[Congressional Bills 107th Congress]
[From the U.S. Government Publishing Office]
[S. 320 Engrossed Amendment Senate (EAS)]
In the Senate of the United States,
November 15, 2001.
Resolved, That the Senate agree to the amendment of the House of
Representatives to the bill (S. 320) entitled ``An Act to make
technical corrections in patent, copyright, and trademark laws.'' with
the following
SENATE AMENDMENT TO HOUSE AMENDMENT:
In lieu of the matter proposed to be inserted by the House
amendment, insert:
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(b) of title 35, United States Code, is amended--
(i) by redesignating paragraphs (3), (4), and (5) as
paragraphs (4), (5), and (6), respectively; and
(ii) by inserting after paragraph (2) the following:
``(3) Special counsel for intellectual property policy and
deputy commissioner for legislative and international affairs
of the united states patent and trademark office.--
``(A) Appointment and duties.--The Special Counsel
for Intellectual Property Policy shall be a citizen of
the United States and shall be appointed by the
President, after consultation with the Secretary of
Commerce. The Deputy Commissioner for Legislative and
International Affairs shall be a citizen of the United
States and shall be appointed by the President, after
consultation with the Secretary of Commerce. The
Special Counsel shall serve as the chief intellectual
property policy advisor to the Under Secretary of
Commerce for Intellectual Property and Commissioner for
Patents and Trademarks. The Deputy Commissioner for
Legislative and International Affairs shall serve as
the chief advisor on all congressional and
international matters relating to intellectual property
and administration of the Office.
``(B) Oath.--The Special Counsel and the Deputy
Commissioner for Legislative and International Affairs
shall, before taking office, take an oath to discharge
faithfully responsible duties.
``(C) Removal.--The Special Counsel and the Deputy
Commissioner for Legislative and International Affairs
may be removed from office by the President. The
President shall provide notification of any such
removal to both Houses of Congress.
``(D) Compensation.--The Special Counsel and the
Deputy Commissioner for Legislative and International
Affairs of the United States Patent and Trademark
Office shall be paid an annual rate of basic pay--
``(i) not less than the minimum rate of
basic pay for a position at ES-4 of the Senior
Executive Service established under section
5382 of title 5; and
``(ii) not to exceed the maximum rate of
basic pay for the Senior Executive Service
established under section 5382 of title 5,
including any applicable locality-based
comparability payment that may be authorized
under section 5304(h)(2)(C) of title 5.''.
(E) 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''.
(F) 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''.
(G) 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''.
(H) 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 the following:
``Deputy Under Secretary of Commerce for Intellectual
Property and Deputy Director 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) Presidential Appointment and Compensation for Deputy
Director.--Section 3(b)(1) of title 35, United States Code, is amended
by--
(1) striking ``The Secretary of Commerce, upon nomination
by the Director,'' and inserting the following:
``(A) In general.--The President, after
consultation with the Secretary of Commerce,''; and
(2) inserting at the end the following:
``(B) Compensation.--The Deputy Commissioner shall
be paid an annual rate of basic pay--
``(i) not less than the minimum rate of
basic pay for a position at ES-4 of the Senior
Executive Service established under section
5382 of title 5; and
``(ii) not to exceed the maximum rate of
basic pay for the Senior Executive Service
established under section 5382 of title 5,
including any applicable locality-based
comparability payment that may be authorized
under section 5304(h)(2)(C) of title 5.''.
(d) 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 section 4605 (b), (c),
and (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 4504 and 4506 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
section 4504 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. Except as otherwise provided in this
section, the amendments made by section 4505 shall be effective as of
November 29, 2000 and shall apply to all patents and all applications
for patents pending on or filed after November 29, 2000. Patents
resulting from an international application filed before November 29,
2000 and applications published pursuant to section 122(b) or Article
21(2) of the treaty defined in section 351(a) resulting from an
international application filed before November 29, 2000 shall not be
effective as prior art as of the filing date of the international
application; however, such patents shall be effective as prior art in
accordance with section 102(e) in effect on November 28, 2000.''.
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(d) is amended by adding at the end a
period.
(21) 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,''.
Attest:
Secretary.
107th CONGRESS
1st Session
S. 320
_______________________________________________________________________
SENATE AMENDMENT TO HOUSE AMENDMENT