Intellectual Property
TITLE V--INTELLECTUAL PROPERTY
SEC. 501. DEFINITION.
For purposes of this title--
(1) the term "WTO Agreement" has the meaning given that term in
section 2(9) of the Uruguay Round Agreements Act; and
(2) the term "WTO member country" has the meaning given that term in
section 2(10) of the Uruguay Round Agreements Act.
Subtitle A--Copyright Provisions
SEC. 511. RENTAL RIGHTS IN COMPUTER PROGRAMS.
Section 804(c) of the Computer Software Rental Amendments Act of 1990
(17 U.S.C. 109 note; 104 Stat. 5136) is amended by striking the first sentence.
SEC. 512. CIVIL PENALTIES FOR UNAUTHORIZED FIXATION OF AND TRAFFICKING IN
SOUND RECORDINGS AND MUSIC VIDEOS OF LIVE MUSICAL PERFORMANCES.
(a) In General.--Title 17, United States Code, is amended by adding at
the end the following new chapter:
"CHAPTER 11--SOUND RECORDINGS AND MUSIC VIDEOS
"Sec.
"1101. Unauthorized fixation and trafficking in sound recordings and music
videos.
"Sec. 1101. Unauthorized fixation and trafficking in sound recordings and
music videos
"(a) Unauthorized Acts.--Anyone who, without the consent of the
performer or performers involved--
"(1) fixes the sounds or sounds and images of a live musical
performance in a copy or phonorecord, or reproduces copies or
phonorecords of such a performance from an unauthorized fixation,
"(2) transmits or otherwise communicates to the public the sounds or
sounds and images of a live musical performance, or
"(3) distributes or offers to distribute, sells or offers to sell,
rents or offers to rent, or traffics in any copy or phonorecord fixed as
described in paragraph (1), regardless of whether the fixations occurred
in the United States, shall be subject to the remedies provided in sections
502 through 505, to the same extent as an infringer of copyright.
"(b) Definition.--As used in this section, the term 'traffic in' means
transport, transfer, or otherwise dispose of, to another, as consideration
for anything of value, or make or obtain control of with intent to transport,
transfer, or dispose of.
"(c) Applicability.--This section shall apply to any act or acts that
occur on or after the date of the enactment of the Uruguay Round Agreements
Act.
"(d) State Law Not Preempted.--Nothing in this section may be construed
to annul or limit any rights or remedies under the common law or statutes of
any State.".
(b) Conforming Amendment.--The table of chapters for title 17, United
States Code, is amended by adding at the end the following:
"11. Sound Recordings and Music Videos............................1101".
SEC. 513. CRIMINAL PENALTIES FOR UNAUTHORIZED FIXATION OF AND TRAFFICKING IN
SOUND RECORDINGS AND MUSIC VIDEOS OR LIVE MUSICAL PERFORMANCES.
(a) In General.--Chapter 113 of title 18, United States Code, is amended
by inserting after section 2319 the following:
"Sec. 2319A. Unauthorized fixation of and trafficking in sound recordings and
music videos of live musical performances
"(a) Offense.--Whoever, without the consent of the performer or
performers involved, knowingly and for purposes of commercial advantage or
private financial gain--
"(1) fixes the sounds or sounds and images of a live musical
performance in a copy or phonorecord, or reproduces copies or
phonorecords of such a performance from an unauthorized fixation;
"(2) transmits or otherwise communicates to the public the sounds or
sounds and images of a live musical performance; or
"(3) distributes or offers to distribute, sells or offers to sell,
rents or offers to rent, or traffics in any copy or phonorecord fixed as
described in paragraph (1), regardless of whether the fixations occurred
in the United States;
shall be imprisoned for not more than 5 years or fined in the amount set
forth in this title, or both, or if the offense is a second or subsequent
offense, shall be imprisoned for not more than 10 years or fined in the
amount set forth in this title, or both.
"(b) Forfeiture and Destruction.--When a person is convicted of a
violation of subsection (a), the court shall order the forfeiture and
destruction of any copies or phonorecords created in violation thereof, as
well as any plates, molds, matrices, masters, tapes, and film negatives by
means of which such copies or phonorecords may be made. The court may also,
in its discretion, order the forfeiture and destruction of any other
equipment by means of which such copies or phonorecords may be reproduced,
taking into account the nature, scope, and proportionality of the use of the
equipment in the offense.
"(c) Seizure and Forfeiture.--If copies or phonorecords of sounds or
sounds and images of a live musical performance are fixed outside of the
United States without the consent of the performer or performers involved,
such copies or phonorecords are subject to seizure and forfeiture in the
United States in the same manner as property imported in violation of the
customs laws. The Secretary of the Treasury shall, not later than 60 days
after the date of the enactment of the Uruguay Round Agreements Act, issue
regulations to carry out this subsection, including regulations by which any
performer may, upon payment of a specified fee, be entitled to notification
by the United States Customs Service of the importation of copies or
phonorecords that appear to consist of unauthorized fixations of the sounds
or sounds and images of a live musical performance.
