[DOCID: f:hr018.107]
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107th Congress                                                   Report
                        HOUSE OF REPRESENTATIVES
 1st Session                                                     107-18

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



 
 INTELLECTUAL PROPERTY AND HIGH TECHNOLOGY TECHNICAL AMENDMENTS ACT OF 
                                  2001

                                _______
                                

 March 12, 2001.--Committed to the Committee of the Whole House on the 
              State of the Union and ordered to be printed

                                _______
                                

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

                              R E P O R T

                         [To accompany S. 320]

      [Including cost estimate of the Congressional Budget Office]

    The Committee on the Judiciary, to whom was referred the 
bill (S. 320) to make technical corrections in patent, 
copyright, and trademark laws, having considered the same, 
report favorably thereon with an amendment and recommend that 
the bill as amended do pass.

                                CONTENTS

                                                                   Page
The Amendment....................................................     1
Purpose and Summary..............................................     9
Background and Need for the Legislation..........................    10
Committee Consideration..........................................    11
Committee Oversight Findings.....................................    11
Performance Goals and Objectives.................................    11
New Budget Authority and Tax Expenditures........................    11
Congressional Budget Office Cost Estimate........................    11
Constitutional Authority Statement...............................    12
Section-by-Section Analysis and Discussion.......................    12
Changes in Existing Law Made by the Bill, as Reported............    18

    The amendment is as follows:
    Strike all after the enacting clause and insert the 
following:

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Intellectual Property and High 
Technology Technical Amendments Act of 2001''.

SEC. 2. OFFICERS AND EMPLOYEES.

    (a) Renaming of Officers.--(1)(A) Except as provided in 
subparagraph (B), title 35, United States Code, other than section 
210(d), is amended--
            (i) by striking ``Director'' each place it appears and 
        inserting ``Commissioner''; and
            (ii) by striking ``Director's'' each place it appears and 
        inserting ``Commissioner's''.
    (B) Section 3(b)(5) of title 35, United States Code, is amended by 
striking ``Director'' the first place it appears and inserting 
``Commissioner''.
    (C) Section 3(a) of title 35, United States Code, is amended in the 
subsection heading, by striking ``Director'' and inserting 
``Commissioner''.
    (D) Section 3(b)(1) of title 35, United States Code, is amended in 
the paragraph heading, by striking ``director'' and inserting 
``commissioner''.
    (2) The Act of July 5, 1946 (commonly referred to as the 
``Trademark Act of 1946''; 15 U.S.C. 1051 et seq.) is amended by 
striking ``Director'' each place it appears and inserting 
``Commissioner''.
    (3)(A) Title 35, United States Code, other than subsection (f) of 
section 3, is amended by striking ``Commissioner for Patents'' each 
place it appears and inserting ``Assistant Commissioner for Patents''.
    (B) Title 35, United States Code, other than subsection (f) of 
section 3, is amended by striking ``Commissioner for Trademarks'' each 
place it appears and inserting ``Assistant Commissioner for 
Trademarks''.
    (C) Section 3(b)(2) of title 35, United States Code, is amended--
            (i) in the paragraph heading, by striking ``Commissioners'' 
        and inserting ``Assistant commissioners'';
            (ii) in subparagraph (A), in the last sentence--
                    (I) by striking ``a Commissioner'' and inserting 
                ``an Assistant Commissioner''; and
                    (II) by striking ``the Commissioner'' and inserting 
                ``the Assistant Commissioner'';
            (iii) in subparagraph (B)--
                    (I) by striking ``Commissioners'' each place it 
                appears and inserting ``Assistant Commissioners'';
                    (II) by striking ``Commissioners' '' each place it 
                appears and inserting ``Assistant Commissioners' ''; 
                and
            (iv) in subparagraph (C), by striking ``Commissioners'' and 
        inserting ``Assistant Commissioners''.
    (D) Section 3(f) of title 35, United States Code, is amended in 
subparagraphs (A) and (B) of paragraph (2)--
            (i) by striking ``the Commissioner'' each place it appears 
        and inserting ``the Assistant Commissioner''; and
            (ii) by striking ``a Commissioner'' each place it appears 
        and inserting ``an Assistant Commissioner''.
    (E) Section 13 of title 35, United States Code, is amended--
            (i) by striking ``Commissioner of'' each place it appears 
        and inserting ``Assistant Commissioner for''; and
            (ii) by striking ``Commissioners'' and inserting 
        ``Assistant Commissioners''.
    (F) Chapter 17 of title 35, United States Code, is amended by 
striking ``Commissioner of Patents'' each place it appears and 
inserting ``Assistant Commissioner for Patents''.
    (G) Section 297 of title 35, United States Code, is amended by 
striking ``Commissioner of Patents'' each place it appears and 
inserting ``Commissioner''.
    (4) Section 5314 of title 5, United States Code, is amended by 
striking
            ``Under Secretary of Commerce for Intellectual Property and 
        Director of the United States Patent and Trademark Office.''
and inserting
            ``Under Secretary of Commerce for Intellectual Property and 
        Commissioner of the United States Patent and Trademark 
        Office.''.
    (5) Section 5315 of title 5, United States Code, is amended by 
striking
            ``Deputy Under Secretary of Commerce for Intellectual 
        Property and Deputy Director of the United States Patent and 
        Trademark Office.''
and inserting
            ``Deputy Under Secretary of Commerce for Intellectual 
        Property and Deputy Commissioner of the United States Patent 
        and Trademark Office.''.
    (6)(A) Sections 303 and 304 of title 35, United States Code, are 
each amended in the section headings by striking ``Director'' and 
inserting ``Commissioner''.
    (B) The items relating to sections 303 and 304 in the table of 
sections for chapter 30 of title 35, United States Code, are each 
amended by striking ``Director'' and inserting ``Commissioner''.
    (7)(A) Sections 312 and 313 of title 35, United States Code, are 
each amended in the section headings by striking ``Director'' and 
inserting ``Commissioner''.
    (B) The items relating to sections 312 and 313 in the table of 
sections for chapter 31 of title 35, United States Code, are each 
amended by striking ``Director'' and inserting ``Commissioner''.
    (8) Section 17(b) of the Trademark Act of 1946 (15 U.S.C. 1067) is 
amended by striking ``Commissioner for Patents, the Commissioner for 
Trademarks'' and inserting ``Assistant Commissioner for Patents, the 
Assistant Commissioner for Trademarks''.
    (b) Additional Clerical Amendments.--
            (1) The following provisions of law are amended by striking 
        ``Director'' each place it appears and inserting 
        ``Commissioner''.
                    (A) Section 9(p)(1)(B) of the Small Business Act 
                (15 U.S.C. 638(p)(1)(B).
                    (B) Section 19 of the Tennessee Valley Authority 
                Act of 1933 (16 U.S.C. 831r).
                    (C) Section 182(b)(2)(A) of the Trade Act of 1974 
                (19 U.S.C. 2242(b)(2)(A)).
                    (D) Section 302(b)(2)(D) of the Trade Act of 1974 
                (19 U.S.C. 2412(b)(2)(D)).
                    (E) Section 702(d) of the Federal Food, Drug, and 
                Cosmetic Act (21 U.S.C. 372(d)).
                    (F) Section 1295(a)(4)(B) of title 28, United 
                States Code.
                    (G) Section 1744 of title 28, United States Code.
                    (H) Section 151 of the Atomic Energy Act of 1954 
                (42 U.S.C. 2181).
                    (I) Section 152 of the Atomic Energy Act of 1954 
                (42 U.S.C. 2182).
                    (J) Section 305 of the National Aeronautics and 
                Space Act of 1958 (42 U.S.C. 2457).
                    (K) Section 12(a) of the Solar Heating and Cooling 
                Demonstration Act of 1974 (42 U.S.C. 5510(a)), the last 
                place such term appears.
                    (L) Section 10(i) of the Trading with the enemy Act 
                (50 U.S.C. App. 10(i)).
                    (M) Sections 4203, 4506, 4606, and 4804(d)(2) of 
                the Intellectual Property and Communications Omnibus 
                Reform Act of 1999, as enacted by section 1000(a)(9) of 
                Public Law 106-113.
            (2) The item relating to section 1744 in the table of 
        sections for chapter 115 of title 28, United States Code, is 
        amended by striking ``generally'' and inserting ``, 
        generally''.
    (c) References.--Any reference in any other Federal law, Executive 
order, rule, regulation, or delegation of authority, or any document of 
or pertaining to the Patent and Trademark Office--
            (1) to the Director of the United States Patent and 
        Trademark Office or to the Commissioner of Patents and 
        Trademarks is deemed to refer to the Under Secretary of 
        Commerce for Intellectual Property and Commissioner of the 
        United States Patent and Trademark Office;
            (2) to the Commissioner for Patents is deemed to refer to 
        the Assistant Commissioner for Patents; and
            (3) to the Commissioner for Trademarks is deemed to refer 
        to the Assistant Commissioner for Trademarks.

SEC. 3. CLARIFICATION OF REEXAMINATION PROCEDURE ACT OF 1999; TECHNICAL 
                    AMENDMENTS.

    (a) Optional Inter Partes Reexamination Procedures.--Title 35, 
United States Code, is amended as follows:
            (1) Section 311 is amended--
                    (A) in subsection (a), by striking ``person'' and 
                inserting ``third-party requester''; and
                    (B) in subsection (c), by striking ``Unless the 
                requesting person is the owner of the patent, the'' and 
                inserting ``The''.
            (2) Section 312 is amended--
                    (A) in subsection (a), by striking the last 
                sentence; and
                    (B) in subsection (b), by striking ``, if any''.
            (3) Section 314(b)(1) is amended--
                    (A) by striking ``(1) This'' and all that follows 
                through ``(2)'' and inserting ``(1)'';
                    (B) by striking ``the third-party requester shall 
                receive a copy'' and inserting ``the Office shall send 
                to the third-party requester a copy''; and
                    (C) by redesignating paragraph (3) as paragraph 
                (2).
            (4) Section 315(c) is amended by striking ``United States 
        Code,''.
            (5) Section 317 is amended--
                    (A) in subsection (a), by striking ``patent owner 
                nor the third-party requester, if any, nor privies of 
                either'' and inserting ``third-party requester nor its 
                privies''; and
                    (B) in subsection (b), by striking ``United States 
                Code,''.
    (b) Conforming Amendments.--
            (1) Appeal to the board of patent appeals and 
        interferences.--Subsections (a), (b), and (c) of section 134 of 
        title 35, United States Code, are each amended by striking 
        ``administrative patent judge'' each place it appears and 
        inserting ``primary examiner''.
            (2) Proceeding on appeal.--Section 143 of title 35, United 
        States Code, is amended by amending the third sentence to read 
        as follows: ``In an ex parte case or any reexamination case, 
        the Commissioner shall submit to the court in writing the 
        grounds for the decision of the Patent and Trademark Office, 
        addressing all the issues involved in the appeal. The court 
        shall, before hearing an appeal, give notice of the time and 
        place of the hearing to the Commissioner and the parties in the 
        appeal.''.
    (c) Clerical Amendments.--
            (1) Section 4604(a) of the Intellectual Property and 
        Communications Omnibus Reform Act of 1999, as enacted by 
        section 1000(a)(9) of Public Law 106-113, is amended by 
        striking ``Part 3'' and inserting ``Part III''.
            (2) Section 4604(b) of that Act is amended by striking 
        ``title 25'' and inserting ``title 35''.
    (d) Effective Date.--The amendments made by sections 4605(c) and 
4605(e) of the Intellectual Property and Communications Omnibus Reform 
Act, as enacted by section 1000(a)(9) of Public Law 106-113, shall 
apply to any reexamination filed in the United States Patent and 
Trademark Office on or after the date of the enactment of Public Law 
106-113.

