Text: S.320 — 107th Congress (2001-2002)All Bill Information (Except Text)

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Engrossed Amendment Senate (11/16/2001)


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[Congressional Bills 107th Congress]
[From the U.S. Government Printing 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