title 35, United States Code.

TITLE V--DOMESTIC PUBLICATION OF PATENT APPLICATIONS PUBLISHED ABROAD

SEC. 501. SHORT TITLE.

This title may be cited as the `Domestic Publication of Foreign Filed Patent Applications Act of 1999'.

SEC. 502. PUBLICATION.

(a) PUBLICATION- Section 122 of title 35, United States Code, is amended to read as follows:

`Sec. 122. Confidential status of applications; publication of patent applications

`(a) CONFIDENTIALITY- Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Commissioner.

`(b) Publication-

`(1) IN GENERAL- (A) Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures determined by the Commissioner, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.

`(B) No information concerning published patent applications shall be made available to the public except as the Commissioner determines.

`(C) Notwithstanding any other provision of law, a determination by the Commissioner to release or not to release information concerning a published patent application shall be final and nonreviewable.

`(2) EXCEPTIONS- (A) An application shall not be published if that application is--

`(i) no longer pending;

`(ii) subject to a secrecy order pursuant to section 181 of this title;

`(iii) a provisional application filed under section 111(b) of this title; or

`(iv) an application for a design patent filed under chapter 16 of this title.

`(B)(i) Where an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, the application shall not be published as provided in paragraph (1).

`(ii) An applicant may rescind a request made under clause (i) at any time.

`(iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Commissioner of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned, unless it is shown to the satisfaction of the Commissioner that the delay in submitting the notice was unintentional.

`(iv) Where an applicant rescinds a request made under clause (i) or notifies the Commissioner that an application was filed in a foreign country or under a multilateral international agreement specified in clause (i), the application shall be published in accordance with the provisions of paragraph (1) on or as soon as is practical after the date that is specified in clause (i).

`(v) If an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agreement, and such foreign filed applications corresponding to an application filed in the Patent and Trademark Office or the description of the invention in such foreign filed applications is less extensive than the application or description of the invention in the application filed in the Patent and Trademark Office, the applicant may submit a redacted copy of the application filed in the Patent and Trademark Office eliminating any part or description of the invention in such application that is not also contained in any of the corresponding applications filed in a foreign country. The Commissioner may only publish the redacted copy of the application unless the redacted copy of the application is not received within 16 months after the earliest effective filing date for which a benefit is sought under this title. The provisions of section 154(d) shall not apply to a claim if the description of the invention published in the redacted application filed under this clause with respect to the claim does not enable a person skilled in the art to make and use the subject matter of the claim.

`(c) PROTEST AND PRE-ISSUANCE OPPOSITION- The Commissioner shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.

`(d) NATIONAL SECURITY- No application for patent shall be published under subsection (b)(1) where the publication or disclosure of such invention would be detrimental to the national security. The Commissioner shall establish appropriate procedures to ensure that such applications are promptly identified and the secrecy of such inventions is maintained in accordance with chapter 17 of this title.'.

(b) Study-

(1) IN GENERAL- The General Accounting Office shall conduct a 3-year study of the applicants who file only in the United States after the effective date of this title and shall provide the results of such study to the Judiciary Committees of the House of Representatives and the Senate.

(2) CONTENTS- The study conducted under paragraph (1) shall--

(A) consider the number of such applicants in relation to the number of applicants who file in the United States and outside the United States;

(B) examine how many domestic-only filers request at the time of filing not to be published;

(C) examine how many such filers rescind that request or later choose to file abroad;

(D) examine the status of the entity seeking an application and any correlation that may exist between such status and the publication of patent applications; and

(E) examine the abandonment/issuance ratios and length of application pendency before patent issuance or abandonment for published versus unpublished applications.

SEC. 503. TIME FOR CLAIMING BENEFIT OF EARLIER FILING DATE.

(a) IN A FOREIGN COUNTRY- Section 119(b) of title 35, United States Code, is amended to read as follows:

`(b)(1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the application number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Commissioner.

`(2) The Commissioner may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Commissioner may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed claim under this section.

`(3) The Commissioner may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Commissioner considers necessary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers.'.

(b) IN THE UNITED STATES-

(1) IN GENERAL- Section 120 of title 35, United States Code, is amended by adding at the end the following: `No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Commissioner. The Commissioner may consider the failure to submit such an amendment within the time period as a waiver of any benefit under this section. The Commissioner may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.'.