SEC. 4. PATENT AND TRADEMARK EFFICIENCY ACT AMENDMENTS.

    (a) Deputy Commissioner.--
            (1) Section 17(b) of the Act of July 5, 1946 (commonly 
        referred to as the ``Trademark Act of 1946'') (15 U.S.C. 
        1067(b)), is amended by inserting ``the Deputy Commissioner,'' 
        after ``Commissioner,''.
            (2) Section 6(a) of title 35, United States Code, is 
        amended by inserting ``the Deputy Commissioner,'' after 
        ``Commissioner,''.
    (b) Public Advisory Committees.--Section 5 of title 35, United 
States Code, is amended--
            (1) in subsection (i), by inserting ``, privileged,'' after 
        ``personnel''; and
            (2) by adding at the end the following new subsection:
    ``(j) Inapplicability of Patent Prohibition.--Section 4 shall not 
apply to voting members of the Advisory Committees.''.
    (c) Miscellaneous.--Section 153 of title 35, United States Code, is 
amended by striking ``and attested by an officer of the Patent and 
Trademark Office designated by the Commissioner,''.

SEC. 5. DOMESTIC PUBLICATION OF FOREIGN FILED PATENT APPLICATIONS ACT 
                    OF 1999 AMENDMENTS.

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

SEC. 6. DOMESTIC PUBLICATION OF PATENT APPLICATIONS PUBLISHED ABROAD.

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

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

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

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

            (3) Section 4508 is amended to read as follows:

``SEC. 4508. EFFECTIVE DATE.

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

SEC. 7. MISCELLANEOUS CLERICAL AMENDMENTS.

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

``21. Filing date and day for taking action.''.

            (6) The item relating to chapter 12 in the table of 
        chapters for part II is amended to read as follows:

``12. Examination of Application............................     131''.

            (7) The item relating to section 116 in the table of 
        contents for chapter 11 is amended to read as follows:

``116. Inventors.''.

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

``256. Correction of named inventor.''.

            (19) Section 294 is amended--
                    (A) in subsection (b), by striking ``United States 
                Code,''; and
                    (B) in subsection (c), in the second sentence by 
                striking ``court to'' and inserting ``court of''.
            (20) Section 371(b) is amended by adding at the end a 
        period.
            (21) Section 371(d) is amended by adding at the end a 
        period.
            (22) Paragraphs (1), (2), and (3) of section 376(a) are 
        each amended by striking the semicolon and inserting a period.
    (b) Other Amendments.--
            (1) Section 4732(a) of the Intellectual Property and 
        Communications Omnibus Reform Act of 1999 is amended--
                    (A) in paragraph (9)(A)(ii), by inserting ``in 
                subsection (b),'' after ``(ii)''; and
                    (B) in paragraph (10)(A), by inserting after 
                ``title 35, United States Code,'' the following: 
                ``other than sections 1 through 6 (as amended by 
                chapter 1 of this subtitle),''.
            (2) Section 4802(1) of that Act is amended by inserting 
        ``to'' before ``citizens''.
            (3) Section 4804 of that Act is amended--
                    (A) in subsection (b), by striking ``11(a)'' and 
                inserting ``10(a)''; and
                    (B) in subsection (c), by striking ``13'' and 
                inserting ``12''.
            (4) Section 4402(b)(1) of that Act is amended by striking 
        ``in the fourth paragraph''.

SEC. 8. TECHNICAL CORRECTIONS IN TRADEMARK LAW.

    (a) Award of Damages.--Section 35(a) of the Act of July 5, 1946 
(commonly referred to as the ``Trademark Act of 1946'') (15 U.S.C. 
1117(a)), is amended by striking ``a violation under section 43(a), 
(c), or (d),'' and inserting ``a violation under section 43(a) or 
(d),''.
    (b) Additional Technical Amendments.--The Trademark Act of 1946 is 
further amended as follows:
            (1) Section 1(d)(1) (15 U.S.C. 1051(d)(1)) is amended in 
        the first sentence by striking ``specifying the date of the 
        applicant's first use'' and all that follows through the end of 
        the sentence and inserting ``specifying the date of the 
        applicant's first use of the mark in commerce and those goods 
        or services specified in the notice of allowance on or in 
        connection with which the mark is used in commerce.''.
            (2) Section 1(e) (15 U.S.C. 1051(e)) is amended to read as 
        follows:
    ``(e) If the applicant is not domiciled in the United States the 
applicant may designate, by a document filed in the United States 
Patent and Trademark Office, the name and address of a person resident 
in the United States on whom may be served notices or process in 
proceedings affecting the mark. Such notices or process may be served 
upon the person so designated by leaving with that person or mailing to 
that person a copy thereof at the address specified in the last 
designation so filed. If the person so designated cannot be found at 
the address given in the last designation, or if the registrant does 
not designate by a document filed in the United States Patent and 
Trademark Office the name and address of a person resident in the 
United States on whom may be served notices or process in proceedings 
affecting the mark, such notices or process may be served on the 
Commissioner.''.
            (3) Section 8(f) (15 U.S.C. 1058(f)) is amended to read as 
        follows:
    ``(f) If the registrant is not domiciled in the United States, the 
registrant may designate, by a document filed in the United States 
Patent and Trademark Office, the name and address of a person resident 
in the United States on whom may be served notices or process in 
proceedings affecting the mark. Such notices or process may be served 
upon the person so designated by leaving with that person or mailing to 
that person a copy thereof at the address specified in the last 
designation so filed. If the person so designated cannot be found at 
the address given in the last designation, or if the registrant does 
not designate by a document filed in the United States Patent and 
Trademark Office the name and address of a person resident in the 
United States on whom may be served notices or process in proceedings 
affecting the mark, such notices or process may be served on the 
Commissioner.''.
            (4) Section 9(c) (15 U.S.C. 1059(c)) is amended to read as 
        follows:
    ``(c) If the registrant is not domiciled in the United States the 
registrant may designate, by a document filed in the United States 
Patent and Trademark Office, the name and address of a person resident 
in the United States on whom may be served notices or process in 
proceedings affecting the mark. Such notices or process may be served 
upon the person so designated by leaving with that person or mailing to 
that person a copy thereof at the address specified in the last 
designation so filed. If the person so designated cannot be found at 
the address given in the last designation, or if the registrant does 
not designate by a document filed in the United States Patent and 
Trademark Office the name and address of a person resident in the 
United States on whom may be served notices or process in proceedings 
affecting the mark, such notices or process may be served on the 
Commissioner.''.
            (5) Subsections (a) and (b) of section 10 (15 U.S.C. 
        1060(a) and (b)) are amended to read as follows:
    ``(a)(1) A registered mark or a mark for which an application to 
register has been filed shall be assignable with the good will of the 
business in which the mark is used, or with that part of the good will 
of the business connected with the use of and symbolized by the mark. 
Notwithstanding the preceding sentence, no application to register a 
mark under section 1(b) shall be assignable prior to the filing of an 
amendment under section 1(c) to bring the application into conformity 
with section 1(a) or the filing of the verified statement of use under 
section 1(d), except for an assignment to a successor to the business 
of the applicant, or portion thereof, to which the mark pertains, if 
that business is ongoing and existing.
    ``(2) In any assignment authorized by this section, it shall not be 
necessary to include the good will of the business connected with the 
use of and symbolized by any other mark used in the business or by the 
name or style under which the business is conducted.
    ``(3) Assignments shall be by instruments in writing duly executed. 
Acknowledgment shall be prima facie evidence of the execution of an 
assignment, and when the prescribed information reporting the 
assignment is recorded in the United States Patent and Trademark 
Office, the record shall be prima facie evidence of execution.
    ``(4) An assignment shall be void against any subsequent purchaser 
for valuable consideration without notice, unless the prescribed 
information reporting the assignment is recorded in the United States 
Patent and Trademark Office within 3 months after the date of the 
assignment or prior to the subsequent purchase.
    ``(5) The United States Patent and Trademark Office shall maintain 
a record of information on assignments, in such form as may be 
prescribed by the Commissioner.
    ``(b) An assignee not domiciled in the United States may designate 
by a document filed in the United States Patent and Trademark Office 
the name and address of a person resident in the United States on whom 
may be served notices or process in proceedings affecting the mark. 
Such notices or process may be served upon the person so designated by 
leaving with that person or mailing to that person a copy thereof at 
the address specified in the last designation so filed. If the person 
so designated cannot be found at the address given in the last 
designation, or if the assignee does not designate by a document filed 
in the United States Patent and Trademark Office the name and address 
of a person resident in the United States on whom may be served notices 
or process in proceedings affecting the mark, such notices or process 
may be served upon the Commissioner.''.
            (6) Section 23(c) (15 U.S.C. 1091(c)) is amended by 
        striking the second comma after ``numeral''.
            (7) Section 33(b)(8) (15 U.S.C. 1115(b)(8)) is amended by 
        aligning the text with paragraph (7).
            (8) Section 34(d)(1)(A) (15 U.S.C. 1116(d)(1)(A)) is 
        amended by striking ``section 110'' and all that follows 
        through ``(36 U.S.C. 380)'' and inserting ``section 220506 of 
        title 36, United States Code,''.
            (9) Section 34(d)(1)(B)(ii) (15 U.S.C. 1116(d)(1)(B)(ii)) 
        is amended by striking ``section 110'' and all that follows 
        through ``(36 U.S.C. 380)'' and inserting ``section 220506 of 
        title 36, United States Code''.
            (10) Section 34(d)(11) is amended by striking ``6621 of the 
        Internal Revenue Code of 1954'' and inserting ``6621(a)(2) of 
        the Internal Revenue Code of 1986''.
            (11) Section 35(b) (15 U.S.C. 1117(b)) is amended--
                    (A) by striking ``section 110'' and all that 
                follows through ``(36 U.S.C. 380)'' and inserting 
                ``section 220506 of title 36, United States Code,''; 
                and
                    (B) by striking ``6621 of the Internal Revenue Code 
                of 1954'' and inserting ``6621(a)(2) of the Internal 
                Revenue Code of 1986''.
            (12) Section 44(e) (15 U.S.C. 1126(e)) is amended by 
        striking ``a certification'' and inserting ``a true copy, a 
        photocopy, a certification,''.

SEC. 9. PATENT AND TRADEMARK FEE CLERICAL AMENDMENT.

    The Patent and Trademark Fee Fairness Act of 1999 (113 Stat. 1537-
546 et seq.), as enacted by section 1000(a)(9) of Public Law 106-113, 
is amended in section 4203, by striking ``111(a)'' and inserting 
``1113(a)''.

SEC. 10. COPYRIGHT RELATED CORRECTIONS TO 1999 OMNIBUS REFORM ACT.

