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United States · Bill · HR

H.R. 400 (105th)

Omnibus Patent Act of 1997

openUnited States· United States Congress· EN

Introduced

9 January 1997

Last action

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Status

Placed on Senate Legislative Calendar under General Orders. Calendar No. 331.

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Subjects

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Source updated

10 August 2026

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Summary

TABLE OF CONTENTS: Title I: Patent and Trademark Office Modernization Subtitle A: United States Patent and Trademark Office Subtitle B: Effective Date; Technical Amendments Subtitle C: Miscellaneous Provisions Title II: Examining Procedure Improvements: Publication with Provisional Royalties; Term Extensions; Further Examination Title III: Protection for Prior Domestic Users of Patented Technologies Title IV: Enhanced Protection of Inventors' Rights Title V: Improved Reexamination Procedures Title VI: Miscellaneous Improvements 21st Century Patent System Improvement Act - Title I: Patent and Trademark Office Modernization - Patent and Trademark Office Modernization Act - Subtitle A: United States Patent and Trademark Office - Reestablishes the Patent and Trademark Office as a wholly owned Government corporation under the policy direction of the Secretary of Commerce, except as otherwise provided in this title. Requires the Office to maintain its principal office in the District of Columbia metropolitan area. Makes the Office responsible, with the concurrence of the Secretary of State, for authorizing the transfer of not to exceed $100,000 in any year to the Department of State to make special payments to international intergovernmental organizations for studies and programs for advancing international cooperation concerning patents, trademarks, and related matters. Authorizes the Office to retain and use all of its revenues and receipts, subject to the Omnibus Budget Reconciliation Act of 1990. (Sec. 113) Requires Office management to be vested in a Director of the United States Patent and Trademark Office. (Currently, such management is vested in a Commissioner of Patents and Trademarks.) Requires the Director to appoint a Commissioner for Patents and a Commissioner for Trademarks. Exempts the Office from any administratively or statutorily imposed limitations on positions or personnel. Subjects Office employees to provisions governing Federal employees and requires the Office to adopt all existing labor agreements. (Sec. 114) Requires the Office to have a Management Advisory Board to review and report annually to the President and specified congressional committees on the Office's policies, goals, performance, budget, and user fees and to advise the Director. (Sec. 115) Repeals provisions subjecting the Director's performance (including regulations governing agents and attorneys representing the Office) to the direction or approval of the Secretary of Commerce. (Sec. 116) Revises the composition of the Trademark Trial and Appeal Board to include the Director, the Commissioner for Patents, the Commissioner for Trademarks, and appointed members. (Sec. 117) Sets forth provisions regarding: (1) revised membership of the Board of Patent Appeals and Interferences; (2) suits by, and against, the Office; (3) annual report disclosure of the purposes for which receipts were spent; (4) the Director's discretion to designate Office attorneys to conduct hearings relating to the suspension or exclusion from practice of certain individuals; (5) Office receipts, expenditures, and borrowing authority; and (6) the transfer to the Office of Department of Commerce functions, powers, duties, funds, and property related to the authority and functions vested in the Office by this title. Subtitle B: Effective Date; Technical Amendments - Makes this title effective four months after its enactment. Subtitle C: Miscellaneous Provisions - Makes existing appropriations and funds for the performance of functions, programs, and activities terminated pursuant to this title available for their duration for necessary expenses in connection with such action. Title II: Examining Procedure Improvements: Publication With Provisional Royalties; Term Extensions; Further Examination - Examining Procedure Improvements Act - Amends Federal patent law to require each application for a patent, other than certain design patents, to be published promptly after the expiration of 18 months from the earliest filing date for which a benefit is sought. Allows an earlier application publication at the request of the applicant. Prohibits information concerning published patent applications from being made available to the public, except as the Director determines, such decision being final and nonreviewable. Provides publication requirement exceptions. Authorizes the Director to establish appropriate procedures to ensure that this title does not create new opportunities for pre-issuance opposition. (Sec. 203) Entitles a patent applicant to claim the benefit of an earlier filing date in a foreign country if a claim (identifying the original foreign application by its application number, country, and date of filing) is filed in the Office at any such time during the pendency of the application as required by the Director. Allows the Director to: (1) consider the failure by the applicant to file a timely claim for priority as a waiver of such claim; (2) require the payment of a surcharge as a condition of accepting an untimely claim during such pendency; and (3) require a certified copy of the original foreign application and related information, as necessary. (Sec. 204) Specifies that a patent shall include the right to obtain a reasonable royalty from any person who, between the date of publication of the application and the date the patent is issued: (1) makes, uses, or sells in or imports into the United States the claimed invention; or (2) if the invention is a process, uses, offers for sale, or sells in or imports into the United States products made by that process; and (3) had actual notice of the published application or a translation of the international application. Bases the right to such royalty on substantially identical inventions only and only when brought within six years after patent