Omnibus Patent Act of 1997

TABLE OF CONTENTS:

Title I: United States Patent and Trademark Organization

Subtitle A: Establishment of the United States Patent

and Trademark Organization

Subtitle B: Effective Date; Technical Amendments

Subtitle C: Miscellaneous Provisions

Title II: Early Publication of Patent Applications

Title III: Patent Term Restoration

Title IV: Prior Domestic Commercial Use

Title V: Patent Reexamination Reform

Title VI: Miscellaneous Patent Provisions

Omnibus Patent Act of 1997 - Title I: United States Patent and Trademark Organization - United States Patent and Trademark Organization Act of 1997 - Subtitle A: Establishment of the United States Patent and Trademark Organization - Establishes the United States Patent and Trademark Organization as a wholly owned Government corporation under the policy direction of the Secretary of Commerce (Secretary). Requires the Organization to maintain an office in the District of Columbia metropolitan area. Makes the Organization responsible for authorizing the transfer of up to $100,000 in any year to the Department of State for special payments to international intergovernmental organizations for studies and programs to advance international cooperation concerning patents, trademarks, and related matters. Authorizes the Organization to retain and use all of its revenues and receipts.

(Sec. 113) Vests management of the Organization in a Director of the United States Patent and Trademark Organization (Director) who shall be appointed by the President.

Requires the Director to take specified actions, including: (1) advising the President of all activities of the office undertaken in response to U.S. obligations under treaties and executive agreements or which relate to cooperative programs with foreign governmental authorities responsible for granting patents or registering trademarks; (2) representing the United States, at the President's direction, in international negotiations on matters of patents or trademarks; (3) maintaining a program for identifying national security positions and providing for appropriate security clearances; (4) ensuring that the United States Patent and Trademark offices each prepare appropriation requests, adjust fees to provide sufficient revenues to cover expenses, and expend funds derived from such fees only for the functions of such offices; (5) reporting annually to the Congress on office budgetary and expenditure activities and related matters; and (6) appointing Commissioners of Patents and Trademarks, respectively.

Exempts the Organization from any administratively or statutorily imposed limitation on positions or personnel and from provisions governing Federal employees, with exceptions, including those relating to retirement, health benefits, life insurance, and labor-management relations.

(Sec. 114) Revises Federal provisions to establish as separate administrative units of the Organization the United States Patent and Trademark Offices. Provides for the establishment of Patent and Trademark Office Management Advisory Boards to review the policies, goals, performance, budget, and user fees of their respective Offices and a Board of Patent Appeals and Interferences within the Patent Office. Sets forth provisions regarding annual reporting requirements to the Congress by, and funding of, such Offices.

(Sec. 116) Sets forth provisions regarding: (1) suits by and against the Organization; (2) funding of Organization activities; and (3) transfer of functions, funds, and property.

(Sec. 119) Prohibits the unofficial use of the names of the Organization or the Patent or Trademark Offices.

Subtitle B: Effective Date; Technical Amendments - Makes this title effective four months after its enactment. Sets forth technical and conforming amendments to patent and trademark law and the Inspector General Act of 1978.

Subtitle C: Miscellaneous Provisions - Makes existing appropriations and funds for the performance of functions, programs, and activities terminated pursuant to this title available for termination expenses.

Title II: Early Publication of Patent Applications - Patent Application Publication Act of 1997 - Requires each patent application, except applications for design patents and provisional applications, to be published as soon as possible after 18 months from the earliest filing date for which a benefit is sought, except for an application that is no longer pending, one subject to a secrecy order, or one certifying that the invention disclosed has and will not be the subject of an application filed in a foreign country. Directs the General Accounting Office (GAO) to conduct a three-year study of applicants who file only in the United States. Permits earlier publication at the applicant's request. Prohibits disclosure of information concerning published applications except as determined by the Commissioner of Patents.

Directs the Commissioner to establish appropriate procedures to ensure that this title does not create new opportunities for pre-issuance opposition that did not exist before its adoption.

(Sec. 203) Entitles a patent application to claim the benefit of an earlier filing date in a foreign country if a claim, identifying the original foreign application by specifying its application number, country, and the day, month, and year of its filing, is filed in the Patent Office at any such time during the pendency of the application as required by the Commissioner.

Allows the Commissioner to: (1) consider the failure of the applicant to file a timely claim for priority as a waiver of any 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, specifications, and drawings upon which it is based, a translation if not in the English language, and such other information as necessary.

Authorizes the Commissioner to determine the time period within which an amendment containing the specific reference to an earlier filed application shall be submitted.