    Title I of the Intellectual Property and Communications Omnibus 
Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law 106-
113, is amended as follows:
            (1) Section 1007 is amended--
                    (A) in paragraph (2), by striking ``paragraph (2)'' 
                and inserting ``paragraph (2)(A)''; and
                    (B) in paragraph (3), by striking ``1005(e)'' and 
                inserting ``1005(d)''.
            (2) Section 1006(b) is amended by striking 
        ``119(b)(1)(B)(iii)'' and inserting ``119(b)(1)(B)(ii)''.
            (3)(A) Section 1006(a) is amended--
                    (i) in paragraph (1), by adding ``and'' after the 
                semicolon;
                    (ii) by striking paragraph (2); and
                    (iii) by redesignating paragraph (3) as paragraph 
                (2).
            (B) Section 1011(b)(2)(A) is amended to read as follows:
                    ``(A) in paragraph (1), by striking `primary 
                transmission made by a superstation and embodying a 
                performance or display of a work' and inserting 
                `performance or display of a work embodied in a primary 
                transmission made by a superstation or by the Public 
                Broadcasting Service satellite feed';''.

SEC. 11. AMENDMENTS TO TITLE 17, UNITED STATES CODE.

    Title 17, United States Code, is amended as follows:
            (1) Section 119(a)(6) is amended by striking ``of 
        performance'' and inserting ``of a performance''.
            (2)(A) The section heading for section 122 is amended by 
        striking ``rights; secondary'' and inserting ``rights: 
        Secondary''.
            (B) The item relating to section 122 in the table of 
        contents for chapter 1 is amended to read as follows:

``122. Limitations on exclusive rights: Secondary transmissions by 
satellite carriers within local markets.''.

            (3)(A) The section heading for section 121 is amended by 
        striking ``reproduction'' and inserting ``Reproduction''.
            (B) The item relating to section 121 in the table of 
        contents for chapter 1 is amended by striking ``reproduction'' 
        and inserting ``Reproduction''.
            (4)(A) Section 106 is amended by striking ``107 through 
        121'' and inserting ``107 through 122''.
            (B) Section 501(a) is amended by striking ``106 through 
        121'' and inserting ``106 through 122''.
            (C) Section 511(a) is amended by striking ``106 through 
        121'' and inserting ``106 through 122''.
            (5) Section 101 is amended--
                    (A) by moving the definition of ``computer 
                program'' so that it appears after the definition of 
                ``compilation''; and
                    (B) by moving the definition of ``registration'' so 
                that it appears after the definition of ``publicly''.
            (6) Section 110(4)(B) is amended in the matter preceding 
        clause (i) by striking ``conditions;'' and inserting 
        ``conditions:''.
            (7) Section 118(b)(1) is amended in the second sentence by 
        striking ``to it''.
            (8) Section 119(b)(1)(A) is amended--
                    (A) by striking ``transmitted'' and inserting 
                ``retransmitted''; and
                    (B) by striking ``transmissions'' and inserting 
                ``retransmissions''.
            (9) Section 203(a)(2) is amended--
                    (A) in subparagraph (A)--
                            (i) by striking ``(A) the'' and inserting 
                        ``(A) The''; and
                            (ii) by striking the semicolon at the end 
                        and inserting a period;
                    (B) in subparagraph (B)--
                            (i) by striking ``(B) the'' and inserting 
                        ``(B) The''; and
                            (ii) by striking the semicolon at the end 
                        and inserting a period; and
                    (C) in subparagraph (C), by striking ``(C) the'' 
                and inserting ``(C) The''.
            (10) Section 304(c)(2) is amended--
                    (A) in subparagraph (A)--
                            (i) by striking ``(A) the'' and inserting 
                        ``(A) The''; and
                            (ii) by striking the semicolon at the end 
                        and inserting a period;
                    (B) in subparagraph (B)--
                            (i) by striking ``(B) the'' and inserting 
                        ``(B) The''; and
                            (ii) by striking the semicolon at the end 
                        and inserting a period; and
                    (C) in subparagraph (C), by striking ``(C) the'' 
                and inserting ``(C) The''.
            (11) The item relating to section 903 in the table of 
        contents for chapter 9 is amended by striking ``licensure'' and 
        inserting ``licensing''.

SEC. 12. OTHER COPYRIGHT RELATED TECHNICAL AMENDMENTS.

    (a) Amendment to Title 18.--Section 2319(e)(2) of title 18, United 
States Code, is amended by striking ``107 through 120'' and inserting 
``107 through 122''.
    (b) Standard Reference Data.--(1) Section 105(f) of Public Law 94-
553 is amended by striking ``section 290(e) of title 15'' and inserting 
``section 6 of the Standard Reference Data Act (15 U.S.C. 290e)''.
    (2) Section 6(a) of the Standard Reference Data Act (15 U.S.C. 
290e) is amended by striking ``Notwithstanding'' and all that follows 
through ``United States Code,'' and inserting ``Notwithstanding the 
limitations under section 105 of title 17, United States Code,''.

                          Purpose and Summary

    The purpose of S. 320, the ``Intellectual Property and High 
Technology Technical Amendments Act of 2001,'' is to remedy 
miscellaneous technical and clerical drafting errors in the 
U.S. Code and the Intellectual Property and Communications 
Omnibus Reform Act (IPCORA), and to clarify provisions in title 
IV of IPCORA, the ``American Inventor's Protection Act'' 
(AIPA).\1\ This bill makes these remedial changes in four 
primary areas: patent law, trademark law, copyright law, and 
the organization of the U.S. Patent and Trademark Office (PTO).
---------------------------------------------------------------------------
    \1\ Intellectual Property and Communications Omnibus Reform Act of 
1999, S. 1948, P.L. No. 106-113 (Nov. 1999).
---------------------------------------------------------------------------
    Each provision was carefully scrutinized to ensure that it 
will not substantially change existing law, especially the 
AIPA, which contains carefully negotiated agreements developed 
by Members of Congress, high-technology companies, the patent 
and trademark bar, unions, and the independent inventor 
community.

                Background and Need for the Legislation

    In the mid-1990's, Congress investigated several proposals 
aimed at modernizing the Federal patent and trademark laws, 
harmonizing our laws with those of other developed nations, and 
transforming the U.S. Patent and Trademark Office into a more 
efficient agency. Several of these proposals passed as part of 
the AIPA.
    The bill makes certain technical and clarifying changes in 
the law to facilitate the implementation of the changes 
contained in the AIPA; in addition, the bill helps to empower 
inventors and other users of the PTO. These changes included in 
S. 320 fall within the following areas:
        <bullet> LPTO modernization. The bill establishes a 
        Chief Financial Officer within the agency, changes the 
        titles of certain key officers of the agency, clarifies 
        the authority of the Public Advisory Committee, and 
        makes other minor changes to PTO administrative 
        operations.
        <bullet> LInter Partes Patent Reexamination. The bill 
        amends the statutory provisions for the optional inter 
        partes reexamination that is an alternative to 
        litigation while not altering its substantive 
        procedures.
        <bullet> LEarly Publication of Patent Applications. The 
        bill amends the statutory procedures for the early 
        publication of foreign-filed patents so as to conform 
        with the procedures for accepting and processing 
        international applications.
        <bullet> LTrademark Law. The bill provides for 
        technical and clerical amendments to the Trademark 
        Act.\2\
---------------------------------------------------------------------------
    \2\ The Trademark Act of 1946, July 5, 1946, 15 U.S.C. 1501 et seq.
---------------------------------------------------------------------------
    S. 320 is entirely consistent with Congress' efforts and 
goals to craft patent and trademark law reform through the 
AIPA.
    The United States Copyright Office periodically forwards to 
Congress recommendations for technical corrections to title 17, 
the Copyright Act. S. 320 implements many of those 
recommendations. S.320 corrects errors in references, spelling, 
and punctuation; conforms the table of contents with section 
headings; restores the definitions in chapter 1 to alphabetical 
order; deletes an expired paragraph; and creates continuity in 
the grammatical style used throughout title 17. These are 
necessary amendments which clarify U.S. Copyright law.
    On February 14, 2001, the Senate passed S. 320 by a 
recorded vote of 98-0. That same day, Representative Coble, 
Chairman of the Subcommittee on Courts, the Internet and 
Intellectual Property, and the Subcommittee Ranking Member, Mr. 
Berman, introduced two related technical corrections bills in 
the House: H.R. 614, the ``Copyright Technical Corrections Act 
of 2001,'' and H.R.615, the ``Intellectual Property Technical 
Amendments Act of 2001.'' In the 106th Congress, the House 
passed virtually identical technical corrections bills under 
suspension of the rules: H.R. 4870, the ``Intellectual Property 
Technical Amendments Act of 2000,'' and, H.R. 5106, the 
``Copyright Technical Corrections Act of 2000.'' The Senate 
failed to pass these bills during the final days of the 106th 
Congress.
    Review of S.320 revealed the need to correct typos that 
exist in the Senate-passed text. S. 320, as amended by the 
Committee on the Judiciary, makes additional technical and 
clerical changes.

                        Committee Consideration

    On March 8, 2001, the Committee met in open session and 
ordered favorably reported the bill S. 320, with an amendment 
in the Nature of a Substitute, by voice vote, a quorum being 
present.

                      Committee Oversight Findings

    In compliance with clause 3(c)(1) of rule XIII of the Rules 
of the House of Representatives, the Committee reports that the 
findings and recommendations of the Committee, based on 
oversight activities under clause 2(b)(1) of rule X of the 
Rules of the House of Representatives, are incorporated in the 
descriptive portions of this report.

                    Performance Goals and Objectives

    S. 320 does not authorize funding; therefore, clase 3(c) of 
rule XIII of the Rules of the House of Representatives is 
inapplicable.

                    New Budget and Tax Expenditures

    Clause 3(c)(2) of House rule XIII is inapplicable because 
this legislation does not provide new budgetary authority or 
increased tax expenditures.

               Congressional Budget Office Cost Estimate

    In compliance with clause 3(c)(3) of rule XIII of the Rules 
of the House of Representatives, the Committee sets forth, with 
respect to the bill, S. 320, the following estimate and 
comparison prepared by the Director of the Congressional Budget 
Office under section 402 of the Congressional Budget Act of 
1974:

                                     U.S. Congress,
                               Congressional Budget Office,
                                    Washington, DC, March 12, 2001.
Hon. F. James Sensenbrenner, Jr., Chairman,
Committee on the Judiciary,
House of Representatives, Washington, DC.
    Dear Mr. Chairman: The Congressional Budget Office has 
prepared the enclosed cost estimate for S. 320, the 
Intellectual Property and High Technology Technical Amendments 
Act of 2001.
    If you wish further details on this estimate, we will be 
pleased to provide them. The CBO staff contact is Ken Johnson.
            Sincerely,
                                        Dan L. Crippen, Director.  

Enclosure.
S. 320--Intellectual Property and High Technology Technical Amendments 
        Act of 2001.
    S. 320 contains a number of minor corrections to current 
patent and trademark law. The act also would make technical 
changes to several sections of law related to copyrights.
    CBO estimates that enacting S. 320 would have no 
significant impact on the federal budget because its provisions 
are all technical in nature. Because the act would not affect 
direct spending or receipts, pay-as-you-go procedures would not 
apply.
    S. 320 contains no intergovernmental or private-sector 
mandates as defined in the Unfunded Mandates Reform Act and 
would impose no costs on state, local, or tribal governments.
    The CBO staff contact for this estimate is Ken Johnson. 
This estimate was approved by Robert A. Sunshine, Assistant 
Director for Budget Analysis.

                   Constitutional Authority Statement

    Pursuant to clause 3(d)(1) of the rule XIII of the Rules of 
the House of Representatives, the Committee finds the authority 
for this legislation in Article I, section 8, clause 8, of the 
Constitution.

               Section-by-Section Analysis and Discussion

                          Sec. 1. Short Title.

