Uruguay Round Agreements Act/Title V

by United States Congress

TITLE V - INTELLECTUAL PROPERTY

SEC. 501. DEFINITION.

For purposes of this title:

(1) the term WTO Agreement has the meaning given that term in section 2(9) of the Uruguay Round Agreements Act; and

(2) the term WTO member country has the meaning given that term in section 2(10) of the Uruguay Round Agreements Act.

Subtitle A - Copyright Provisions

SEC. 511. RENTAL RIGHTS IN COMPUTER PROGRAMS.

Section 804(c) of the Computer Software Rental Amendments Act of 1990 (17 U.S.C. 109 note; 104 Stat. 5136) is amended by striking the first sentence.

SEC. 512. CIVIL PENALTIES FOR UNAUTHORIZED FIXATION OF AND TRAFFICKING IN SOUND RECORDINGS AND MUSIC VIDEOS OF LIVE MUSICAL PERFORMANCES.

(a) IN GENERAL. Title 17, United States Code, is amended by adding at the end the following new chapter:

"CHAPTER 11 - SOUND RECORDINGS AND MUSIC VIDEOS

"Sec. "1101. Unauthorized fixation and trafficking in sound recordings and music videos.

"§1101. Unauthorized fixation and trafficking in sound recordings and music videos

"(a) UNAUTHORIZED ACTS.-Anyone who, without the consent of the performer or performers involved

"(1) fixes the sounds or sounds and images of a live musical performance in a copy or phonorecord, or reproduces copies or phonorecords of such a performance from an unauthorized fixation,

"(2) transmits or otherwise communicates to the public the sounds or sounds and images of a live musical performance, or

"(3) distributes or offers to distribute, sells or offers to sell, rents or offers to rent, or traffics in any copy or phonorecord fixed as described in paragraph (1), regardless of whether the fixations occurred in the United States, shall be subject to the remedies provided in sections 502 through 505, to the same extent as an infringer of copyright.

"(b) DEFINITION.-As used in this section, the term traffic in means transport, transfer, or otherwise dispose of, to another, as consideration for anything of value, or make or obtain control of with intent to transport, transfer, or dispose of.

"(c) APPLICABILITY.This section shall apply to any act or acts that occur on or after the date of the enactment of the Uruguay Round Agreements Act.

"(d) STATE LAW NOT PREEMPTED.-Nothing in this section may be construed to annul or limit any rights or remedies under the common law or statutes of any State.

(b) CONFORMING AMENDMENT.-The table of chapters for title 17, United States Code, is amended by adding at the end the following:

11. Sound Recordings and Music Videos ........................................ 1101.

SEC. 513. CRIMINAL PENALTIES FOR UNAUTHORIZED FIXATION OF AND TRAFFICKING IN SOUND RECORDINGS AND MUSIC VIDEOS OR LIVE MUSICAL PERFORMANCES.

(a) IN GENERAL.-Chapter 113 of title 18, United States Code, is amended by inserting after section 2319 the following:

"§2319A. Unauthorized fixation of and trafficking in sound recordings and music videos of live musical performances

"(a) OFFENSE.-Whoever, without the consent of the performer or performers involved, knowingly and for purposes of commercial advantage or private financial gain

"(1) fixes the sounds or sounds and images of a live musical performance in a copy or phonorecord, or reproduces copies or phonorecords of such a performance from an unauthorized fixation;

"(2) transmits or otherwise communicates to the public the sounds or sounds and images of a live musical performance; or

"(3) distributes or offers to distribute, sells or offers to sell, rents or offers to rent, or traffics in any copy or phonorecord fixed as described in paragraph (1), regardless of whether the fixations occurred in the United States; shall be imprisoned for not more than 5 years or fined in the amount set forth in this title, or both, or if the offense is a second or subsequent offense, shall be imprisoned for not more than 10 years or fined in the amount set forth in this title, or both.

"(b) FORFEITURE AND DESTRUCTION.-When a person is convicted of a violation of subsection (a), the court shall order the forfeiture and destruction of any copies or phonorecords created in violation thereof, as well as any plates, molds, matrices, masters, tapes, and film negatives by means of which such copies or phonorecords may be made. The court may also, in its discretion, order the forfeiture and destruction of any other equipment by means of which such copies or phonorecords may be reproduced, taking into account the nature, scope, and proportionality of the use of the equipment in the offense.