(Sec. 204) Provides that a patent shall include the right to obtain a reasonable royalty from any person who, between the date the patent application is published and the date the patent is issued: (1) makes, uses, or sells in or imports into the United States the claimed invention or a product made by the invention if it is a process; and (2) had actual notice of the published patent application. Specifies that an action to obtain such a royalty must be brought within six years after the patent is issued. Provides for issuance to an applicant of a patent incorporating multiple claims of a published application.

(Sec. 205) Revises Federal patent law to provide that a person shall not be entitled to a patent if the invention was described in a published patent application filed earlier by another person in the United States, with exceptions.

(Sec. 208) Provides that, if the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or legal holiday, the period of pendency shall be extended to the next succeeding business day.

Title III: Patent Term Restoration - Modifies Federal patent law to restore to the patent holder any part of the term that is lost because of undue administrative delay caused by specified factors, such as an unusual administrative delay by the Patent Office in issuing the patent, subject to specified limitations.

Defines "unusual administrative delay" as the failure to take specified actions, such as the failure to issue a patent within four months after the date on which the issue fee was paid and all outstanding requirements were satisfied.

Requires the Commissioner to determine the period of any patent term adjustment available to an applicant and include a copy of such determination with the final application notice. Provides for judicial review with respect to patent term extensions.

(Sec. 302) Directs the Commissioner to prescribe regulations for the further limited reexamination of applicants for patent at the request of the applicant. Authorizes the Commissioner to establish appropriate fees for such reexamination, allowing for a 50 percent fee reduction for certain qualifying small entities.

Title IV: Prior Domestic Commercial Use - Prior Domestic Commercial Use Act of 1997 - 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 regarding: (1) the scope of the defense; (2) effective and serious preparation; (3) burden of proof; (4) abandonment of use; (5) who may assert the defense; (6) a one-year limitation; (7) unsuccessful assertion of the defense; and (8) invalidity of a patent.

Title V: Patent Reexamination Reform - Patent Reexamination Reform Act of 1997 - Establishes procedures for reexamination proceedings based upon third-party (persons who are not the patent owner) requests. Requires documents filed in such proceedings, other than the request, to be served on all parties. Grants third-party requesters: (1) one opportunity to file written comments not less than one month after the date of service of the patent owner's response to any Patent Office action on the merits of reexamination; and (2) the right to appeal final reexamination decisions on the same basis such right is available to patent owners.

Estops a third-party requester who files a notice of appeal or who participates as a party to an appeal from asserting at a later time the invalidity of any claim determined to be patentable on appeal on any ground which was or could have been raised during reexamination.

Prohibits: (1) patent owners and third-party requesters, once an order for reexamination has been issued, from filing a subsequent reexamination request until a reexamination certificate is published; and (2) a party, once a final decision has been entered in a civil action that the party has not sustained the burden of proving the invalidity of a patent claim, from requesting reexamination on issues that were or could have been raised in the civil action.

Authorizes appeals to the Board of Patent Appeals and Interferences 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.

(Sec. 505) Requires the Director to submit to the Congress a report evaluating whether the reexamination proceedings established under amendments made by this title are inequitable to any of the parties in interest and, if so, to recommend necessary changes.

Title VI: Miscellaneous Patent Provisions - Revises provisions regarding abandonment of provisional applications to allow, notwithstanding the absence of a claim, a provisional application to be treated as a patent application under specified conditions.

(Sec. 602) Grants: (1) 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 foreign World Trade Organization member country under specified conditions; and (2) applications for plant breeder's rights filed in such country or in a foreign UPOV Contracting Party (member of the International Convention for the Protection of New Varieties of Plants) the right of priority as a patent application, subject to the same conditions and requirements.

(Sec. 603) Requires the Organization to develop and implement statewide computer networks with remote library sites in rural areas so that those citizens will have enhanced access to information in their State's patent and trademark depository library.

(Sec. 605) Allows a patent to be issued for a tuber propagated plant. Provides that, in the case of a plant patent, the grant to the patentee shall include the right to exclude others from offering the reproduced plant or any of its parts for sale throughout, or importing the plant so reproduced into, the United States.

(Sec. 606) Amends Federal patent provisions to authorize electronic filing of patent and trademark documents.

(Sec. 607) Directs GAO to study and report to the Congress on the potential risks to the U.S. biotechnology industry relating to biological deposits in support of biotechnology patents. Requires the Patent Office to consider such recommendations in drafting regulations affecting biological deposits.