    The act may be cited as the ``Intellectual Property and 
High Technology Technical Amendments Act of 2001.''

                    Sec. 2. Officers and Employees.

    The AIPA changed the titles of key officers of the PTO. 
Briefly, the head of the agency was given the title of Director 
(formerly ``Commissioner''). The chief officer for the patent 
operations was given the title of Managing Director for Patents 
(formerly ``Assistant Commissioner for Patents''). The chief 
officer for trademark operations was given the title of 
Managing Director for Trademarks (formerly ``Assistant 
Commissioner for Trademarks''). After review, the PTO has 
requested that these officer titles revert to their traditional 
names because the new titles may cause confusion, are contrary 
to our international efforts, and may upset case law on a 
variety of subjects. This section merely renames the titles of 
the PTO officers appropriately throughout the United States 
Code and revises such references throughout Federal law, 
Executive order, rule, regulation, and other specified 
documents.

Sec. 3. Clarification of Reexamination Procedure Act of 1999; Technical 
                              Amendments.

    Reexamination is an administrative proceeding in which a 
patent may be reviewed in light of new evidence affecting its 
patentability (``prior art'').\3\ Traditionally, reexamination 
operated only between the patent owner and the PTO (ex parte). 
As part of the AIPA, a new inter partes reexamination procedure 
was established to allow a third party also to challenge the 
validity of a patent or its claims through the introduction of 
new evidence. While this inter partes procedure is considered 
beneficial because it provides cost savings over court 
litigation, some critics were concerned it would be abused. As 
a result, reexamination through the inter partes mechanism was 
designed with certain limitations (e.g., estoppel provisions) 
which do not apply in ex parte reexamination under the Patent 
Act.
---------------------------------------------------------------------------
    \3\ 35 U.S.C. Sec. 301 et seq.
---------------------------------------------------------------------------
    Section 3 of the bill merely clarifies the Patent Act's 
inter partes reexamination section by stipulating that it will 
apply to the proper parties and operate as envisioned. For 
example, the term ``third-party requester'' is inserted in lieu 
of ``persons,'' since only a third party may invoke this inter 
partes reexamination. This is logical because a patent owner 
has more rights under ex parte reexamination and would not 
choose to use the inter partes procedures even if available.
    The bill, under paragraph (c), specifies that the effective 
date of these reexamination procedures shall apply to any 
reexamination on or after the date of the act's enactment.

        Sec. 4. Patent and Trademark Efficiency Act Amendments.

    The AIPA contained a title (the ``Patent and Trademark 
Efficiency Act'') to modernize the PTO by transforming it into 
a more autonomous and efficient agency. The first section of 
the bill clarifies the status and authority of the Deputy 
Director of the PTO under this reorganization.
    The amendments made by the succeeding two paragraphs also 
conform the membership of the Trademark Trial and Appeal Board 
and the Board of Patent Appeals and Interferences to include 
the Deputy Director, as under current statute.
    Subsection (b) amends section 5, chapter 1, of title 35. 
The employees of the PTO are currently prohibited from having 
an ownership interest in patents.\4\ Members of the newly-
established Public Advisory Committee are currently considered 
employees of the Office. Currently, those individuals who 
possess the most thorough understanding of the patent system 
(for example, independent inventors) are prohibited from 
participating on the Public Advisory Committee. This subsection 
eases this restriction on those serving on the Public Advisory 
Committee in light of the goals of the AIPA.
---------------------------------------------------------------------------
    \4\ 35 U.S.C. Sec. 4.
---------------------------------------------------------------------------
    Section (c) eliminates the need for a signature to be 
attested on a patent grant. This amendment removes one step of 
the agency's bureaucracy and allows the PTO to issue patents 
more expeditiously.

 Sec. 5. Domestic Publication of Foreign Filed Patent Applications Act 
                          of 1999 Amendments.

    The AIPA established the early publication of patent 
applications in the U.S. patent system for the first time along 
with certain conditions and new rights for inventors. One such 
right is a corresponding provisional right (e.g., a reasonable 
royalty) in patent infringement cases. These provisions will 
take effect 1 year after the AIPA's date of enactment. This 
section of the bill is technical in nature and clarifies the 
text regarding the statutory requirement for the effective date 
of international applications which may qualify for the 
provisional rights based on early publication.

 Sec. 6. Domestic Publication of Patent Applications Published Abroad.

    The AIPA established the early publication of patent 
applications, as described above. One consequence of early 
publication is its effect on the standard of novelty for a 
patent application. This section and the following paragraphs 
establish certain safeguards regarding the interplay of the 
early publication of patent applications and the review of 
novelty during the patent examination process. It is an 
especially important safeguard in light of the fact that the 
U.S. is a signatory of the Patent Cooperation Treaty, an 
international convention allowing for the multi-national 
application of patents in several languages.
    Subsection 1 contains a safeguard that the PTO will only 
rely on information published in English in patent applications 
as it makes the essential determination of novelty during the 
examination of a patent application. This limits the evidence 
from foreign applications that may be considered ``prior art'' 
and could affect patentability. This is an important safeguard 
for independent inventors and small American businesses who do 
not have access to expensive translation services and the 
foreign patent offices.
    Subsection 2 makes a series of technical and clerical 
amendments, including changes to section 4507 of IPCORA. The 
following section, subsection 3, clarifies the effective date 
of the new safeguard and ensures that it takes effect along 
with the other early publication provisions later this year. 
The AIPA established the early publication of certain patent 
applications starting on November 29, 2000. The effective date 
language relating to section 102(e) of the patent code relates 
to when the amended version of the statute creates ``prior 
art'' by virtue of the publication of a patent specification. 
All currently pending applications for patent and all issued 
U.S. patents, whenever filed, will be subject to any prior art 
created by virtue of amended section 102(e) since the AIPA does 
nothing to alter the controlling U.S. Supreme Court precedent 
holding that a patent specification publication is 
constructively deemed prior art from its U.S. filing date.\5\
---------------------------------------------------------------------------
    \5\ See Alexander Milburn v. Davis-Bournonville Co., 270 U.S. 390 
(1926).
---------------------------------------------------------------------------

               Sec. 7. Miscellaneous Clerical Amendments.

    The section contains a series of highly technical clerical 
amendments developed by the Office of Legislative Counsel upon 
its own initiative. These changes to the Patent Act are self-
evident, and range from aligning paragraphs, deleting quotation 
marks, correcting the fonts of headings, and the like.

            Sec. 8. Technical Corrections in Trademark Law.

    The first paragraph clarifies the statutory text of the 
Trademark Act as it relates to damages. In 1999, the ``Anti-
Cybersquatting Consumer Protection Act'' \6\ established 
certain damages for willful violation of Sec. 43(c) of the 
Trademark Act.\7\ The present language entitles a plaintiff to 
damages, but it reads awkwardly. This bill makes a technical 
correction to the text and thereby removes the redundant text, 
without altering the substance of available trademark 
infringement remedies.
---------------------------------------------------------------------------
    \6\ H.R.3194, P. L. 106-113 (Nov. 29, 1999).
    \7\ 15 U.S.C. Sec. 1125(c).
---------------------------------------------------------------------------
    The second paragraph provides for additional technical 
amendments, including four strictly clerical changes, such as 
the deletion of a comma and the realignment of a paragraph. The 
bill also makes additional changes to the Trademark Act 
regarding the designation of persons involved with the filing 
procedures for receiving notice and process correspondence 
relating to the trademark registration.

          Sec. 9. Patent and Trademark Fee Clerical Amendment.

    Section 9 corrects a clerical error pertaining to the 
section of the law cited relating to the adjustment of 
trademark fees and the consumer price index. The change to the 
cited reference does not make a substantive change in trademark 
law.

   Sec. 10. Copyright Related Corrections to 1999 Omnibus Reform Act.

    This section makes amendments to Title I of IPCORA.
    Paragraph (1)(A) amends section 1007(2) by striking 
``paragraph (2)'' and inserting ``paragraph (2)(A)''.
    Paragraph (1)(B) amends section 1007(3) by striking 
``1005(e)'' and inserting ``1005(d)''. In section 1007(3), the 
amendment instructions require paragraph 12 to be added to 
subsection 119(a) ``as amended by section 1005(e)''. The 
reference to section 1005(e) is wrong. Section 1005(d) amended 
subsection 119(a), whereas section 1005(e) amended subsection 
119(d). Section 1005(d) amended subsection 119(a) by adding 
paragraph 11. Section 1005(e) amended subsection 119(d) by 
rewriting its paragraph 11. This amendment corrects this.
    Paragraph (2) amends section 1006(b) by striking 
``119(b)(1)(B)(iii)'' and inserting ``119(b)(1)(B)(ii)''. 
Section 1006(b) amended section 119(b)(1)(B)(iii) by inserting 
``or the Public Broadcasting Service satellite feed'' after 
``network station''. Section 119(b)(1)(B)(ii), not (iii), 
should have been amended. Section 119(b)(1)(B)(iii) contains no 
reference to ``network station''. Section 119(b)(1)(B)(ii) does 
contain that reference, and it is clear that section 1006(b) 
was intended to amend section 119(b)(1)(B)(ii).
    Paragraphs (3)(A) and (3)(B) amend section 1006(a)(2) by 
repealing it, redesignating the paragraphs and changing the 
language in section 1011(b). The amendment in section 
1006(b)(2) amends section 119(a)(1) by inserting new wording so 
that the text will read as follows, with the new wording 
italicized: ``primary transmission made by a superstation or by 
the Public Broadcasting Service satellite feed and embodying a 
performance or display of a work''.
    The amendment in section 1011(b)(2)(A) subsequently amends 
the same language but does not take the first amendment into 
account. It directs that section 119(a)(1) be amended to delete 
``primary transmission made by a superstation and embodying a 
performance or display of a work'' (ignoring the fact that ``or 
by the Public Broadcasting Service satellite feed'' has been 
inserted into the middle of that phrase). In lieu of that 
phrase, it inserts ``performance or display of a work embodied 
in a primary transmission made by a superstation'' (but without 
taking into account the addition of ``or by the Public 
Broadcasting Service satellite feed''). As a result, it is 
unclear what is to be done with the phrase ``or by the Public 
Broadcasting Service satellite feed''. Although the intent is 
clear, the language of sections 1006(a)(2) and 1011(b)(2)(A) 
does not necessarily accomplish the intended result. These 
paragraphs clarify the ambiguity and achieve the intended 
result.

          Sec. 11. Amendments to Title 17, United States Code.