"(d) Definitions.--As used in this section--
"(1) the terms 'copy', 'fixed', 'musical work', 'phonorecord',
'reproduce', 'sound recordings', and 'transmit' mean those terms within
the meaning of title 17; and
"(2) the term 'traffic in' means transport, transfer, or otherwise
dispose of, to another, as consideration for anything of value, or make
or obtain control of with intent to transport, transfer, or dispose of.
"(e) Applicability.--This section shall apply to any Act or Acts that
occur on or after the date of the enactment of the Uruguay Round Agreements
Act.".
(b) Conforming Amendment.--The table of sections for chapter 113 of title
18, United States Code, is amended by inserting after the item relating to
section 2319 the following:
"2319A. Unauthorized fixation of and trafficking in sound recordings and
music videos of live musical performances.".
SEC. 514. RESTORED WORKS.
(a) In General.--Section 104A of title 17, United States Code, is amended
to read as follows:
"Sec. 104A. Copyright in restored works
"(a) Automatic Protection and Term.--
"(1) Term.--
"(A) Copyright subsists, in accordance with this section, in
restored works, and vests automatically on the date of restoration.
"(B) Any work in which copyright is restored under this section
shall subsist for the remainder of the term of copyright that the
work would have otherwise been granted in the United States if the
work never entered the public domain in the United States.
"(2) Exception.--Any work in which the copyright was ever owned or
administered by the Alien Property Custodian and in which the restored
copyright would be owned by a government or instrumentality thereof, is
not a restored work.
"(b) Ownership of Restored Copyright.--A restored work vests initially in
the author or initial rightholder of the work as determined by the law of the
source country of the work.
"(c) Filing of Notice of Intent to Enforce Restored Copyright Against
Reliance Parties.--On or after the date of restoration, any person who owns a
copyright in a restored work or an exclusive right therein may file with the
Copyright Office a notice of intent to enforce that person's copyright or
exclusive right or may serve such a notice directly on a reliance party.
Acceptance of a notice by the Copyright Office is effective as to any
reliance parties but shall not create a presumption of the validity of any of
the facts stated therein. Service on a reliance party is effective as to that
reliance party and any other reliance parties with actual knowledge of such
service and of the contents of that notice.
"(d) Remedies for Infringement of Restored Copyrights.--
"(1) Enforcement of copyright in restored works in the absence of a
reliance party.--As against any party who is not a reliance party, the
remedies provided in chapter 5 of this title shall be available on or
after the date of restoration of a restored copyright with respect to an
act of infringement of the restored copyright that is commenced on or
after the date of restoration.
"(2) Enforcement of copyright in restored works as against reliance
parties.--As against a reliance party, except to the extent provided in
paragraphs (3) and (4), the remedies provided in chapter 5 of this title
shall be available, with respect to an act of infringement of a restored
copyright, on or after the date of restoration of the restored copyright
if the requirements of either of the following subparagraphs are met:
"(A)(i) The owner of the restored copyright (or such owner's
agent) or the owner of an exclusive right therein (or such owner's
agent) files with the Copyright Office, during the 24-month period
beginning on the date of restoration, a notice of intent to enforce
the restored copyright; and
"(ii)(I) the act of infringement commenced after the end of the
12-month period beginning on the date of publication of the notice in
the Federal Register;
"(II) the act of infringement commenced before the end of the 12-
month period described in subclause (I) and continued after the end
of that 12-month period, in which case remedies shall be available
only for infringement occurring after the end of that 12-month
period; or
"(III) copies or phonorecords of a work in which copyright has
been restored under this section are made after publication of the
notice of intent in the Federal Register.
"(B)(i) The owner of the restored copyright (or such owner's
agent) or the owner of an exclusive right therein (or such owner's
agent) serves upon a reliance party a notice of intent to enforce a
restored copyright; and
"(ii)(I) the act of infringement commenced after the end of the
12-month period beginning on the date the notice of intent is
received;
"(II) the act of infringement commenced before the end of the 12-
month period described in subclause (I) and continued after the end
of that 12-month period, in which case remedies shall be available
only for the infringement occurring after the end of that 12-month
period; or
"(III) copies or phonorecords of a work in which copyright has
been restored under this section are made after receipt of the notice
of intent.
In the event that notice is provided under both subparagraphs (A) and
(B), the 12-month period referred to in such subparagraphs shall run from
the earlier of publication or service of notice.
"(3) Existing derivative works.--(A) In the case of a derivative work
that is based upon a restored work and is created--
"(i) before the date of the enactment of the Uruguay Round
Agreements Act, if the source country of the derivative work is an
eligible country on such date, or
"(ii) before the date of adherence or proclamation, if the source
country of the derivative work is not an eligible country on such
date of enactment,
a reliance party may continue to exploit that work for the duration of
the restored copyright if the reliance party pays to the owner of the
restored copyright reasonable compensation for conduct which would be
subject to a remedy for infringement but for the provisions of this
paragraph.