(2) RIGHT OF PRIORITY- Section 119(e)(1) of title 35, United States Code, is amended by adding at the end the following: `No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Commissioner. The Commissioner may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Commissioner may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this subsection during the pendency of the application.'.

SEC. 504. PROVISIONAL RIGHTS.

Section 154 of title 35, United States Code, is amended--

(1) in the section caption by inserting `; provisional rights' after `patent'; and

(2) by adding at the end the following new section:

`(d) PROVISIONAL RIGHTS-

`(1) IN GENERAL- In addition to other rights provided by this section, a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent pursuant to section 122(b), or in the case of an international application filed under the treaty defined in section 351(a) designating the United States under Article 21(2)(a) of such treaty, the date of publication of the application, and ending on the date the patent is issued--

`(A)(i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States; or

`(ii) if the invention as claimed in the published patent application is a process, uses, offers for sale, or sells in the United States or imports into the United States products made by that process as claimed in the published patent application; and

`(B) had actual notice of the published patent application and, in a case in which the right arising under this paragraph is based upon an international application designating the United States that is published in a language other than English, had a translation of the international application into the English language.

`(2) RIGHT BASED ON SUBSTANTIALLY IDENTICAL INVENTIONS- The right under paragraph (1) to obtain a reasonable royalty shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.

`(3) TIME LIMITATION ON OBTAINING A REASONABLE ROYALTY- The right under paragraph (1) to obtain a reasonable royalty shall be available only in an action brought not later than 6 years after the patent is issued. The right under paragraph (1) to obtain a reasonable royalty shall not be affected by the duration of the period described in paragraph (1).

`(4) Requirements for international applications-

`(A) EFFECTIVE DATE- The right under paragraph (1) to obtain a reasonable royalty based upon the publication under the treaty defined in section 351(a) of an international application designating the United States shall commence on the date on which the Patent and Trademark Office receives a copy of the publication under the treaty of the international application, or, if the publication under the treaty of the international application is in a language other than English, on the date on which the Patent and Trademark Office receives a translation of the international application in the English language.

`(B) COPIES- The Commissioner may require the applicant to provide a copy of the international application and a translation thereof.'.

SEC. 505. PRIOR ART EFFECT OF PUBLISHED APPLICATIONS.

Section 102(e) of title 35, United States Code, is amended to read as follows:

`(e) the invention was described in--

`(1)(A) an application for patent, published pursuant to section 122(b), by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effect under this subsection of a national application published under section 122(b) only if the international application designating the United States was published under Article 21(2)(a) of such treaty in the English language; or

`(B) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes of this subsection based on the filing of an international application filed under the treaty defined in section 351(a); or'.

SEC. 506. COST RECOVERY FOR PUBLICATION.

The Commissioner of Patents and Trademarks shall recover the cost of early publication required by the amendment made by section 502 by charging a separate publication fee after notice of allowance is given pursuant to section 151 of title 35, United States Code.

SEC. 507. CONFORMING AMENDMENTS.

The following provisions of title 35, United States Code, are amended:

(1) Section 11 is amended in paragraph (1) of subsection (a) by inserting `and published applications for patents' after `Patents'.

(2) Section 12 is amended--

(A) in the section caption by inserting `and applications' after `patents'; and

(B) by inserting `and published applications for patents' after `patents'.

(3) Section 13 is amended--

(A) in the section caption by inserting `and applications' after `patents'; and

(B) by inserting `and published applications for patents' after `patents'.

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

(5) The item relating to section 122 in the table of sections for chapter 11 is amended by inserting `; publication of patent applications' after `applications'.

(6) The item relating to section 154 in the table of sections for chapter 14 is amended by inserting `; provisional rights' after `patent'.

(7) Section 181 is amended--

(A) in the first undesignated paragraph--

(i) by inserting `by the publication of an application or' after `disclosure'; and

(ii) by inserting `the publication of the application or' after `withhold';

(B) in the second undesignated paragraph by inserting `by the publication of an application or' after `disclosure of an invention';

(C) in the third undesignated paragraph--

(i) by inserting `by the publication of the application or' after `disclosure of the invention'; and

(ii) by inserting `the publication of the application or' after `withhold'; and

(D) in the fourth undesignated paragraph by inserting `the publication of an application or' after `and' in the first sentence.

(8) Section 252 is amended in the first undesignated paragraph by inserting `substantially' before `identical' each place it appears.

(9) Section 284 is amended by adding at the end of the second undesignated paragraph the following: `Increased damages under this paragraph shall not apply to provisional rights under section 154(d) of this title.'.