    This section makes amendments to title 17, United States 
Code.
    Paragraph (1) amends section 119(a)(6) by striking ``of 
performance'' and inserting ``of a performance''. Section 
1011(b)(2) of IPCORA amended section 119(a)(6) so that 
``performance or display of a work embodied in'' is inserted 
after ``by a satellite carrier of''. The word ``a'' is missing 
between these two phrases. This section inserts it before 
``performance'' so that the language will read ``by a satellite 
carrier of a performance or display of a work embodied in''.
    Paragraph (2)(A) amends the section heading for section 122 
by striking ``rights; secondary'' and inserting ``rights: 
Secondary''. Section 1002(a) of IPCORA added section 122 to 
title 17. The title of section 122 has editorial errors. To 
make it consistent with the style used throughout title 17, the 
title is changed to substitute a colon in lieu of the semicolon 
and ``secondary'' is capitalized. Paragraph (2)(B) amends the 
item relating to section 122 in the table of contents for 
chapter 1 to make it consistent with the change made by 
paragraph (2)(A).
    Paragraph (3)(A) amends the section heading for section 121 
by striking ``reproduction'' and inserting ``Reproduction''. 
Paragraph 3(B) amends the item relating to section 121 in the 
table of contents for chapter 1 by striking ``reproduction'' 
and inserting ``Reproduction''. This makes the heading for 
section 121 and the table of contents for chapter 1 conform to 
the editorial style used for the rest of the headings for title 
17 by capitalizing ``reproduction''.
    Paragraphs (4)(A), (4)(B), and (4)(C) amend cross 
references to the limitations on exclusive rights in copyright 
to include section 122. Throughout title 17, such references to 
``121'' are changed to ``122''. Paragraph 4(A) amends section 
106 by striking ``107 through 121'' and inserting ``107 through 
122''. Paragraph (4)(B) amends section 501(a) by striking ``106 
through 121'' and inserting ``106 through 122''. Paragraph 
(4)(C) amends section 511(a) by striking ``106 through 121'' 
and inserting ``106 through 122''.
    Paragraph (5)(A) amends section 101 by moving the 
definition of ``computer program'' so that it appears after the 
definition of ``compilation''. Paragraph (5)(B) amends section 
101 by moving the definition of ``registration'' so that it 
appears after the definition of ``publicly''. This amendment 
ensures that the definitions appear in alphabetical order.
    Paragraph (6) amends section 110(4)(B) in the matter 
preceding clause (i) by striking ``conditions;'' and inserting 
``conditions:''. A colon is the proper punctuation when a 
phrase that introduces multiple subparts is worded to include 
``the following''.
    Paragraph (7) amends section 118(b)(1) in the second 
sentence by striking ``to it''. This section was amended by the 
Copyright Royalty Tribunal Reform Act of 1993 to substitute 
``Librarian of Congress'' for references to the ``Copyright 
Royalty Tribunal'' (CRT). As originally enacted by the 
Copyright Act of 1976, the second sentence in subsection(b) 
used the pronoun ``it'' to refer to the CRT. As amended in 
1993, the sentence now states, ``The Librarian of Congress 
shall proceed on the basis of the proposals submitted to it. . 
. .'' This amendment corrects that reference.
    Paragraphs (8)(A) and (B) amend section 119(b)(1)(A). 
Paragraph (A) strikes ``transmitted'' and inserts 
``retransmitted''. Paragraph (B) strikes ``transmissions'' and 
inserts ``retransmissions''. These paragraphs correct two 
drafting errors in section 119(b)(1)(A) when it was enacted by 
the Satellite Home Viewer Act of 1988.
    Paragraphs (9)(A), (B) and (C) amend section 203(a)(2). 
Paragraph (9)(A)(i) amends subparagraph (A) by striking ``(A) 
the'' and inserts ``(A) The''. Paragraph (9)(A)(ii) amends 
subparagraph (A) by striking the semicolon at the end and 
inserting a period. Paragraph (9)(B)(i) amends subparagraph (B) 
by striking ``(B) the'' and inserting ``(B) The''. Paragraph 
(9)(B)(ii) amends subparagraph (B) by striking the semicolon at 
the end and inserting a period. Paragraph (9)(C) amends 
subparagraph (C) by striking ``(C) the'' and inserting ``(C) 
The''.
    Paragraphs (10)(A), (B) and (C) amend section 304(c)(2). 
Paragraph (10)(A)(i) amends subparagraph (A) by striking ``(A) 
the'' and inserting ``(A) The''. Paragraph (10)(A)(ii) amends 
subparagraph (A) by striking the semicolon at the end and 
inserting a period. Paragraph (10)(B)(i) amends subparagraph 
(B) by striking ``(B) the'' and inserting ``(B) The''. 
Paragraph (10)(B)(ii) amends subparagraph (B) by striking the 
semicolon at the end and inserting a period. Paragraph (10)(C) 
amends subparagraph (C) by striking ``(C) the'' and inserting 
``(C) The''. The addition of subparagraph (C) to sections 
203(a)(2) and 304(c)(2) resulted in inconsistent punctuation 
and this amendment makes the punctuation in sections 203(a)(2) 
and 304(c)(2) internally consistent.
    Paragraph (11) amends the item relating to section 903 in 
the table of contents for chapter 9 by striking ``licensure'' 
and inserting ``licensing''. As originally enacted in 1984, the 
table of contents for chapter 9 and the text each had a 
different heading for section 903. The heading in the text was 
the same as it is now, which is ``Ownership, transfer, 
licensing, and recordation''. The heading in the table of 
contents was, ``Ownership and transfer.''. In 1997, a technical 
amendment changed the heading in the table of sections to its 
present form, which is, ``Ownership, transfer, licensure, and 
recordation.''. The 1997 amendment did not change the heading 
in the text to make it the same. This amendment makes both the 
table of contents and the heading in the text the same.
    Paragraph (12) amends section 109 by striking subsection 
(e). Section 803 of the Computer Software Rental Amendments Act 
of 1990 amended section 109 of title 17 by adding subsection 
(e). According to section 804(c) the amendments made by section 
803 shall not apply to public performances or displays that 
occur on or after October 1, 1995. Therefore, section 109 is 
expired.

         Sec. 12. Other Copyright Related Technical Amendments.

    This section makes other technical and conforming 
amendments. Paragraph (a) amends title 18, section 2319(e)(2) 
by striking ``107 through 120'' and inserting ``107 through 
122''. Paragraph (b)(1) and (2) correct an incorrect reference 
to an uncodified title. It is incorrect to directly cite to an 
uncodified title.

         Changes in Existing Law Made by the Bill, as Reported

    In compliance with clause 3(e) of rule XIII of the Rules of 
the House of Representatives, changes in existing law made by 
the bill, as reported, are shown as follows (existing law 
proposed to be omitted is enclosed in black brackets, new 
matter is printed in italics, existing law in which no change 
is proposed is shown in roman):

TITLE 35, UNITED STATES CODE

           *       *       *       *       *       *       *


           PART I--UNITED STATES PATENT AND TRADEMARK OFFICE

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

CHAPTER 1--ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS

           *       *       *       *       *       *       *


Sec. 2. Powers and duties

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

           *       *       *       *       *       *       *

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

           *       *       *       *       *       *       *

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

           *       *       *       *       *       *       *

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

           *       *       *       *       *       *       *

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

           *       *       *       *       *       *       *


Sec. 3. Officers and employees

    (a) Under Secretary and [Director] Commissioner.--
            (1) In general.--The powers and duties of the 
        United States Patent and Trademark Office shall be 
        vested in an Under Secretary of Commerce for 
        Intellectual Property and [Director] Commissioner of 
        the United States Patent and Trademark Office (in this 
        title referred to as the ``[Director] Commissioner''), 
        who shall be a citizen of the United States and who 
        shall be appointed by the President, by and with the 
        advice and consent of the Senate. The [Director] 
        Commissioner shall be a person who has a professional 
        background and experience in patent or trademark law.
            (2) Duties.--
                    (A) In general.--The [Director] 
                Commissioner shall be responsible for providing 
                policy direction and management supervision for 
                the Office and for the issuance of patents and 
                the registration of trademarks. The [Director] 
                Commissioner shall perform these duties in a 
                fair, impartial, and equitable manner.
                    (B) Consulting with the public advisory 
                committees.--The [Director] Commissioner shall 
                consult with the Patent Public Advisory 
                Committee established in section 5 on a regular 
                basis on matters relating to the patent 
                operations of the Office, shall consult with 
                the Trademark Public Advisory Committee 
                established in section 5 on a regular basis on 
                matters relating to the trademark operations of 
                the Office, and shall consult with the 
                respective Public Advisory Committee before 
                submitting budgetary proposals to the Office of 
                Management and Budget or changing or proposing 
                to change patent or trademark user fees or 
                patent or trademark regulations which are 
                subject to the requirement to provide notice 
                and opportunity for public comment under 
                section 553 of title 5, [United States Code,] 
                as the case may be.
            (3) Oath.--The [Director] Commissioner shall, 
        before taking office, take an oath to discharge 
        faithfully the duties of the Office.
            (4) Removal.--The [Director] Commissioner may be 
        removed from office by the President. The President 
        shall provide notification of any such removal to both 
        Houses of Congress.
    (b) Officers and Employees of the Office.--
            (1) Deputy under secretary and deputy [Director] 
        Commissioner.--The Secretary of Commerce, upon 
        nomination by the [Director] Commissioner, shall 
        appoint a Deputy Under Secretary of Commerce for 
        Intellectual Property and Deputy [Director] 
        Commissioner of the United States Patent and Trademark 
        Office who shall be vested with the authority to act in 
        the capacity of the [Director] Commissioner in the 
        event of the absence or incapacity of the [Director] 
        Commissioner. The Deputy [Director] Commissioner shall 
        be a citizen of the United States who has a 
        professional background and experience in patent or 
        trademark law.
            (2) [Commissioners] Assistant commissioners.--
                    (A) Appointment and duties.--The Secretary 
                of Commerce shall appoint a [Commissioner for 
                Patents] Assistant Commissioner for Patents and 
                a [Commissioner for Trademarks] Assistant 
                Commissioner for Trademarks, without regard to 
                chapter 33, 51, or 53 of title 5[, United 
                States Code]. The [Commissioner for Patents] 
                Assistant Commissioner for Patents shall be a 
                citizen of the United States with demonstrated 
                management ability and professional background 
                and experience in patent law and serve for a 
                term of 5 years. The [Commissioner for 
                Trademarks] Assistant Commissioner for 
                Trademarks shall be a citizen of the United 
                States with demonstrated management ability and 
                professional background and experience in 
                trademark law and serve for a term of 5 years. 
                The [Commissioner for Patents] Assistant 
                Commissioner for Patents and the [Commissioner 
                for Trademarks] Assistant Commissioner for 
                Trademarks shall serve as the chief operating 
                officers for the operations of the Office 
                relating to patents and trademarks, 
                respectively, and shall be responsible for the 
                management and direction of all aspects of the 
                activities of the Office that affect the 
                administration of patent and trademark 
                operations, respectively. The Secretary may 
                reappoint [a] an Assistant Commissioner to 
                subsequent terms of 5 years as long as the 
                performance of the Assistant Commissioner as 
                set forth in the performance agreement in 
                subparagraph (B) is satisfactory.
                    (B) Salary and performance agreement.--The 
                Assistant Commissioners shall be paid an annual 
                rate of basic pay not to exceed the maximum 
                rate of basic pay for the Senior Executive 
                Service established under section 5382 of title 
                5, [United States Code,] including any 
                applicable locality-based comparability payment 
                that may be authorized under section 
                5304(h)(2)(C) of title 5[, United States Code]. 
                The compensation of the Assistant Commissioners 
                shall be considered, for purposes of section 
                207(c)(2)(A) of title 18, [United States Code,] 
                to be the equivalent of that described under 
                clause (ii) of section 207(c)(2)(A) of title 
                18[, United States Code]. In addition, the 
                Assistant Commissioners may receive a bonus in 
                an amount of up to, but not in excess of, 50 
                percent of the Assistant Commissioners' annual 
                rate of basic pay, based upon an evaluation by 
                the Secretary of Commerce, acting through the 
                [Director] Commissioner, of the Assistant 
                Commissioners' performance as defined in an 
                annual performance agreement between the 
                Assistant Commissioners and the Secretary. The 
                annual performance agreements shall incorporate 
                measurable organization and individual goals in 
                key operational areas as delineated in an 
                annual performance plan agreed to by the 
                Assistant Commissioners and the Secretary. 
                Payment of a bonus under this subparagraph may 
                be made to the Assistant Commissioners only to 
                the extent that such payment does not cause the 
                Assistant Commissioners' total aggregate 
                compensation in a calendar year to equal or 
                exceed the amount of the salary of the Vice 
                President under section 104 of title 3[, United 
                States Code].
                    (C) Removal.--The Assistant Commissioners 
                may be removed from office by the Secretary for 
                misconduct or nonsatisfactory performance under 
                the performance agreement described in 
                subparagraph (B), without regard to the 
                provisions of title 5[, United States Code]. 
                The Secretary shall provide notification of any 
                such removal to both Houses of Congress.
            (3) Other officers and employees.--The [Director] 
        Commissioner shall--
                    (A) appoint such officers, employees 
                (including attorneys), and agents of the Office 
                as the [Director] Commissioner considers 
                necessary to carry out the functions of the 
                Office; and
                    (B) define the title, authority, and duties 
                of such officers and employees and delegate to 
                them such of the powers vested in the Office as 
                the [Director] Commissioner may determine.
        The Office shall not be subject to any administratively 
        or statutorily imposed limitation on positions or 
        personnel, and no positions or personnel of the Office 
        shall be taken into account for purposes of applying 
        any such limitation.