"(c) SEIZURE AND FORFEITURE.-If copies or phonorecords of sounds or sounds and images of a live musical performance are fixed outside of the United States without the consent of the performer or performers involved, such copies or phonorecords are subject to seizure and forfeiture in the United States in the same manner as property imported in violation of the customs laws. The Secretary of the Treasury shall, not later than 60 days after the date of the enactment of the Uruguay Round Agreements Act, issue regulations to carry out this subsection, including regulations by which any performer may, upon payment of a specified fee, be entitled to notification by the United States Customs Service of the importation of copies or phonorecords that appear to consist of unauthorized fixations of the sounds or sounds and images of a live musical performance.

"(d) DEFINITIONS.-As used in this section

"(1) the terms 'copy', 'fixed', 'musical work', 'phonorecord', 'reproduce', 'sound recordings', and 'transmit' mean those terms within the meaning of title 17; and

"(2) the term 'traffic in' means transport, transfer, or otherwise dispose of, to another, as consideration for anything of value, or make or obtain control of with intent to transport, transfer, or dispose of.

"(e) APPLICABILITY.This section shall apply to any Act or Acts that occur on or after the date of the enactment of the Uruguay Round Agreements Act.

(b) CONFORMING AMENDMENT-.The table of sections for chapter 113 of title 18, United States Code, is amended by inserting after the item relating to section 2319 the following:

2319A. Unauthorized fixation of and trafficking in sound recordings and music videos of live musical performances..

SEC. 514. RESTORED WORKS.

(a) IN GENERAL.-Section 104A of title 17, United States Code, is amended to read as follows:

"§104A. Copyright in restored works

"(a) AUTOMATIC PROTECTION AND TERM.-

"(1) TERM.-

"(A) Copyright subsists, in accordance with this section, in restored works, and vests automatically on the date of restoration.

"(B) Any work in which copyright is restored under this section shall subsist for the remainder of the term of copyright that the work would have otherwise been granted in the United States if the work never entered the public domain in the United States.

"(2) EXCEPTION.-Any work in which the copyright was ever owned or administered by the Alien Property Custodian and in which the restored copyright would be owned by a government or instrumentality thereof, is not a restored work.

"(b) OWNERSHIP OF RESTORED COPYRIGHT.-A restored work vests initially in the author or initial rightholder of the work as determined by the law of the source country of the work.

"(c) FILING OF NOTICE OF INTENT TO ENFORCE RESTORED COPYRIGHT AGAINST RELIANCE PARTIES. On or after the date of restoration, any person who owns a copyright in a restored work or an exclusive right therein may file with the Copyright Office a notice of intent to enforce that persons copyright or exclusive right or may serve such a notice directly on a reliance party. Acceptance of a notice by the Copyright Office is effective as to any reliance parties but shall not create a presumption of the validity of any of the facts stated therein. Service on a reliance party is effective as to that reliance party and any other reliance parties with actual knowledge of such service and of the contents of that notice.

"(d) REMEDIES FOR INFRINGEMENT OF RESTORED COPYRIGHTS.

"(1) ENFORCEMENT OF COPYRIGHT IN RESTORED WORKS IN THE ABSENCE OF A RELIANCE PARTY.-As against any party who is not a reliance party, the remedies provided in chapter 5 of this title shall be available on or after the date of restoration of a restored copyright with respect to an act of infringement of the restored copyright that is commenced on or after the date of restoration.

"(2) ENFORCEMENT OF COPYRIGHT IN RESTORED WORKS AS AGAINST RELIANCE PARTIES.-As against a reliance party, except to the extent provided in paragraphs (3) and (4), the remedies provided in chapter 5 of this title shall be available, with respect to an act of infringement of a restored copyright, on or after the date of restoration of the restored copyright if the requirements of either of the following subparagraphs are met:

"(A)(i) The owner of the restored copyright (or such owners agent) or the owner of an exclusive right therein (or such owners agent) files with the Copyright Office, during the 24-month period beginning on the date of restoration, a notice of intent to enforce the restored copyright; and

"(ii)(I) the act of infringement commenced after the end of the 12-month period beginning on the date of publication of the notice in the Federal Register;

"(II) the act of infringement commenced before the end of the 12-month period described in subclause (I) and continued after the end of that 12-month period, in which case remedies shall be available only for infringement occurring after the end of that 12-month period; or

"(III) copies or phonorecords of a work in which copyright has been restored under this section are made after publication of the notice of intent in the Federal Register.