"(B) In the absence of an agreement between the parties, the amount
of such compensation shall be determined by an action in United States
district court, and shall reflect any harm to the actual or potential
market for or value of the restored work from the reliance party's
continued exploitation of the work, as well as compensation for the
relative contributions of expression of the author of the restored work
and the reliance party to the derivative work.
"(4) Commencement of infringement for reliance parties.--For purposes
of section 412, in the case of reliance parties, infringement shall be
deemed to have commenced before registration when acts which would have
constituted infringement had the restored work been subject to copyright
were commenced before the date of restoration.
"(e) Notices of Intent To Enforce a Restored Copyright.--
"(1) Notices of intent filed with the copyright office.--(A)(i) A
notice of intent filed with the Copyright Office to enforce a restored
copyright shall be signed by the owner of the restored copyright or the
owner of an exclusive right therein, who files the notice under
subsection (d)(2)(A)(i) (hereafter in this paragraph referred to as the
'owner'), or by the owner's agent, shall identify the title of the
restored work, and shall include an English translation of the title and
any other alternative titles known to the owner by which the restored
work may be identified, and an address and telephone number at which the
owner may be contacted. If the notice is signed by an agent, the agency
relationship must have been constituted in a writing signed by the owner
before the filing of the notice. The Copyright Office may specifically
require in regulations other information to be included in the notice,
but failure to provide such other information shall not invalidate the
notice or be a basis for refusal to list the restored work in the Federal
Register.
"(ii) If a work in which copyright is restored has no formal title,
it shall be described in the notice of intent in detail sufficient to
identify it.
"(iii) Minor errors or omissions may be corrected by further notice
at any time after the notice of intent is filed. Notices of corrections
for such minor errors or omissions shall be accepted after the period
established in subsection (d)(2)(A)(i). Notices shall be published in the
Federal Register pursuant to subparagraph (B).
"(B)(i) The Register of Copyrights shall publish in the Federal
Register, commencing not later than 4 months after the date of
restoration for a particular nation and every 4 months thereafter for a
period of 2 years, lists identifying restored works and the ownership
thereof if a notice of intent to enforce a restored copyright has been
filed.
"(ii) Not less than 1 list containing all notices of intent to
enforce shall be maintained in the Public Information Office of the
Copyright Office and shall be available for public inspection and copying
during regular business hours pursuant to sections 705 and 708. Such list
shall also be published in the Federal Register on an annual basis for
the first 2 years after the applicable date of restoration.
"(C) The Register of Copyrights is authorized to fix reasonable fees
based on the costs of receipt, processing, recording, and publication of
notices of intent to enforce a restored copyright and corrections
thereto.
"(D)(i) Not later than 90 days before the date the Agreement on
Trade-Related Aspects of Intellectual Property referred to in section
101(d)(15) of the Uruguay Round Agreements Act enters into force with
respect to the United States, the Copyright Office shall issue and
publish in the Federal Register regulations governing the filing under
this subsection of notices of intent to enforce a restored copyright.
"(ii) Such regulations shall permit owners of restored copyrights to
file simultaneously for registration of the restored copyright.
"(2) Notices of intent served on a reliance party.--(A) Notices of
intent to enforce a restored copyright may be served on a reliance party
at any time after the date of restoration of the restored copyright.
"(B) Notices of intent to enforce a restored copyright served on a
reliance party shall be signed by the owner or the owner's agent, shall
identify the restored work and the work in which the restored work is
used, if any, in detail sufficient to identify them, and shall include an
English translation of the title, any other alternative titles known to
the owner by which the work may be identified, the use or uses to which
the owner objects, and an address and telephone number at which the
reliance party may contact the owner. If the notice is signed by an
agent, the agency relationship must have been constituted in writing and
signed by the owner before service of the notice.
"(3) Effect of material false statements.--Any material false
statement knowingly made with respect to any restored copyright
identified in any notice of intent shall make void all claims and
assertions made with respect to such restored copyright.
"(f) Immunity From Warranty and Related Liability.--
"(1) In general.--Any person who warrants, promises, or guarantees
that a work does not violate an exclusive right granted in section 106
shall not be liable for legal, equitable, arbitral, or administrative
relief if the warranty, promise, or guarantee is breached by virtue of
the restoration of copyright under this section, if such warranty,
promise, or guarantee is made before January 1, 1995.
"(2) Performances.--No person shall be required to perform any act if
such performance is made infringing by virtue of the restoration of
copyright under the provisions of this section, if the obligation to
perform was undertaken before January 1, 1995.
"(g) Proclamation of Copyright Restoration.--Whenever the President finds
that a particular foreign nation extends, to works by authors who are
nationals or domiciliaries of the United States, restored copyright
protection on substantially the same basis as provided under this section,
the President may by proclamation extend restored protection provided under
this section to any work--
"(1) of which one or more of the authors is, on the date of first
publication, a national, domiciliary, or sovereign authority of that
nation; or
"(2) which was first published in that nation.
The President may revise, suspend, or revoke any such proclamation or impose
any conditions or limitations on protection under such a proclamation.