(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 under section 122(b), except as provided in sections 102(e) and 154(d) of this title.'.

(11) Section 135(b) is amended--

(A) by inserting `(1)' after `(b)'; and

(B) by adding at the end the following:

`(2) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published pursuant to section 122(b) of this title may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.'.

SEC. 508. EFFECTIVE DATE.

Sections 502 through 507, and the amendments made by such sections, shall take effect on the date that is 1 year after the date of 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 504 and 505 shall apply to any such application voluntarily published by the applicant under procedures established under this title that is pending on the date that is 1 year after the date of the enactment of this Act. The amendment made by section 504 shall also apply to international applications designating the United States that

are filed on or after the date that is 1 year after the date of the enactment of this Act.

TITLE VI--OPTIONAL INTER PARTES REEXAMINATION PROCEDURE

SEC. 601. SHORT TITLE.

This title may be cited as the `Optional Inter Partes Reexamination Procedure Act of 1999'.

SEC. 602. EX PARTE REEXAMINATION OF PATENTS.

Chapter 30 of title 35, United States Code, is amended in the title by inserting `EX PARTE' before `REEXAMINATION OF PATENTS'.

SEC. 603. DEFINITIONS.

Section 100 of title 35, United States Code, is amended by adding at the end the following new subsection:

`(e) The term `third-party requester' means a person requesting ex parte reexamination under section 302 or inter partes reexamination under section 311 who is not the patent owner.'.

SEC. 604. OPTIONAL INTER PARTES REEXAMINATION PROCEDURES.

(a) IN GENERAL- Part 3 of title 35, United States Code, is amended by adding after chapter 30 the following new chapter:

`CHAPTER 31--OPTIONAL INTER PARTES REEXAMINATION PROCEDURES

`Sec.

`311. Request for inter partes reexamination.

`312. Determination of issue by Commissioner.

`313. Inter partes reexamination order by Commissioner.

`314. Conduct of inter partes reexamination proceedings.

`315. Appeal.

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

`317. Inter partes reexamination prohibited.

`318. Stay of litigation.

`Sec. 311. Request for inter partes reexamination

`(a) IN GENERAL- Any person at any time may file a request for inter partes reexamination by the Office of a patent on the basis of any prior art cited under the provisions of section 301.

`(b) REQUIREMENTS- The request shall--

`(1) be in writing, include the identity of the real party in interest, and be accompanied by payment of an inter partes reexamination fee established by the 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 Commissioner promptly shall send a copy of the request to the owner of record of the patent.

`Sec. 312. Determination of issue by Commissioner

`(a) REEXAMINATION- Not later than 3 months after the filing of a request for inter partes reexamination under section 311, the 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 Commissioner's initiative, and at any time, the Commissioner may determine whether a substantial new question of patentability is raised by patents and publications.

`(b) RECORD- A record of the 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 Commissioner pursuant to subsection (a) shall be final and non-appealable. Upon a determination that no substantial new question of patentability has been raised, the Commissioner may refund a portion of the inter partes reexamination fee required under section 311.

`Sec. 313. Inter partes reexamination order by Commissioner

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

`Sec. 314. Conduct of inter partes reexamination proceedings

`(a) IN GENERAL- Subject to subsection (b), reexamination shall be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133, except as provided for under this section. In any inter partes reexamination proceeding under this chapter, the patent owner shall be permitted to propose any amendment to the patent and a new claim or claims, except that no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted.

`(b) RESPONSE- (1) This subsection shall apply to any inter partes reexamination proceeding in which the order for inter partes reexamination is based upon a request by a third-party requester.

`(2) With the exception of the inter partes reexamination request, any document filed by either the patent owner or the third-party requester shall be served on the other party. In addition, the third-party requester shall receive a copy of any communication sent by the Office to the patent owner concerning the patent subject to the inter partes reexamination proceeding.

`(3) Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office, the third-party requester shall have one opportunity to file written comments addressing issues raised by the action of the Office or the patent owner's response thereto, if those written comments are received by the Office within 30 days after the date of service of the patent owner's response.

`(c) SPECIAL DISPATCH- Unless otherwise provided by the 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) PATENT OWNER- The patent owner involved in an inter partes reexamination proceeding under this chapter--

`(1) may appeal under the provisions of section 134 and may appeal under the provisions of sections 141 through 144, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent; and

`(2) may be a party to any appeal taken by a third-party requester under subsection (b).

