Summary: H.R.1907 — 106th Congress (1999-2000)All Information (Except Text)

Bill summaries are authored by CRS.

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Reported to Senate with amendment(s) (11/05/1999)

American Inventors Protection Act of 1999 - Title I: Inventors' Rights - Inventors' Rights Act of 1999 - Amends Federal patent law to oblige any invention promoter, before entering into a contract for invention promotion services, to disclose to a customer in writing: (1) the total number of inventions evaluated by the promoter for commercial potential in the past five years, including the number of positive and of negative evaluations; (2) the total number of customers who have contracted with the promoter in the past five years; (3) the total number of customers known by the promoter to have received a net financial profit as a direct result of the invention promotion services provided; (4) the total number of customers known by the invention promoter to have received license agreements for their inventions as a direct result of such services; and (5) the names and addresses of all previous invention promotion companies with which the promoter or its officers have collectively or individually been affiliated in the previous ten years.

(Sec. 102) Establishes a Federal cause of action for inventors injured by material false or fraudulent statements or representations, or any omission of material fact, by an invention promoter, or by the promoter's failure to make the required written disclosures. Sets statutory damages (if elected by a customer before judgment is rendered) at a maximum of $5,000.

Requires the Commissioner of Patents and Trademarks (Commissioner) to make publicly available any complaints received involving invention promoters, along with the response, if any, from the promoters.

Title II: Patent and Trademark Fee Fairness - Patent and Trademark Fee Fairness Act of 1999 - Amends Federal patent law to reduce: (1) from $760 to $690 original filing and reissue fees, as well as the national fee for certain international applications; and (2) from $940 to $830 the three-and-a-half year maintenance fee.

(Sec. 203) Authorizes the Commissioner to adjust trademark fees in FY 2000 without regard to fluctuations in the Consumer Price Index (CPI) during the preceding 12 months.

(Sec. 204) Directs the Commissioner to study and report to specified congressional committees on alternative fee structures that the U.S. Patent and Trademark Office (PTO) could adopt to encourage maximum participation by the inventor community in the United States.

(Sec. 205) Changes from discretionary to mandatory the Commissioner's authority to make all trademark fees available only for the processing of trademark registrations and trademark-related activities, services, and materials.

Title III: First Inventor Defense - First Inventor Defense Act of 1999 - Amends Federal patent law to declare that it shall be a defense to an infringement action with respect to any subject matter that would otherwise infringe one or more claims for a method in the patent being asserted against a person, if such person had, acting in good faith, actually reduced the subject matter to practice at least one year before the effective filing date of such patent, and commercially used the subject matter before the effective filing date of such patent.

(Sec. 302) Deems a commercial use, in the case of activities performed by a nonprofit research laboratory, or nonprofit entity such as a university, research center, or hospital, any use for which the public is the intended beneficiary, except that such use: (1) may be asserted as a defense only for continued use by and in the laboratory or nonprofit entity; and (2) may not be asserted as a defense with respect to any subsequent commercialization or use outside such laboratory or nonprofit entity.

States that the sale or other disposition of a useful end product produced by a patented method, by a person entitled to assert such a defense with respect to that useful end result, shall exhaust the patent owner's rights under the patent to the extent such rights would have been exhausted had such sale or other disposition been made by the patent owner.

Limits the defense to inventions for methods. Prohibits the defense if the subject matter on which the defense is based was derived from the patentee or persons in privity with the patentee.

Declares that this defense is not a general license under all claims of the patent at issue, but extends only to the specific subject matter claimed in the patent with respect to which the person can assert a defense. Extends the defense, however, to variations in the quantity or volume of use of the claimed subject matter, and to improvements that do not infringe additional specifically claimed subject matter of the patent.

Requires a person asserting the defense to establish it by clear and convincing evidence.

Prohibits any person who has abandoned commercial use of subject matter from relying on activities performed before the date of abandonment in establishing a defense with respect to actions taken after such date.

Limits assertion of the defense to the person who performed the acts necessary to establish it. Prohibits licensing, assignment, or transfer to any person but the patent owner of the right to assert the defense, except as an ancillary and subordinate part of a good faith assignment or transfer for other reasons of the entire enterprise or line of business to which the defense relates. Restricts the site of use of a subject matter for which the defense may be asserted if the defense has been acquired as part of such a good faith assignment or transfer.

(Sec. 303) Directs the General Accounting Office (GAO) to study and report to specified congressional committees on the effect on innovation, competition (foreign and domestic), and American businesses (including electronic commerce) of the quality of patents being issued on business methods by the PTO.