"(h) Definitions.--For purposes of this section and section 109(a):
"(1) The term 'date of adherence or proclamation' means the earlier
of the date on which a foreign nation which, as of the date the WTO
Agreement enters into force with respect to the United States, is not a
nation adhering to the Berne Convention or a WTO member country,
becomes--
"(A) a nation adhering to the Berne Convention or a WTO member
country; or
"(B) subject to a Presidential proclamation under subsection (g).
"(2) The 'date of restoration' of a restored copyright is the later
of--
"(A) the date on which the Agreement on Trade-Related Aspects of
Intellectual Property referred to in section 101(d)(15) of the
Uruguay Round Agreements Act enters into force with respect to the
United States, if the source country of the restored work is a nation
adhering to the Berne Convention or a WTO member country on such
date; or
"(B) the date of adherence or proclamation, in the case of any
other source country of the restored work.
"(3) The term 'eligible country' means a nation, other than the
United States, that is a WTO member country, adheres to the Berne
Convention, or is subject to a proclamation under section 104A(g).
"(4) The term 'reliance party' means any person who--
"(A) with respect to a particular work, engages in acts, before
the source country of that work becomes an eligible country, which
would have violated section 106 if the restored work had been subject
to copyright protection, and who, after the source country becomes an
eligible country, continues to engage in such acts;
"(B) before the source country of a particular work becomes an
eligible country, makes or acquires 1 or more copies or phonorecords
of that work; or
"(C) as the result of the sale or other disposition of a
derivative work covered under subsection (d)(3), or significant
assets of a person described in subparagraph (A) or (B), is a
successor, assignee, or licensee of that person.
"(5) The term 'restored copyright' means copyright in a restored work
under this section.
"(6) The term 'restored work' means an original work of authorship
that--
"(A) is protected under subsection (a);
"(B) is not in the public domain in its source country through
expiration of term of protection;
"(C) is in the public domain in the United States due to--
"(i) noncompliance with formalities imposed at any time by
United States copyright law, including failure of renewal, lack
of proper notice, or failure to comply with any manufacturing
requirements;
"(ii) lack of subject matter protection in the case of sound
recordings fixed before February 15, 1972; or
"(iii) lack of national eligibility; and
"(D) has at least one author or rightholder who was, at the time
the work was created, a national or domiciliary of an eligible
country, and if published, was first published in an eligible country
and not published in the United States during the 30-day period
following publication in such eligible country.
"(7) The term 'rightholder' means the person--
"(A) who, with respect to a sound recording, first fixes a sound
recording with authorization, or
"(B) who has acquired rights from the person described in
subparagraph (A) by means of any conveyance or by operation of law.
"(8) The 'source country' of a restored work is--
"(A) a nation other than the United States;
"(B) in the case of an unpublished work--
"(i) the eligible country in which the author or rightholder
is a national or domiciliary, or, if a restored work has more
than 1 author or rightholder, the majority of foreign authors or
rightholders are nationals or domiciliaries of eligible
countries; or
"(ii) if the majority of authors or rightholders are not
foreign, the nation other than the United States which has the
most significant contacts with the work; and
"(C) in the case of a published work--
"(i) the eligible country in which the work is first
published, or
"(ii) if the restored work is published on the same day in 2
or more eligible countries, the eligible country which has the
most significant contacts with the work.
"(9) The terms 'WTO Agreement' and 'WTO member country' have the
meanings given those terms in paragraphs (9) and (10), respectively, of
section 2 of the Uruguay Round Agreements Act.".
(b) Limitation.--Section 109(a) of title 17, United States Code, is
amended by adding at the end the following: "Notwithstanding the preceding
sentence, copies or phonorecords of works subject to restored copyright under
section 104A that are manufactured before the date of restoration of
copyright or, with respect to reliance parties, before publication or service
of notice under section 104A(e), may be sold or otherwise disposed of without
the authorization of the owner of the restored copyright for purposes of
direct or indirect commercial advantage only during the 12-month period
beginning on--
"(1) the date of the publication in the Federal Register of the
notice of intent filed with the Copyright Office under section
104A(d)(2)(A), or
"(2) the date of the receipt of actual notice served under section
104A(d)(2)(B),whichever occurs first.".
(c) Conforming Amendment.--The item relating to section 104A in the table
of sections for chapter 1 of title 17, United States Code, is amended to read
as follows:
"104A. Copyright in restored works.".
Subtitle B--Trademark Provisions
SEC. 521. DEFINITION OF "ABANDONED".
Section 45 of the Act entitled "An Act to provide for the registration
and protection of trade-marks used in commerce, to carry out the provisions
of certain international conventions, and for other purposes", approved July
5, 1946 (15 U.S.C. 1127) (hereafter in this title referred to as the
"Trademark Act of 1946"), is amended by amending the paragraph defining
"abandoned" to read as follows:
"A mark shall be deemed to be 'abandoned' if either of the following
occurs:
"(1) When its use has been discontinued with intent not to resume
such use. Intent not to resume may be inferred from circumstances. Nonuse
for 3 consecutive years shall be prima facie evidence of abandonment.
'Use' of a mark means the bona fide use of such mark made in the ordinary
course of trade, and not made merely to reserve a right in a mark.