"(B)(i) The owner of the restored copyright (or such owners agent) or the owner of an exclusive right therein (or such owners agent) serves upon a reliance party a notice of intent to enforce a restored copyright; and (ii)(I) the act of infringement commenced after the end of the 12-month period beginning on the date the notice of intent is received;

"(II) the act of infringement commenced before the end of the 12-month period described in subclause (I) and continued after the end of that 12-month period, in which case remedies shall be available only for the infringement occurring after the end of that 12-month period; or

"(III) copies or phonorecords of a work in which copyright has been restored under this section are made after receipt of the notice of intent.

In the event that notice is provided under both subparagraphs (A) and (B), the 12-month period referred to in such subpargraphs shall run from the earlier of publication or service of notice.

"(3) EXISTING DERIVATIVE WORKS.(A) In the case of a derivative work that is based upon a restored work and is created

"(i) before the date of the enactment of the Uruguay Round Agreements Act, if the source country of the derivative work is an eligible country on such date, or

"(ii) before the date of adherence or proclamation, if the source country of the derivative work is not an eligible country on such date of enactment,

"a reliance party may continue to exploit that work for the duration of the restored copyright if the reliance party pays to the owner of the restored copyright reasonable compensation for conduct which would be subject to a remedy for infringement but for the provisions of this paragraph.

"(B) In the absence of an agreement between the parties, the amount of such compensation shall be determined by an action in United States district court, and shall reflect any harm to the actual or potential market for or value of the restored work from the reliance partys continued exploitation of the work, as well as compensation for the relative contributions of expression of the author of the restored work and the reliance party to the derivative work.

"(4) COMMENCEMENT OF INFRINGEMENT FOR RELIANCE PARTIES.For purposes of section 412, in the case of reliance parties, infringement shall be deemed to have commenced before registration when acts which would have constituted infringement had the restored work been subject to copyright were commenced before the date of restoration.

"(e) NOTICES OF INTENT TO ENFORCE A RESTORED COPYRIGHT.

"(1) NOTICES OF INTENT FILED WITH THE COPYRIGHT OFFICE.-(A)(i) A notice of intent filed with the Copyright Office to enforce a restored copyright shall be signed by the owner of the restored copyright or the owner of an exclusive right therein, who files the notice under subsection (d)(2)(A)(i) (hereafter in this paragraph referred to as the owner), or by the owners agent, shall identify the title of the restored work, and shall include an English translation of the title and any other alternative titles known to the owner by which the restored work may be identified, and an address and telephone number at which the owner may be contacted. If the notice is signed by an agent, the agency relationship must have been constituted in a writing signed by the owner before the filing of the notice. The Copyright Office may specifically require in regulations other information to be included in the notice, but failure to provide such other information shall not invalidate the notice or be a basis for refusal to list the restored work in the Federal Register.

"(ii) If a work in which copyright is restored has no formal title, it shall be described in the notice of intent in detail sufficient to identify it.

"(iii) Minor errors or omissions may be corrected by further notice at any time after the notice of intent is filed. Notices of corrections for such minor errors or omissions shall be accepted after the period established in subsection (d)(2)(A)(i).

Notices shall be published in the Federal Register pursuant to subparagraph (B).

"(B)(i) The Register of Copyrights shall publish in the Federal Register, commencing not later than 4 months after the date of restoration for a particular nation and every 4 months thereafter for a period of 2 years, lists identifying restored works and the ownership thereof if a notice of intent to enforce a restored copyright has been filed.

"(ii) Not less than 1 list containing all notices of intent to enforce shall be maintained in the Public Information Office of the Copyright Office and shall be available for public inspection and copying during regular business hours pursuant to sections 705 and 708. Such list shall also be published in the Federal Register on an annual basis for the first 2 years after the applicable date of restoration.

"(C) The Register of Copyrights is authorized to fix reasonable fees based on the costs of receipt, processing, recording, and publication of notices of intent to enforce a restored copyright and corrections thereto.

"(D)(i) Not later than 90 days before the date the Agreement on Trade-Related Aspects of Intellectual Property referred to in section 101(d)(15) of the Uruguay Round Agreements Act enters into force with respect to the United States, the Copyright Office shall issue and publish in the Federal Register regulations governing the filing under this subsection of notices of intent to enforce a restored copyright.

"(ii) Such regulations shall permit owners of restored copyrights to file simultaneously for registration of the restored copyright.

"(2) NOTICES OF INTENT SERVED ON A RELIANCE PARTY

"(A) Notices of intent to enforce a restored copyright may be served on a reliance party at any time after the date of restoration of the restored copyright.