`(b) THIRD-PARTY REQUESTER- A third-party requester may--

`(1) appeal under the provisions of section 134 with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent; or

`(2) be a party to any appeal taken by the patent owner under the provisions of section 134, subject to subsection (c).

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

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

`(a) IN GENERAL- In an inter partes reexamination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Commissioner shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.

`(b) AMENDED OR NEW CLAIM- Any proposed amended or new claim determined to patentable and incorporated into a patent following an inter partes reexamination proceeding shall have the same effect as that specified in section 252 of this title for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation for the same, prior to issuance of a certificate under the provisions of subsection (a) of this section.

`Sec. 317. Inter partes reexamination prohibited

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

`Sec. 318. Stay of litigation

`Once an order for inter partes reexamination of a patent has been issued under section 313, the patent owner may obtain a stay of any pending litigation which involves an issue of patentability of any claims of the patent which are the subject of the inter partes reexamination order, unless the court before which such litigation is pending determines that a stay would not serve the interests of justice.'.

(b) CONFORMING AMENDMENTS- The table of chapters for part III of title 25, United States Code, is amended by striking the item relating to chapter 30 and inserting the following:

301

311'.

SEC. 605. CONFORMING AMENDMENTS.

(a) PATENT FEES; PATENT SEARCH SYSTEMS- Section 41(a)(7) of title 35, United States Code, is amended to read as follows:

`(7) On filing each petition for the revival of an unintentionally abandoned application for a patent, for the unintentionally delayed payment of the fee for issuing each patent, or for an unintentionally delayed response by the patent owner in any reexamination proceeding, $1,210, unless the petition is filed under section 133 or 151 of this title, in which case the fee shall be $110.'.

(b) APPEAL TO THE BOARD OF PATENTS APPEALS AND INTERFERENCES- Section 134 of title 35, United States Code, is amended to read as follows:

`Sec. 134. Appeal to the Board of Patent Appeals and Interferences

`(a) PATENT APPLICANT- An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.

`(b) PATENT OWNER- A patent owner in any reexamination proceeding may appeal from the final rejection of any claim by the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.

`(c) THIRD-PARTY- A third-party requester in an inter partes proceeding may appeal to the Board of Patent Appeals and Interferences from the final decision of the primary examiner favorable to the patentability of any original or proposed amended or new claim of a patent, having once paid the fee for such appeal. The third-party requester may not appeal the decision of the Board of Patent Appeals and Interferences.'.

(c) APPEAL TO COURT OF APPEALS FOR THE FEDERAL CIRCUIT- Section 141 of title 35, United States Code, is amended by adding the following after the second sentence: `A patent owner in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board of Patent Appeals and Interferences under section 134 may appeal the decision only to the United States Court of Appeals for the Federal Circuit.'.

(d) PROCEEDINGS ON APPEAL- Section 143 of title 35, United States Code, is amended by amending the third sentence to read as follows: `In any reexamination cases, 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.'.

(e) CIVIL ACTION TO OBTAIN PATENT- Section 145 of title 35, United States Code, is amended in the first sentence by inserting `(a)' after `section 134'.

SEC. 606. REPORT TO CONGRESS.

Not later than 5 years after the effective date of this title, the Commissioner of Patents and Trademarks shall submit to the Congress a report evaluating whether the inter partes reexamination proceedings established under the amendments made by this title are inequitable to any of the parties in interest and, if so, the report shall contain recommendations for changes to the amendments made by this title to remove such inequity.

SEC. 607. ESTOPPEL EFFECT OF REEXAMINATION.

Any party who requests an inter partes reexamination under section 311 of title 35, United States Code, is estopped from challenging at a later time, in any civil action, any fact determined during the process of such reexamination, except with respect to a fact determination later proved to be erroneous based on information unavailable at the time of the inter partes reexamination decision. If this section is held to be unenforceable, the enforceability of the rest of this title or of this Act shall not be denied as a result.

SEC. 608. EFFECTIVE DATE.

This title and the amendments made by this title shall take effect on the date that is 1 year after the date of the enactment of this Act and shall apply to inter partes reexamination requests filed on or after such date.

TITLE VII--MISCELLANEOUS PATENT PROVISIONS

SEC. 701. PROVISIONAL APPLICATIONS.