           *       *       *       *       *       *       *

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

           *       *       *       *       *       *       *

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

           *       *       *       *       *       *       *

                    (C) such transfer would be in the interest 
                of the Office, as determined by the Secretary 
                of Commerce in consultation with the [Director] 
                Commissioner.
        Any transfer under this paragraph shall be effective as 
        of the same effective date as referred to in paragraph 
        (1), and shall be made without a break in service.
    (f) Transition Provisions.--
            (1) Interim appointment of [Director] 
        Commissioner.--On or after the effective date of the 
        Patent and Trademark Office Efficiency Act, the 
        President shall appoint an individual to serve as the 
        [Director] Commissioner until the date on which a 
        [Director] Commissioner qualifies under subsection (a). 
        The President shall not make more than one such 
        appointment under this subsection.
            (2) Continuation in office of certain officers.--
        (A) The individual serving as the Assistant 
        Commissioner for Patents on the day before the 
        effective date of the Patent and Trademark Office 
        Efficiency Act may serve as the Assistant Commissioner 
        for Patents until the date on which [a] an Assistant 
        Commissioner for Patents is appointed under subsection 
        (b).
            (B) The individual serving as the Assistant 
        Commissioner for Trademarks on the day before the 
        effective date of the Patent and Trademark Office 
        Efficiency Act may serve as the Assistant Commissioner 
        for Trademarks until the date on which [a] an Assistant 
        Commissioner for Trademarks is appointed under 
        subsection (b).

           *       *       *       *       *       *       *


Sec. 5. Patent and Trademark Office Public Advisory Committees

    (a)  * * *

           *       *       *       *       *       *       *

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

           *       *       *       *       *       *       *

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

           *       *       *       *       *       *       *

    (g) Applicability of Certain Ethics Laws.--Members of each 
Advisory Committee shall be special Government employees within 
the meaning of section 202 of title 18[, United States Code].

           *       *       *       *       *       *       *

    (i) Open Meetings.--The meetings of each Advisory Committee 
shall be open to the public, except that each Advisory 
Committee may by majority vote meet in executive session when 
considering personnel, priviledged, or other confidential 
information.
    (j) Inapplicability of Patent Prohibition.--Section 4 shall 
not apply to voting members of the Advisory Committees.

Sec. 6. Board of Patent Appeals and Interferences

    (a) Establishment and Composition.--There shall be in the 
United States Patent and Trademark Office a Board of Patent 
Appeals and Interferences. The [Director] Commissioner, the 
Deputy Commissioner, the [Commissioner for Patents] Assistant 
Commissioner for Patents, the [Commissioner for Trademarks] 
Assistant Commissioner for Trademarks, and the administrative 
patent judges shall constitute the Board. The administrative 
patent judges shall be persons of competent legal knowledge and 
scientific ability who are appointed by the [Director] 
Commissioner.
    (b) Duties.--The Board of Patent Appeals and Interferences 
shall, on written appeal of an applicant, review adverse 
decisions of examiners upon applications for patents and shall 
determine priority and patentability of invention in 
interferences declared under section 135(a). Each appeal and 
interference shall be heard by at least three members of the 
Board, who shall be designated by the [Director] Commissioner. 
Only the Board of Patent Appeals and Interferences may grant 
rehearings.

Sec. 7. Library

    The [Director] Commissioner shall maintain a library of 
scientific and other works and periodicals, both foreign and 
domestic, in the Patent and Trademark Office to aid the 
officers in the discharge of their duties.

Sec. 8. Classification of patents

    The [Director] Commissioner may revise and maintain the 
classification by subject matter of United States letters 
patent, and such other patents and printed publications as may 
be necessary or practicable, for the purpose of determining 
with readiness and accuracy the novelty of inventions for which 
applications for patent are filed.

Sec. 9. Certified copies of records

    The [Director] Commissioner may furnish certified copies of 
specifications and drawings of patents issued by the Patent and 
Trademark Office, and of other records available either to the 
public or to the person applying therefor.

Sec. 10. Publications

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

           *       *       *       *       *       *       *

    (b) The [Director] Commissioner may exchange any of the 
publications specified in items 3, 4, 5, and 6 of subsection 
(a) of this section for publications desirable for the use of 
the Patent and Trademark Office.

Sec. 11. Exchange of copies of patents with foreign countries

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

Sec. 12. Copies of patents for public libraries

    The [Director] Commissioner may supply printed copies of 
specifications and drawings of patents to public libraries in 
the United States which shall maintain such copies for the use 
of the public, at the rate for each year's issue established 
for this purpose in section 41(d) of this title.

Sec. 13. Annual report to Congress

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

       CHAPTER 2--PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE

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

Sec. 21. Filing date and day for taking action

    (a) The [Director] Commissioner may by rule prescribe that 
any paper or fee required to be filed in the Patent and 
Trademark Office will be considered filed in the Office on the 
date on which it was deposited with the United States Postal 
Service or would have been deposited with the United States 
Postal Service but for postal service interruptions or 
emergencies designated by the [Director] Commissioner.

           *       *       *       *       *       *       *


Sec. 22. Printing of papers filed

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

Sec. 23. Testimony in Patent and Trademark Office cases

    The [Director] Commissioner may establish rules for taking 
affidavits and depositions required in cases in the Patent and 
Trademark Office. Any officer authorized by law to take 
depositions to be used in the courts of the United States, or 
of the State where he resides, may take such affidavits and 
depositions.

           *       *       *       *       *       *       *


Sec. 25. Declaration in lieu of oath

    (a) The [Director] Commissioner may by rule prescribe that 
any document to be filed in the Patent and Trademark Office and 
which is required by any law, rule, or other regulation to be 
under oath may be subscribed to by a written declaration in 
such form as the [Director] Commissioner may prescribe, such 
declaration to be in lieu of the oath otherwise required.
    (b) Whenever such written declaration is used, the document 
must warn the declarant that willful false statements and the 
like are punishable by fine or imprisonment, or both (18 U.S.C. 
1001).

Sec. 26. Effect of defective execution

    Any document to be filed in the Patent and Trademark Office 
and which is required by any law, rule, or other regulation to 
be executed in a specified manner may be provisionally accepted 
by the [Director] Commissioner despite a defective execution, 
provided a properly executed document is submitted within such 
time as may be prescribed.

CHAPTER 3--PRACTICE BEFORE PATENT AND TRADEMARK OFFICE

           *       *       *       *       *       *       *


Sec. 32. Suspension or exclusion from practice

    The [Director] Commissioner may, after notice and 
opportunity for a hearing, suspend or exclude, either generally 
or in any particular case, from further practice before the 
Patent and Trademark Office, any person, agent, or attorney 
shown to be incompetent or disreputable, or guilty of gross 
misconduct, or who does not comply with the regulations 
established under section 2(b)(2)(D) of this title, or who 
shall, by word, circular, letter, or advertising, with intent 
to defraud in any manner, deceive, mislead, or threaten any 
applicant or prospective applicant, or other person having 
immediate or prospective business before the Office. The 
reasons for any such suspension or exclusion shall be duly 
recorded. The [Director] Commissioner shall have the discretion 
to designate any attorney who is an officer or employee of the 
United States Patent and Trademark Office to conduct the 
hearing required by this section. The United States District 
Court for the District of Columbia, under such conditions and 
upon such proceedings as it by its rules determines, may review 
the action of the [Director] Commissioner upon the petition of 
the person so refused recognition or so suspended or excluded.

           *       *       *       *       *       *       *


CHAPTER 4--PATENT FEES; FUNDING; SEARCH SYSTEMS

           *       *       *       *       *       *       *


Sec. 41. Patent fees; patent and trademark search systems

    (a) The [Director] Commissioner shall charge the following 
fees:
            (1)  * * *

           *       *       *       *       *       *       *

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

           *       *       *       *       *       *       *

For the purpose of computing fees, a multiple dependent claim 
referred to in section 112 of this title or any claim depending 
therefrom shall be considered as separate dependent claims in 
accordance with the number of claims to which reference is 
made. Errors in payment of the additional fees may be rectified 
in accordance with regulations of the [Director] Commissioner.
    (b) The [Director] Commissioner shall charge the following 
fees for maintaining in force all patents based on applications 
filed on or after December 12, 1980:
            (1)  * * *

           *       *       *       *       *       *       *

Unless payment of the applicable maintenance fee is received in 
the Patent and Trademark Office on or before the date the fee 
is due or within a grace period of 6 months thereafter, the 
patent will expire as of the end of such grace period. The 
[Director] Commissioner may require the payment of a surcharge 
as a condition of accepting within such 6-month grace period 
the payment of an applicable maintenance fee. No fee may be 
established for maintaining a design or plant patent in force.
    (c)(1) The [Director] Commissioner may accept the payment 
of any maintenance fee required by subsection (b) of this 
section which is made within twenty-four months after the six-
month grace period if the delay is shown to the satisfaction of 
the [Director] Commissioner to have been unintentional, or at 
any time after the six-month grace period if the delay is shown 
to the satisfaction of the [Director] Commissioner to have been 
unavoidable. The [Director] Commissioner may require the 
payment of a surcharge as a condition of accepting payment of 
any maintenance fee after the six-month grace period. If the 
[Director] Commissioner accepts payment of a maintenance fee 
after the six-month grace period, the patent shall be 
considered as not having expired at the end of the grace 
period.