"(B) Notices of intent to enforce a restored copyright served on a reliance party shall be signed by the owner or the owners agent, shall identify the restored work and the work in which the restored work is used, if any, in detail sufficient to identify them, and shall include an English translation of the title, any other alternative titles known to the owner by which the work may be identified, the use or uses to which the owner objects, and an address and telephone number at which the reliance party may contact the owner. If the notice is signed by an agent, the agency relationship must have been constituted in writing and signed by the owner before service of the notice.

"(3) EFFECT OF MATERIAL FALSE STATEMENTS.Any material false statement knowingly made with respect to any restored copyright identified in any notice of intent shall make void all claims and assertions made with respect to such restored copyright.

"(f) IMMUNITY FROM WARRANTY AND RELATED LIABILITY.

"(1) IN GENERAL.Any person who warrants, promises, or guarantees that a work does not violate an exclusive right granted in section 106 shall not be liable for legal, equitable, arbitral, or administrative relief if the warranty, promise, or guarantee is breached by virtue of the restoration of copyright under this section, if such warranty, promise, or guarantee is made before January 1, 1995.

"(2) PERFORMANCES.No person shall be required to perform any act if such performance is made infringing by virtue of the restoration of copyright under the provisions of this section, if the obligation to perform was undertaken before January 1, 1995.

"(g) PROCLAMATION OF COPYRIGHT RESTORATION. Whenever the President finds that a particular foreign nation extends, to works by authors who are nationals or domiciliaries of the United States, restored copyright protection on substantially the same basis as provided under this section, the President may by proclamation extend restored protection provided under this section to any work

"(1) of which one or more of the authors is, on the date of first publication, a national, domiciliary, or sovereign authority of that nation; or

"(2) which was first published in that nation. The President may revise, suspend, or revoke any such proclamation or impose any conditions or limitations on protection under such a proclamation.

"(h) DEFINITIONS.-For purposes of this section and section 109(a):

"(1) The term date of adherence or proclamation means the earlier of the date on which a foreign nation which, as of the date the WTO Agreement enters into force with respect to the United States, is not a nation adhering to the Berne Convention or a WTO member country, becomes

"(A) a nation adhering to the Berne Convention or a WTO member country; or

"(B) subject to a Presidential proclamation under subsection (g).

"(2) The date of restoration of a restored copyright is the later of

"(A) the date on which the Agreement on Trade-Related Aspects of Intellectual Property referred to in section 101(d)(15) of the Uruguay Round Agreements Act enters into force with respect to the United States, if the source country of the restored work is a nation adhering to the Berne Convention or a WTO member country on such date; or

"(B) the date of adherence or proclamation, in the case of any other source country of the restored work.

"(3) The term eligible country means a nation, other than the United States, that is a WTO member country, adheres to the Berne Convention, or is subject to a proclamation under section 104A(g).

"(4) The term reliance party means any person who

"(A) with respect to a particular work, engages in acts, before the source country of that work becomes an eligible country, which would have violated section 106 if the restored work had been subject to copyright protection, and who, after the source country becomes an eligible country, continues to engage in such acts;

"(B) before the source country of a particular work becomes an eligible country, makes or acquires 1 or more copies or phonorecords of that work; or

"(C) as the result of the sale or other disposition of a derivative work covered under subsection (d)(3), or significant assets of a person described in subparagraph (A) or (B), is a successor, assignee, or licensee of that person.

"(5) The term restored copyright means copyright in a restored work under this section.

"(6) The term restored work means an original work of authorship that

"(A) is protected under subsection (a);

"(B) is not in the public domain in its source country through expiration of term of protection;

"(C) is in the public domain in the United States due to

"(i) noncompliance with formalities imposed at any time by United States copyright law, including failure of renewal, lack of proper notice, or failure to comply with any manufacturing requirements;

"(ii) lack of subject matter protection in the case of sound recordings fixed before February 15, 1972; or

"(iii) lack of national eligibility; and

(D) has at least one author or rightholder who was, at the time the work was created, a national or domiciliary of an eligible country, and if published, was first published in an eligible country and not published in the United States during the 30-day period following publication in such eligible country.

"(7) The term rightholder means the person

"(A) who, with respect to a sound recording, first fixes a sound recording with authorization, or

"(B) who has acquired rights from the person described in subparagraph (A) by means of any conveyance or by operation of law.

"(8) The source country of a restored work is

"(A) a nation other than the United States;

"(B) in the case of an unpublished work

"(i) the eligible country in which the author or rightholder is a national or domiciliary, or, if a restored work has more than 1 author or rightholder, the majority of foreign authors or rightholders are nationals or domiciliaries of eligible countries; or

"(ii) if the majority of authors or rightholders are not foreign, the nation other than the United States which has the most significant contacts with the work; and

"(C) in the case of a published work

"(i) the eligible country in which the work is first published, or

"(ii) if the restored work is published on the same day in 2 or more eligible countries, the eligible country which has the most significant contacts with the work.