(a) ABANDONMENT- Section 111(b)(5) of title 35, United States Code, is amended to read as follows:

`(5) ABANDONMENT- Notwithstanding the absence of a claim, upon timely request and as prescribed by the Commissioner, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title, if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.'.

(b) TECHNICAL AMENDMENT RELATING TO WEEKENDS AND HOLIDAYS- Section 119(e) of title 35, United States Code, is amended by adding at the end the following:

`(3) If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day.'.

(c) ELIMINATION OF COPENDENCY REQUIREMENT- Section 119(e)(2) of title 35, United States Code, is amended by striking `and the provisional application was pending on the filing date of the application for patent under section 111(a) or section 363 of this title'.

(d) EFFECTIVE DATE- The amendments made by this section shall take effect on the date of the enactment of this Act and shall apply to any provisional application filed on or after June 8, 1995, except that the amendments made by subsections (b) and (c) shall have no effect with respect to any patent which is the subject of litigation in an action commenced before such date of the enactment.

SEC. 702. 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 citizens of the United States,'.

(2) At the end of section 119 add the following new subsections:

`(f) Applications for plant breeder's rights filed in a WTO member country (or in a foreign UPOV Contracting Party) shall have the same effect for the purpose of the right of priority under subsections (a) through (c) of this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents.

`(g) As used in this section--

`(1) the term `WTO member country' has the same meaning as the term is defined in section 104(b)(2) of this title; and

`(2) the term `UPOV Contracting Party' means a member of the International Convention for the Protection of New Varieties of Plants.'.

SEC. 703. CERTAIN LIMITATIONS ON DAMAGES FOR PATENT INFRINGEMENT NOT APPLICABLE.

Section 287(c)(4) of title 35, United States Code, is amended by striking `before the date of enactment of this subsection' and inserting `based on an application the earliest effective filing date of which is prior to September 30, 1996'.

SEC. 704. ELECTRONIC FILING AND PUBLICATIONS.

(a) PRINTING OF PAPERS FILED- Section 22 of title 35, United States Code, is amended by striking `printed or typewritten' and inserting `printed, typewritten, or on an electronic medium'.

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

`(a) The Commissioner may publish in printed, typewritten, or electronic form, the following:'.

(c) COPIES OF PATENTS FOR PUBLIC LIBRARIES- Section 13 of title 35, United States Code, is amended by striking `The Commissioner may supply printed copies of specifications and drawings of patents' and inserting `The Commissioner may supply copies of specifications and drawings of patents in printed or electronic form'.

(d) MAINTENANCE OF COLLECTIONS-

(1) Section 41(i)(1) of title 35, United States Code, is amended by striking `The Commissioner shall maintain, for use by the public, paper or microform' and inserting `The Commissioner shall maintain, for use by the public, paper, microform, or electronic'.

(2) The Commissioner 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 the 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.

SEC. 705. STUDY AND REPORT ON BIOLOGICAL DEPOSITS IN SUPPORT OF BIOTECHNOLOGY PATENTS.

(a) IN GENERAL- No later than 6 months after the date of the enactment of this Act, the Comptroller General of the United States, in consultation with the Commissioner of Patents and Trademarks, shall conduct a study and submit a report to Congress on the potential risks to the United States biotechnology industry relating to biological deposits in support of biotechnology patents.

(b) CONTENTS- The study conducted under this section shall include--

(1) an examination of the risk of export and the risk of transfers to third parties of biological deposits, and the risks posed by the change to 18-month publication requirements made by this Act;

(2) an analysis of comparative legal and regulatory regimes; and

(3) any related recommendations.

(c) CONSIDERATION OF REPORT- In drafting regulations affecting biological deposits (including any modification of title 37, Code of Federal Regulations, section 1.801 et seq.), the Patent and Trademark Office shall consider the recommendations of the study conducted under this section.

SEC. 706. PRIOR INVENTION.

Section 102(g) of title 35, United States Code, is amended to read as follows:

`(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.'.

SEC. 707. PRIOR ART EXCLUSION FOR CERTAIN COMMONLY ASSIGNED PATENTS.

(a) PRIOR ART EXCLUSION- Section 103(c) of title 35, United States Code, is amended by striking `subsection (f) or (g)' and inserting `one or more of subsections (e), (f), and (g)'.

(b) EFFECTIVE DATE- The amendment made by this section shall apply to any application for patent filed on or after the date of the enactment of this Act.

SEC. 708. EXCHANGE OF COPIES OF PATENTS WITH FOREIGN COUNTRIES.