"(2) When any course of conduct of the owner, including acts of
omission as well as commission, causes the mark to become the generic
name for the goods or services on or in connection with which it is used
or otherwise to lose its significance as a mark. Purchaser motivation
shall not be a test for determining abandonment under this paragraph.".
SEC. 522. NONREGISTRABILITY OF MISLEADING GEOGRAPHIC INDICATIONS FOR WINES
AND SPIRITS.
Subsection (a) of section 2 of the Trademark Act of 1946 (15 U.S.C.
1052(a)) is amended to read as follows:
"(a) Consists of or comprises immoral, deceptive, or scandalous matter;
or matter which may disparage or falsely suggest a connection with persons,
living or dead, institutions, beliefs, or national symbols, or bring them
into contempt, or disrepute; or a geographical indication which, when used on
or in connection with wines or spirits, identifies a place other than the
origin of the goods and is first used on or in connection with wines or
spirits by the applicant on or after one year after the date on which the WTO
Agreement (as defined in section 2(9) of the Uruguay Round Agreements Act)
enters into force with respect to the United States.".
SEC. 523. EFFECTIVE DATE.
The amendments made by this subtitle take effect one year after the date
on which the WTO Agreement enters into force with respect to the United
States.
Subtitle C--Patent Provisions
SEC. 531. TREATMENT OF INVENTIVE ACTIVITY.
(a) In General.--Section 104 of title 35, United States Code, is amended
to read as follows:
"Sec. 104. Invention made abroad
"(a) In General.--
"(1) Proceedings.--In proceedings in the Patent and Trademark Office,
in the courts, and before any other competent authority, an applicant for
a patent, or a patentee, may not establish a date of invention by
reference to knowledge or use thereof, or other activity with respect
thereto, in a foreign country other than a NAFTA country or a WTO member
country, except as provided in sections 119 and 365 of this title.
"(2) Rights.--If an invention was made by a person, civil or
military--
"(A) while domiciled in the United States, and serving in any
other country in connection with operations by or on behalf of the
United States,
"(B) while domiciled in a NAFTA country and serving in another
country in connection with operations by or on behalf of that NAFTA
country, or
"(C) while domiciled in a WTO member country and serving in
another country in connection with operations by or on behalf of that
WTO member country, that person shall be entitled to the same rights
of priority in the United States with respect to such invention as
if such invention had been made in the United States, that NAFTA
country, or that WTO member country, as the case may be.
"(3) Use of information.--To the extent that any information in a
NAFTA country or a WTO member country concerning knowledge, use, or other
activity relevant to proving or disproving a date of invention has not
been made available for use in a proceeding in the Patent and Trademark
Office, a court, or any other competent authority to the same extent as
such information could be made available in the United States, the
Commissioner, 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.
"(b) Definitions.--As used in this section--
"(1) the term 'NAFTA country' has the meaning given that term in
section 2(4) of the North American Free Trade Agreement Implementation
Act; and
"(2) the term 'WTO member country' has the meaning given that term in
section 2(10) of the Uruguay Round Agreements Act.".
(b) Effective Date.--
(1) In general.--Except as provided in paragraph (2), the amendment
made by this section shall apply to all patent applications that are
filed on or after the date that is 12 months after the date of entry into
force of the WTO Agreement with respect to the United States.
(2) Establishment of date.--An applicant for a patent, or a patentee,
may not establish a date of invention for purposes of title 35, United
States Code, that is earlier than 12 months after the date of entry into
force of the WTO Agreement with respect to the United States by reference
to knowledge or use, or other activity, in a WTO member country, except
as provided in sections 119 and 365 of such title.
SEC. 532. PATENT TERM AND INTERNAL PRIORITY.
(a) Patent Rights.--
(1) Contents and term of patent.--Section 154 of title 35, United
States Code, is amended to read as follows:
"Sec. 154. Contents and term of patent
"(a) In General.--
"(1) Contents.--Every patent shall contain a short title of the
invention and a grant to the patentee, his heirs or assigns, of the right
to exclude others from making, using, offering for sale, or selling the
invention throughout the United States or importing the invention into
the United States, and, if the invention is a process, of the right to
exclude others from using, offering for sale or selling throughout the
United States, or importing into the United States, products made by that
process, referring to the specification for the particulars thereof.
"(2) Term.--Subject to the payment of fees under this title, such
grant shall be for a term beginning on the date on which the patent
issues and ending 20 years from the date on which the application for the
patent was filed in the United States or, if the application contains a
specific reference to an earlier filed application or applications under
section 120, 121, or 365(c) of this title, from the date on which the
earliest such application was filed.
"(3) Priority.--Priority under section 119, 365(a), or 365(b) of this
title shall not be taken into account in determining the term of a
patent.
"(4) Specification and drawing.--A copy of the specification and
drawing shall be annexed to the patent and be a part of such patent.
"(b) Term Extension.--
"(1) Interference delay or secrecy orders.--If the issue of an
original patent is delayed due to a proceeding under section 135(a) of
this title, or because the application for patent is placed under an
order pursuant to section 181 of this title, the term of the patent shall
be extended for the period of delay, but in no case more than 5 years.