Title IV: Patent Term Guarantee - Patent Term Guarantee Act of 1999 - Amends Federal patent law to extend the term of a patent one day for each day lost as a result of delay created by the PTO when the agency fails to: (1) make notifications within 14 months after filing of a non-provisional application about the rejection of any patent claim, or objections to or requirements for it, or of allowance of the application; (2) respond within four months to a reply to a rejection, objection, or requirement, or to an appeal of a twice-rejected claim; (3) act on an application within four months after the date of a decision by the Board of Patent Appeals and Interferences, or a decision by a Federal court in a case in which allowable claims remain in the application; or (4) issue a patent within four months after the date on which the issue fee was paid and all outstanding requirements were satisfied.

(Sec. 402) Requires a day-for-day extension of a patent term if: (1) a patent is not issued within three years after the filing of the application; or (2) issue is delayed by interferences, secrecy orders, or appeals. Specifies limitations to such an extension, as well as grounds for its reduction.

Requires the Commissioner to prescribe regulations establishing procedures for the application for and determination of patent term extensions and adjustments.

(Sec. 403) Authorizes the Commissioner to: (1) prescribe regulations for the continued examination, at the applicant's request, of a patent application notwithstanding a final rejection; and (2) establish appropriate fees for continued examination proceedings, with a mandatory 50% fee reduction for qualifying small entities.

Title V: Domestic Publication of Patent Applications Published Abroad - Domestic Publication of Foreign Filed Patent Applications Act of 1999 - Requires the Commissioner to publish each patent application 18 months after the earliest filing date for which a benefit is sought, unless the applicant requests earlier publication. Makes final and unreviewable the Director's determination to release or not to release information concerning a published patent application. Prohibits publication of any application: (1) no longer pending; (2) subject to a secrecy order; (3) which is provisional; (4) for a design patent; or (5) for an invention the applicant certifies has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing. Requires any applicant, in the latter instance, who subsequently files, in a foreign country or under a multilateral international agreement, an application directed to the invention disclosed in the application filed in the PTO, to notify the Commissioner.

(Sec. 502) Allows an applicant to submit a redacted copy of the PTO-filed application, eliminating any part or description of the invention that is not also contained in any of the corresponding applications the applicant has filed in one or more foreign countries whose applications require a less extensive description of the invention than the application or description of the invention in the application filed in the PTO. Requires the Commissioner to publish only the redacted copy of the application, unless it is not received within 16 months after the earliest effective filing date.

Requires the Commissioner to establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.

Prohibits publication or disclosure of the application of any invention whose publication or disclosure would be detrimental to the national security.

Directs the GAO to study and report to specified congressional committees on applicants who file only in the United States on or after the effective date of this subtitle.

(Sec. 503) Amends Federal patent law with respect to the option of an applicant seeking patent protection in the United States to claim the filing date of an application for the same invention filed in another Convention country, provided the subsequent application is filed in the United States within 12 months of the earlier filing in the foreign country. Revises requirements for claiming such priority. Authorizes the Commissioner to: (1) consider an applicant's failure to file a timely claim for priority to be a waiver of any such priority claim; and (2) establish procedures (including the payment of a surcharge) to accept an unintentionally delayed priority claim.

(Sec. 504) Amends Federal patent law to state that a patent shall contain a (provisional) right to obtain a reasonable royalty for applicants whose applications are published under this title, or international applications designating the United States filed under the Patent Cooperation Treaty (PCT).

Entitles the applicant to obtain a reasonable royalty from any person who between publication of the application and issuance of the patent: (1) makes, uses, offers for sale, or sells the invention in, or imports it into, the United States; or (2) if the invention claimed is a process, makes, uses, offers for sale, sells, or imports a product made by that process in the United States; and (3) had actual notice of the published application, including a translation into English if it was filed in a non-English language under the PCT designating the United States.

Denies availability of such right unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published application.

Sets a six-year statute of limitations from the date of patent issuance in which an action for reasonable royalties must be brought.

(Sec. 505) Grants a published application prior art effect as of its earliest effective U.S. filing date against any subsequently filed U.S. applications. States that any foreign filing date to which the published application is entitled will not be the effective filing date of the U.S. published application for prior art purposes, unless it is an international application designating the United States published in English under the PCT.

(Sec. 506) Requires the Commissioner to recover the cost of early publication required by this title by charging a separate publication fee after a notice of allowance is given.

Title VI: Optional Inter Partes Reexamination Procedure - Optional Inter Partes Reexamination Procedure Act of 1999 - Amends Federal patent law to allow a third party to request inter partes reexamination by the PTO of a patent on the basis of any prior art, as long as the real party in interest is identified.