Section 12 of title 35, United States Code, is amended by adding at the end the following: `The 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. 709. NATIONAL SECURITY.

Section 6 of title 35, United States Code, is amended by adding at the end the following new subsection:

`(d) The 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.'.

November 5, 1999

August 4, 1999

October 8, 1999

November 5, 1999

[Strike out all after the enacting clause and insert the part printed in italic]

[Struck out->] SECTION 1. SHORT TITLE. [<-Struck out]

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[Struck out->] TITLE I--INVENTORS' RIGHTS [<-Struck out]

[Struck out->] TITLE II--FIRST INVENTOR DEFENSE [<-Struck out]

[Struck out->] TITLE III--PATENT TERM GUARANTEE [<-Struck out]

[Struck out->] TITLE IV--UNITED STATES PUBLICATION OF PATENT APPLICATIONS PUBLISHED ABROAD [<-Struck out]

[Struck out->] TITLE V--OPTIONAL INTER PARTES REEXAMINATION PROCEDURE [<-Struck out]

[Struck out->] TITLE VI--PATENT AND TRADEMARK OFFICE [<-Struck out]

[Struck out->] Subtitle A--United States Patent and Trademark Office [<-Struck out]

[Struck out->] Subtitle B--Effective Date; Technical Amendments [<-Struck out]

[Struck out->] Subtitle C--Miscellaneous Provisions [<-Struck out]

[Struck out->] TITLE VII--MISCELLANEOUS PATENT PROVISIONS [<-Struck out]

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[Struck out->] `Sec. 51. Definitions [<-Struck out]

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[Struck out->] `Sec. 53. Standard provisions for cover notice [<-Struck out]

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[Struck out->] `Sec. 56. Remedies [<-Struck out]

[Struck out->] `Sec. 57. Records of complaints [<-Struck out]

[Struck out->] `Sec. 58. Fraudulent representation by an invention promoter [<-Struck out]

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[Struck out->] SEC. 202. DEFENSE TO PATENT INFRINGEMENT BASED ON EARLIER INVENTOR. [<-Struck out]

[Struck out->] `Sec. 273. Defense to infringement based on earlier inventor [<-Struck out]

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[Struck out->] `Sec. 122. Confidential status of applications; publication of patent applications [<-Struck out]

[Struck out->] SEC. 403. TIME FOR CLAIMING BENEFIT OF EARLIER FILING DATE. [<-Struck out]

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[Struck out->] `Sec. 374. Publication of international application: effect [<-Struck out]

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[Struck out->] `Sec. 312. Determination of issue by Director [<-Struck out]

[Struck out->] `Sec. 313. Inter partes reexamination order by Director [<-Struck out]

[Struck out->] `Sec. 314. Conduct of inter partes reexamination proceedings [<-Struck out]

[Struck out->] `Sec. 315. Appeal [<-Struck out]

[Struck out->] `Sec. 316. Certificate of patentability, unpatentability, and claim cancellation [<-Struck out]

[Struck out->] `Sec. 317. Inter partes reexamination prohibited [<-Struck out]

[Struck out->] `Sec. 318. Stay of litigation [<-Struck out]

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[Struck out->] `SEC. 103. EFFECTIVE DATE.` [<-Struck out]

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[Struck out->] `SEC. 303. CONTINUED EXAMINATION OF PATENT APPLICATIONS.` [<-Struck out]

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[Struck out->] `SEC. 403. TIME FOR CLAIMING BENEFIT OF EARLIER FILING DATE.` [<-Struck out]

[Struck out->] `SEC. 404. PROVISIONAL RIGHTS.` [<-Struck out]

[Struck out->] `SEC. 405. PRIOR ART EFFECT OF PUBLISHED APPLICATIONS.` [<-Struck out]

[Struck out->] `SEC. 406. COST RECOVERY FOR PUBLICATION.` [<-Struck out]

[Struck out->] `SEC. 407. CONFORMING AMENDMENTS.` [<-Struck out]

[Struck out->] `SEC. 408. EFFECTIVE DATE.` [<-Struck out]

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[Struck out->] `SEC. 504. OPTIONAL INTER PARTES REEXAMINATION PROCEDURES.` [<-Struck out]

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[Struck out->] `SEC. 506. REPORT TO CONGRESS.` [<-Struck out]

[Struck out->] `SEC. 507. ESTOPPEL EFFECT OF REEXAMINATION.` [<-Struck out]