"(2) Extension for appellate review.--If the issue of a patent is
delayed due to appellate review by the Board of Patent Appeals and
Interferences or by a Federal court and the patent is issued pursuant to
a decision in the review reversing an adverse determination of
patentability, the term of the patent shall be extended for a period of
time but in no case more than 5 years. A patent shall not be eligible for
extension under this paragraph if it is subject to a terminal disclaimer
due to the issue of another patent claiming subject matter that is not
patentably distinct from that under appellate review.
"(3) Limitations.--The period of extension referred to in paragraph
(2)--
"(A) shall include any period beginning on the date on which an
appeal is filed under section 134 or 141 of this title, or on which
an action is commenced under section 145 of this title, and ending on
the date of a final decision in favor of the applicant;
"(B) shall be reduced by any time attributable to appellate
review before the expiration of 3 years from the filing date of the
application for patent; and
"(C) shall be reduced for the period of time during which the
applicant for patent did not act with due diligence, as determined by
the Commissioner.
"(4) Length of extension.--The total duration of all extensions of a
patent under this subsection shall not exceed 5 years.
"(c) Continuation.--
"(1) Determination.--The term of a patent that is in force on or that
results from an application filed before the date that is 6 months after
the date of the enactment of the Uruguay Round Agreements Act shall be
the greater of the 20-year term as provided in subsection (a), or 17
years from grant, subject to any terminal disclaimers.
"(2) Remedies.--The remedies of sections 283, 284, and 285 of this
title shall not apply to Acts which--
"(A) were commenced or for which substantial investment was made
before the date that is 6 months after the date of the enactment of
the Uruguay Round Agreements Act; and
"(B) became infringing by reason of paragraph (1).
"(3) Remuneration.--The acts referred to in paragraph (2) may be
continued only upon the payment of an equitable remuneration to the
patentee that is determined in an action brought under chapter 28 and
chapter 29 (other than those provisions excluded by paragraph (2)) of
this title.".
(2) Provision of further limited reexamination and conditions of
restriction requirements.--(A) The Commissioner of Patents and Trademarks
shall prescribe regulations to provide for further limited reexamination
of applications that have been pending for 2 years or longer as of the
effective date of section 154(a)(2) of title 35, United States Code, as
added by paragraph (1) of this subsection, taking into account any
reference made in such application to any earlier filed application under
section 120, 121, or 365(c) of such title. The Commissioner may establish
appropriate fees for such further limited reexamination.
(B) The Commissioner of Patents and Trademarks shall prescribe
regulations to provide for the examination of more than 1 independent and
distinct invention in an application that has been pending for 3 years or
longer as of the effective date of section 154(a)(2) of title 35, United
States Code, as added by paragraph (1) of this subsection, taking into
account any reference made in such application to any earlier filed
application under section 120, 121, or 365(c) of such title. The
Commissioner may establish appropriate fees for such examination.
(b) Establishment of a Domestic Priority System.--
(1) In general.--Section 119 of title 35, United States Code, is
amended--
(A) by amending the section caption to read as follows:
"Sec. 119. Benefit of earlier filing date; right of priority";
(B) by designating the undesignated paragraphs as subsections
(a), (b), (c), and (d), respectively; and
(C) by adding at the end the following:
"(e)(1) An application for patent filed under section 111(a) or section
363 of this title for an invention disclosed in the manner provided by the
first paragraph of section 112 of this title in a provisional application
filed under section 111(b) of this title, by an inventor or inventors named
in the provisional application, shall have the same effect, as to such
invention, as though filed on the date of the provisional application filed
under section 111(b) of this title, if the application for patent filed under
section 111(a) or section 363 of this title is filed not later than 12 months
after the date on which the provisional application was filed and if it
contains or is amended to contain a specific reference to the provisional
application.
"(2) A provisional application filed under section 111(b) of this title
may not be relied upon in any proceeding in the Patent and Trademark Office
unless the fee set forth in subparagraph (A) or (C) of section 41(a)(1) of
this title has been paid and the provisional application was pending on the
filing date of the application for patent under section 111(a) or section
363 of this title.".
(2) Fees.--Section 41(a)(1) of title 35, United States Code, is
amended by adding at the end the following:
"(C) On filing each provisional application for an original patent,
$150.".
(3) Applications.--Section 111 of title 35, United States Code, is
amended to read as follows:
"Sec. 111. Application
"(a) In General.--
"(1) Written application.--An application for patent shall be made,
or authorized to be made, by the inventor, except as otherwise provided
in this title, in writing to the Commissioner.
"(2) Contents.--Such application shall include--
"(A) a specification as prescribed by section 112 of this title;
"(B) a drawing as prescribed by section 113 of this title; and
"(C) an oath by the applicant as prescribed by section 115 of
this title.
"(3) Fee and oath.--The application must be accompanied by the fee
required by law. The fee and oath may be submitted after the
specification and any required drawing are submitted, within such period
and under such conditions, including the payment of a surcharge, as may
be prescribed by the Commissioner.