(Sec. 604) Requires the Commissioner to: (1) make a determination (which shall be final and non-appealable) of whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications; and (2) order an inter partes reexamination of the patent for resolution of any substantial new question determined.

Prescribes procedures for an inter partes reexamination.

Entitles the third-party requester to: (1) submit one written comment addressing issues raised by the action of the Office or the patent owner's response each time the patent owner files a response to the PTO; and (2) appeal to the PTO Board of Patent Appeals and Interferences (but not the Court of Appeals for the Federal Circuit) from an examiner's determination that the reexamined patent is valid. Entitles the patent owner to appeal to the Court of Appeals for the Federal Circuit any decision adverse to a claim's patentability.

Estops any third-party requesters who participate in an inter partes reexamination proceeding from raising in a subsequent civil action or inter partes reexamination any issue of patent validity that they raised or could have raised during such inter partes reexamination. Permits a subsequent assertion of patent invalidity, however, based on newly discovered prior art unavailable to the third-party requester and the PTO at the time of the inter partes reexamination proceedings.

Requires the Commissioner, upon expiration of the time for appeal or termination of any appeal proceeding with regard to an inter partes reexamination, to cancel any patent claim finally determined unpatentable, confirm any claim determined patentable, or incorporate in the patent any proposed amended or new claim determined patentable.

Prescribes circumstances in which an inter partes reexamination is prohibited.

(Sec. 606) Directs the Commissioner to evaluate for Congress whether the inter partes reexamination proceedings established under this title are inequitable to any of the parties in interest and, if so, recommend suitable changes.

(Sec. 607) Estops an inter partes reexamination requester from challenging at a later time, in any civil action, any fact determined during the process of such reexamination, except with respect to a fact determination later proved to be erroneous based on information unavailable at the time of the inter partes reexamination decision.

Title VII: Miscellaneous Patent Provisions - Amends Federal patent law to permit the conversion, upon applicant request, of a provisional application into a non-provisional application. Repeals the requirement that a provisional application be pending on the filing date of a non-provisional application in order for the provisional application to be relied upon in any proceeding in the PTO.

(Sec. 702) Permits persons who filed an application for patent first in a World Trade Organization (WTO) member country to claim the right of priority in a subsequent patent application filed in the United States, even if such country does not yet afford similar privileges on the basis of applications filed in the United States.

Provides for the right of priority in the United States on the basis of an application for a plant breeder's right first filed in a WTO member country or in a foreign member of the International Convention for the Protection of New Varieties of Plants (UPOV Contracting Party).

(Sec. 703) Makes certain limitations on remedies for patent infringement applicable only to applications filed on or after September 30, 1996.

(Sec. 704) Authorizes the PTO to receive, publish, disseminate, and maintain information in electronic form.

Prohibits the Commissioner from ceasing to maintain paper or microform collections of U.S. patents, foreign patent documents, and U.S. trademark registrations, except pursuant to notice and opportunity for public comment. Requires the Commissioner to report to Congress the details of any proposal to cease maintaining paper or microform collections, certifying that its implementation will not negatively impact the public.

(Sec. 705) Directs the Comptroller General to study and report to Congress on the potential risks to the U.S. biotechnological industry regarding biological deposits in support of biotechnology patents. Requires the PTO to consider the Comptroller General's recommendations when drafting regulations affecting biological deposits.

(Sec. 706) Specifies that an inventor involved in a PTO interference proceeding who establishes a date of invention is subject to certain requirements, including the one that the invention was not abandoned, suppressed, or concealed.

(Sec. 707) Revises the condition of patentability that subject matter developed by another person which qualifies as prior art only in certain circumstances shall not preclude the granting of a patent on an invention with only obvious differences where the subject matter and claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. Adds to such qualifying prior art circumstances that the invention was described in another patent granted on an application filed before the applicant's date of invention. (Thus allows an applicant to receive a patent when an invention with only obvious differences from the applicant's invention was described in a patent granted on an application filed before the applicant's invention, provided the inventions are commonly owned or subject to an obligation of assignment to the same person.)

(Sec. 708) Prohibits the Commissioner from entering into an agreement to provide copies of specifications and drawings of U.S. patents and applications to a foreign country, other than a North American Free Trade Agreement (NAFTA) country or a WTO member country, without the express authorization of the Secretary of Commerce.

(Sec. 709) Directs the Commissioner to maintain a program for identifying national security positions and providing for appropriate security clearances, in order to maintain the secrecy of certain inventions and to prevent disclosure of sensitive and strategic information in the interest of national security.