issuance. Specifies the commencement date of the period for obtaining a royalty based upon the publication of an international application designating the United States. (Sec. 205) Provides that a person shall not be entitled to a patent if the invention was described in a published application by another filed in the United States, or in a published international application, before the invention thereof by the applicant. (Sec. 206) Requires the Director to recover the cost of an early publication by adjusting the filing, issue, and maintenance fees, by charging a separate publication fee, or by any combination of such fees. (Sec. 208) Provides for the extension of the term of a patent the issue of which is delayed due to an unusual Office administrative delay. Limits to ten years the total duration of extensions which result from administrative or judicial review, Office administrative delay, or both. Reduces the extension period by the time in which the applicant failed to engage in reasonable efforts to conclude prosecution of the application. (Sec. 209) Requires the Director to prescribe regulations for the further limited reexamination of patent applications. (Sec. 210) Extends to the next business day the last day of pendency of a provisional application when such day will normally fall on a Saturday, Sunday, or Federal holiday. (Sec. 211) Requires the Director, beginning in 2001, to report annually to the Congress regarding the impact of patent applications filed by an applicant who has been accorded the status of independent inventor. Title III: Protection for Prior Domestic Users of Patented Technologies - Protection for Prior Domestic Commercial Users of Patented Technologies Act - Amends Federal patent law to create a defense to patent infringement with respect to any subject matter that would otherwise infringe one or more claims in the patent being asserted, if a person had, acting in good faith, commercially used the subject matter before the effective filing date of such patent. Specifies that the sale or other disposition of the subject matter of a patent by a person entitled to assert the defense shall exhaust the patent owner's rights to the extent they would have been exhausted had such disposition been made by the patent owner. Subjects the defense to specified limitations and qualifications, including those regarding: (1) burden of proof; (2) abandonment of use; (3) who may assert the defense (it is a personal defense); (4) unsuccessful assertion of the defense; and (5) invalidity of a patent. Title IV: Enhanced Protection of Inventors' Rights - Enhanced Protection of Inventors' Rights Act - Requires that every contract for invention development services be in writing and that a copy of the signed written contract be given to the customer at the time the customer enters into the contract. Outlines information required to be included in the contract by the invention developer. Allows a customer to terminate such a contract by sending a written letter to the invention developer stating the intent to cancel. Prescribes language and information required to be included in a cover notice on every such contract. Requires the invention developer to deliver to the customer quarterly progress reports. Outlines mandatory terms for invention development services contracts. Makes voidable by the customer any such contract which does not comply with provisions of this title or which is entered into in reliance upon any material false, fraudulent, or misleading information, representation, notice, or advertisement of the invention developer. Provides appropriate remedies through civil actions, including damages, costs, and reasonable attorney's fees. Requires the Director to make publicly available all complaints received by the Office involving invention developers. Provides penalties for fraudulent representations by invention developers. Title V: Improved Reexamination Procedures - Improved Reexamination Procedures Act - Amends Federal patent law concerning patent reexamination request authority to authorize the filing of such requests by any person on the basis of patent specification requirements, except for the best mode requirements. (Current law permits reexamination requests only on the basis of prior art.) Establishes procedures for reexamination proceedings based upon third- party (persons other than the patent owner) requests. Requires documents filed in such proceedings to be served upon all parties. Grants third-party requesters: (1) one opportunity to file written comments; and (2) the right to appeal final reexamination decisions. Requires all appealable claims to be brought up during an original reexamination procedure or be thereafter barred. Requires the Board of Patent Appeals and Interferences to review adverse decisions of examiners in reexamination proceedings and authorizes appeals to the Board by patent owners and third-party requesters with respect to reexamination decisions. Permits appeals of Board decisions to the U.S. Court of Appeals for the Federal Circuit. Title VI: Miscellaneous Improvements - Revises provisions regarding abandonment of original applications to allow, notwithstanding the absence of a claim, a provisional application to be treated as a patent application, under specified conditions. Grants, under specified conditions, benefits of an earlier filing date to an invention patent application filed in this country that has previously and regularly been filed for the same invention in a foreign country which affords similar privileges in the case of applications filed in a World Trade Organization country. (Sec. 603) Allows a patent to be issued for a tuber propagated plant, with the same protections against reproduction, sale, or import into the United States. (Sec. 604) Allows the use of an electronic medium to file papers in the Office. (Sec. 605) Provides that, in the case in which patent issue restriction is required on the ground that two or more independent and distinct inventions are claimed in one application, the applicant shall be entitled to submit an examination fee and request examination for each independent and distinct invention. Allows an examination fee refund to an applicant who requests reconsideration of a restriction requirement when such requirement is determined to be improper.

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