"(4) Failure to submit.--Upon failure to submit the fee and oath
within such prescribed period, the application shall be regarded as
abandoned, unless it is shown to the satisfaction of the Commissioner
that the delay in submitting the fee and oath was unavoidable or
unintentional. The filing date of an application shall be the date on
which the specification and any required drawing are received in the
Patent and Trademark Office.
"(b) Provisional Application.--
"(1) Authorization.--A provisional application for patent shall be
made or authorized to be made by the inventor, except as otherwise
provided in this title, in writing to the Commissioner. Such application
shall include--
"(A) a specification as prescribed by the first paragraph of
section 112 of this title; and
"(B) a drawing as prescribed by section 113 of this title.
"(2) Claim.--A claim, as required by the second through fifth
paragraphs of section 112, shall not be required in a provisional
application.
"(3) Fee.--(A) The application must be accompanied by the fee
required by law.
"(B) The fee may be submitted after the specification and any
required drawing are submitted, within such period and under such
conditions, including the payment of a surcharge, as may be prescribed by
the Commissioner.
"(C) Upon failure to submit the fee within such prescribed period,
the application shall be regarded as abandoned, unless it is shown to the
satisfaction of the Commissioner that the delay in submitting the fee was
unavoidable or unintentional.
"(4) Filing date.--The filing date of a provisional application shall
be the date on which the specification and any required drawing are
received in the Patent and Trademark Office.
"(5) Abandonment.--The provisional application shall be regarded as
abandoned 12 months after the filing date of such application and shall
not be subject to revival thereafter.
"(6) Other basis for provisional application.--Subject to all the
conditions in this subsection and section 119(e) of this title, and as
prescribed by the Commissioner, an application for patent filed under
subsection (a) may be treated as a provisional application for patent.
"(7) No right of priority or benefit of earliest filing date.--A
provisional application shall not be entitled to the right of priority of
any other application under section 119 or 365(a) of this title or to the
benefit of an earlier filing date in the United States under section 120,
121, or 365(c) of this title.
"(8) Applicable provisions.--The provisions of this title relating to
applications for patent shall apply to provisional applications for
patent, except as otherwise provided, and except that provisional
applications for patent shall not be subject to sections 115, 131, 135,
and 157 of this title.".
(c) Conforming Changes.--
(1) Section 156(a)(2) of title 35, United States Code, is amended by
inserting "under subsection (e)(1) of this section" after "extended".
(2) Section 172 of title 35, United States Code, is amended--
(A) by striking "section 119" and inserting "subsections (a)
through (d) of section 119"; and
(B) by inserting at the end the following new sentence:
"The right of priority provided for by section 119(e) of this title shall not
apply to designs.".
(3) Section 173 of title 35, United States Code, is amended by
inserting "from the date of grant" after "years".
(4) Section 365 of title 35, United States Code, is amended--
(A) in subsection (a), by striking "section 119" and inserting
"subsections (a) through (d) of section 119"; and
(B) in subsection (b), by striking "the first paragraph of
section 119" and inserting "section 119(a)".
(5) Section 373 of title 35, United States Code, is amended by
striking "section 119" and inserting "subsections (a) through (d) of
section 119".
(6) The table of sections for chapter 11 of title 35, United States
Code, is amended--
(A) by striking the item relating to section 111 and inserting
the following: "111. Application."; and
(B) by striking the item relating to section 119 and inserting
the following:
"119. Benefit of earlier filing date; right of priority.".
SEC. 533. PATENT RIGHTS.
(a) Definition of Infringement.--Section 271 of title 35, United States
Code, is amended--
(1) in subsection (a)--
(A) by inserting ", offers to sell," after "uses"; and
(B) by inserting "or imports into the United States any patented
invention" after "the United States";
(2) in subsection (c), by striking "sells" and inserting "offers to
sell or sells within the United States or imports into the United
States";
(3) in subsection (e)--
(A) in paragraph (1), by striking "or sell" and inserting "offer
to sell, or sell within the United States or import into the United
States";
(B) in paragraph (3), by striking "or selling" and inserting
"offering to sell, or selling within the United States or importing
into the United States";
(C) in paragraph (4)(B), by striking "or sale" and inserting
"offer to sell, or sale within the United States or importation into
the United States"; and
(D) in paragraph (4)(C), by striking "or sale" and inserting
"offer to sell, or sale within the United States or importation into
the United States";
(4) in subsection (g)--
(A) by striking "sells" and inserting "offers to sell, sells,";
(B) by striking "importation, sale," and inserting "importation,
offer to sell, sale,"; and
(C) by striking "other use or" and inserting "other use, offer to
sell, or"; and
(5) by adding at the end the following:
"(i) As used in this section, an 'offer for sale' or an 'offer to sell'
by a person other than the patentee, or any designee of the patentee, is that
in which the sale will occur before the expiration of the term of the
patent.".