"(9) The terms WTO Agreement and WTO member country have the meanings given those terms in paragraphs (9) and (10), respectively, of section 2 of the Uruguay Round Agreements Act.

(b) LIMITATION.Section 109(a) of title 17, United States Code, is amended by adding at the end the following: "Notwithstanding the preceding sentence, copies or phonorecords of works subject to restored copyright under section 104A that are manufactured before the date of restoration of copyright or, with respect to reliance parties, before publication or service of notice under section 104A(e), may be sold or otherwise disposed of without the authorization of the owner of the restored copyright for purposes of direct or indirect commercial advantage only during the 12-month period beginning on-

"(1) the date of the publication in the Federal Register of the notice of intent filed with the Copyright Office under section 104A(d)(2)(A), or

"(2) the date of the receipt of actual notice served under section 104A(d)(2)(B), whichever occurs first.

(c) CONFORMING AMENDMENT.The item relating to section 104A in the table of sections for chapter 1 of title 17, United States Code, is amended to read as follows:

104A. Copyright in restored works.

Subtitle B - Trademark Provisions

SEC. 521. DEFINITION OF ABANDONED.

Section 45 of the Act entitled An Act to provide for the registration and protection of trade-marks used in commerce, to carry out the provisions of certain international conventions, and for other purposes, approved July 5, 1946 (15 U.S.C. 1127) (hereafter in this title referred to as the Trademark Act of 1946), is amended by amending the paragraph defining abandoned to read as follows:

"A mark shall be deemed to be abandoned if either of the following occurs:

"(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. Use of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

"(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

SEC. 522. NONREGISTRABILITY OF MISLEADING GEOGRAPHIC INDICATIONS FOR WINES AND SPIRITS.

Subsection (a) of section 2 of the Trademark Act of 1946 (15 U.S.C. 1052(a)) is amended to read as follows:

"(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 2(9) of the Uruguay Round Agreements Act) enters into force with respect to the United States.

SEC. 523. EFFECTIVE DATE.

The amendments made by this subtitle take effect one year after the date on which the WTO Agreement enters into force with respect to the United States.

Subtitle C - Patent Provisions

SEC. 531. TREATMENT OF INVENTIVE ACTIVITY.

(a) IN GENERAL.Section 104 of title 35, United States Code, is amended to read as follows:

"§104. Invention made abroad

"(a) IN GENERAL.

"(1) PROCEEDINGS.In proceedings in the Patent and Trademark Office, in the courts, and before any other competent authority, an applicant for a patent, or a patentee, may not establish a date of invention by reference to knowledge or use thereof, or other activity with respect thereto, in a foreign country other than a NAFTA country or a WTO member country, except as provided in sections 119 and 365 of this title.

"(2) RIGHTS.If an invention was made by a person, civil or military

"(A) while domiciled in the United States, and serving in any other country in connection with operations by or on behalf of the United States,

"(B) while domiciled in a NAFTA country and serving in another country in connection with operations by or on behalf of that NAFTA country, or

"(C) while domiciled in a WTO member country and serving in another country in connection with operations by or on behalf of that WTO member country, that person shall be entitled to the same rights of priority in the United States with respect to such invention as if such invention had been made in the United States, that NAFTA country, or that WTO member country, as the case may be.

"(3) USE OF INFORMATION.To the extent that any information in a NAFTA country or a WTO member country concerning knowledge, use, or other activity relevant to proving or disproving a date of invention has not been made available for use in a proceeding in the Patent and Trademark Office, a court, or any other competent authority to the same extent as such information could be made available in the United States, the Commissioner, court, or such other authority shall draw appropriate inferences, or take other action permitted by statute, rule, or regulation, in favor of the party that requested the information in the proceeding.

"(b) DEFINITIONS.As used in this section

"(1) the term NAFTA country has the meaning given that term in section 2(4) of the North American Free Trade Agreement Implementation Act; and

"(2) the term WTO member country has the meaning given that term in section 2(10) of the Uruguay Round Agreements Act.

(b) EFFECTIVE DATE.

(1) IN GENERAL.Except as provided in paragraph (2), the amendment made by this section shall apply to all patent applications that are filed on or after the date that is 12 months after the date of entry into force of the WTO Agreement with respect to the United States.