           *       *       *       *       *       *       *

    (d) The [Director] Commissioner shall establish fees for 
all other processing, services, or materials relating to 
patents not specified in this section to recover the estimated 
average cost to the Office of such processing, services, or 
materials, except that the [Director] Commissioner shall charge 
the following fees for the following services:
            (1)  * * *

           *       *       *       *       *       *       *

    (e) The [Director] Commissioner may waive the payment of 
any fee for any service or material related to patents in 
connection with an occasional or incidental request made by a 
department or agency of the Government, or any officer thereof. 
The [Director] Commissioner may provide any applicant issued a 
notice under section 132 of this title with a copy of the 
specifications and drawings for all patents referred to in that 
notice without charge.
    (f) The fees established in subsections (a) and (b) of this 
section may be adjusted by the [Director] Commissioner on 
October 1, 1992, and every year thereafter, to reflect any 
fluctuations occurring during the previous 12 months in the 
Consumer Price Index, as determined by the Secretary of Labor. 
Changes of less than 1 per centum may be ignored.
    (g) No fee established by the [Director] Commissioner under 
this section shall take effect until at least 30 days after 
notice of the fee has been published in the Federal Register 
and in the Official Gazette of the Patent and Trademark Office.
    (h)(1) Fees charged under subsection (a) or (b) shall be 
reduced by 50 percent with respect to their application to any 
small business concern as defined under section 3 of the Small 
Business Act, and to any independent inventor or nonprofit 
organization as defined in regulations issued by the [Director] 
Commissioner.

           *       *       *       *       *       *       *

    (i)(1) The [Director] Commissioner shall maintain, for use 
by the public, paper, microform, or electronic collections of 
United States patents, foreign patent documents, and United 
States trademark registrations arranged to permit search for 
and retrieval of information. The [Director] Commissioner may 
not impose fees directly for the use of such collections, or 
for the use of the public patent or trademark search rooms or 
libraries.
    (2) The [Director] Commissioner shall provide for the full 
deployment of the automated search systems of the Patent and 
Trademark Office so that such systems are available for use by 
the public, and shall assure full access by the public to, and 
dissemination of, patent and trademark information, using a 
variety of automated methods, including electronic bulletin 
boards and remote access by users to mass storage and retrieval 
systems.
    (3) The [Director] Commissioner may establish reasonable 
fees for access by the public to the automated search systems 
of the Patent and Trademark Office. If such fees are 
established, a limited amount of free access shall be made 
available to users of the systems for purposes of education and 
training. The [Director] Commissioner may waive the payment by 
an individual of fees authorized by this subsection upon a 
showing of need or hardship, and if such a waiver is in the 
public interest.
    (4) The [Director] Commissioner shall submit to the 
Congress an annual report on the automated search systems of 
the Patent and Trademark Office and the access by the public to 
such systems. The [Director] Commissioner shall also publish 
such report in the Federal Register. The [Director] 
Commissioner shall provide an opportunity for the submission of 
comments by interested persons on each such report.

Sec. 42. Patent and Trademark Office funding

    (a) All fees for services performed by or materials 
furnished by the Patent and Trademark Office will be payable to 
the [Director] Commissioner.
    (b) All fees paid to the [Director] Commissioner and all 
appropriations for defraying the costs of the activities of the 
Patent and Trademark Office will be credited to the Patent and 
Trademark Office Appropriation Account in the Treasury of the 
United States.
    (c) To the extent and in the amounts provided in advance in 
appropriations Acts, fees authorized in this title or any other 
Act to be charged or established by the [Director] Commissioner 
shall be collected by and shall be available to the [Director] 
Commissioner to carry out the activities of the Patent and 
Trademark Office. All fees available to the [Director] 
Commissioner under section 31 of the Trademark Act of 1946 
shall be used only for the processing of trademark 
registrations and for other activities, services, and materials 
relating to trademarks and to cover a proportionate share of 
the administrative costs of the Patent and Trademark Office.
    (d) The [Director] Commissioner may refund any fee paid by 
mistake or any amount paid in excess of that required.

           *       *       *       *       *       *       *


PART II--PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

           *       *       *       *       *       *       *


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

CHAPTER 10--PATENTABILITY OF INVENTIONS

           *       *       *       *       *       *       *


Sec. 104. Invention made abroad

    (a) In General.--
            (1)  * * *

           *       *       *       *       *       *       *

            (3) Use of information.--To the extent that any 
        information in a NAFTA country or a WTO member country 
        concerning knowledge, use, or other activity relevant 
        to proving or disproving a date of invention has not 
        been made available for use in a proceeding in the 
        Patent and Trademark Office, a court, or any other 
        competent authority to the same extent as such 
        information could be made available in the United 
        States, the [Director] Commissioner, court, or such 
        other authority shall draw appropriate inferences, or 
        take other action permitted by statute, rule, or 
        regulation, in favor of the party that requested the 
        information in the proceeding.

           *       *       *       *       *       *       *


                   CHAPTER 11--APPLICATION FOR PATENT

Sec.
111.    Application.
     * * * * * * *
[116.    Joint inventors.]
116.    Inventors.
     * * * * * * *

Sec. 111. Application

    (a) In General.--
            (1) Written application.--An application for patent 
        shall be made, or authorized to be made, by the 
        inventor, except as otherwise provided in this title, 
        in writing to the [Director] Commissioner.

           *       *       *       *       *       *       *

            (3) Fee and oath.--The application must be 
        accompanied by the fee required by law. The fee and 
        oath may be submitted after the specification and any 
        required drawing are submitted, within such period and 
        under such conditions, including the payment of a 
        surcharge, as may be prescribed by the [Director] 
        Commissioner.
            (4) Failure to submit.--Upon failure to submit the 
        fee and oath within such prescribed period, the 
        application shall be regarded as abandoned, unless it 
        is shown to the satisfaction of the [Director] 
        Commissioner that the delay in submitting the fee and 
        oath was unavoidable or unintentional. The filing date 
        of an application shall be the date on which the 
        specification and any required drawing are received in 
        the Patent and Trademark Office.
    (b) Provisional Application.--
            (1) Authorization.--A provisional application for 
        patent shall be made or authorized to be made by the 
        inventor, except as otherwise provided in this title, 
        in writing to the [Director] Commissioner. Such 
        application shall include--
                    (A)  * * *

           *       *       *       *       *       *       *

            (3) Fee.--(A) The application must be accompanied 
        by the fee required by law.
            (B) The fee may be submitted after the 
        specification and any required drawing are submitted, 
        within such period and under such conditions, including 
        the payment of a surcharge, as may be prescribed by the 
        [Director] Commissioner.
            (C) Upon failure to submit the fee within such 
        prescribed period, the application shall be regarded as 
        abandoned, unless it is shown to the satisfaction of 
        the [Director] Commissioner that the delay in 
        submitting the fee was unavoidable or unintentional.

           *       *       *       *       *       *       *

            (5) Abandonment.--Notwithstanding the absence of a 
        claim, upon timely request and as prescribed by the 
        [Director] Commissioner, a provisional application may 
        be treated as an application filed under subsection 
        (a). Subject to section 119(e)(3) of this title, if no 
        such request is made, the provisional application shall 
        be regarded as abandoned 12 months after the filing 
        date of such application and shall not be subject to 
        revival after such 12-month period.
            (6) Other basis for provisional application.--
        Subject to all the conditions in this subsection and 
        section 119(e) of this title, and as prescribed by the 
        [Director] Commissioner, an application for patent 
        filed under subsection (a) may be treated as a 
        provisional application for patent.

           *       *       *       *       *       *       *


Sec. 113. Drawings

    The applicant shall furnish a drawing where necessary for 
the understanding of the subject matter sought to be patented. 
When the nature of such subject matter admits of illustration 
by a drawing and the applicant has not furnished such a 
drawing, the [Director] Commissioner may require its submission 
within a time period of not less than two months from the 
sending of a notice thereof. Drawings submitted after the 
filing date of the application may not be used (i) to overcome 
any insufficiency of the specification due to lack of an 
enabling disclosure or otherwise inadequate disclosure therein, 
or (ii) to supplement the original disclosure thereof for the 
purpose of interpretation of the scope of any claim.

Sec. 114. Models, specimens

    The [Director] Commissioner may require the applicant to 
furnish a model of convenient size to exhibit advantageously 
the several parts of his invention.
    When the invention relates to a composition of matter, the 
[Director] Commissioner may require the applicant to furnish 
specimens or ingredients for the purpose of inspection or 
experiment.

           *       *       *       *       *       *       *


Sec. 116. Inventors

    When an invention is made by two or more persons jointly, 
they shall apply for patent jointly and each make the required 
oath, except as otherwise provided in this title. Inventors may 
apply for a patent jointly even though (1) they did not 
physically work together or at the same time, (2) each did not 
make the same type or amount of contribution, or (3) each did 
not make a contribution to the subject matter of every claim of 
the patent.
    If a joint inventor refuses to join in an application for 
patent or cannot be found or reached after diligent effort, the 
application may be made by the other inventor on behalf of 
himself and the omitted inventor. The [Director] Commissioner, 
on proof of the pertinent facts and after such notice to the 
omitted inventor as he prescribes, may grant a patent to the 
inventor making the application, subject to the same rights 
which the omitted inventor would have had if he had been 
joined. The omitted inventor may subsequently join in the 
application.
    Whenever through error a person is named in an application 
for patent as the inventor, or through error an inventor is not 
named in an application, and such error arose without any 
deceptive intention on his part, the [Director] Commissioner 
may permit the application to be amended accordingly, under 
such terms as he prescribes.

           *       *       *       *       *       *       *


Sec. 118. Filing by other than inventor

    Whenever an inventor refuses to execute an application for 
patent, or cannot be found or reached after diligent effort, a 
person to whom the inventor has assigned or agreed in writing 
to assign the invention or who otherwise shows sufficient 
proprietary interest in the matter justifying such action, may 
make application for patent on behalf of and as agent for the 
inventor on proof of the pertinent facts and a showing that 
such action is necessary to preserve the rights of the parties 
or to prevent irreparable damage; and the [Director] 
Commissioner may grant a patent to such inventor upon such 
notice to him as the [Director] Commissioner deems sufficient, 
and on compliance with such regulations as he prescribes.

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

    (a)  * * *
    (b) No application for patent shall be entitled to this 
right of priority unless a claim therefor and a certified copy 
of the original foreign application, specification and drawings 
upon which it is based are filed in the Patent and Trademark 
Office before the patent is granted, or at such time during the 
pendency of the application as required by the [Director] 
Commissioner not earlier than six months after the filing of 
the application in this country. Such certification shall be 
made by the patent office of the foreign country in which filed 
and show the date of the application and of the filing of the 
specification and other papers. The [Director] Commissioner may 
require a translation of the papers filed if not in the English 
language and such other information as he deems necessary.

           *       *       *       *       *       *       *


Sec. 121. Divisional applications

    If two or more independent and distinct inventions are 
claimed in one application, the [Director] Commissioner may 
require the application to be restricted to one of the 
inventions. If the other invention is made the subject of a 
divisional application which complies with the requirements of 
section 120 of this title it shall be entitled to the benefit 
of the filing date of the original application. A patent 
issuing on an application with respect to which a requirement 
for restriction under this section has been made, or on an 
application filed as a result of such a requirement, shall not 
be used as a reference either in the Patent and Trademark 
Office or in the courts against a divisional application or 
against the original application or any patent issued on either 
of them, if the divisional application is filed before the 
issuance of the patent on the other application. If a 
divisional application is directed solely to subject matter 
described and claimed in the original application as filed, the 
[Director] Commissioner may dispense with signing and execution 
by the inventor. The validity of a patent shall not be 
questioned for failure of the [Director] Commissioner to 
require the application to be restricted to one invention.

Sec. 122. Confidential status of applications

    Applications for patents shall be kept in confidence by the 
Patent and Trademark Office and no information concerning the 
same given without authority of the applicant or owner unless 
necessary to carry out the provisions of any Act of Congress or 
in such special circumstances as may be determined by the 
[Director] Commissioner.