(b) Conforming Amendments.--
(1) Paragraph (2) of section 41(c) of title 35, United States Code,
is amended to read as follows:
"(2) A patent, the term of which has been maintained as a result of the
acceptance of a payment of a maintenance fee under this subsection, shall not
abridge or affect the right of any person or that person's successors in
business who made, purchased, offered to sell, or used anything protected by
the patent within the United States, or imported anything protected by the
patent into the United States after the 6-month grace period but prior to the
acceptance of a maintenance fee under this subsection, to continue the use
of, to offer for sale, or to sell to others to be used, offered for sale, or
sold, the specific thing so made, purchased, offered for sale, used, or
imported. The court before which such matter is in question may provide for
the continued manufacture, use, offer for sale, or sale of the thing made,
purchased, offered for sale, or used within the United States, or imported
into the United States, as specified, or for the manufacture, use, offer for
sale, or sale in the United States of which substantial preparation was made
after the 6-month grace period but before the acceptance of a maintenance fee
under this subsection, and the court may also provide for the continued
practice of any process that is practiced, or for the practice of which
substantial preparation was made, after the 6-month grace period but before
the acceptance of a maintenance fee under this subsection, to the extent and
under such terms as the court deems equitable for the protection of
investments made or business commenced after the 6-month grace period but
before the acceptance of a maintenance fee under this subsection.".
(2) The second undesignated paragraph of section 252 of title 35,
United States Code, is amended to read as follows:
"A reissued patent shall not abridge or affect the right of any person or
that person's successors in business who, prior to the grant of a reissue,
made, purchased, offered to sell, or used within the United States, or
imported into the United States, anything patented by the reissued patent, to
continue the use of, to offer to sell, or to sell to others to be used,
offered for sale, or sold, the specific thing so made, purchased, offered for
sale, used, or imported unless the making, using, offering for sale, or
selling of such thing infringes a valid claim of the reissued patent which
was in the original patent. The court before which such matter is in question
may provide for the continued manufacture, use, offer for sale, or sale of
the thing made, purchased, offered for sale, used, or imported as specified,
or for the manufacture, use, offer for sale, or sale in the United States of
which substantial preparation was made before the grant of the reissue, and
the court may also provide for the continued practice of any process patented
by the reissue that is practiced, or for the practice of which substantial
preparation was made, before the grant of the reissue, to the extent and
under such terms as the court deems equitable for the protection of
investments made or business commenced before the grant of the reissue.".
(3) Section 262 of title 35, United States Code, is amended--
(A) by striking "use or sell" and inserting "use, offer to sell,
or sell"; and
(B) by inserting "within the United States, or import the
patented invention into the United States," after "invention".
(4) Section 272 of title 35, United States Code, is amended by
striking "not sold" and inserting "not offered for sale or sold".
(5) Section 287 of title 35, United States Code, is amended--
(A) in subsection (a)--
(i) by striking "making or selling" and inserting "making,
offering for sale, or selling within the United States"; and
(ii) by inserting "or importing any patented article into the
United States," after "under them,"; and
(B) in subsection (b)--
(i) in paragraph (1)(C), by striking "use, or sale" and
inserting "use, offer for sale, or sale";
(ii) in paragraph (4)(A), by striking "sold or" and inserting
"sold, offered for sale, or" in the matter preceding clause (i);
(iii) in paragraph (4)(A)(ii), by striking "use, or sale" and
inserting "use, offer for sale, or sale";
(iv) in paragraph (4)(C), by striking "have been sold" and
inserting "have been offered for sale or sold"; and
(v) in paragraph (4)(C), by striking "United States before"
and inserting "United States, or imported by the person into the
United States, before".
(6) Section 292(a) of title 35, United States Code, is amended--
(A) by striking "used, or sold by him" and inserting "used,
offered for sale, or sold by such person within the United States, or
imported by the person into the United States"; and
(B) by striking "made or sold" and inserting "made, offered for
sale, sold, or imported into the United States".
(7) Section 295 of title 35, United States Code, is amended by
striking "sale, or use" and inserting "sale, offer for sale, or use".
(8) Section 307(b) of title 35, United States Code, is amended by
striking "used anything" and inserting "used within the United States, or
imported into the United States, anything".
SEC. 534. EFFECTIVE DATES AND APPLICATION.
(a) In General.--Subject to subsection (b), the amendments made by this
subtitle take effect on the date that is one year after the date on which the
WTO Agreement enters into force with respect to the United States.
(b) Patent Applications.--
(1) In general.--Subject to paragraph (2), the amendments made by
section 532 take effect on the date that is 6 months after the date of
the enactment of this Act and shall apply to all patent applications
filed in the United States on or after the effective date.
(2) Section 154(a)(1).--Section 154(a)(1) of title 35, United States
Code, as amended by section 532(a)(1) of this Act, shall take effect on
the effective date described in subsection (a).
(3) Earliest filing.--The term of a patent granted on a application
that is filed on or after the effective date described in subsection (a)
and that contains a specific reference to an earlier application filed
under the provisions of section 120, 121, or 365(c) of title 35, United
States Code, shall be measured from the filing date of the earliest filed
application.
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