(2) ESTABLISHMENT OF DATE.An applicant for a patent, or a patentee, may not establish a date of invention for purposes of title 35, United States Code, that is earlier than 12 months after the date of entry into force of the WTO Agreement with respect to the United States by reference to knowledge or use, or other activity, in a WTO member country, except as provided in sections 119 and 365 of such title.

SEC. 532. PATENT TERM AND INTERNAL PRIORITY.

(a) PATENT RIGHTS.

(1) CONTENTS AND TERM OF PATENT.Section 154 of title 35, United States Code, is amended to read as follows:

"§154. Contents and term of patent

"(a) IN GENERAL.

"(1) CONTENTS.Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof.

"(2) TERM.Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, or 365(c) of this title, from the date on which the earliest such application was filed.

"(3) PRIORITY.Priority under section 119, 365(a), or 365(b) of this title shall not be taken into account in determining the term of a patent.

"(4) SPECIFICATION AND DRAWING.A copy of the specification and drawing shall be annexed to the patent and be a part of such patent.

"(b) TERM EXTENSION.

"(1) INTERFERENCE DELAY OR SECRECY ORDERS.If the issue of an original patent is delayed due to a proceeding under section 135(a) of this title, or because the application for patent is placed under an order pursuant to section 181 of this title, the term of the patent shall be extended for the period of delay, but in no case more than 5 years.

"(2) EXTENSION FOR APPELLATE REVIEW.If the issue of a patent is delayed due to appellate review by the Board of Patent Appeals and Interferences or by a Federal court and the patent is issued pursuant to a decision in the review reversing an adverse determination of patentability, the term of the patent shall be extended for a period of time but in no case more than 5 years. A patent shall not be eligible for extension under this paragraph if it is subject to a terminal disclaimer due to the issue of another patent claiming subject matter that is not patentably distinct from that under appellate review.

"(3) LIMITATIONS.The period of extension referred to in paragraph (2)

"(A) shall include any period beginning on the date on which an appeal is filed under section 134 or 141 of this title, or on which an action is commenced under section 145 of this title, and ending on the date of a final decision in favor of the applicant;

"(B) shall be reduced by any time attributable to appellate review before the expiration of 3 years from the filing date of the application for patent; and

"(C) shall be reduced for the period of time during which the applicant for patent did not act with due diligence, as determined by the Commissioner.

"(4) LENGTH OF EXTENSION.The total duration of all extensions of a patent under this subsection shall not exceed 5 years.

"(c) CONTINUATION.

"(1) DETERMINATION.The term of a patent that is in force on or that results from an application filed before the date that is 6 months after the date of the enactment of the Uruguay Round Agreements Act shall be the greater of the 20-year term as provided in subsection (a), or 17 years from grant, subject to any terminal disclaimers.

"(2) REMEDIES.The remedies of sections 283, 284, and 285 of this title shall not apply to Acts which

"(A) were commenced or for which substantial investment was made before the date that is 6 months after the date of the enactment of the Uruguay Round Agreements Act; and

"(B) became infringing by reason of paragraph (1).

"(3) REMUNERATION.The acts referred to in paragraph (2) may be continued only upon the payment of an equitable remuneration to the patentee that is determined in an action brought under chapter 28 and chapter 29 (other than those provisions excluded by paragraph (2)) of this title.

(2) PROVISION OF FURTHER LIMITED REEXAMINATION AND CONDITIONS OF RESTRICTION REQUIREMENTS.

(A) The Commissioner of Patents and Trademarks shall prescribe regulations to provide for further limited reexamination of applications that have been pending for 2 years or longer as of the effective date of section 154(a)(2) of title 35, United States Code, as added by paragraph (1) of this subsection, taking into account any reference made in such application to any earlier filed application under section 120, 121, or 365(c) of such title. The Commissioner may establish appropriate fees for such further limited reexamination.

(B) The Commissioner of Patents and Trademarks shall prescribe regulations to provide for the examination of more than 1 independent and distinct invention in an application that has been pending for 3 years or longer as of the effective date of section 154(a)(2) of title 35, United States Code, as added by paragraph (1) of this subsection, taking into account any reference made in such application to any earlier filed application under section 120, 121, or 365(c) of such title. The Commissioner may establish appropriate fees for such examination.

(b) ESTABLISHMENT OF A DOMESTIC PRIORITY SYSTEM.

(1) IN GENERAL.Section 119 of title 35, United States Code, is amended (A) by amending the section caption to read as follows:

"§119. Benefit of earlier filing date; right of priority;"

(B) by designating the undesignated paragraphs as subsections (a), (b), (c), and (d), respectively; and (C) by adding at the end the following:

"(e)(1) An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title, if the application for patent filed under section 111(a) or section 363 of this title is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application.