[Struck out->] `SEC. 508. EFFECTIVE DATE.` [<-Struck out]

[Struck out->] `TITLE VI--PATENT AND TRADEMARK OFFICE` [<-Struck out]

[Struck out->] `SEC. 601. SHORT TITLE.` [<-Struck out]

[Struck out->] `Subtitle A--United States Patent and Trademark Office` [<-Struck out]

[Struck out->] `SEC. 611. ESTABLISHMENT OF PATENT AND TRADEMARK OFFICE.` [<-Struck out]

[Struck out->] `SEC. 612. POWERS AND DUTIES.` [<-Struck out]

[Struck out->] `SEC. 613. ORGANIZATION AND MANAGEMENT.` [<-Struck out]

[Struck out->] `SEC. 614. PUBLIC ADVISORY COMMITTEES.` [<-Struck out]

[Struck out->] `SEC. 615. PATENT AND TRADEMARK OFFICE FUNDING.` [<-Struck out]

[Struck out->] `SEC. 616. CONFORMING AMENDMENTS.` [<-Struck out]

[Struck out->] `SEC. 617. TRADEMARK TRIAL AND APPEAL BOARD.` [<-Struck out]

[Struck out->] `SEC. 618. BOARD OF PATENT APPEALS AND INTERFERENCES.` [<-Struck out]

[Struck out->] `SEC. 619. ANNUAL REPORT OF DIRECTOR.` [<-Struck out]

[Struck out->] `SEC. 620. SUSPENSION OR EXCLUSION FROM PRACTICE.` [<-Struck out]

[Struck out->] `SEC. 621. PAY OF DIRECTOR AND DEPUTY DIRECTOR.` [<-Struck out]

[Struck out->] `SEC. 622. STUDY ON ALTERNATIVE FEE STRUCTURES.` [<-Struck out]

[Struck out->] `Subtitle B--Effective Date; Technical Amendments` [<-Struck out]

[Struck out->] `SEC. 631. EFFECTIVE DATE.` [<-Struck out]

[Struck out->] `SEC. 632. TECHNICAL AND CONFORMING AMENDMENTS.` [<-Struck out]

[Struck out->] `Subtitle C--Miscellaneous Provisions` [<-Struck out]

[Struck out->] `SEC. 641. REFERENCES.` [<-Struck out]

[Struck out->] `SEC. 642. EXERCISE OF AUTHORITIES.` [<-Struck out]

[Struck out->] `SEC. 643. SAVINGS PROVISIONS.` [<-Struck out]

[Struck out->] `SEC. 644. TRANSFER OF ASSETS.` [<-Struck out]

[Struck out->] `SEC. 645. DELEGATION AND ASSIGNMENT.` [<-Struck out]

[Struck out->] `SEC. 646. AUTHORITY OF DIRECTOR OF THE OFFICE OF MANAGEMENT AND BUDGET WITH RESPECT TO FUNCTIONS TRANSFERRED.` [<-Struck out]

[Struck out->] `SEC. 647. CERTAIN VESTING OF FUNCTIONS CONSIDERED TRANSFERS.` [<-Struck out]

[Struck out->] `SEC. 648. AVAILABILITY OF EXISTING FUNDS.` [<-Struck out]

[Struck out->] `SEC. 649. DEFINITIONS.` [<-Struck out]

[Struck out->] `TITLE VII--MISCELLANEOUS PATENT PROVISIONS` [<-Struck out]

[Struck out->] `SEC. 701. PROVISIONAL APPLICATIONS.` [<-Struck out]

[Struck out->] `SEC. 702. INTERNATIONAL APPLICATIONS.` [<-Struck out]

[Struck out->] `SEC. 703. CERTAIN LIMITATIONS ON DAMAGES FOR PATENT INFRINGEMENT NOT APPLICABLE.` [<-Struck out]

[Struck out->] `SEC. 704. ELECTRONIC FILING AND PUBLICATIONS.` [<-Struck out]

[Struck out->] `SEC. 705. STUDY AND REPORT ON BIOLOGICAL DEPOSITS IN SUPPORT OF BIOTECHNOLOGY PATENTS.` [<-Struck out]

[Struck out->] `SEC. 706. PRIOR INVENTION.` [<-Struck out]

[Struck out->] `SEC. 707. PRIOR ART EXCLUSION FOR CERTAIN COMMONLY ASSIGNED PATENTS.` [<-Struck out]