PATENT TERM AND INTERNAL PRIORITY.

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, 108 STAT. 4984if 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 108 STAT. 4985Round 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 tiled 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. 108 STAT. 4986 “(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) Written application.—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 108 STAT. 4987under 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 tiling 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)(i) 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 108 STAT. 4988 (B) by striking the item relating to section 119 and inserting the following: “119. Benefit of earlier filing date; right of priority.”;