"(2) A provisional application filed under section 111(b) of this title may not be relied upon in any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) of section 41(a)(1) of this title has been paid and the provisional application was pending on the filing date of the application for patent under section 111(a) or section 363 of this title.

(2) FEES. Section 41(a)(1) of title 35, United States Code, is amended by adding at the end the following:

"(C) On filing each provisional application for an original patent, $150.

(3) APPLICATIONS.Section 111 of title 35, United States Code, is amended to read as follows:

"§111. Application

"(a) IN GENERAL.

"(1) WRITTENAPPLICATION.An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Commissioner.

"(2) CONTENTS.Such application shall include

"(A) a specification as prescribed by section 112 of this title;

"(B) a drawing as prescribed by section 113 of this title; and

"(C) an oath by the applicant as prescribed by section 115 of this title.

"(3) FEE AND OATH.The application must be accompanied by the fee required by law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Commissioner.

"(4) FAILURE TO SUBMIT.Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Commissioner that the delay in submitting the fee and oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

"(b) PROVISIONAL APPLICATION.

"(1) AUTHORIZATION.A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Commissioner. Such application shall include

"(A) a specification as prescribed by the first paragraph of section 112 of this title; and

"(B) a drawing as prescribed by section 113 of this title.

"(2) CLAIM.A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application.

"(3) FEE.(A) The application must be accompanied by the fee required by law.

"(B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Commissioner.

"(C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Commissioner that the delay in submitting the fee was unavoidable or unintentional.

"(4) FILING DATE.The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

"(5) ABANDONMENT.The provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival thereafter.

"(6) OTHER BASIS FOR PROVISIONAL APPLICATION.Subject to all the conditions in this subsection and section 119(e) of this title, and as prescribed by the Commissioner, an application for patent filed under subsection (a) may be treated as a provisional application for patent.

"(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) of this title or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c) of this title.

"(8) APPLICABLE PROVISIONS.The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title.

(c) CONFORMING CHANGES.

(1) Section 156(a)(2) of title 35, United States Code, is amended by inserting "under subsection (e)(1) of this section" after "extended".

(2) Section 172 of title 35, United States Code, is amended

(A) by striking "section 119" and inserting "subsections (a) through (d) of section 119"; and

(B) by inserting at the end the following new sentence:

"The right of priority provided for by section 119(e) of this title shall not apply to designs."

(3) Section 173 of title 35, United States Code, is amended by inserting "from the date of grant" after "years".

(4) Section 365 of title 35, United States Code, is amended

(A) in subsection (a), by striking "section 119" and inserting "subsections (a) through (d) of section 119"; and

(B) in subsection (b), by striking "the first paragraph of section 119" and inserting "section 119(a)".

(5) Section 373 of title 35, United States Code, is amended by striking "section 119" and inserting "subsections (a) through (d) of section 119".

(6) The table of sections for chapter 11 of title 35, United States Code, is amended

(A) by striking the item relating to "section 111" and inserting the following:

"111. Application.";

and

(B) by striking the item relating to section 119 and inserting the following:

"119. Benefit of earlier filing date; right of priority."

SEC. 533. PATENT RIGHTS.

(a) DEFINITION OF INFRINGEMENT.Section 271 of title 35, United States Code, is amended

(1) in subsection (a)

(A) by inserting ", offers to sell," after "uses"; and

(B) by inserting "or imports into the United States any patented invention" after "the United States";

(2) in subsection (c), by striking "sells" and inserting "offers to sell or sells within the United States or imports into the United States";

(3) in subsection (e)

(A) in paragraph (1), by striking "or sell" and inserting "offer to sell, or sell within the United States or import into the United States";

(B) in paragraph (3), by striking or "selling" and inserting "offering to sell, or selling within the United States or importing into the United States";

(C) in paragraph (4)(B), by striking "or sale" and inserting "offer to sell, or sale within the United States or importation into the United States"; and

(D) in paragraph (4)(C), by striking "or sale" and inserting "offer to sell, or sale within the United States or importation into the United States;

(4) in subsection (g)

(A) by striking "sells" and inserting "offers to sell, sells,";

(B) by striking "importation, sale," and inserting "importation, offer to sell, sale,"; and

(C) by striking "other use or" and inserting "other use, offer to sell, or"; and

(5) by adding at the end the following:

"(i) As used in this section, an offer for sale or an offer to sell by a person other than the patentee, or any designee of the patentee, is that in which the sale will occur before the expiration of the term of the patent."