CHAPTER 12--EXAMINATION OF APPLICATION

           *       *       *       *       *       *       *


Sec. 131. Examination of application

    The [Director] Commissioner shall cause an examination to 
be made of the application and the alleged new invention; and 
if on such examination it appears that the applicant is 
entitled to a patent under the law, the [Director] Commissioner 
shall issue a patent therefor.

Sec. 132. Notice of rejection; reexamination

    (a) Whenever, on examination, any claim for a patent is 
rejected, or any objection or requirement made, the [Director] 
Commissioner shall notify the applicant thereof, stating the 
reasons for such rejection, or objection or requirement, 
together with such information and references as may be useful 
in judging of the propriety of continuing the prosecution of 
his application; and if after receiving such notice, the 
applicant persists in his claim for a patent, with or without 
amendment, the application shall be reexamined. No amendment 
shall introduce new matter into the disclosure of the 
invention.
    (b) The [Director] Commissioner shall prescribe regulations 
to provide for the continued examination of applications for 
patent at the request of the applicant. The [Director] 
Commissioner may establish appropriate fees for such continued 
examination and shall provide a 50 percent reduction in such 
fees for small entities that qualify for reduced fees under 
section 41(h)(1) of this title.

Sec. 133. Time for prosecuting application

    Upon failure of the applicant to prosecute the application 
within six months after any action therein, of which notice has 
been given or mailed to the applicant, or within such shorter 
time, not less than thirty days, as fixed by the [Director] 
Commissioner in such action, the application shall be regarded 
as abandoned by the parties thereto, unless it be shown to the 
satisfaction of the [Director] Commissioner that such delay was 
unavoidable.

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

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

Sec. 135. Interferences

    (a) Whenever an application is made for a patent which, in 
the opinion of the [Director] Commissioner, would interfere 
with any pending application, or with any unexpired patent, an 
interference may be declared and the [Director] Commissioner 
shall give notice of such declaration to the applicants, or 
applicant and patentee, as the case may be. The Board of Patent 
Appeals and Interferences shall determine questions of priority 
of the inventions and may determine questions of patentability. 
Any final decision, if adverse to the claim of an applicant, 
shall constitute the final refusal by the Patent and Trademark 
Office of the claims involved, and the [Director] Commissioner 
may issue a patent to the applicant who is adjudged the prior 
inventor. A final judgment adverse to a patentee from which no 
appeal or other review has been or can be taken or had shall 
constitute cancellation of the claims involved in the patent, 
and notice of such cancellation shall be endorsed on copies of 
the patent distributed after such cancellation by the Patent 
and Trademark Office.

           *       *       *       *       *       *       *

    (c) Any agreement or understanding between parties to an 
interference, including any collateral agreements referred to 
therein, made in connection with or in contemplation of the 
termination of the interference, shall be in writing and a true 
copy thereof filed in the Patent and Trademark Office before 
the termination of the interference as between the said parties 
to the agreement or understanding. If any party filing the same 
so requests, the copy shall be kept separate from the file of 
the interference, and made available only to Government 
agencies on written request, or to any person on a showing of 
good cause. Failure to file the copy of such agreement or 
understanding shall render permanently unenforceable such 
agreement or understanding and any patent of such parties 
involved in the interference or any patent subsequently issued 
on any application of such parties so involved. The [Director] 
Commissioner may, however, on a showing of good cause for 
failure to file within the time prescribed, permit the filing 
of the agreement or understanding during the six-month period 
subsequent to the termination of the interference as between 
the parties to the agreement or understanding.
    The [Director] Commissioner shall give notice to the 
parties or their attorneys of record, a reasonable time prior 
to said termination, of the filing requirement of this section. 
If the [Director] Commissioner gives such notice at a later 
time, irrespective of the right to file such agreement or 
understanding within the six-month period on a showing of good 
cause, the parties may file such agreement or understanding 
within sixty days of the receipt of such notice.
    Any discretionary action of the [Director] Commissioner 
under this subsection shall be reviewable under section 10 of 
the Administrative Procedure Act.
    (d) Parties to a patent interference, within such time as 
may be specified by the [Director] Commissioner by regulation, 
may determine such contest or any aspect thereof by 
arbitration. Such arbitration shall be governed by the 
provisions of title 9 to the extent such title is not 
inconsistent with this section. The parties shall give notice 
of any arbitration award to the [Director] Commissioner, and 
such award shall, as between the parties to the arbitration, be 
dispositive of the issues to which it relates. The arbitration 
award shall be unenforceable until such notice is given. 
Nothing in this subsection shall preclude the [Director] 
Commissioner from determining patentability of the invention 
involved in the interference.

CHAPTER 13--REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS

           *       *       *       *       *       *       *


Sec. 141. Appeal to Court of Appeals for the Federal Circuit

    An applicant dissatisfied with the decision in an appeal to 
the Board of Patent Appeals and Interferences under section 134 
of this title may appeal the decision to the United States 
Court of Appeals for the Federal Circuit. By filing such an 
appeal the applicant waives his or her right to proceed under 
section 145 of this title. A patent owner in any reexamination 
proceeding dissatisfied with the final decision in an appeal to 
the Board of Patent Appeals and Interferences under section 134 
may appeal the decision only to the United States Court of 
Appeals for the Federal Circuit. A party to an interference 
dissatisfied with the decision of the Board of Patent Appeals 
and Interferences on the interference may appeal the decision 
to the United States Court of Appeals for the Federal Circuit, 
but such appeal shall be dismissed if any adverse party to such 
interference, within twenty days after the appellant has filed 
notice of appeal in accordance with section 142 of this title, 
files notice with the [Director] Commissioner that the party 
elects to have all further proceedings conducted as provided in 
section 146 of this title. If the appellant does not, within 
thirty days after the filing of such notice by the adverse 
party, file a civil action under section 146, the decision 
appealed from shall govern the further proceedings in the case.

Sec. 142. Notice of appeal

    When an appeal is taken to the United States Court of 
Appeals for the Federal Circuit, the appellant shall file in 
the Patent and Trademark Office a written notice of appeal 
directed to the [Director] Commissioner, within such time after 
the date of the decision from which the appeal is taken as the 
[Director] Commissioner prescribes, but in no case less than 60 
days after that date.

Sec. 143. Proceedings on appeal

    With respect to an appeal described in section 142 of this 
title, the [Director] Commissioner shall transmit to the United 
States Court of Appeals for the Federal Circuit a certified 
list of the documents comprising the record in the Patent and 
Trademark Office. The court may request that the [Director] 
Commissioner forward the original or certified copies of such 
documents during pendency of the appeal. [In any reexamination 
case, the Director shall submit to the court in writing the 
grounds for the decision of the Patent and Trademark Office, 
addressing all the issues involved in the appeal.] In an ex 
parte case or any reexamination case, the Commissioner shall 
submit to the court in writing the grounds for the decision of 
the Patent and Trademark Office, addressing all the issues 
involved in the appeal. The court shall, before hearing an 
appeal, give notice of the time and place of the hearing to the 
Commissioner and the parties in the appeal. The court shall, 
before hearing an appeal, give notice of the time and place of 
the hearing to the [Director] Commissioner and the parties in 
the appeal.

Sec. 144. Decision on appeal

    The United States Court of Appeals for the Federal Circuit 
shall review the decision from which an appeal is taken on the 
record before the Patent and Trademark Office. Upon its 
determination the court shall issue to the [Director] 
Commissioner its mandate and opinion, which shall be entered of 
record in the Patent and Trademark Office and shall govern the 
further proceedings in the case.

Sec. 145. Civil action to obtain patent

    An applicant dissatisfied with the decision of the Board of 
Patent Appeals and Interferences in an appeal under section 
134(a) of this title may, unless appeal has been taken to the 
United States Court of Appeals for the Federal Circuit, have 
remedy by civil action against the [Director] Commissioner in 
the United States District Court for the District of Columbia 
if commenced within such time after such decision, not less 
than sixty days, as the [Director] Commissioner appoints. The 
court may adjudge that such applicant is entitled to receive a 
patent for his invention, as specified in any of his claims 
involved in the decision of the Board of Patent Appeals and 
Interferences, as the facts in the case may appear and such 
adjudication shall authorize the [Director] Commissioner to 
issue such patent on compliance with the requirements of law. 
All the expenses of the proceedings shall be paid by the 
applicant.

Sec. 146. Civil action in case of interference

    Any party to an interference dissatisfied with the decision 
of the Board of Patent Appeals and Interferences on the 
interference, may have remedy by civil action, if commenced 
within such time after such decision, not less than sixty days, 
as the [Director] Commissioner appoints or as provided in 
section 141 of this title, unless he has appealed to the United 
States Court of Appeals for the Federal Circuit, and such 
appeal is pending or has been decided. In such suits the record 
in the Patent and Trademark Office shall be admitted on motion 
of either party upon the terms and conditions as to costs, 
expenses, and the further cross-examination of the witnesses as 
the court imposes, without prejudice to the right of the 
parties to take further testimony. The testimony and exhibits 
of the record in the Patent and Trademark Office when admitted 
shall have the same effect as if originally taken and produced 
in the suit.
    Such suit may be instituted against the party in interest 
as shown by the records of the Patent and Trademark Office at 
the time of the decision complained of, but any party in 
interest may become a party to the action. If there be adverse 
parties residing in a plurality of districts not embraced 
within the same state, or an adverse party residing in a 
foreign country, the United States District Court for the 
District of Columbia shall have jurisdiction and may issue 
summons against the adverse parties directed to the marshal of 
any district in which any adverse party resides. Summons 
against adverse parties residing in foreign countries may be 
served by publication or otherwise as the court directs. The 
[Director] Commissioner shall not be a necessary party but he 
shall be notified of the filing of the suit by the clerk of the 
court in which it is filed and shall have the right to 
intervene. Judgment of the court in favor of the right of an 
applicant to a patent shall authorize the [Director] 
Commissioner to issue such patent on the filing in the Patent 
and Trademark Office of a certified copy of the judgment and on 
compliance with the requirements of law.

CHAPTER 14--ISSUE OF PATENT

           *       *       *       *       *       *       *


Sec. 151. Issue of patent

    If it appears that applicant is entitled to a patent under 
the law, a written notice of allowance of the application shall 
be given or mailed to the applicant. The notice shall specify a 
sum, constituting the issue fee or a portion thereof, which 
shall be paid within three months thereafter.
    Upon payment of this sum the patent shall issue, but if 
payment is not timely made, the application shall be regarded 
as abandoned.
    Any remaining balance of the issue fee shall be paid within 
three months from the sending of a notice thereof and, if not 
paid, the patent shall lapse at the termination of this three-
month period. In calculating the amount of a remaining balance, 
charges for a page or less may be disregarded.
    If any payment required by this section is not timely made, 
but is submitted with the fee for delayed payment and the delay 
in payment is shown to have been unavoidable, it may be 
accepted by the [Director] Commissioner as though no 
abandonment or lapse had ever occurred.

           *       *       *       *       *       *       *


Sec. 153. How issued

    Patents shall be issued in the name of the United States of 
America, under the seal of the Patent and Trademark Office, and 
shall be signed by the [Director] Commissioner or have his 
signature placed thereon [and attested by an officer of the 
Patent and Trademark Office designated by the Director,] and 
shall be recorded in the Patent and Trademark Office.

Sec. 154. Contents and term of patent

    (a)  * * *

           *       *       *       *       *       *       *

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

           *       *       *       *       *       *       *

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

           *       *       *       *       *       *       *

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

           *       *       *       *       *       *       *

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