(b) CONFORMING AMENDMENTS.

(1) Paragraph (2) of section 41(c) of title 35, United States Code, is amended to read as follows:

"(2) A patent, the term of which has been maintained as a result of the acceptance of a payment of a maintenance fee under this subsection, shall not abridge or affect the right of any person or that persons successors in business who made, purchased, offered to sell, or used anything protected by the patent within the United States, or imported anything protected by the patent into the United States after the 6-month grace period but prior to the acceptance of a maintenance fee under this subsection, to continue the use of, to offer for sale, or to sell to others to be used, offered for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported. The court before which such matter is in question may provide for the continued manufacture, use, offer for sale, or sale of the thing made, purchased, offered for sale, or used within the United States, or imported into the United States, as specified, or for the manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made after the 6-month grace period but before the acceptance of a maintenance fee under this subsection, and the court may also provide for the continued practice of any process that is practiced, or for the practice of which substantial preparation was made, after the 6-month grace period but before the acceptance of a maintenance fee under this subsection, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced after the 6-month grace period but before the acceptance of a maintenance fee under this subsection.

(2) The second undesignated paragraph of section 252 of title 35, United States Code, is amended to read as follows:

"A reissued patent shall not abridge or affect the right of any person or that persons successors in business who, prior to the grant of a reissue, made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by the reissued patent, to continue the use of, to offer to sell, or to sell to others to be used, offered for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported unless the making, using, offering for sale, or selling of such thing infringes a valid claim of the reissued patent which was in the original patent. The court before which such matter is in question may provide for the continued manufacture, use, offer for sale, or sale of the thing made, purchased, offered for sale, used, or imported as specified, or for the manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made before the grant of the reissue, and the court may also provide for the continued practice of any process patented by the reissue that is practiced, or for the practice of which substantial preparation was made, before the grant of the reissue, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.

(3) Section 262 of title 35, United States Code, is amended

(A) by striking "use or sell" and inserting "use, offer to sell, or sell"; and

(B) by inserting "within the United States, or import the patented invention into the United States," after "invention".

(4) Section 272 of title 35, United States Code, is amended by striking "not sold" and inserting "not offered for sale or sold".

(5) Section 287 of title 35, United States Code, is amended

(A) in subsection (a)

(i) by striking "making or selling" and inserting "making, offering for sale, or selling within the United States"; and

(ii) by inserting "or importing any patented article into the United States," after "under them,"; and

(B) in subsection (b)

(i) in paragraph (1)(C), by striking "use, or sale" and inserting "use, offer for sale, or sale";

(ii) in paragraph (4)(A), by striking "sold or" and inserting "sold, offered for sale, or" in the matter preceding clause (i);

(iii) in paragraph (4)(A)(ii), by striking "use, or sale" and inserting "use, offer for sale, or sale";

(iv) in paragraph (4)(C), by striking "have been sold" and inserting "have been offered for sale or sold"; and

(v) in paragraph (4)(C), by striking "United States before" and inserting "United States, or imported by the person into the United States, before".

(6) Section 292(a) of title 35, United States Code, is amended

(A) by striking "used, or sold by him" and inserting "used, offered for sale, or sold by such person within the United States, or imported by the person into the United States"; and

(B) by striking "made or sold" and inserting made, "offered for sale, sold, or imported into the United States".

(7) Section 295 of title 35, United States Code, is amended by striking "sale, or use" and inserting "sale, offer for sale, or use".

(8) Section 307(b) of title 35, United States Code, is amended by striking "used anything" and inserting "used within the United States, or imported into the United States, anything".

SEC. 534. EFFECTIVE DATES AND APPLICATION.

(a) IN GENERAL.Subject to subsection (b), the amendments made by this subtitle take effect on the date that is one year after the date on which the WTO Agreement enters into force with respect to the United States.

(b) PATENT APPLICATIONS.

(1) IN GENERAL.Subject to paragraph (2), the amendments made by section 532 take effect on the date that is 6 months after the date of the enactment of this Act and shall apply to all patent applications filed in the United States on or after the effective date.

(2) SECTION 154(a)(1). Section 154(a)(1) of title 35, United States Code, as amended by section 532(a)(1) of this Act, shall take effect on the effective date described in subsection (a).

(3) EARLIEST FILING.The term of a patent granted on an application that is filed on or after the effective date described in subsection (a) and that contains a specific reference to an earlier application filed under the provisions of section 120, 121, or 365(c) of title 35, United States Code, shall be measured from the filing date of the earliest filed application.